Following our updates on the proposed change to the divisional deadline rule (Sept 2013 & Oct 2013), the EPO Administrative Council has now confirmed that this change will become law.

From 1 April 2014, the new divisional rule will allow applicants to file a divisional application from any pending European patent application.  This change takes the system back to its original form, before the much-maligned divisional deadlines came into force.

If you have a case pending before the EPO, for which the divisional deadline has expired but for which you might be interested in filing a divisional application, we strongly recommend that you keep it pending until 1 April 2014.

The Administrative Council also approved the change to the EPO supplementary search procedures, reported here.  Under the new rule, when the EPO carries out a supplementary search and finds lack of unity of invention, the EPO will give the applicant an opportunity to pay additional search fees, to have one or more of the remaining inventive concepts searched.  This rule change will also come into force on 1 April 2014.

From Dr. Matthew Barton, a UK Chartered Patent Attorney and European Patent Attorney at Forresters:

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Unless your invention is similar to a chemical compound or other, non-visual composition, you will need to do patent drawings. These drawings are not only beneficial in documenting your invention; they are a necessity in various stages of your patent application.

How Many Do You Need?

At least one patent drawing, or patent illustration, as it is sometimes known, is required to be included with your patent application. Experienced patent attorneys and inventors, however, know that sometimes a single drawing is not nearly enough. In fact, many patent applications include several sheets of patent drawings, each showing a different aspect of the invention, its uses, its component parts, and how it all works together. At the very least, your drawing should show all sides—top, bottom, sides and angles—of your invention, as well as its components.

How Detailed Should They Be?

For the greatest protection, as well as for increasing the understanding of viewers, your patent drawings should be as detailed as possible. Your patent lawyer will help add details to your application, but your patent drawings will add another level of security to your claims. While your initial drawings can be your own scribbles, the ones you formally submit with your application need to be on paper and forms designated by the U.S Patent Office. The Patent Office also has requirements regarding margins, types of detail included, and various technical details that all drawings must include.

Who Should Do Them?

It’s unlikely your patent attorney is also a patent illustrator, but he or she should be able to refer you to someone qualified in producing patent drawings. The cost of hiring a professional patent illustrator is relatively low, and well worth the price, even if you are an artist yourself. A professional will know what details need to be highlighted in your drawing, the proper fonts, the type of paper and margins and exactly what the Patent Office is looking for in your patent drawings.

Taking your invention from an idea to reality can seem astoundingly complex, but consultation with professionals during the various aspects will smooth your way. From patent attorneys, to professional patent searchers, to patent illustrators and beyond; get help on the details, and get your invention protected.

For over 35 years, Howard Cohn has practiced Intellectual Property Law, relating specifically to patents, trademarks, copyrights, and unfair competition. His law firm, Howard M. Cohn & Associates, specializes in the preparation and prosecution of patent and trademark applications both in the United States and worldwide.  For more information, please visit www.CohnPatents.com.

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Inventors should be well aware of the fact that no matter how innovative their invention is, unless they patent it anybody else can claim it’s their idea and that you have come up with nothing worth the news.

Filing a patent for their invention is something that most inventors don’t know how to do. It implies presenting a series of documents in an accurate manner and many a time the forms are not easy to understand for ordinary individuals who are not acquainted with legal terms.

Even though it is highly advisable for all inventors willing to patent their invention to hire the services of a patent attorney, this step by step guide will introduce them in the process.

Perform A Patent Search

Performing a thorough patent search is the first step in the process of obtaining the patent for your invention. Throughout this step you will look into any other patent that has already been filed for inventions similar to yours. If somebody else has patented something similar to your invention then, unfortunately, you haven’t invented anything actually.

It is very important that you take enough time to do this step. If you do it carefully you can save yourself a lot of money and serious legal trouble for trying to patent something that already exists or infringing on other inventor’s rights.

If you don’t know how to do that by yourself, you can always hire a patent attorney to help you out. If your product is truly original, you’re ready to start with the patenting process in itself.

Fill Out The Patent Application

As it has already been said, the patent application is quite a complex process. If you misread something or do not fill in the information as expected, you will have to start all over again. Amongst the various documents you will be asked to fill in, we can mention: an overview statement of what you have invented, detailed and professional drawings of your invention, a virtual or physical prototype of your invention and the type of patent you are aiming at and why.

If the idea of presenting the prototype of your invention freaks you out, don’t worry! You can talk to the staff members of Idea Design Studio at 888.864.1870. It is an invention development company that helps inventors with achieving the virtual or physical prototype of their invention.

It is worth mentioning that filing a patent for an invention can put your patience to the test. The review process will definitely take some time. Perhaps you are asked to make some corrections on it or supply further information. You will need to comply with all these requirements if you want your request to patent your invention to be accepted.

If your application is approved, you may file for a patent. This is the right time to evaluate if all the costs involved in applying for a patent is something that you can afford financially or if it is really worth it.

