Author: m blake

Last Tuesday I attended the Inventors Association of Connecticut (IACT) meeting at Fairfield University.  Another patent attorney was presenting on the patentability of computer-implemented inventions.  After Alice, the two-part test on whether a invention is patent eligible is:  1.  is the claim directed to a judicial exception (law of nature, natural phenomenon, or an abstract idea); 2.  if yes, then does the claim recite additional elements that amount more to the judicial exception.

My normal practice is to write claims that are clearly not an abstract idea (claims directed to a law of nature or natural phenomenon are so rare in my practice that I have never written one).  However, patent attorney John Yankovitch says that when he must write claims that are directed to an abstract idea then he does part 2 of the test and adds significantly “more” to the claims.  In that endeavor examples of significantly more are:

1.  improvement to another technology or technical field, e.g. a mathematic formula applied in a specific rubber molding process;

2.  improvements to the functioning of the computer itself;

3.  applying the judicial exception with, or by use of a particular machine;

4.  transformation or reduction of a particular article to a different state or thing, e.g. manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure; and

5. performing an unconventional step.

Mr. Yankovitch stated that examples 1, 2, and 5 seem to have the most success at the USPTO.

These are good rules of thumb!

Topic: “Understanding the Application Data Sheet (ADS).”

The USPTO’s Inventor Info Chat webinar series continues on April 19, 2018 from 11 a.m. – noon ET with an informative discussion on understanding the Application Data Sheet (ADS).

The topics covered will include:  Explanation of the ADS, what it is, revisions, and who reviews it; Explanation of each section of the ADS; Time frame for submission of the ADS; Corrections to the ADS.

In addition, the common mistakes made by applicants when completing the Application Data Sheet will be discussed along with the steps and format necessary to make the corrections. This presentation will be as helpful resource to those inventors who have received correspondence from the PTO requiring corrections to the Application Data Sheet.

Sign up and additional information can be found here.

On April 1, 2004 I began my patent and trademark practice, the Law Offices of Michael A. Blake in West Hartford, CT.  Luck, hard work, and a higher power has made my business a success in helping people obtain patent and trademark protection for their intellectual property.  I moved my practice to Milford at the end of 2004, and have been here ever since.  Looking forward to the next 14 and more years!

Stakeholder Training on Examination Practice and Procedure (STEPP) is training designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.

Upcoming training:

Agent/Attorney 3-Day Course,  May 22-24, 2018 location: Alexandria, VA – USPTO Headquarters

Inventor 3-Day Course August 14-16, 2018, location: Alexandria, VA – USPTO Headquarters

Program Description

The STEPP program provides unique, day-in-the-life, experiences to those attending training. Material used within the program is derived from training delivered to patent examiners and other USPTO employees.

What does STEPP Cover?

The same examination practice and procedure training provided to USPTO staff is now available to external stakeholders. Learn what an examiner must consider in preparing an office action, and what examiners are taught to interpret an applicant’s disclosure.

Why Participate?

STEPP provides perspective by detailing what an examiner considers in preparing an office action. Training focuses on how an examiner is taught to use the MPEP to make patentability determinations and write an office action. Gaining perspective of an examiner’s point of view will increase your situational awareness which can aid in compact prosecution. Payment and Credit STEPP courses are free of charge. The USPTO will apply for CLE accreditation for specific courses within the program. Please contact [email protected] for additional information.

More information can be found here.

Yesterday, I was happy to celebrate with the UConn School of Law’s Intellectual Property and Entrepreneurship Law Clinic.  They had a luncheon to observe their 10 year anniversary in Hartford.  It was nice seeing old friends and co-workers, and especially some of the inventors the IP CLINIC has served over the years.  I was proud to be part of the IP CLINIC for 2 years.  More information can be seen here.

HI All,

Douglas Lyon, Phd, the president of the Inventors Association of Connecticut and a professor at Fairfield University sent me a video link to my presentation on the Pros and Cons of Provisional Patent Applications from March 27, 2018.  The video can be seen here.

Yesterday I presented on the “Pros and Cons of Provisional Applications” at the Inventor’s Association of Connecticut (IACT) at the Fairfield University Library.  I had some great questions from the audience and shared some of my experiences as a patent attorney.  For information on the next IACT meeting, go here.

Just a quick reminder!  On March 27, 2018, 7 pm, at Fairfield University Library room 101, I will be presenting at the Inventors Association of Connecticut meeting.  The topic will be Pros and Cons of Provisional Patent Applications.  The differences between a provisional patent application and a non-provisional patent application will be presented. Benefits and disadvantages of the provisional application will be discussed. Other intellectual property may also be discussed such as design patents, trademarks, copyrights, and trade secrets.  More information can be found here.

Topic:  Subject Matter Eligibility:  Guidance & Examination Resources”.