Patent Law News. Patent Law Updates.

Patent Law News
by Marin Cionca

  • July 01, 2014: USPTO issues “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” A two-step analysis is required from the examiners, while no definition for the 'abstract idea' is provided. See instructions.

  • June 23, 2014: Update on Supreme Court's June 19, 2014 Decision in ALICE CORPORATION PTY. LTD. v. CLS BANK INTERNATIONAL ET AL. Alice's software patents were held invalid as claiming an abstract idea, with no inventive concept added to transform the abstract idea in patentable subject matter. This decision has singnificant implications to the software applications for patent and software patents. Read more...

  • Watch Video Below About the decision of the Federal Circuit in CLS Bank Case: Abstract Ideas are not patentable. "Inventive Concept" or "Meaningful Limitation" is required. CLS Bank Int'l v. Alice Corp. (Fed. Cir. 2013) (en banc)
  • Watch Video Below About the decision of the Supreme Court in Myriad Case: isolated DNA is not patentable but synthesized cDNA is typically patentable. Assn. for Molecular Pathology v. Myriad (U.S. 2013)
  • Watch Video Below About the Supreme Court's decision in Prometheus case: law of nature is not patentable. Claim must include "inventive concept" not merely routine activity. Mayo Collaborative Servs. v. Prometheus Labs. (U.S. 2012)
  • America Invents Act (AIA) is here. On September 2011, the new patent law was enacted. It changes 200 hundred years of American patent law tradition: the first-to-invent priority rule will be replaced in March 2013 by the new, first-to-file rule. Learn More about the AIA.

  • General Purpose Computer - Indefinite. A means-plus-function claim element for which the only disclosed structure in the specification is a general purpose computer is indefinite, and therefore, invalid. In order to make the means-plus-function claim element definite, the disclosed structure should also include the computer algorithm designed for the general purpose computer to perform the particular claimed function. MoneyIN Inc. v. VeriSign, Inc.. (Fed. Cir. 2008).

  • Substitution of "Minimum 10 GHz" with "Radio Frequency" - No New Matter. If in the original application, "the minimum transmission frequency of 10 GHz", is referred to as a preferred embodiment of the invention, and not as a limitation, the substitution later with "radio frequency" (3 KHz to 300 GHz), does not constitute new matter under 35 U.S.C. § 132 or 35 U.S.C. § 112. Commonwealth Scientific v. Buffalo Techs. (USA), Inc. (Fed. Cir. 2008).

  • Different Arrangement of Claim Elements - No Anticipation. A reference anticipate a claim only if (1) all the elements of the claim are found within the four corners of the document, AND (2), the claim elements are arranged or combined in the reference as in the claim. The difference in claim elements arrangement is particularly important when it indicates that the reference and the claim in question are referring to different subject matters. That means that there is no anticipation. MoneyIN Inc. v. VeriSign, Inc. (Fed. Cir. 2008).

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  • M. Cionca2/24/2016 8:51:27 PM

    What is a non-provisional utility application for patent?

    A non-provisional utility patent application is a lengthier, more detailed and more complete version of a provisional patent application that is scrutinized by an examiner for accuracy, among other things. The non-provisional application must be clear, accurate, and detailed enough for easy use by sufficiently skilled personnel wishing to create the described invention. On top of all this, the claims listed in the nonprovisional utility patent application, the most complex part of the entire application, are checked for possible conflicts with prior art, following the patent novelty and non-obviousness standards. As a result of all these factors, non-provisional utility applications are much harder, more expensive, and more time-consuming to complete than a provisional application. However, they are necessary for an inventor to actually protect a claimed invention, as a provisional provides no such service. It should be emphasized that this article is specifically discussing non-provisional applications for utility patents. There are also non-provisional applications for other kinds of patents, and the requirements for those may vary from what is listed below.

    Filing Options 

    Before continuing on to the details of filing a non-provisional utility application, it is important to cover the three different options for filing. An inventor can file electronically, by mail, or even by hand to the USPTO’s office in Virginia. The first option is the preferred option, as filing by mail or by hand incurs a $400 “non-electronic filing fee.” It should be noted that this fee, and all other filing, issue and maintenance fees required for an application, are reduced by half for inventors classified as “small entities.” This fee can be reduced by half again for inventors classified as “micro entities.” Regardless, that is a considerable sum of money that could be saved by utilizing the USPTO’s Electronic Filing System (EFS) instead of filing by mail or by hand. The USPTO offers full technical support to assist those using the EFS, available 6 am to midnight EST on weekdays.

