Linked is a sample response to Office Actions from the USPTO PatentAttorneyTemplateResponsetoOfficeActions Examiners commonly reject claims as being obvious as 35 USC 103 in view of a combination of prior art. 35 USC 103(a) states: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in [...]
As a patent attorney located in Austin, Texas who deals with a lot of start-ups with various legal questions, I have written out the following as some legal advice for start-ups. 1. Incorporation Start-ups should incorporate such that the companies liabilities to not extend to personal liabilities. In some fields such as “mobile application” based [...]
AN AUSTIN PATENT ATTORNEY’S REVIEW OF: ULTRAMERCIAL, INC. v. HULU, LLC OVERVIEW: In this case, the Court of Appeals reviewed and reversed the District Court’s holding that subject matter of ‘7346,545 patent was not a process within the language of 35 USC 101. The '545 patent claims a method of distributing copyrighted materials over the [...]
OVERVIEW: Since the late 1800’s Levi Strauss has stitched the back pocket of their jeans with two connecting arches that meet in the center of the pocket. Levi Strauss holds several registered trademarks with the USPTO for their bow shaped design. Levi Strauss also actively monitors their competitors’ stitching designs to make sure they are [...]
Restriction requirements occur when a patent examiner at the USPTO deems that an inventor has included more than one invention in a patent application. With the recent increase in filing fees, there may be a strong desire to include patent claims directed to a plurality of related, but separate inventions into one patent application. However, [...]
Double patenting seeks to prevent an unjustified extension of time beyond the term of a patent. Therefore, if an applicant files patent application 1 on date A and files a similar patent application 2 on date B, the second invention may be considered a double patent, and the right to exclude others of the patented [...]
Linked is a sample response to Office Actions from the USPTO PatentAttorneyTemplateResponsetoOfficeActions Overview of 35 USC 102: Essentially a 35 USC 102 rejection states that a single piece of prior art discloses each and every claimed limitation, and the piece of prior art was available before applicant’s invention was filed. The MPEP (the patent rule [...]
AN AUSTIN PATENT ATTORNEY’S OVERVIEW: Douglas Dynamics sued Buyers Products for infringement of three patents related to snowplow mounting assemblies. The three patents that were owned by Douglas included Re: 35,700, US Patent Number 5,353,530, and US Patent Number 6,944,978. The court of appeals reviewed the district court’s denial of Douglas’s request for permanent injunction [...]
Below are two samples of how I typically respond to 112, second paragraph rejections. 1) On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. To expedite prosecution and without conceding to the Examiner’s rejections, Applicant has amended claims 1 and [...]
AN AUSTIN PATENT ATTORNEY’S REVIEW: In this case Steven Morsa appealed the decision of the Board of Patent Appeals and Interferences for utility application number US20030093283 claiming priority to provisional patent application 60/211228 (‘228 patent). The patent application is directed towards receiving a plurality of inputs for which a plurality of benefits may be determined [...]