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Messages - Brad

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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. 

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. 

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.   

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.

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.

I can only answer that from a USA perspective in which case you don't need claims as that is not required for USA rules.  However, there may be other countries or regions that require claims in a priority application is you may want to add 1 or 2 just to be safe.

The provisional does not have to "formal" but it should at least clearly describe the invention, how to make and use it, and have good figures showing each key element that you intend to claim.

Patent Questions and Advice / Re: Continuation applications
« on: June 01, 2021, 02:33:04 PM »
Each continuation could be its own separate patent with a separate patent number so I would first look at each one to see if it is truly a valid and issued patent and then if so look at each claim from each of the different continuations plus the original.

This type of question cannot be answered properly over the internet

The type of advice you are looking for is called a "freedom to operate opinion" or sometimes called a "clearance opinion".  They can be quite expensive as attorneys and law firms take on a lot of risk and liability telling you that you are free and clear to do something, if they are wrong, they could be in a lot of trouble.   

In general, in order to violate a claim you would have to copy every limitation in that claim. 

Adding in extra features to your product would not help.

There are a couple of items here:

1) Having a patent does not mean you are free and clear to make or sell the app.  Here is a post I wrote on this:

2) If your goal is to just prevent others from patenting the same thing, the cheapest way to do that is to publish your app and details about it (for example you could blog about it on or github).   Your public work could then be used to reject anyone else's patent if they later tried to patent the same thing.

3) I really only know about US patent strategy but my understanding is that apps are just about impossible to patent outside of the US and even in the US they are extremely hard to get approved (usually less than 30% chance of approval unless the app solves a very technical problem).

Prior art searching should always be international.   In order to get a patent you must be the first one in the entire world to invent that and any foreign documents the patent examiner can find can and will be used to reject your patent.

If you file a patent in one country you only have one year (12 months) to file in other countries.  If you miss that window it would be too late to try and later file in different countries. 

No.  In fact, many successful apps and software programs don't have any patents at all. 

Ideally you should identify the core 2-3 unique processes your software app does and that would be the focus of your patent.  If you had a patent budget of $500,000+ per year which is probably what Tinder has then you can most certainly file a new patent on every little tweak you think of but that is not practical for most of us.

Software Patent Warnings:

You first need to determine why you think you need a patent.  Do you really think you are going to get a broad and strong patent approved in the social media space right now?  That is doubtful.   

If you do get your app approved, do you have the $100,000 it will likely cost to defend your app if it gets challenged?  If your app still makes it through that challenge, do you have the $1 million+ to spend enforcing your software app against companies like Tinder? 

After you add up all the costs and risk for filing a patent, what is your return on investment and how are your going to justify the expense of filing and defending your patent?

I am not trying to scare you away from filing a patent, rather, people should look at it from a cost-benefit perspective and often times the costs are greater than the perceived benefits when it comes to certain types of mobile app type patents.

Patent Questions and Advice / Re: Improvement of a patent in force
« on: March 17, 2021, 01:55:06 PM »
It is impossible to say without spending a lot of time and money researching their patents and your idea in detail.  Even after spending all that time and money it would still just be a "guess" or estimate on how likely you may be infringing their work.

In general you cannot make or sell a product that is still using a patented process or component even if you think are are improving on it.

*The type of opinion you are looking for is called a "freedom to operate" legal opinion and is not something we provide.  You should really speak with a patent attorney with this type of experience and registered in your area.

I have seen agreements where universities sometimes say they will pay inventors from another university but usually that is only if there is a federal (US) grant.

Otherwise, it is most common for each university or company to only pay their own inventors.

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