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Messages - Brad

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If the pieces are the same I would leave the numbering the same, even if they appear in more than once spot.  Ideally you have a way to identify them and their location such a "a first panel 450 is located on a top side XXX of the body YYY".

Here XXX and YYY should be labeled in your figures.

We have also sometimes used the suffix A and B such as panel 350A and panel 350B.

Yes that is a tough decision.   When someone has a pending patent application it is smart for them to change the claims to try and capture the best commercial use of their idea.

How likely is it that the inventor will see your idea online?  It is a big world with a big internet and I have found most inventors are not very good at finding similar ideas online.  Sometimes they are scared to look, sometimes they don't know how to do good searches on Google. 

You will need to decide what is more important:
1. Publishing now to give the idea way as soon as possible, or
2. Waiting for the other patent to be approved.

 Note that there is a good chance their patent may never get approved so maybe option 1 is best.

Patent Questions and Advice / Re: Level of description/claim detalization
« on: February 03, 2022, 10:59:53 AM »
Sounds to me like you are trying to patent a concept.  Concepts are not patentable, only "inventions" are patentable.   An invention has definition and boundaries.   In your wheel example, you have to define the shape and structure of the wheel.  I would argue the round shape is needed (in practice nobody wants to use a square wheel) so I would start there.  Then think of the other areas that are essential for the wheel like a centrally located connection point.

Claim drafting is not easy.  There is a reason why patent attorneys can charge $500+ per hour to think through these things carefully.   Once you have your claims properly drafted, you can use those as your framework to write out the entire application and describe each of your claim terms.


My understanding is that a CIP application would count against your limit.  This is a lifetime limit not per year.   Best resource for this is here:

Patent Questions and Advice / Re: Provisional Application Process
« on: January 26, 2022, 10:01:04 AM »
Once the USPTO has accepted your provisional, there is nothing else they will do.   The next step is when you will file the full non-provisional application.  Please read this:

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:

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.

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. 

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.

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.

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.

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.
(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:

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.   

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.

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. 

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. 

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. 

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