Question 1

How is unity of invention determined in PCT applications?

Accepted Answer

Unity of invention in PCT applications is determined based on the presence of special technical features. According to MPEP 1850, the determination is made as follows:

Identify the special technical features of each claimed invention
Compare the special technical features of the inventions
Determine whether there is a technical relationship between the inventions involving these special technical features

Unity of invention is considered to be present when the inventions share the same or corresponding special technical features. This determination is made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

As stated in PCT Rule 13.2: "Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features."

To learn more:

Question 2

When is the international search report and written opinion typically established in a PCT application?

Accepted Answer

The establishment of the international search report and written opinion is a critical step in the PCT process. According to MPEP 1842:

"As provided in PCT Rule 42 and PCT Rule 43bis, the time limit for establishing the international search report (or a declaration that no international search report will be established) and written opinion is three months from the receipt of the search copy by the International Searching Authority, or nine months from the priority date, whichever time limit expires later."

This means that the International Searching Authority has a maximum of nine months from the priority date to complete these documents, but they may be completed earlier if the search copy is received well in advance of the priority date.

To learn more:

Question 3

What are the primary search tools available to patent examiners?

Accepted Answer

The primary search tools available to patent examiners include:

The Cooperative Patent Classification (CPC) system
The United States Patent Classification (USPC) system
Various automated search tools and databases

According to MPEP 902, "The primary classification and search tools used by the USPTO are the Cooperative Patent Classification (CPC) system, the United States Patent Classification (USPC) system and various automated search tools." These tools help examiners efficiently search for and identify relevant prior art during the patent examination process.

To learn more:

Question 4

How does the KSR decision affect the standard for substantial new question of patentability?

Accepted Answer

The KSR International Co. v. Teleflex Inc. decision, which clarified the legal standard for determining obviousness under 35 U.S.C. 103, does not directly change the standard for determining a substantial new question of patentability in ex parte reexamination. The MPEP 2216 states:

"The clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists."

This means that a reexamination request cannot be based solely on asking the Office to reconsider prior art in light of the KSR decision. The request must still present the art in a new light or different way to raise a substantial new question of patentability. However, the MPEP does allow for raising a substantial new question based on a "material new analysis of previously considered reference(s) under the rationales authorized by KSR."

To learn more:

Question 5

What is the purpose of a top-up search in international preliminary examination?

Accepted Answer

A top-up search is conducted by the International Preliminary Examining Authority (IPEA) to identify additional prior art that has been published or become available after the establishment of the international search report. The main purpose is to discover intermediate prior art, such as patent applications published after the filing or valid priority date of the international application but having an earlier filing or priority date.

According to the MPEP, A top-up search should be performed in all Chapter II examination, except where the examiner considers performing a top-up search would serve no useful purpose. This ensures that the examination takes into account the most recent and relevant prior art.

To learn more:

Question 6

What is the "same or corresponding special technical features" requirement in unity of invention?

Accepted Answer

The "same or corresponding special technical features" requirement in unity of invention refers to the technical relationship among the inventions involving one or more of the same or corresponding special technical features. According to MPEP 1893.03(d):

"The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art."

This means that the inventions must be technically related and have a common novel and non-obvious feature to be considered unified. If this requirement is not met, the application may face a lack of unity objection.

To learn more:

Question 7

How can I search for patents in a specific subclass using the Patent Classification Home Page?

Accepted Answer

The Patent Classification Home Page offers an efficient way to search for patents within specific subclasses. MPEP 902.03(a) explains: "It is possible to see every patent in a subclass by browsing the classification schedules using the Classification Home Page in combination with the USPTO Patent Full-Text and Image Database." To search:

Navigate to the classification schedules on the Patent Classification Home Page.
Locate the desired subclass.
Click on the patent icon next to the subclass.
This action will generate a search result in the USPTO Patent Full-Text and Image Database, displaying all patents in that subclass.

This method combines the classification system with the patent database, allowing for comprehensive and targeted patent searches.

To learn more:

Question 8

What is the importance of the prior art search in patent examination?

Accepted Answer

What is the importance of the prior art search in patent examination?

The prior art search is a crucial step in the patent examination process, as outlined in MPEP 2103. Its importance lies in several key aspects:

Determining novelty and non-obviousness of the claimed invention
Identifying relevant documents for assessing patentability
Providing a basis for rejections under 35 U.S.C. 102 and 103
Ensuring the quality and validity of granted patents

The MPEP emphasizes the thoroughness required in this step:

"The examiner should conduct a thorough search of the prior art. Generally, a thorough search involves reviewing both U.S. and foreign patents and non-patent literature."

A comprehensive prior art search helps ensure that only truly novel and non-obvious inventions are granted patent protection, maintaining the integrity of the patent system.

To learn more:

Question 9

What happens if an International Searching Authority doesn't establish a search report?