    Requirements

    A non-provisional utility application has a lengthy set of requirements. First, the application must either be submitted in English, or have an English translation attached to the actual application. As for the contents, the application must include the following (in PDF format if submitted via EFS):

    -          Utility Patent Application Transmittal Form

    -          Application Data Sheet

    -          Specification

    -     Claims

    -          Abstract

    -          Drawings

    -          An Oath or Declaration

    -          Filing, Search, and Examination Fees.

    USPTO Fees - non-provisional utility application for patent

    All fees required by the USPTO can be submitted electronically by credit card or physically by check or money order. As with the filing method, it is advisable to pay the fees electronically. This is especially true if the rest of the application is filed electronically, due to the incursion of a “late surcharge” of $130 ($65 for small entities) if the filing fee is received on a later date than the application. This late surcharge is also owed if the oath or declaration is filed later than the rest of the application. There are two other potential fees to consider. Electronically filed applications that exceed 133 pages incur an application size fee. For physically filed applications, the limit is 100 pages. Claims sections that contain more than three independent claims (or more than 20 total claims) will incur excess claims fees.

    Generally speaking, it’s best to do everything electronically to avoid extra fees. Also, certain fees (such as size fees and excess claim fees) may not have a static value, so it is recommended to consult the most up-to-date “USPTO Fee Schedule” before filing an application.

    Application Data Sheet

    The application data sheet is a “preface” of sorts for a nonprovisional utility application for patent. It provides general information that mainly includes bibliographic data of the applicant. Included in this section of the application are the following:

    -          Applicant information

    o   Name, residence, mailing address, etc

    -          Correspondence address

    o   Where the USPTO should send mail to; usually a customer number for a patent attorney or agent

    -          Representative information

    o   Registration number of the attorney/agent who has power of attorney in the application

    -          Domestic priority

    o   Section where an application can claim “benefits” to a previously filed application, provisional or otherwise.

    -          Foreign priority

    o   Similar to Domestic priority, but applies to applications not filed by the USPTO.

    In addition to the above bibliographic information, supplemental application data sheets may be sent to the USPTO prior to payment of the issue fee to either correct or update information in a previously accepted application data sheet (or an oath or declaration).

    Specification of the non-provisional utility application for patent

    The specification section is perhaps the longest section of a non-provisional utility application, as it contains the two most comprehensive, and difficult, components of the entire document: the detailed description, and the claims. As a whole, the specification section is a written description of the invention. The subsections included in the specification are as follows:

    -          Title

    -          Claiming Benefit of Previous Applications

    -          Invention Background

    -          Invention Summary

    -          Brief Description of the Views of the Drawings

    -          Detailed Description of the Invention

    -          Claims

    The title is on the first page of the section. It may contain as many as 500 characters, but should be as short and specific as possible for the sake of clarity.

    Immediately following the title, any previously filed applications which the applicant wishes to claim benefits should be listed. Each application should be identified by its unique number (or international number and filing date, for non-domestic applications), and the applicant must indicate the relationship of the previous applications to the one he/she wishes to file.

    Background of the Invention

    The invention background section of the non-provisional utility application is fairly straightforward. This section should include information on the invention’s related field and description of information related to the prior art. Additionally, this section may reference problems involving the prior art related to the invention. As an example, “Previous inventions suffer from a deficiency in ____. The invention will eliminate that deficiency.”

    Care should be exercised such that no non-patentability admissions are made in this section or anywhere in the non-provisional utility application for patent. If for example the background section makes a statement to the extent of “some devices have A, others have B, and still others have C,” and then goes on to state “the present invention have A, B, and C,” the invention may not be considered to be patentable due to the lack of unique claims. Additionally, referring to specific prior art (like another US patent or application) in the background section is generally not recommended. If it must be done, extreme caution must be taken so as not to accidentally make any untrue statements regarding the prior art. If the background states that “patent X fails to do Y,” when in fact patent X is technically capable of performing Y, the application will likely face serious problems. Specific reference to prior art is better included in an Information Disclosure Statement form.

    As a general rule of thumb, it is much better to use broad and open-ended statements and qualifiers (“previous methods may suffer from X”) rather than referring to specific prior art and making potentially untrue statements about the prior art.

    Invention Summary and Drawing Description

    The invention summary typically presents exemplary embodiments and advantages of the invention. This section of the non-provisional utility application for patent does not have to be very complex, as the detailed description included later in the specification will fully explain the entirety of the invention. What should be included in the summary section are the advantages offered by the invention, and how those advantages solve the problems mentioned in the background section of the non-provisional utility application for patent.

    A brief description of the drawing views is essentially a list of all the figures presented in the drawing section of the non-provisional utility application (Fig. 1, Fig. 2, etc.) and give a corresponding description of what each figure is showing. Each item can include more detail than simply saying “figure 1 is a front view of the invention.” It may be advantageous to point out key elements depicted in the respective figure that are important to the function of the invention.

