Category: Patent

Supplementing A Patent Application Disclosure With Prior Art Uncovered During Prosecution of A Related Patent Application

Sunday, 19 February, 2012 10:13 Written by Mark Malek 0 Comments
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By: Mark R. Malek

I recently posted a couple of articles directed to the duty to disclose prior art to the Patent Office during the prosecution process of your patent application.  The articles can be found here and here.  As we know from these past two articles, the duty of disclosure is vital in the patent application process, and the duty to supplement that disclosure is even more vital.  Simply because new prior art has come to light after the Applicant has already made an initial disclosure to the PTO does not relieve the Applicant from supplementing the disclosure with the newly discovered prior art.

There is a particular case that arises when an Applicant may have more than one patent application pending.  Sometimes, different Examiners may examine multiple related applications.  Of course, each Examiner may have a different search strategy and may uncover different prior art.  The examination of a patent application must be kept completely confidential.  Confidentiality of patent applications is generally outlined in 35 U.S.C. 122.  It is not as though an Examiner on one case will seek out the Examiner of a related case to go over the prior art that they have uncovered and compare notes.

The scenario that we are dealing with here can be laid out with an example.  Suppose Application #1 being examined by Examiner #1 has claims directed to elements A, B, C, D & E, and that Application #2 being examined by Examiner #2 has claims directed to elements A, B, C, F & G.  Now suppose that Examiner #1 issues a notice of allowance and indicates that no prior art reference was found that disclosed element C.  Now also suppose that around the same time, Examiner #2 issues a rejection of Application #2 and provides a prior art references that discloses element C.

Anyone see the issue yet?  The Applicant now knows of prior art that would cause Examiner #1 to issue a rejection of the invention set forth in Application #1.  If the Applicant does not disclose the prior art that Examiner #2 cited, then Application #1 will likely proceed to issue.  Is it valid?  Well – until someone else challenges it, then it probably is.  This scenario wouldn’t be tested, however, until the Applicant tried to enforce Application #1 against a potential infringer.  You can guarantee that the potential infringer, when faced with an accusation of patent infringement, will do every bit of investigation possible into the prosecution history of the application to ensure that the prosecution was proper.  Upon figuring out that the Applicant failed to disclose prior art from one application in the prosecution of another application, the door to invalidity has been opened.

To summarize, the duty of disclosure of relevant prior art cannot be overstated.  No matter how the prior art was discovered, and no matter when the prior art was discovered, the Applicant MUST fully disclose it to the PTO during prosecution of the application.

 

3D Printers and What it Can Mean for Patent Holders

Wednesday, 15 February, 2012 17:04 Written by Danie Roy 0 Comments
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Danie Roy

What is invention? When you’re in elementary school, it’s a solution to a problem. As you get older, you realize it can also be a better solution to a problem. Even older, and you simplify down to just “innovation.” But what is innovation? I would argue that it is staying above or driving the technological curve. After all, building a better mousetrap is nice, but cyborg mice is just so much more interesting! (Plus, EMP guns would make the best moustraps, then!)

I bring this up because there seems to be a big freakout about copyrights and 3D printers.  The freakout should really be about patents and 3D printers, and, honestly, I don’t know why there’s not more excitement than doomsday predictions.

Yes, that bunny was made by that box.

Before I get too far into that, I should probably explain the hype about 3D printers. This is a fairly new technology that is pretty much what it sounds like: a printer receives a series of 2D patterns to build up a material that is printed – that is, applied in layers – until a 3D object is formed. All things considered, it is probably the least wasteful modeling technology, but, like I said, it’s still new. It’s really slow, not yet universally affordable (especially the printing materials, which range from $7 to more than $300 per pound), and not yet perfect at what it does. That said, the technological curve is exponential: the technology will be there soon.

The freakout is happening because people think that now, with things like Pirate Bay’s physibles, bootleg items will start popping up left and right. Copyrights groups are shouting anarchy, trademark holders are squirming, and patent holders are giving the death glare. Allow me to explain the implications for patents (because, you know, patents is what I do):

“Eventually you can print your own bootleg crosstrainers” is a comment that has been thrown around a lot. This particular example is a long way off, however, as a 3D printer having 2 different material cartridges is currently a big deal. Single-material shoes, on the other hand, such as, say, Crocs, (which have many patents on them, by the way) need to be more on the lookout. These can (and likely will) get copied and printed with the current technology.  It might currently be cost-prohibitive, but someday soon, it may not be.

