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Messages - Brad

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1
Sorry I don't really like to take over applications as they are usually a bit of a mess.  Just like a licensed electrician would not want to take over wiring a house after the homeowner did most of it and covered up the walls. Too much risk and headache with very little money/reward.

To answer your specific question, you should call the examiner to see what they suggest.  Sometimes they will review an amendment after final if you are only making minor changes or doing something they suggested in their last response.  Otherwise they don't have to review anything as prosecution is technically closed at this point.   If you think you are close to an allowance with just minor tweaks I would call them and see if they will let you file the reply with an After Final 2.0 request:  https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20

It is really up to you to keep track of the dates.  If your final rejection was mailed January 1, 2022 you have until April 1, 2022 to file a response (without an extension fee) or until July 1, 2022 to file a reply but pay a late fee (extension of time fee). 

Most firms will make a note to file your response after final within the first two months and then set a reminder to check on it every week.  If you don't hear back from the examiner with a Notice of Allowance by the first deadline then file your RCE or Continuation at that time before the first due date to avoid the extension of time fees.


2
There is a small chance that if you don't take what they allow, they can re-run their search and offer new rejections.

I once had all 20 of my claims allowed, I paid the issue fee, and then it went to some quality control person at the patent office who sent the case back to the examiner to start the examination process over.  We were not happy but nothing we could do. 

For this reason it often makes sense to take what you can get when you can get it and then file a continuation for additional claim coverage.  As you noted this increases this cost though as you have to maintain two patents instead of one. 

3
You should be able to file an RCE but in this case it may make sense to:

1. Take the allowed claim and get your first patent issued (patent #1),
2. Before your first patent issues, file a "continuation" patent application that links back to your first application and keeps your priority chain active.
3. Try to get claims approved on your continuation application.  If successful you will then get a second patent issued (patent #2)

This is only slightly more expensive than the RCE path but ensures you will at least get one issued patent out of all this plus buys you some goodwill with the patent examiner.


4
You really have three options:
1) Amend your claims to include a feature (structural feature or arrangement of features) that is not found in any of their cited patents.

2) Provide arguments why it would not be logical to combine the cited art and explain how it would actually "frustrate" the purpose of the cited art (e.g. ice cream needs to be kept cold, therefore it would frustrate the purpose of an ice cream machine to add a heater)

3) File a Notice of Appeal to appeal over the examiner's head.

Most of the time a combination of 1 and 2 is all you need.  A phone call with the examiner is also helpful as they will sometimes tell you what they want to see in order to get the case approved.

5
I am not fully certain I follow your question, but, you only have 12 months from the filing of your FIRST application to file a PCT.

In your example where you filed your US non-provisional on February 1, 2022 you would need to file your PCT on or before February 1, 2023.   This assumes your US non-provisional was your first application.

If you filed a US provisional on October 1, 2021 then filed your US non-provisional on February 1, 2022 you would need to file your PCT on or before October 1, 2022.


6
PatentFile Website Questions and Reviews / Re: NDA?
« on: December 04, 2021, 09:20:23 AM »
On this site we can sign an NDA and have ours posted.
http://patentfile.org/patentfile-nda/
(note:  once you sign your name in at the bottom it will automatically fill it in at the top section)

However, in general most larger law firms and attorneys will not sign NDAs with solo inventors and it is not really needed.  Before you work with anyone you need to make sure they are registered by the US Patent Office here:  https://oedci.uspto.gov/OEDCI/practitionerSearchEntry

If they are registered, they have very strict rules and ethics requirements.  Stealing a clients idea would not be worth it because they would lose their entire patent license.   

7
That is tough.  Generally methods of treating humans without a technology component or device would be hard to get approved.  The patent office may consider them to be "abstract" and therefore not patentable.   Even if you would put them on a standard website or app that may not be enough to get it passed this abstract filter.

8
To be obvious, the initial burden in placed onto the patent examiner.  They must be able to find the same (or very similar) teachings in the prior art which could include past patents, articles, websites, etc.   They will then attempt to merge these together and make a statement that your work would be simple, routine, and odviouss to combine these.

It is then up to you (and your patent attorney) to demonstrate it is not obvious.  We have some tricks and methodologies we use to do this. 

9
Sorry Alpha.  For some reason I was not getting notified of new posts so all of yours have slipped through the cracks.   If you are still looking for an answer to this I would be happy to write more but in general the non-provisional can include new ideas and changes from the provisional.  However, any new material you add will not get "credit" or priority back to the provisional because that material was not included at the time the provisional was filed.

Omitting things if fine too but remember once your non-provisional gets published online, people can get into your files and see what was in your provisional so that old material will still be in the records. 

10
Patent Questions and Advice / Re: PPA -> NPA -> PPA with Additional One Year
« on: September 06, 2021, 09:34:59 AM »
Most people don't use the "convert" option going from PPA to Non-Prov. because you can lose a year of patent term.   If it were me and if the main thing that was holding you back was the claims, I would go ahead and file your non-prov. now without claims (claims are no longer required in non-provs) and your  non-prov can essentially be a duplicate of your provisional and claim priority back to your provisional.

It usually takes the patent examiner 6-18 months to even review your case and once they do you have up to 6 months to from that point to respond (with payment of government extension of time fees).   So you could easily buy yourself 12 months to add in claims to your application.

Remember, you can add or change claims at any point in the patent process as long as you have proper support for those claims and claim terms in your spec.  So the claims should never be a reason to delay your filing because those are the one thing you can change later.

I have never done the method you are suggesting so I don't want to comment on that.  It seems like it should work but the method I presented above would be more common and would save your patent term. 






11
Yes.  You can file a second provisional application and then your full non-provisional can link back to both applications or just your second one if you truly don't there there is any benefit to the first one. 

12
If they are unavailable that usually means those applications are not properly linked to your account so it will not give you access.  You should call the USPTO and ask them how to give you access to each of those application numbers.   

13
You must first have an account with the patent office and link the application to your account.  Once you have that, you can view it through Patent Center or PAIR:  https://www.uspto.gov/sites/default/files/documents/Patent%20Center%20User%20Guide_Beta.pdf

I would call the USPTO Assistance group and have them walk you through the process and needed forms step by step: 1-866-767-3848

14
You would have to file this as a new (stand alone) application.  The main challenge here is that your old patent can be used as "prior art" to reject your new version.  If you are only changing minor things like the color or the dimensions that will not be approved but if you are adding in new components or new functionality that may have a chance of being approved as a new patent.


15
Sorry this is more of a legal question that we cannot answer here nor should you get advice like this from some guy on the internet.   Please think about hiring your own local attorney that has worked on deals like this before.

I don't know of any patent reasons why you could not proceed as an individual to work with Nike although it may make you appear to be more legit if you approach them as a business rather than as a person.  Just remember that if you transfer ownership to your company then the company (not you) is the legal owner.  This becomes complicated if you ever lose control of the company or forget to pay your registration fees, etc.   For that reason I normally suggest most inventors keep the patent in their name unless absolutely necessary.


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