Accepted Answer

If an International Searching Authority (ISA) decides not to establish a search report for an international application, it doesn't necessarily mean the end of the application process. According to MPEP 1843.02:

"It is to be noted, nevertheless, that the lack of the international search report in such case will not have, in itself, any influence on the validity of the international application and the latter's processing will continue, including its communication to the designated Offices."

This means that:

The international application remains valid
The application will continue to be processed
The application will still be communicated to the designated Offices

However, it's important to note that the lack of an international search report may impact the examination process in national or regional phases. Applicants should be prepared to face potential challenges or additional requirements when entering these phases without the benefit of an international search report.

To learn more:

Question 10

What is the effective interest rate of a patent loan?

Accepted Answer

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The effective interest rate for a patent loan will be in the neighborhood of 9-12%.

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The patent loan insurance product has a premium that is paid out of the loan proceeds, as well as due diligence fees and insurance premiums for the required enforcement and defense insurance.

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When you include interest paid back to a lender, the effective interest rate of the loan will be approximately 9-12%.

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Please note that this rate is much lower than angel or venture equity, which is typically 50% or more. By taking a loan against the assets you already created, you can get much further without having the negative effects of selling your equity to investors.

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Question 11

What are the requirements for a patent loan?

Accepted Answer

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The patent loan program requires several items about your patents and your business plan. This is not a complete list.

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100% ownership of your patents.

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Your patents must be completely unencumbered and must be owned by the operating company. Some investors will attach liens to intellectual property, which is a non-starter. In many cases, the inventors may have "forgotten" to assign their rights to a company. There are countless ways that a startup company may not have full, unrestricted rights to "their" IP, but we will require that this be completed before applying for a loan.

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The patents must be of the highest quality.

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Everybody believes their patents are good, but sadly, at least 95% of all patents are worthless. Patents fail our due diligence for many different reasons, such as being over-broad, not having any prior art references, being poorly written, mistakes in patent prosecution, and countless others.

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One of the biggest ways patents fail is that there may be other ways to solve the same problem. If the patent does not capture the single best way to solve a problem, your competitor will just use the alternative solution and never need to take a license from you.

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The business needs to be at the right stage.

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A good loan candidate can put capital to use - but must be able to repay the loan. Startups that are in the 'idea phase' are not good candidates because they probably have not built out their manufacturing, marketing, and sales pipelines.

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A good candidate has tested a marketing and sales funnel and knows their Cost to Acquire a Customer, along with a projected Lifetime Value. They have developed enough sales to know what works and what doesn't, and they can put a large amount of cash to use to generate revenue quickly.

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Another type of candidate needs operating capital, such as to purchase inventory for an existing order or for ongoing expansion. These companies typically have access to small amounts of capital, but a collateralized loan will give them much more.

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You need to apply.

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We are anxiously waiting your phone call. Please contact us and discuss your situation. In many cases, we can process a loan in 2-4 weeks.

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Question 12

What is included in a patent loan?

Accepted Answer

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A patent loan will come with several other components, including insurance for patent enforcement and patent defense.

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Because a patent loan is specifically designed to help you expand your business, we want you to focus on generating revenue, not litigation. Therefore, we give you at least $2,000,000 in patent enforcement insurance and patent defense insurance.

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The due diligence process for the loan program will include due diligence for the other insurance products.

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Question 13

What types of IP can be used for IP-backed loans?

Accepted Answer

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We typically consider patents as the primary asset in an IP-backed loan, although we also consider trade secrets and company data as valuable assets to loan against. A software company's code base may also be collateralized, but typically as a secondary asset.

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Trademarks occasionally can be considered, but they are on a case-by-case basis.

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A typical borrower may have at least a handful of patents, but often has 10-50 patent assets as collateral.

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Question 14

Is the patent loan program available to pre-revenue companies?

Accepted Answer

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We prefer to provide loans to revenue generating companies, but we will consider pre-revenue companies in some cases.

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For pre-revenue companies, our patent financing option will build out your portfolio quickly so that it will be ready once your company starts generating revenue.

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The loan program is a loan, after all, and we will evaluate your company to see if we believe that you will be able to repay the loan. Taking out a loan is much different than selling equity, and our focus is on real revenue generation.

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Pre-revenue companies need to show that they are very close to revenue. In general, we want to see that the company is addressing a real need in the market, that there is economic value in the product or service being sold, and that the cost of goods leaves a solid profit margin. We also want to see that the cost to acquire a customer is known and that there is a delivery pipeline to satisfy that customer.

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In short, we want to see that there is a legitimate business opportunity in your company.

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Please note that we want to have real data to support the assumptions, such as experiments in customer acquisition methods, quantified analyses of the costs to build the product or supply the services, procedures for after-sale support, or whatever is appropriate for your business. We are looking to loan money to those companies who can really put the money to use, and we are less likely to provide funding for the experimental or developmental phases of building your company.

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Question 15

Does the patent loan program require a personal guarantee?

