Archive | Patent

Patent Rejection: Why did the USPTO reject my Patent Application?

After a patent application is filed, the application will be placed in a queue to be examined by a patent examiner at the patent office. The patent examiner’s job is to ensure that only patent applications that meet the legal requirements for patentability are allowed to become patents.

According to some estimates between about 77% to 95% of all patent applications receive at a least one type of rejection or objection during the first examination by a patent examiner. Therefore it is quite common to receive such a rejection or objection in a patent application. Many such objections or rejections can be overcome by a proper response as explained below.

I. Formalities

Before turning to substantive rejections, which consider whether the invention is new as compared to the prior art …

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Employer and Employee Invention Rights: Does My Employer Have Rights in My Invention?

Whether an employer has rights in an employee’s invention depends on the circumstances of the invention, the terms of any agreements between the employee and employer, and the state’s laws that cover the situation.

Agreements
The first step is to review the terms of any agreements that the employee signed with the employer. This is because it is possible for an employee to transfer his or her rights in an invention to the employer through a written agreement. Titles to agreements that might contain relevant terms regarding invention ownership include “employment agreement”, “non-compete agreement” “non-disclosure agreement” “intellectual property agreement” “invention agreement” “employee invention agreement” etc. Not all documents with such titles necessarily contain provisions regarding invention ownership, however such documents, if they exist, should be reviewed in case they contain …

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Options When Your Invention Is Stolen

If you disclosed your invention to someone and that person subsequently copied your invention and or filed a patent application on the invention, you may have options to take action depending on the circumstances. Several scenarios are explained below.

By an non-inventor employee
If your employee, who is not an inventor, is commercializing or has sought patent protection, you will want to review the documents that were executed when the employee was hired. Such documents could include non-disclosure or non-compete provisions.

The misappropriation of the invention could constitute a breach of the non-disclosure provisions and or could constitute trade secret misappropriation if the product/service at issue was not publicly available, or if publically available, if the employee had access and utilized non-public information about the products/services. The misappropriation could also …

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Ensuring Strong Patent Enforcement Position Through Virtual Patent Marking

U.S. patent law encourages patent owners to mark products or services that are covered by at least one claim of a patent. Therefore patent marking is an important step in ensuring a strong patent enforcement position if infringement occurs. The America Invents Act now allows “virtual patent marking” as explained below.

Reason for Marking
Section 287 of Chapter 25 of the U.S. Code provides that if a patent owner fails to mark its patented invention, then the damages will be limited to those arising after the infringer was notified of the infringement. However, if the invention is marked, then the patent owner will be able to get damages back to the start of the infringement (subject to any applicable statute of limitations).

Therefore, lets see what happens if the invention …

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Inventorship: When was the Invention Conceived?

Dawson v. Dawson, Dkt. No. 2012-1214, 1215, 1216, 1217 (Fed. Cir. March 23, 3013).

This case deals with the issue of when an invention is conceived and involves an invention ownership dispute between a university and a pharmaceutical manufacturer. The issue was whether an inventor, Dr. Dawson, conceived of the invention while employed at the University of California, San Francisco (“UCSF”) or instead later when he joined Insite, a pharmaceutical manufacturer. This case deals with medical preparations, but is interesting on the conception point.

Background
While employed at UCSF, Dr. Dawson made a presentation at a meeting of the World Health Organization (“WHO”) Alliance for Elimination of Trachoma. Trachoma is a bacterial infection of the eye that can lead to blindness. Dr. Dawson’s presentation covered the topical use of …

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Sufficient Computer Structure Disclosure for Means-Plus-Function Elements

HTC Corp v. IPCom GMBH, Dkt. No. 2011-1004 (Fed. Cir. Jan 30, 2012) [PDF].

HTC sue IPcom for declaratory judgement of non-infringement of IPCom’s Patents, including U.S. Pat. No. 6,879,830 and IPCom countersued for infringement. The ‘830 patent is directed to the handover of a cellular phone from one base (tower) to another, as for example, when a person uses a cell phone in a car traveling between coverage areas.  The invention is intended to reduce the chance of service interruption during the handover.

Claim 1 provides:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a

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AMEX Gift Cards Not Infringing

Privacash, Inc. v. Am. Express Co., No. 2011-1027 (Aug. 11, 2011) [PDF].

Privacash sued AMEX alleging that AMEX gift cards infringed U.S. Patent 7,328,181. The ‘181 provides a system with the objective of providing an anonymous and untraceable means for transacting purchases over the internet.

AMEX cards are activated when purchased and a usable until the value of the card is exhausted. AMEX will deactivate a card if it is reported lost or stolen. If reported stolen, a replacement gift card will be issued with the value remaining on the deactivated card.

Claim 1 of the ‘181 patent provides :

1. A method of transacting a purchase, comprising:

distributing a plurality of unfunded purchase cards from a purchase card provider to a plurality of purchase card outlets, wherein each

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