    Detailed Description

    The detailed description of the invention is the second most important section of the application. To quote the USPTO, the detailed description “must be in clear, full, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the same.” In other words, anyone with enough skill should be able to simply read the detailed description of the invention and then be able to start replicating it without confusion. According to the USPTO, this includes “process, machine, manufacture, composition of matter, or improvement invented.” Additionally, each element presented in the drawings section should be explained in detail in this section of the non-provisional utility application for patent.

    It’s generally wise to consider and include all alternative embodiments that may work equally well with the invention under consideration. Significant variations on the main design, unless specifically addressed in the application, are not protected simply because they are similar to what was addressed. Consequently, it’s a good idea to take some time and consider different possibilities for design of an invention so that they may all be included in the non-provisional utility application and adequately covered by the resulting patent. In addition to allowing greater flexibility in what the patent allows to be safely marketed, it may prevent competitors from examining the patent and legally patenting the alternate embodiments in their own application due to the absence of the embodiments from the original. It may take some time getting used to “thinking outside the box” regarding these matters, but it will ultimately result in a much more comprehensive and effective patent.

    Claims

    Singularly the most important section of the entire non-provisional utility application. In this section of the non-provisional utility application for patent the applicant is required to distinctly and completely lay claims to the inventive aspects that define the invention and set it apart from the prior art.  This section of the non-provisional utility application for patent defines everything that is protected by the patent. As such, anything that is not covered by the claims is not considered to be protected. The claims section starts on a separate page. Each claim should be no longer than a single sentence, and must be listed in numerical order using Arabic numerals (1, 2, 3, etc.). Due to the nature of utility patents, they must have at least one claim, but do not have an upper limit on the amount (excess claims fees apply, of course).

    Claims may be “dependent” on previous claims and refer back to them. For example, claim 2 might start with “The process of claim 1…” to identify that it is related to claim 1. All dependent claims related to a single independent claim should be grouped together immediately following the claim they are related to.

    It is recommended, and almost a requirement, that a patent attorney is hired to at least write the claims for a non-provisional utility application. Every other section previously described in this article can, for the most part, be done by someone who has an understanding of the invention and is somewhat familiar with legal writing. The claims, however, are far more intricate and far more important. A mistake in the claims section can result in severe consequences for the success of the application and/or the breath of the protection offered by a granted patent. Considering how expensive and time-consuming it can be to file a non-provisional utility application, it is well worth the cost to hire an attorney to ensure that the claims section of the non-provisional utility application for patent is professionally written.

    Abstract of the Disclosure

    Following the claims section is the abstract. This is a final summary of the invention that allows the USPTO (and anyone else, once the application becomes public) to quickly get an idea about what the invention technically does. The abstract should be restricted to a single paragraph, no more than 150 words, that starts on a separate page. It should point out the new features the invention adds to public art.

    Drawings

    Drawings are required for non-provisional utility applications, as they are almost always integral to understanding how the invention works. Failure to include drawings could cause an application to be rejected, or to be considered “incomplete.” Drawings need to show every feature and element that is claimed in the claims section. These elements should be given unique reference numbers that are consistent for each figure. A peg hole that is referenced as element 01 in figure 1 should still be referenced as element 01 when it shows up in figure 3. Additionally, all elements referenced in the drawings must be addressed in the description.

    The set of rules governing the drawings are rather complicated, and should definitely be reviewed before attempting to generate drawings for an invention without the use of professional help.

    Oath or Declaration

    An oath or declaration is required for applications involving designs, plants, and utility inventions. It’s a document stating primarily that the inventor believes he/she is the original inventor of the contents of the non-provisional utility application for patent. Oaths are required to be sworn in front of a witness such as a notary public or other officer authorized to administer oaths. Declarations, however, do not require any witness to authorize/verify their authenticity, and so it is much less of a hassle (as well as suggested by the USPTO) to use a Declaration instead of an Oath.

    Obtaining a receipt for documents mailed to the USPTO

    If an inventor elects to file a non-provisional utility application for patent non-electronically, it is possible to attach a postcard, stamped and self-addressed, to the first page of the non-provisional utility application. The postcard must contain a detailed list that identifies each type of document included with the application, and their respective lengths. When the non-provisional utility application for patent is received by the USPTO, the examiner will compare the items on the postcard to what was actually delivered. Inconsistencies, if any are present, will be noted on the postcard. It will then be initialed and date stamped by the examiner, and finally returned by mail to the inventor. The returned postcard can be considered evidence of receipt at the USPTO of all items listed on the card (unless otherwise noted by the examiner).

    More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

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