Accepted Answer

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No. The patent loan program does not normally require a personal guarantee.

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We provide an insurance product that will guarantee a lender in case of a default. However, a lender may still have the final say as to whether or not to require a personal guarantee.

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Question 16

My patents are being infringed. How does that affect a patent-backed loan?

Accepted Answer

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Infringed patents can help (or hurt) your chances for a patent-backed loan, depending on the situation.

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In some cases, we put together an enforcement plan alongside a loan, where the loan gets paid off with the proceeds from the enforcement. In those cases, the enforcement and loan work hand-in-hand.

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In general, infringement of your patents is a good indicator that your patents have value.

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Question 17

Does the insurance company want to take my patents?

Accepted Answer

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Our goal is *not* to get your patents. Our goal is to help you make the patents more valuable.

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A patent loan will give you capital, and we want to see that the loan proceeds are being used to make the patents more valuable. Typically, we look for opportunities where the loan goes to marketing and sales - all designed to raise revenue levels for the patented product.

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When you sell more product that is protected by your patents, your patents (our collateral) has more value.

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We need to see you succeed.

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Question 18

How does the patent loan program work?

Accepted Answer

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We provide an insurance policy that will guarantee a lender (typically a bank) using the patents as collateral.

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The Collateral Protection Insurance product is similar to mortgage insurance, where the bank has protection if there is a default on the loan.

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The CPI product requires investment-grade patents and a solid business plan. The patents must be litigation-worthy, but must also capture real economic value.

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Your patents and your business plan will undergo a due diligence analysis, where the patents will undergo a "patent busting" search, looking for any weaknesses. Your business plan will also need to show the use of funds and the way you are going to put the money to use.

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As part of the patent loan program, you will get at least $2,000,000 in patent enforcement and patent defense insurance. We want you to spend the loan proceeds by growing your company and generating revenue - not by litigating the patents in court.

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Question 19

How is the value of my IP determined for a loan?

Accepted Answer

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Patent valuation is a difficult subject because there are many different people using many different techniques to come up with a 'value.'

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In general, the only meaningful metric of patent value is revenue.

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Either you are selling a patented product, or an infringer is selling an infringing product.

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The value of the patent is determined by comparing the patented product against a competing product that does not infringe the patent. If we can tease apart the extra amount of sales that comes from the patented product, then we have the best indicator of the patent value.

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If there are no sales of the product, the patent does not have realizable value - YET. Once sales are established and we have an apples-to-apples comparison to a non-infringing product, only then can be put a meaningful value on the patent.

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Question 20

Who controls my patents when they are financed?

Accepted Answer

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You have full control of your patents while BlueIron finances them. However, just like having a landlord for your office space, BlueIron "owns" the patents.

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There is a difference between control and "ownership." BlueIron "owns" the patents, but you control them.

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Having control of the patents means that you get all the benefits of owning the patents without having to pay for them up front. You get to enforce the patents, cross-license the patents, and can even sell your rights to the patents.

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BlueIron provides at least $500K of patent enforcement insurance for your patents, so that you always have dry powder to use those patents as you see fit.

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Even though BlueIron provides the patents and insurance to use them, you are in complete control of how - and if - you choose to use the patents.

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Question 21

What risk is BlueIron taking when financing a patent?

Accepted Answer

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BlueIron is taking several risks when financing a patent.

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BlueIron is taking the risk that the patent will even issue.

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BlueIron is making an investment in researching the invention, writing the patent, and getting the patent through the patent office. If BlueIron fails to get a patent, you can walk away from the deal at any time, and BlueIron loses its investment.

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BlueIron is taking the risk that the patent will have value.

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BlueIron is also assuming the risk that the patent will be valuable. If you walk away from the deal, BlueIron is left holding the patent and will need to liquidate the patent. We will probably try to sell the asset to someone in the field, auction off the asset, or try to find someone who might license the asset.

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Why is it important that BlueIron assume these risks?

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As a company who has intellectual property, you need to rely on those assets when you are making business decisions. A conventional patent attorney cannot really tell you the truth about your patents. They have an inherent conflict of interest: don't ask the barber if you need a haircut.

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By taking ownership of the patents and leasing them back, BlueIron has the exact same interest as you do: solid, investment-grade patents.

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Question 22

What is the legal structure of patent financing?

Accepted Answer

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The legal structure is a convertible note, lease-back structure. The IP assets are held in a Special Purpose Vehicle (SPV), which is how virtually all of the Fortune 500 companies hold their IP.

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The SPV grants an exclusive license to the startup with a buyout option. The startup can exercise the buyout option at any time.

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A buyout option is always available and always at a fixed price. There is no way BlueIron can "pad the bills" or raise the buyout price because everything is a fixed price.

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Sometimes, BlueIron has held patents for 3, 6, or 12 months and the company exercises their buyout option. In other cases, the startup has a high cost of capital and it makes sense for them to pay over time.