Edward Lakatis run and writes for Idea Design Studio, an invention development and marketing company. He is passionate about all things related to invention, and helping other inventor’s realize their products potentials. More of Edward’s writing can be found on http://ideadesignstudio.com/

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Audio conference to be held October 3, 2013

Section 101 of the patent statutes defines the conditions for patent-eligible subject matter. Historically, Section 101 issues have not been predominant in the life sciences. However, two recent Supreme Court cases have challenged those assumptions and clarified what scientific discoveries are eligible for patentability under Section 101. For example, Mayo v. Prometheus involved an analysis of patentability of tests applying correlations between drugs and metabolites.  Another recent case, Association for Molecular Pathology v. Myriad Genetics, involved patentability of isolated DNA sequences. In this audio conference presentation, the speaker discusses examples of both patent-eligible and non-patent eligible subject matter, and discusses strategies and implications for life sciences companies in the wake of these recent landmark Supreme Court cases.

This audio conference covers:

  • An overview of Section 101 and its importance to life sciences companies
  • Recent Supreme Court cases impacting life sciences companies
  • Why law of nature and purification or isolation of a naturally occurring material does not warrant patentability
  • When structural modifications to a naturally occurring material might make it patent-eligible
  • Why Section 101 is only a bare litmus for patentability; novelty and obviousness issues must be considered

About the speaker:

Jay Pattumudi is an experienced patent attorney with a graduate degree in biochemistry and molecular biology. His experience includes drafting patent applications as well as prosecuting those applications in such technological fields including biotechnology, chemical and pharmaceutical areas, mechanical matters, medical devices, and materials science. In addition, he has drafted opinions relating to non-infringement and invalidity in many of those fields. He has worked for a large general practice firm as well as patent boutique firms, including a life sciences patent boutique firm. Pattumudi has represented large companies, university start-ups, clients of foreign firms, and individuals.

More information here:  http://www.fxconferences.com/Product2.aspx?ProductId=1550&CategoryId=1

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From Dr. Matthew Barton, a UK Chartered Patent Attorney and European Patent Attorney at Forresters:

We have learnt that the EPO has made formal proposals to remove the current two-year time limit for filing divisionals.

At the present time applicants may only file voluntary divisionals within two years from the first examination report in a family of applications.  Mandatory divisionals due to a unity objection may be filed within two years from the unity objection.

The EPO proposes that applicants should again be able to file divisionals (and divisionals of divisionals) for as long as the original application is pending. The EPO also wants to increase the filing fee for second and subsequent generation divisionals.

The proposals aim for 1 April 2014 to formulate and introduce appropriate amended rules. Under the current proposals, applicants with a pending application (not granted, refused or abandoned) on 1 April 2014, can use it as the basis for a divisional application, even if the current two year limit has expired.

Consequences

We recommend that you identify currently pending European patent applications where the divisional due date has expired, or will do before 1 April 2014.  If you are still interested in filing a divisional from any of these, you should slow prosecution as much as you can.  There are techniques enabling you to draw out EPO procedures, and we would be pleased to advise you on those.

Please do not hesitate to contact me if you have any questions.

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The International Quality and Productivity Center (IQPC) is holding a Patent Infringement Litigations Summit on developing strategically sound, cost-effective methods to manage increasing patent litigation.

Often, patent infringement litigation comes out of nowhere.  It is unpredictable.  Companies are constantly trying to figure out the best way to manage both the litigation itself and the corresponding costs.  Recent developments in the area allow for some discussion of new ideas and strategies, but there remains ample room for additional reform.

IQPC’s Patent Infringement Litigation Summit will bring together in-house counsel from major companies, law firm attorneys and representatives from other vendors to facilitate strategy and information sharing among these key stakeholders.  Go here to learn more about the speaking faculty.

As an attendee, you will spend two days engaged in quality, high-level conversation about the most pressing issues surrounding patent infringement litigation, including;

  • Recent developments in patent infringement litigation
  • Efficient, cost-effective litigation management
  • Putting together a strong team to make sound, risk-conscious decisions at threshold moments
  • Looking at proactive strategies for preventing unanticipated litigation

The event will feature IP counsel from Google, Microsoft, Intel, Hewlett-Packard, Kodak and more.

Readers of Patent Baristas receive a 10% discount on registration.  For more information, please download the brochure here.

 

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The U.S. Department of Commerce released a green paper on Copyright Policy, Creativity, and Innovation in the Digital Economy (Green Paper) to advance discussion on a set of policy issues critical to economic growth. The Green Paper discusses the goals of maintaining an appropriate balance between rights and exceptions as the law continues to be updated; ensuring that copyright can be meaningfully enforced on the Internet; and furthering the development of an efficient online marketplace.

copyrightThe Green Paper provides a comprehensive review of current policy related to copyright and the Internet, and identifies important issues that call for attention and development of solutions. The solutions may entail a combination of legal remedies, technology, private sector cooperation, and public outreach and education, along with the continued development of options to legally access copyrighted works.