Design patents are suddenly way more valuable again. Personal use or not, if you print out or distribute a patented design, you are DEFINITELY violating the law and will likely get your freshly printed pants sued right off of you. We may not be too far off from printing more complex items covered by utility patents, either.

So what can you do? There is going to be a demand to print what you have, how can you protect your rights? Simple: get ahead of the curve.

This actually is a great opportunity. The geeks might as well be screaming at you “hey, this is a potential market, shut up and take our money!” The thing about geeks, especially early adopters, is that they are really proud of their new technology. In some cases, they’re willing to pay a little extra to showcase it. So, let me walk you through an idea to ride the wave of technology instead of aimlessly drowning in it.

Sell licenses to designs. Find a way to watermark the files so that they are more difficult (or impossible, if you can swing it) to copy, and sell them online. Sell kits, even! Material cartridges and a drive with files on it, for example (or a redemption code). To go back to the Crocs example, the early adopting geek will be more than happy to buy that design and print it, if for no other reason than to show off what their technology can do. You need to make a 3D design at some point anyway, right? Plus, if your consumer has those awkwardly-sized feet, they can have a pair that fits, while the manufacturer doesn’t have to make special orders, and the salesman isn’t stuck trying to explain why they won’t sell half a pair of shoes.

How to do it? Make an online market. If you don’t move to profit off of your hard work in a market that wants it, someone else will try to.

“Those whippersnapper pirates will try to steal it anyway!” you object. “They all want to get something for nothing!” I won’t lie to you, some people are going to try to steal no matter what you do, but there will always be an honest bunch who genuinely want to compensate you for what you’ve done. If you don’t offer what they want, however, that’s where things get sticky. An ounce of prevention is worth a pound of cure here.

Knows their audience.

Take the My Little Pony phenomenon, for example. When Hasbro released the 4th generation of a children’s show meant to market pony toys to young girls, they had no idea that the plot and characters would charm an audience that was nowhere near their target demographic. Keep in mind, the actual demographic for this show is pretty close to the demographic that would buy a 3D printer. Hasbro wasn’t ready to deal with this phenomenon, but they quickly adapted: ponies that started to look more like those portrayed on the show were offered for sale, episodes were made available on iTunes, and consumer loyalty was promoted. The company even went as far as giving a fan favorite background pony the name fans had bestowed on it. Once boxed sets of the show were available, “bronies” started buying them. Same goes for iTunes episodes and show-accurate toys. Sure, you’ve got a few people who will continue to download lower-quality versions of the episodes, but most fans are content to either watch their Saturday morning cartoons or buy the iTunes version… or even wait for the episode to get posted online by the company that airs the show!

No, the market will not always stay the way you like it. Occasionally, however, it will tell you exactly where it’s going and how to exploit it. Some will always steal, but there’s very little you can do about that. Adjusting what you offer to capture those who are willing to pay, however, is something you CAN do… so do it. Minimal effort for high profit is a great business strategy, after all.

VALENTINE’S DAY AND PATENTS

Tuesday, 14 February, 2012 17:11 Written by danieldavidson 0 Comments
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By Daniel Davidson

It is the day of love, romance, and stomach aches from the diabetes inducing amounts of candy we ingest, and we at Tactical IP would like to share some festive patents in light of the holiday.

When I think of this lovely holiday, I think of hearts.  I think of a two pound blocks of chocolate in the shape of a heart, a card in the shape of a heart, and maybe even heart shaped pancakes (pancakes because I am pretty sure you can shape them into anything).  So, to keep with the heart shaped theme, I have compiled a few patents which also are heart shaped and could be very accompanying to Valentine’s Day.

U.S. Patent Publication 2001/0020370 may just be the key to any women’s heart.  It is a design application for a heart shaped diamond.  This gem, whether heart shaped or not, may make a women yours forever.

For some, they make no secret of their utter disgust for Valentine’s Day.  Maybe it is because they particularly hate that it is a holiday invented by the card companies for monetary gain, or maybe it is because a lost lover really broke their heart.  Design Patent No. 583195 for a heart shaped knife holder is for the later.