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Question 23

Is it better to own my patents rather than lease them?

Accepted Answer

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Financially, a startup's cost of capital is extremely high - nespecially at the beginning - so every dollar needs to be spent wisely. n Leasing or renting assets is much more capital efficient.

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Most startup companies lease office space and even lease furniture nthrough a coworking space. They lease computer services through Amazon nWeb Services and Microsoft Azure. Virtually all of the tools they use nare SaaS or other "leasing" type models.

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The reason why leasing or renting is attractive is two fold:

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Leasing an asset means you do not have to pay for it up front.
Leasing an asset means someone else takes care of building and maintaining the asset.

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When you consider a startup company's cost of capital, BlueIron's financing is actually cheaper on a Net Present Value of money basis.

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The big benefit of "leasing your patents" is that BlueIron is nperfectly aligned with your business. We need to create good, solid nassets and will only do so when there is a business reason. You will nnever get the feeling that you are asking the barber if you need a nhaircut.

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Question 24

Can I buyout my patents if they are financed?

Accepted Answer

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Yes. The buyout cost for a patent is set up front and will not change.

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The buyout is NOT a percentage of patent value, revenue, or any other measure. We do not take warrants, "success fees," or any type of carry.

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Our job is to build Investment Grade Patents for you, not become a tax on your success.

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Typically, the total price for a patent will be defined at the beginning of an engagement. If you need to buyout the patent after it is filed but before the examination begins, the buyout price is 1/3 of the total price. If you choose to buyout the patent after examination begins but before allowance, the buyout price is 2/3 of the total price.

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Question 25

How long does it take to get a patent?

Accepted Answer

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BlueIron can get a US patent as quickly as six months or less in some cases. However, many times it takes 3 to 5 years.

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How do we do it?

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BlueIron's founder, Russ Krajec, had the opportunity to join a startup company where we needed patent assets as fast as possible. In that startup, he was able to experiment with 100 patent applications to find the best way.

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The answer: the Patent Prosecution Highway in the US. Using the PCT/PPH, Russ was able to get patents issued in the US within 4-8 months very consistently.

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One key to expediting a patent is proper preparation. A patent search is critical to understand the landscape and to make sure that the claims are appropriate: not too broad but directed at an economically valuable invention.

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Another key is the right strategy. The USPTO has a program called "Track One" which has several pitfalls, but it costs about the same as a PCT application. It is the PCT application which gets you on the Patent Prosecution Highway, which is much better than Track One. Feel free to give us a call and we can talk about the differences.

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Question 26

Can I raise money when I finance my patents?

Accepted Answer

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Yes! Our due diligence reports are highly respected by investors.

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Our patent financing due diligence process not only evaluates patentability, but also enforceability, the economic advantage of the invention, its value to the startup’s market, as well as its value to competitors. Solid business value is REQUIRED before BlueIron can finance the invention, and BlueIron's due diligence reports puts investor's minds at ease about their investment.

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BlueIron's financing ensures that we have "skin in the game." We succeed only if the patents are valuable and when your company is successful. Investors understand an "alignment of interests."

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Our investment is non-dilutive.

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BlueIron's financing is non-dilutive. Founders, angels, or other equity-based investors are not diluted because BlueIron does not take equity.

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The inventor's money goes much further, meaning they get a higher overall return.

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Question 27

Can I enforce my patents while they are being financed?

Accepted Answer

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Yes!

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Just like leasing a car, you have full CONTROL of the IP assets without having to pay the full price up front.

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Because you have an exclusive license, you – and only you – decide nhow to use the patent assets. You can enforce, license, sublicense, ncross license, or sell your business assets. BlueIron has no veto power nand no say in how you run your business.

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BlueIron provides Patent Enforcement Insurance with every patent nfinance agreement. This means you have pre-paid legal fees ready and nwaiting to assert the patents against infringers. We do not want you ton fail to enforce the assets just because of lack of money.

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Question 28

What is an "earlier search" in the context of PCT applications?

Accepted Answer

An "earlier search" in the context of PCT applications refers to a previous international, international-type, or national search carried out by the same or another International Searching Authority (ISA) or by a national Office. Applicants can request the ISA to consider the results of these earlier searches when conducting the international search for their current PCT application.

According to MPEP 1819, PCT Rule 4.12 states:

"If the applicant wishes the International Searching Authority to take into account, in carrying out the international search, the results of an earlier international, international-type or national search carried out by the same or another International Searching Authority or by a national Office ("earlier search")..."

This provision allows applicants to potentially streamline the search process and improve the quality of the international search by leveraging previous search results.

To learn more:

PCT
International Search
Earlier Search
Patent Cooperation Treaty
International Searching Authority

Question 29

What information must be included in a CPA request for design patents?

Accepted Answer

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

The filing date of the CPA request
The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

For more information on USPTO filing procedures, visit: USPTO filing procedures.

Question 30

Are there any exceptions that allow a suspended or excluded patent practitioner to inspect an application?

