Anticipate This!™ | Patent and Trademark Law Blog

Memorial Day 2013 – Memorial Marker Patent.

Posted in General Commentary by Jake Ward on May 27, 2013

U.S. Patent No. 8,209,891:  Memorial marker.

JW Note: Memorial Day in the United States is a day of remembering the men and women who died while serving in the United States Armed Forces. We wish all of our readers a safe and happy Memorial Day 2013.

memorialmarker

What is claimed is:

1. A memorial marker, comprising: a grave marker; a base placed on the grave marker, the base including a spring element coupled thereto and affixing the base to the grave marker; and a rod having a first end and a second end, the rod coupled to the base at the first end and disposed in a substantially upright position, the second end of the rod having an ornament coupled thereto.

(more…)

After Final Consideration Pilot (AFCP), Version 2.0.

Posted in Practice Commentary by Jake Ward on May 17, 2013

The USPTO issued the following press release today, concerning the After Final Consideration (AFC) pilot program, which allows Examiners and Patent Applicants additional opportunities to reach agreement when the status of an outstanding Office Action has been made “final”.

JW Note:  Our experience with the initial pilot program was positive, and we are pleased to see the USPTO further developing the program.  Any additional opportunity to reach agreement prior to filing costly appeals or requests for continued examination (RCE) is generally good for patent applicants.

After Final Consideration Pilot 2.0

Using information gathered from the After Final Consideration Pilot (AFCP), as well as input from stakeholders and examiners obtained through the RCE outreach initiative, the USPTO will launch the After Final Consideration Pilot 2.0 (AFCP 2.0) on May 19, 2013. Designed to be more efficient and effective than the AFCP, AFCP 2.0 will be part of the USPTO’s on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders.

“Compact prosecution remains one of our top goals,” said Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO. “As with the original AFCP pilot, the new AFCP 2.0 pilot allows additional flexibility for applicants and examiners to work together and provides even greater opportunity for communication after final than the original pilot.”

Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.

In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.

To be eligible for consideration under AFCP 2.0, you must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. Please see the notice published in the Federal Register at 78 Fed. Reg. 29117 for a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0. This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.

As always, the option to request an interview with the examiner, consistent with MPEP 713, is available to you irrespective of whether the submission was considered under AFCP 2.0.

If you are considering filing a response to a final rejection under 37 CFR 1.116 that you believe will lead to allowance of your application with only limited further searching and/or consideration by the examiner, you should consider requesting consideration of the response under AFCP 2.0.

AFCP 2.0 is scheduled to run through September 30, 2013, i.e., any request to consider a response after final rejection under AFCP 2.0 must be filed on or after May 19, 2013, and on or before September 30, 2013. AFCP, which began on March 25, 2012, will terminate on May 18, 2013.

Click here for guidance related to consideration of responses.

Importance of Using a Registered Patent Practitioner.

Posted in Practice Commentary by Jake Ward on May 1, 2013

mousetrap

Most anyone who has been involved in the filing of a patent application at the U.S. Patent and Trademark Office (USPTO) will tell you this – the patenting process is complicated.  It is full of strange rules.  To make matters worse, these rules seem to be in a constant state of flux.  As a result, the patenting process presents many potential pitfalls for inventors, and especially for those who decide to prepare and file themselves as “pro se” or without the advice of counsel.

Many patent practitioners can recall stories where pro se applicants have ultimately turned to them to fix their patent applications, or to otherwise complete prosecution from the inventors at the USPTO.  Some of these stories are quite famous, including the story of the Wright brothers’ patent attorney, Harry Toulmin, to whom the brothers turned after the patent application they had drafted themselves was rejected by the USPTO.  Unfortunately, depending on the state of the patent application filed, or the point in the process at which the patent practitioner is approached, the practitioner’s ability to help the inventor may be very limited.

For at least these reasons, the importance of using a registered patent attorney or agent for preparation and filing of a patent application cannot be over-emphasized.   Registered patent attorneys or agents are individuals who have been licensed and are regulated by USPTO.  Both patent attorneys and agents must pass a rigorous examination administered by the USPTO, and registered patent attorneys are also members of a state bar.  A list of registered patent practitioners is maintained at the USPTO website here, and may be searched to locate a registered practitioner near you.

Inventors should also beware using so-called “invention promoters”.  An invention promoter is defined by 35 USC 297 as being any “person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as providing such services”. Invention promotion services are defined as being “the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer”.

The USPTO publishes complaints made against invention promoters, which may be found at the following website:

http://www.uspto.gov/inventors/scam_prevention/complaints/index.jsp

For more information from the USPTO about invention promoters and scam prevention, we encourage you to visit the USPTO Scam Prevention Website here and the Federal Trade Commission (FTC) Consumer Information on Invention Promotion Firms website here.  The USPTO also publishes a great pamphlet with information on how to avoid scams by invention promoters here.  Note especially the list of questions that invention promoters are required to answer by law (i.e., the American Inventors Protection Act of 1999).   Complaints against invention promoters may also be filed with both the USPTO and the FTC using the forms found here and here, respectively.

In sum, if you are inventor interested in obtaining a patent, we recommend that you search for and speak with an experienced registered practitioner before moving forward into the patenting process.  Likewise, if you have been the victim of a scam, it may also be in your best interest to speak with a registered practitioner sooner rather than later.

Should you wish to speak with the registered patent attorneys at my law firm, Fraser Clemens Martin & Miller LLC, I invite you to contact us by telephone at 419-874-1100, or by email to firm@fraser-ip.com.