Lastly, Valentine’s Day is for the hopeless romantics out there.  They will spend the day planning a way to really warm the heart of their lover.  Design Patent No. 511409 is for the real hopeless romantic that will probably end up hopelessly alone if they show up with this as a present.

Here is to everyone having a safe Valentine’s Day.  Cheers!

How Do You Amend Your Patent Application After Allowance?

Friday, 10 February, 2012 09:24 Written by Mark Malek 0 Comments
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By: Mark R. Malek

As has often been the case with some of my articles in the past, I like to introduce little practice tips as something interesting happens in my day to day life of prosecuting patent applications.  This past week brought me something interesting.  I received a call from an Examiner on a case that was already allowed.  This was a great case because I was dealing with an Examiner that really tried to take every possible step to help find allowable subject matter and place the application in condition for allowance.  It was not like some he examinations of the past where I was up against an Examiner that was in a rush to issue a Final Office Action.

Needless to say, however, I was a little tense when I received a call from an examiner on a case that was already allowed. As it turned out, the Examiner noticed that the serial number in the reference to the parent application was incorrect. No, that is not a typo – I am referring to the previous case upon which this case relied.  This application was a continuation-in-part application, which allowed our client to claim the benefit of the previously filed application (another post will follow shortly on continuation and continuation-in-part applications). The serial number that was referenced in the application was off by one digit. The issue, however, was that prosecution of the application was already closed. The Examiner had mailed a notice of allowance. After a notice of allowance is mailed, there can be no more amendments to the application. There is, however, a mechanism to make corrections to an application that has already been allowed, but for which the issue fee has not been paid.

The mechanism that allowed us to amend the application after the notice of allowance has been mailed is found in 37 CFR 1.312.  This section of the regulations allows for the introduction of an amendment to the patent application after the mailing of a notice of allowance.  Section 714.16(d) of the Manual of Patent Examining Procedures (MPEP) which, of course, is the bible of patent prosecution, outlines the steps necessary to amend an application after the notice of allowance has been mailed.  In short, you just have to be sure not to introduce new subject matter.  In this particular case, we were merely correcting the serial number of the parent application, so no new subject matter was added.

If the issue fee had already been paid, there is another mechanism to correct a patent. This is found in Section 1400 of the MPEP.  The only downfall of this section is that the correction is not actually made to the patent itself. Instead, a certificate of correction is attached to the patent indicating the correction that has been made. I will write more about certificates of correction in a later post. In the meantime, I just wanted you have some information regarding another practice that that I came across this past week.

Duty of Disclosure During Patent Prosecution and Supplementing the Disclosure

Friday, 03 February, 2012 14:01 Written by Mark Malek 0 Comments
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By: Mark R. Malek

You may recall that I wrote an article recently which noted that there is a duty of disclosure when filing a patent application in the United States.  For the sake of a quick summary, in return for the exclusive right to exploit an invention, the government requires the Applicant to disclose all prior art known to them in order to ensure a more detailed examination of the patent application.  In other words – no hiding the ball on the Patent Office.

The process in which information is disclosed to the Patent Office is by filing an Information Disclosure Statement (IDS).  The IDS includes a list of all the prior art references that the Applicant believes are relevant to the invention, as defined by the claims in the patent application.  There is a lot of prior art out there, and the best that every Applicant can do is to disclose the prior art that they know about.

The big question is about the prior art that the Applicant discovers after filing the IDS.  Is all lost?  Has the Applicant now committed fraud on the Patent Office?  That depends on how this is handled.  If the Applicant does nothing about the prior art that is discovered, then the likelihood that the patent stands up to a challenge of validity is very, very slim.  In fact, if it can be shown that the Applicant later became aware of relevant prior art, and chose not to inform the Patent Office, it is almost a foregone conclusion that the patent will be found invalid.  Worse yet, the Applicant may be found to have engaged in inequitable conduct, which can lead to liability for attorneys’ fees.

So how does the Applicant avoid this?  By filing a supplemental IDS.  It is exactly what it sounds like.  It is another IDS that supplements the original.  This is simple enough, and a good way to ensure that the Applicant has fulfilled the duty of disclosure to the Patent Office.

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