How do you tell if an invention was ever “patent pending?” and has since been denied?

AVVO had an interesting discussion on the topic of How do you tell if a patent was ever “pending?” and has since been denied
? Other patent lawyers had already suggested going to the USPTO.GOV website and searching for patents and applicaitons by the company or person you are interested in. Of course only issued patents and published patent applications are searchable. Patent applications generally publish 18 months after the filing date. My suggestion was to search the assignment database at the USPTO.GOV website. There you can search patents and published patent applications by assignees and assignors.
As for determing whether a patent application has been denied, you should be able to see published patent applications in public pair at the USPTO.GOV website, and look up their prosecution history and determine if the patent application issued, or was abandoned.

Panel Discussion on changes to Patent Rules and Procedures

I will be sitting on a panel discussion put on by the Inventor’s Association of Connecticut (IACT) entitled: “The America Inventors Act and You”. The panel discussion will take place on October 30, 2012 at Fairfield University. Check the IACT website for more information as it becomes available.

The focus will be implications of the new Patent Process, First to File versus the historical First to Invent. The panel will discuss:

(1) understanding the new process,
(2) becoming aware of the differences and
(3) implications to the independent inventor including opportunities, and potential negatives, associated with the changes.

I look forward to seeing my readers there!

Modernizing “efiling” at the Patent Office

On Saturday I received an email from the USPTO disclussing how the patent office is in the process of modernizing their electornic filing system. Included in the updated system will be the following improvements: (1) applicant can use a validation wizard to assure that any formatting, generic such as edits tracked from the original document due to revisions, and private information are not part of the file, and that application parts can be recognized; (2) applicant can run an optional analytics report to ensure the abstract length is correct, generate an automated claims tree, and identify any errors in claims numbering; and (3) Based on information submitted in the Application Data Sheet (ADS), the USPTO will be able to generate maps that show relationships between patent applications, or patent family maps.

Although the patent office has not yet introduced these improvements, they are currently seeking input to help define and design these processes.

Requirements concerning Trademark Certificate

From an answer I posted to LawGuru.
Question: Am I required to post my trademark certificate? Is the certificate itself (the paper) valuable?
Your Reply: No, there is no requirement to post your trademark certificate. The certificate is often framed by the owner and hung in a prominent place. Be sure to use the proper marking when using your trademark!

America Invents Act changes coming on September 16, 2012

Some important changes are going into effect on September 16, 2012 at the patent office. Those changes include: Inter Partes Reexamination being replaced by inter partes review, and the review will proceed only if it is determined that there is a reasonable likelihood that the challenger will prevail with respect to at least one claim; Third parties may now institute post-grant reviews of a patent; Third parties may now submit printed publications for consideration and inclusion into the record of any patent application; the inventor’s oath or declaration must contain new statements. A nice summary of the upcoming changes are provided here by Cole Richter of McDonnell Boehnen Hulbert & Berghoff.

How to protect your invention when pitching it?

I recently saw this article that talks about how to protect your invention when you are thinking of pitching it to a company or an individual. It gives much of the same advice that I would give to a client. Such advice includes: consider filing a patent application (design or utility) prior to pitching your invention, get a confidentiality agreement signed by the party you are disclosing to prior to the pitch, and relying on copyright protection are some of the ways to protect your invention.

2012 NAPP Annual Meeting & Conference

The National Association of Patent Practitoners (NAPP) is holding their 2012 annual meeting in Alexandria, VA (where the U.S. Patent and Trademark office is located). I have been a member of NAPP for about 8 years now. NAPP was founded by 19 patent practitioners who had an interest in forming an organization that is focused on procedure before the USPTO. The brochure for the 2012 annual meeting is located here. I look forward to seeing again and making new friends among my fellow patent practitioners at the annual meeting!

Copying non-patent documents during patent prosecution–COPYRIGHT INFRINGEMENT?

There is an interesting copyright litigation case going on right now. John Wiley and Sons (“Wiley”), publishers, are suing patent attorneys for copyright infringement. Some background, when a patent attorney (or inventor) files a patent application, the patent attorneys and their clients are required by law to submit all material relevant to the patentability of the patent application that was filed. Often these documents include patents and published patent applications, which by themselves have no copyright protection, especially when copied in ordered to submit to the patent office. However, on occasion, scientific papers are relevant to the patentability of a patent application, and the attorneys (or inventors) need to submit copies of those papers to the patent office. This is the basis of the copyright litigation lawsuit started by Wiley. Wiley is claiming that the defendant law firm has made copies of scientific papers that Wiley owns the copyright on, and Wiley is suing for copyright infringement. Now, last week, the patent office filed a motion to intervene in that lawsuit, even though the patent office is not a party to the lawsuit. The motion does not present a substantive case as to whether the copying of those scientific papers should be considered copyright infringement, or not, they are just seeking the court’s permission to be able to be involved in the lawsuit. Presumably the patent office will argue that the copying of scientific papers should be considered “fair use”, and NOT lead to damages against patent attorneys and inventors, when copied in order to submit to the patent office. However, we shall see. The safest course of action is: when submitting scientific papers to the patent office with an Information Disclosure Statement (“IDS”), one should pay for a lawful copy of the paper(s). Stay tuned!

Protecting Furniture Designs-Patents or Copyrights?

I was recently asked about how to protect ornamental and artistic designs with respect to furniture. My first reaction was to say “design patents”! But then I thought about it and realized using copyright in addition to design patents would be useful in protecting the furniture design.
The case of Huebbe v. Oklahoma Casting Co. et al.,2009 U.S. Dist. LEXIS 91824 (W.D. Okla. Sept. 30, malady 2009) was about animal designs such as stags placed on furniture such as chandeliers. The defendants argued that the plaintiffs could not win on copyright claims regarding the chandeliers because: “chandeliers are “useful articles” under the Act, pill and copyright protection extends only to those portions of the designs that can be “identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U. S. C. § 101.” However, the court disagreed and said: “Plaintiff’s chandeliers are not excluded from copyright protection because they are useful articles; rather, Plaintiff’s artistic expressions are conceptually separable from the utilitarian function of these items.”
Therefore, if your furniture designs have artistic expressions that are conceptually separable from the utilitarian function of the furniture, then copyright protection is available.
Of course design patents were created expressly to protect items like furniture when they have unique ornamental designs. The Patent Office defines “design” with respect to design patents as follows:
“A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.”
Thus, please consider both Copyright and Design Patents when thinking on how to protect your furniture designs.