Accepted Answer

Yes, there is one exception. A suspended or excluded patent attorney or agent can inspect an application if they are the inventor or applicant of that particular application. The MPEP clarifies:

USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant.

So while suspended or excluded practitioners generally cannot inspect applications, they can still access ones in which they are directly involved as the inventor or applicant.

Question 31

What is a national application according to the USPTO?

Accepted Answer

According to 37 CFR 1.9(a)(1), a national application is defined as:

A U.S. application for patent filed in the USPTO under 35 U.S.C. 111
An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid
An international design application filed under the Hague Agreement in which the USPTO has received a copy of the international registration pursuant to Hague Agreement Article 10

This definition encompasses various types of patent applications that are treated as national applications by the USPTO.

Question 32

What is a Continued Prosecution Application (CPA) for design patents?

Accepted Answer

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

Question 33

How does a declaration of attribution under 37 CFR 1.130(a) work?

Accepted Answer

A declaration of attribution under 37 CFR 1.130(a) is used to establish that a disclosure was made by the inventor or joint inventor, or that the subject matter was obtained from them. According to MPEP 717.01(a)(1):

'37 CFR 1.130(a) provides that an affidavit or declaration of attribution may be submitted to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.'

This type of declaration is particularly useful when an inventor needs to prove that a seemingly prior art disclosure actually originated from their own work, thus disqualifying it as prior art under 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).

To learn more:

37 CFR 1.130(a)

Question 34

How are partial assignees handled in patent issuance?

Accepted Answer

The USPTO has specific provisions for handling partial assignees in patent issuance:

If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

Question 35

What should be done if there's an error in the preprinted prior application data?

Accepted Answer

If there's an error in the preprinted prior application data, the following steps should be taken:

If the error is in the Patent Data Portal database, it can be corrected by technical support staff of the Technology Center.
After the data is corrected, a new bib-data sheet should be printed and scanned into the file.
If the error was made by the applicant, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate.
In some cases, a petition for an unintentionally delayed benefit claim may also be required.

The MPEP states: "Should there be an error in the preprinted prior application data, the correction or entry of the data in the Patent Data Portal data base can be made by technical support staff of the Technology Center, if appropriate. Upon entry of the data, a new bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate." (MPEP 202)

Question 36

How do I claim priority to a PCT international application?

Accepted Answer

Claiming priority to a PCT international application can be done in two ways:

In a U.S. national stage application under 35 U.S.C. 371:
- The priority claim is made in the PCT application
- No further action is needed when entering the national stage
In a U.S. nonprovisional application under 35 U.S.C. 111(a):
- File within 12 months of the PCT filing date
- Make the priority claim in an application data sheet
- Provide a certified copy of the PCT application (unless already filed with the PCT)

In both cases, the PCT application must designate the United States. The specific requirements are detailed in 37 CFR 1.55(d)(2) and (f)(2) for national stage applications, and 37 CFR 1.55(d)(1) and (f)(1) for applications under 35 U.S.C. 111(a).

Question 37

Is including government support information on a provisional application cover sheet sufficient?

Accepted Answer

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

Question 38

What actions can be taken if a patent application contains national security markings but no Secrecy Order?

Accepted Answer

If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that "the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings." This should be done preferably with the first office action and before final disposition of the application.

37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:

Obtain a Secrecy Order
Declassify the application
Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)

Additionally, per 37 CFR 5.1(e), "a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded."

Question 39

How can I correct an error in a recorded assignment document at the USPTO?

Accepted Answer

To correct an error in a recorded assignment document at the USPTO, you have two main options:

Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: "The 'Correction' box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded."

For more information on assignment correction, visit: assignment correction.

For more information on cover sheet, visit: cover sheet.

For more information on USPTO, visit: USPTO.

Question 40

What is the significance of the "Date of Completion of all 35 U.S.C. 371 Requirements"?

Accepted Answer

The "Date of Completion of all 35 U.S.C. 371 Requirements" is significant for patent term adjustment in pre-AIA national stage applications. The MPEP explains:

"The "Date of Completion of all 35 U.S.C. 371 Requirements" included on the NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35 U.S.C. 371 AND 37 CFR 1.495 (Form PCT/DO/EO/903) in pre-AIA national stage applications is relevant for purposes of patent term adjustment under former 35 U.S.C. 154(b)(1)(A)(i)(II) when the Office has failed to mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the requirements under 35 U.S.C. 371 were fulfilled."

This date is crucial for calculating potential patent term adjustments in cases where the USPTO has not met certain processing deadlines.

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Question 41

What are the guidelines for correcting or adding drawings after a patent application is filed?

Accepted Answer

Correcting or adding drawings after a patent application is filed is addressed in MPEP 608.02, subsection II. The key points are:

Drawings can be corrected, revised, or added if no new matter is introduced.
The applicant must submit a proposed drawing correction in reply to the Office action.
For non-provisional applications, replacement sheets of corrected drawings must be submitted.
For provisional applications, corrected drawings may be submitted as an amendment to the application.