In the Green Paper, the IPTF proposes the following actions:

  • Establishing a multistakeholder dialogue on improving the operation of the notice and takedown system under the Digital Millennium Copyright Act (DMCA).
  • Soliciting public comment and convening roundtables on:
  • The legal framework for the creation of remixes;
  • The relevance and scope of the first sale doctrine in the digital environment;
  • The application of statutory damages in the context of individual file-sharers and secondary liability for large-scale online infringement;
  • The appropriate role for the government, if any, to help improve the online licensing environment, including access to comprehensive public and private databases of rights information.

The Green Paper reiterates the Administration’s support for legislation creating a public performance right for the broadcasting of sound recordings and enabling prosecutors to seek felony penalties for unauthorized streaming to the public. It supports congressional or regulatory attention to determine how best to rationalize rate-setting standards for different types of music services; reform music licensing, particularly the mechanical license for musical compositions; and ensure consumers can unlock their cell phones, subject to applicable service agreements. It supports the U.S. Copyright Office’s work to address the problems of orphan works and mass digitization, consider possible small claims procedures, update the statutory exception for libraries, and improve public registration and recordation systems. The Green Paper also supports and encourages enhancing public education and outreach efforts.

In preparing the Green Paper, USPTO and NTIA held listening sessions with interested stakeholders, convened a symposium, received hundreds of public comments, and reviewed comments submitted to other agencies on relevant topics. The IPTF will consider feedback it receives from public comments, roundtables and forums to determine how the current copyright framework can be improved to serve creators, right holders, service providers, consumers, innovation, and national economic goals.

The Green Paper can be found here: http://www.uspto.gov/news/publications/copyrightgreenpaper.pdf.

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109318After receiving my copy of “How to Write a Patent Application” (Jeffrey G. Sheldon, Second Edition), I changed my opinion about it. I’ve certainly used the first edition over the years. However, I thought of it as a book intended for beginning patent practitioners to use as a handbook for learning patent application drafting. Yes, this massive 1268 page tome is a fantastic manual for teaching new and developing patent attorneys and agents — and as study material for the registration examination with the USPTO. But, I find myself learning (and re-learning) tidbits all the time.

While this book won’t train someone by itself, it is an invaluable tool for learning the ins and outs of patent drafting. Sheldon himself notes:

This book should not be used alone to learn how to write a patent application. No one can expect to read this book and be able to sit down and write a satisfactory patent application. The guidance, assistance, and tutelage of a skilled practitioner will be needed.

The goal of patent application drafting is always to end up with a patent that is both held valid by the courts and infringed by competitors. If missing one of these two items, the patent is worthless. The Sheldon book helps anyone with this goal in mind.

I find that every time I leaf through the book, I am reminded of one concept of another that I need to consider when drafting an application. For example, in a section on Functional Language, Sheldon writes:

Functional statements should be placed either at the end of the description of the particular element after everything necessary to support the functional clause has been set out, or at the end of the claim when all the elements of the claim are necessary to support the functional expression. In general, a claim is easier to follow when the function of an element is recited immediately after the element itself. Also, a claim is less likely to be considered overly broad when the functions are set out one at a time rather than at the end of the claim.

“Whereby” Clauses

“Whereby” and “thereby” clauses are proper only when they describe a function or result that necessarily follows from a previously recited structure. Unlike a means clause, the “whereby” clause has been judicially construed not to define any structure. Thus, a “whereby” clause in a means-pIus-function clause merely states the result of the limitations in the means clause, and adds nothing of substance to the claim.

Accordingly, a “whereby” clause must be preceded by some recitation of structure. Such clauses should only be used when the equivalent phrase “it follows from the foregoing that” can be used to replace he “whereby” clause.

How to Write a Patent Application is an invaluable resource for reviewing topics and re-thinking procedures that may be followed more out of old habit than thoughtful reflection. As pointed out by the author, if your invention is worth filing a patent application, it is worth hiring a skilled practitioner to make certain that the application adequately claims the invention and meets the statutory requirements for a patent application. A poorly written and inadequate patent application will provide a false sense of security and in the long run probably cost much more money. Or even everything.

The book covers diverse topics beyond just preparing the specification and claims including design and plant patent applications as well as preparing foreign patent applications based on a U.S. application. Of course, the book could certainly cover yet further topics. I know some people have said that the book should include information on strategies for responding to Office Actions, like §103 obviousness rejections, the book really is just for drafting the application. I highly recommend this book to any practitioner at any level.

While not a book to read in one sitting, it has a place on everyone’s shelf.

You can get your own copy here: How to Write a Patent Application” (Jeffrey G. Sheldon, Second Edition), Practicing Law Institute; April 24, 2010; 1268 pages.

About the Author

Author Jeffrey Sheldon is the founding partner of Sheldon Mak & Anderson PC, an intellectual property law firm with offices in Pasadena, California. Mr. Sheldon is a summa cum laude graduate of Loyola Law School. He has a Bachelor of Science degree in Chemical Engineering from the Carnegie Institute of Technology, and a Master of Science degree in Biomedical Engineering from the University of Strathclyde, Glasgow, Scotland. He has been adjunct professor in intellectual property law and patent law at Southwestern University Law School and advanced patent law at Loyola University, both in Los Angeles. He is a frequent lecturer for Practising Law Institute and other organizations.

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