Messages

1

Patent Questions and Advice / CIP application, but attorney submits the parent issuance fee a day before CIP

« on: February 06, 2019, 04:09:37 PM »

We have a patent handled by an attorney firm.  The Issuance Fee's due date is today. Our new CIP application for that patent is also handled by the same attorney firm.

We was told the CIP should be submitted before the submission of the parent patent Issuance Fee. But we are notified, from the attorney firm, that the Issuance Fee was submitted yesterday already and the CIP is not submitted yet and will be submitted today.

My questions are the followings:

Q1:

does the new CIP application is still a real CIP?

Q2:

What are the differences for the CIP patent application if we submit it BEFORE we pay the parent Issuance Fee and if we submit it AFTER we pay the parent Issuance Fee?

2

Patent Questions and Advice / USPTO's by date is inclusive or exclusive?

« on: February 05, 2019, 04:29:19 PM »

If I have the following words from USPTO:

The patent issuance deadline is:
02/06/2019
Failure to perform patent issuance by the deadline will result in forfeiture of your approved patent application.

I have to act before the end of today, 02/05/2019, or I can wait and do it before the end of tomorrow?

3

Patent Questions and Advice / how to judge if anyone infringes my invention?

« on: December 24, 2018, 10:24:45 AM »

My invention has A, B, C and D components and they are connected with each other with that order.

Somebody claims to have a new invention with an addition component Z:

Case 1:
If the Z component is added between A and B, does his new invention, A, Z, B, C and D, infringe my invention?

Case 1b:
For the Case 1, if Z improves (better results, easier for B,C,D components) the invention a lot, does this new invention infringe my invention?

Case 1c:
For the Case 1, if Z doesn't improve the invention a lot, does this new invention infringe my invention?

Case 2:
If the Z component is added before A or after D, does his new invention infringe my invention?

Merry Christmas!

James

4

Patent Questions and Advice / will provisional patent have any negative impact on my CIP?

« on: December 15, 2018, 11:28:33 PM »

I have a new idea added on my filed non-provisional patent application. It may take several weeks before my CIP document is ready. I am thinking file a provisional as soon as possible in case somebody else get the same idea.

Q1: Will this provisional hurt my CIP later? that is: will I lose the benefits of a CIP due to filing the provisional?

Q2: Can I ALSO claim the priorities of the provisional?

Thanks,

5

Patent Questions and Advice / can a PCT patent be used as CIP in USA?

« on: December 10, 2018, 10:06:12 AM »

I filed a patent with a claim X in January. Then I filed a CIP with a new claim Y in February, can I file a PCT with another new claim Z in March? That is can the PCT be used as CIP in USA?


Thanks,
James

6

Patent Questions and Advice / who will take the priority?

« on: December 09, 2018, 09:55:30 AM »

Person A filed a patent with claim X in January. Then he filed a CIP with new claim Y in February, and then he filed a PCT in April.

Person B filed a very similar PCT patent with claim X and Y in March.

Assume all of these happened in USA.

For the claim X and Y, who will get them? Person A, I think. Am I right?

Thanks,
James

7

Patent Questions and Advice / Re: PCT patent rejected if similar patent is found in one of the target countries?

« on: December 03, 2018, 10:22:48 PM »

Note that if any patent office finds prior art in any other country around the world your patent will still be rejected.  For example, if the US Patent Office finds prior art in China they can still use that to reject your US patent.

That means the PCT approach is not as safe as normal patent application? I cannot understand why is that. It seems that it doesn't make much sense.

8

Patent Questions and Advice / PCT patent rejected if similar patent is found in one of the target countries?

« on: December 03, 2018, 03:50:56 PM »

For the PCT application, what will happen to the application if a very similar or the same patent is found in one of the target countries? The entire patent application will be failed, including in US, or just failed in that country?

Thanks,
James

9

Patent Questions and Advice / patent strategy in our case

« on: December 03, 2018, 12:12:32 PM »

There is a system/equipment consists of A, B, C, D components. Each component is also a complicated combination of fundamental industrial parts on the market.

We have a patent on A with allowance in US, refer it as A2. But we have a better A2 now, refer it as A2a, and also have a better C, refer it as C2. We would like to have a PCT if possible. 

Based on suggestions from experts here, we may need to make the following claims:
1. Component A2a;
2. Component C2;
3. System A2a, B, C, D;
4. System A, B, C2, D;
5. System. A2a, B, C2, D;

Now we may have the following path options:

Option One:

• CIP or Continuation for #1 above.
• Apply patent/PCT for #2, #3, #4, #5 as one patent;

Option Two:

• CIP or Continuation for #1 above.
• Patent/PCT for #2 in one patent;
• Patent/PCT for #3, #4, #5 as one patent in another application.

Option Three:

• CIP for #1, #2, #3, #4, #5 above.

Are all of these options valid paths? which one is the easiest path? Any better suggestions?

Thanks,
James

10

Patent Questions and Advice / why provisional patent vs. utility patent?

« on: November 20, 2018, 12:03:48 PM »

The provisional patent applications will not be examined. They will sit in the U.S. Patent Office. They are not publicly searchable. If there is a related provisional patent there already, then at the time my provisional patent is examined, mine will be rejected and my prototype effort or my product effort will be waste of time.

If that is the case, why we don't go for the non-provisional directly? Why so many people still go for the provisional first?

11

Patent Questions and Advice / Re: patent a system or patent components/sub-systems?

« on: November 20, 2018, 11:04:08 AM »

Let me ask you this way:

A system consists of A, B, C, D components. If we have a new A2 and a new C2, then:

Option 1: we claim to have a new system consists of A2, B, C2, D.

    Q1: If somebody has a new idea on component B, which is call B2,  can she/he claim a new
           system consists of A2, B2, C2, D, even though the A2 and C2 are ours?


Option 2: we claim to have a new components A2 for the mentioned system and also claim to have a new component C2 for the mentioned system.

    Q2: If somebody has a new idea on component B, which is call B2,  can she/he claim a new
          system consists of A2, B2, C2, D, even though the A2 and C2 are ours?

Q3: In above case Option 2. do we have to file two separate patents? Or we can file them together with ONE patent and they are still protected as two separate components?

Q4: Can we directly file non-provisional patent because we want to know our patent is good or not, that is, can be granted or not.

Q5: The patent protection is not only on manufacturing but also on selling?

Thanks,
James
 

12

Patent Questions and Advice / patent a system or patent components/sub-systems?

« on: October 24, 2018, 02:04:22 PM »

Let's say there is a complex analytic device (system) which consists of 4 or 5 sub-systems or components. These sub-systems or components are not simple as well. We have some new ideas on two of these components which will make a new system much better than these on the markets.

Our questions are the following:

1. If we patent these two components, other people cannot use them in any places. I am right?

2. If we patent the system, other people can use these two components’ idea on any other new system which is different from ours or in different fields. I am right?

Thanks,
James