The MPEP states: 'Where a drawing is to be amended, applicant must submit a replacement sheet of drawings which complies with 37 CFR 1.84 and includes all of the figures appearing on the original version of the sheet, even if only one figure is being amended.' This ensures that the entire drawing set remains consistent and complete.

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Question 42

What is the time limit for furnishing a translation of the priority document in PCT applications?

Accepted Answer

When a translation of the priority document is required in PCT applications, there is a specific time limit for furnishing it. According to MPEP 1870:

"If the application whose priority is claimed in the international application is in a language other than the language or one of the languages of the International Preliminary Examining Authority, that Authority may [...] invite the applicant to furnish a translation in the said language or one of the said languages within two months from the date of the invitation."

Therefore, when requested, applicants typically have two months from the date of the invitation to provide the translation. Failing to meet this deadline can have serious consequences:

"If the translation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed."

This underscores the importance of promptly responding to such requests to maintain the priority claim.

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Question 43

What is the significance of drawings in proving conception for a patent?

Accepted Answer

What is the significance of drawings in proving conception for a patent?

Drawings play a crucial role in proving conception for a patent. The MPEP 2138.04 highlights their importance:

"A conception must encompass all limitations of the claimed invention" and "is complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation."

In this context, drawings are significant because:

They provide a visual representation of the inventor's mental picture of the invention.
Detailed drawings can demonstrate that the inventor had a complete conception of all aspects of the invention.
Drawings can help prove that the invention was "ready for patenting" at the time of conception.
They can serve as corroborating evidence to support the inventor's testimony about conception.

The MPEP also notes: "The inventor's consideration of all the structural details is not required," suggesting that while drawings are important, they don't need to include every minute detail to prove conception. However, the more comprehensive and clear the drawings are, the stronger the evidence of conception.

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Question 44

How does "improvement to computer functionality" affect patent eligibility?

Accepted Answer

Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):

"If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification."

The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:

A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
A specific improvement to the way computers operate (Enfish)
A particular method of incorporating virus screening into the Internet (Symantec Corp)

However, the MPEP also notes that "the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract."

The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.

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Question 45

How does changing the order of references in a 35 U.S.C. 103 rejection affect the grounds of rejection?

Accepted Answer

Changing the order of references in a 35 U.S.C. 103 rejection does not necessarily constitute a new ground of rejection. According to MPEP 1207.03(a):

"If the examiner's answer changes the order of references in the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of those references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection."

This principle is based on court decisions such as In re Cowles, where the Board changed the order of references in the rejection statement but relied on the same teachings. The court held that this did not constitute a new ground of rejection.

Similarly, in In re Krammes, the court held that a different "order of combining the references" did not constitute a new ground of rejection because each reference was cited for the "same teaching" previously cited.

The key factor is whether the rejection relies on the same teachings and maintains the same basic thrust, even if the order of references is changed. If so, it does not constitute a new ground of rejection.

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Question 46

How should applicants prepare for a patent examiner interview?

Accepted Answer

How should applicants prepare for a patent examiner interview?

Proper preparation is crucial for a successful patent examiner interview. The MPEP provides guidance on this topic:

"The attorney or agent should be fully prepared to discuss the issues raised in the Office action." (MPEP 713.01)

To prepare effectively:

Review the Office action: Thoroughly understand the rejections and objections raised by the examiner.
Prepare arguments: Develop clear, concise arguments addressing each point in the Office action.
Consider amendments: If proposing claim amendments, have them ready in proper form.
Gather evidence: Compile any relevant prior art, declarations, or other supporting documents.
Set clear goals: Determine what you hope to achieve in the interview (e.g., agreement on allowable subject matter, clarification of a rejection).
Prepare an agenda: Outline the topics you wish to discuss to keep the interview focused and productive.
Schedule appropriately: Allow enough time for a thorough discussion and follow proper USPTO procedures for scheduling.

By being well-prepared, applicants can make the most of the interview opportunity and potentially advance prosecution more efficiently.

To learn more:

Question 47

What is the impact of incorporating by reference in patent applications?

Accepted Answer

Incorporating by reference in patent applications can have significant impacts:

It allows applicants to include the content of another document without reproducing it in full.
The incorporated material becomes part of the application as if it were explicitly included.
It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

An incorporation by reference statement added after an application's filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

Question 48

Can I change the order of inventors' names in a patent application?

russ.krajec@blueironip.com · Accepted Answer

Yes, you can change the order of inventors' names in a nonprovisional patent application filed on or after September 16, 2012. According to MPEP 602.01(c)(2):

37 CFR 1.48(f) ... allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).

To change the order of inventors' names, you must:

Submit an application data sheet (ADS) in accordance with 37 CFR 1.76 that lists the inventors in the desired order.
Pay the processing fee set forth in 37 CFR 1.17(i).

