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Patent Questions and Advice / Re: Can inventor with Pat Pending edit claims to read on newly disclosed inventions?

« Last post by Brad on February 04, 2022, 03:46:02 PM »

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.

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Patent Questions and Advice / Can inventor with Pat Pending edit claims to read on newly disclosed inventions?

« Last post by Cruisingcat on February 04, 2022, 02:52:57 PM »

I have applied for a patent for an invention which is an improvement of existing prior art. Since it is not important for me to make money I’m thinking about giving away this invention by disclosing it on the web.

I have found that another inventor has applied for a patent for a similar invention a few years earlier but his published claims do not necessarily read on my new invention.

However, I’m worried that if I disclose my invention and this inventor sees my disclosure before his application is granted, he may be able to change his claims by describing some existing parts differently to read on my invention to prevent other people from building or using my invention.

If it is possible for him to do this then it would make more sense for me to wait until after his patent is issued before disclosing my invention but then the industry would lose out having to wait longer to build and use my invention.

TIA

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Patent Questions and Advice / Re: Level of description/claim detalization

« Last post by Brad 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.

   

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Patent Questions and Advice / Level of description/claim detalization

« Last post by DullBoy on February 03, 2022, 09:07:41 AM »

Hi Bradley!

I'm confused how detailed claim and/or description should be.

Let's imagine I've invented a wheel.
It can be made of lot of materials/combination of materials.
It can comprise a number of spokes or be spokeless.
Its tire's cross-section can be of round or rectangular or any other shape.
It can comprise a hub or be hubless.
And so forth.

I see that wheel can be defined through the enumeration of its elements (possibly absent) with a lot of remarks like "of arbitrary/optional shape/number/type/etc". This way look to me like not very promising. Something missed and all claim will be voided. Another doubt - if it permitted at all to define invention in terms of arbitrary/optional elements.

Is there any approaches to make a definition for the big family of embodiments? I know that there are so called "Singer patents" focused on a single crucial detail but that is definitely not my case.

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Patent Questions and Advice / Re: Micro Entity count of previous applications

« Last post by gravplate on February 03, 2022, 01:49:45 AM »

Thank you. I went through all those FAQs.

On the same subject, as I understand it, if a non-provisional application was filed by a USA person in the USPTO and then a PCT was filed, I think they pay a "Transmittal Fee" of like $250 to the USPTO only but there would be no reason to pay as they say the "basic national fee under 35 U.S.C. 41(a)" and so it doesn't count as one more application towards the 4, I think.

I don't see any reason to pay a "national fee" to the USPTO for the USA side because there would already be a USA patent in work at that point.

I think you would only pay the "national fee" for other countries, like EU or AU etc... And in that case it doesn't count towards the 4.

I wish they were more clear about this national fee.

I've also seen "national stage applications in the U.S." mentioned, and I'm confused.

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Patent Questions and Advice / Re: Micro Entity count of previous applications

« Last post by Brad on February 02, 2022, 08:37:37 AM »

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:  https://www.uspto.gov/patents/laws/america-invents-act-aia/america-invents-act-aia-frequently-asked#type-fees

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Patent Questions and Advice / Micro Entity count of previous applications

« Last post by gravplate on February 01, 2022, 09:41:15 PM »

As I understand it for Micro Entity status you have to have no more than four applications filed.

What I am wondering is if you did a CIP, does that count as 2 applications or 1 ?

Years ago the first application was put in, but just before that one went abandoned, like a week before, the patent agent did a Continuation in Part which generated a new patent application number (I don't actually grasp this) and the old one was let go abandoned.

So it that considered 2 applications filed?

Does an abandoned application count when you never went to a issued patent in the end (without  a CIP).

If there's an official USPTO link to how this works, please let me know.

And is that in a lifetime for 4? Is there a year limit, like in the last 5 years? Does the count "reset" at some point?

Is all they need just a one page certification paper you sign?

Can you recover fees paid before this as a small entity when you were actually a micro back then too? How many years back?

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Patent Questions and Advice / Re: Provisional Application Process

« Last post by Brad 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:  https://patentfile.org/filed-a-provisional-patent-whats-next/

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Patent Questions and Advice / Provisional Application Process

« Last post by LW on January 23, 2022, 05:55:17 PM »

As I understand, a provisional patent application is considered "Patent Pending" when the provisional application is accepted by the patent office. At that point the patent office does NOT do any reviews or evaluations of the application.

What is the next step of the provisional process? Do they then subsequently review the application and issue any kind of decision on the provisional?

Or is the next step is for me to (within 12 months) apply for a non-provisional and after which only the patent office will make reviews and evaluations of the patent application?

Thank you

30

Patent Questions and Advice / Re: RCE after final except if you have a clam in condition for allowance?

« Last post by Brad on January 18, 2022, 01:39:15 PM »

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.