Note that this procedure is not applicable to provisional applications, as they do not become published applications or patents.

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Question 49

Who can file a patent application as the applicant?

Accepted Answer

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

The inventor(s)
An assignee to whom the inventor has assigned the invention
An obligated assignee to whom the inventor is under an obligation to assign the invention
A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): "A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties."

Question 50

What are the consequences of fraudulently establishing small entity status?

Accepted Answer

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): 'Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.'

The consequences of such actions can be severe, potentially including:

Invalidation of the patent
Criminal charges for fraud
Disciplinary action against registered patent practitioners

It's crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

Question 51

How do I cite non-English language documents in an IDS?

Accepted Answer

How do I cite non-English language documents in an IDS?

When citing non-English language documents in an Information Disclosure Statement (IDS), follow these guidelines:

Provide a concise explanation of the relevance of the document.
Include an English language translation or abstract if available.
If a translation is not available, indicate the language of the document.

According to MPEP 609.04(a): "Where the information listed is not in the English language, but was cited in a search report or other action by a foreign patent office in a counterpart foreign application, the requirement for a concise explanation of relevance can be satisfied by submitting an English-language version of the search report or action which indicates the degree of relevance found by the foreign office."

Properly citing non-English documents ensures the examiner can consider their relevance to your application.

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Question 52

What is considered a valid mailing address for inventors in patent applications?

Accepted Answer

The MPEP provides guidance on what constitutes a valid mailing address for inventors in patent applications. According to MPEP 602.08(a):

"The inventor's mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor's home or business address is acceptable as the mailing address. A post office box is also acceptable."

The mailing address should include the ZIP Code designation. It's important to note that the address of an attorney with instructions to forward communications is not sufficient, as the purpose is to enable direct communication between the USPTO and the inventor if necessary.

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Question 53

What happens if an amendment to a patent application is non-compliant?

Accepted Answer

If an amendment to a patent application is non-compliant with 37 CFR 1.121, the following process occurs:

The Office will notify the applicant using a Notice of Non-Compliant Amendment (Form PTOL-324)
The notice will identify which section is non-compliant, what is required for compliance, and the reasons for non-compliance
The applicant may be given a time period to comply, depending on the type of amendment

The MPEP states: If an amendment submitted on or after July 30, 2003, fails to comply with 37 CFR 1.121 (as revised on June 30, 2003), the Office will notify applicant by a Notice of Non-Compliant Amendment, Form PTOL-324, that the amendment fails to comply with the requirements of 37 CFR 1.121 and identify: (1) which section of the amendment is non-compliant (e.g., the amendments to the claims section); (2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and (3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121.

In some cases, if the non-compliant amendment would otherwise place the application in condition for allowance, the examiner may enter the amendment and provide an examiner's amendment to correct the non-compliance.

To learn more:

Question 54

How should patent owners prepare for an interview in an ex parte reexamination proceeding?

Accepted Answer

Patent owners should follow these steps to prepare for an interview in an ex parte reexamination proceeding, as outlined in MPEP 2281:

Contact the examiner to indicate the issues to be discussed and determine if an interview will be granted.
If granted, file the following at least three working days prior to the interview:
- An informal written statement of the issues to be discussed
- An informal copy of any proposed claims to be discussed
Submit these materials by fax directly to the examiner or hand-deliver them to avoid delays.

The MPEP states: "If the examiner agrees to grant the interview, the patent owner must file, at least three (3) working days prior to the interview, an informal written statement of the issues to be discussed at the interview, and an informal copy of any proposed claims to be discussed, unless examiner waives this requirement."

These preparatory steps are designed to provide structure to the interview and facilitate the statutory mandate for special dispatch in reexamination proceedings.

To learn more:

Question 55

How should examiners cite foreign patents and non-patent literature?

Accepted Answer

How should examiners cite foreign patents and non-patent literature?

Examiners should follow specific guidelines when citing foreign patents and non-patent literature (NPL) in patent applications. According to MPEP 707.05(a):

For foreign patents:

Cite the country, document number, and publication date (WIPO Standard ST.14 format).
Include the applicant's name, the title in English (if available), and the relevant pages or sheets.

For NPL:

Provide sufficient information for others to retrieve the reference.
Include author, title, page numbers, publication date, and place of publication.
For online sources, include the URL and access date.

The MPEP states: 'Examiners must remember that reference citations must be complete and give the relevant data needed for a reader to locate the reference easily.' This ensures that applicants and other examiners can easily access and review the cited references.

To learn more:

WIPO Standard ST.14

Question 56

What is required for correcting inventorship in a provisional application?

Accepted Answer

To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:

A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
The processing fee set forth in 37 CFR 1.17(q)

The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.

To learn more:

Question 57

Can I purchase BlueIron's insurance through my insurance agent?

Accepted Answer

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BlueIron is a licensed insurance agent, and acts as an insurance wholesaler for many brokers and agents. Please have your insurance agent contact us.

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BlueIron does not provide any other insurance other than Intellectual Property related insurance.

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Question 58

What forms are available for filing an express abandonment?

Accepted Answer

The USPTO provides several forms for filing express abandonment, depending on the specific circumstances. According to MPEP 711.01, Section V, the following forms are available:

Form PTO/AIA/24 (or PTO/SB/24 for pre-AIA applications): For filing a general letter of express abandonment or abandonment in favor of a continuing application
Form PTO/AIA/24A (or PTO/SB/24A for pre-AIA applications): For filing a petition for express abandonment under 37 CFR 1.138(c) to avoid publication of the application
Form PTO/AIA/24B (or PTO/SB/24B for pre-AIA applications): For filing a petition for express abandonment under 37 CFR 1.138(d) to obtain a refund of the search fee and excess claims fee

These forms can be accessed on the USPTO website and should be used to ensure proper processing of your express abandonment request.

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Question 59

What are the requirements for a grantable petition under 37 CFR 1.137(a) for unintentional delay?

Accepted Answer

What are the requirements for a grantable petition under 37 CFR 1.137(a) for unintentional delay?

A grantable petition under 37 CFR 1.137(a) for unintentional delay must meet specific requirements. According to MPEP 711.03(c), these requirements include:

The reply required to the outstanding Office action or notice: This could be a response to a non-final Office action, a notice of allowance, or other required submissions.
The petition fee: As set forth in 37 CFR 1.17(m).
A statement that the entire delay was unintentional: This statement must be included in the petition.

The MPEP states: The Director may require additional information where there is a question whether the delay was unintentional.

Additionally:

The petition must be signed by a registered patent practitioner, the applicant, or the assignee of the entire interest.
If the applicant is a juristic entity, the petition must be signed by a patent practitioner.
The USPTO may require additional information if the petition is filed more than two years after the date of abandonment.

It's important to note that the third requirement, the statement of unintentional delay, is subject to the USPTO's guidance on unintentional delay practice. This guidance emphasizes that the entire period of delay, from the due date for the reply until the filing of a grantable petition, must be unintentional for the petition to be granted.

To learn more:

37 CFR 1.137(a)

Question 60

How does litigation affect the processing of reissue applications?

Accepted Answer

Litigation can significantly impact the processing of reissue applications. According to MPEP 1442, "reissue applications involved in litigation will be taken up for action in advance of other reissue applications." This means that:

Reissue applications involved in litigation receive even higher priority than other reissue applications.
The USPTO aims to address these applications quickly to support ongoing legal proceedings.
However, in some cases, litigation may also cause a reissue application to be suspended, depending on the specific circumstances of the case.

It's important to note that the exact handling of a reissue application involved in litigation may depend on various factors and could be subject to case-by-case consideration by the USPTO.

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Question 61

When does the USPTO withdraw a restriction requirement?

Accepted Answer

The USPTO withdraws a restriction requirement when certain conditions are met during the examination process. According to MPEP 821.04(a):

"Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, the examiner should withdraw any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim."

This means that when a generic claim, linking claim, or subcombination claim becomes allowable, the restriction requirement is withdrawn for any previously withdrawn claims that depend on or require all the limitations of the allowable claim.

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Question 62

How are mathematical concepts evaluated as abstract ideas?

Accepted Answer

Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:

"The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations."

When evaluating whether a claim recites a mathematical concept, examiners consider the following:

Does the claim recite a mathematical relationship, formula, equation, or calculation?
Is the mathematical concept merely based on or involves a mathematical concept?

The MPEP clarifies: "A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept."

Examples of mathematical concepts considered abstract ideas include:

A formula for computing an alarm limit (Parker v. Flook)
A method of hedging risk (Bilski v. Kappos)
An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)

It's important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.

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Question 63

What is the purpose of the enablement requirement in patent law?

Accepted Answer

The enablement requirement in patent law serves to ensure that the invention is sufficiently described to allow the public to make and use it. As explained in MPEP 2165.02:

"The enablement requirement looks to placing the subject matter of the claims generally in the possession of the public."

This means that the patent application must provide enough information for a person skilled in the relevant field to understand and reproduce the invention without undue experimentation. The enablement requirement is crucial for fulfilling the patent system's goal of promoting the progress of science and useful arts by ensuring that inventions are fully disclosed in exchange for patent protection.

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Question 64

What is the nexus requirement in patent law?

Accepted Answer

The nexus requirement in patent law refers to the need for a causal relationship between the claimed invention and the objective evidence of nonobviousness. As stated in MPEP 716.01(b):

"An applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight."

This means that when presenting evidence of nonobviousness, such as commercial success or unexpected results, the applicant must demonstrate that these outcomes are directly related to the novel aspects of the invention, rather than other factors like marketing or unrelated features.

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