Month: July 2009

USPTO Announces “E-Office Action” Program

The USPTO announced yesterday that it has implemented the “e-Office Action Program” after a successful pilot program.  Our law firm has participated in the pilot program and have been very impressed with how efficient the e-Office Action Program operates.  See the USPTO Press Release.

Benefits of Using Provisional Patent Applications for Inventors and Small Businesses

Provisional patent applications (PPA) can be an extremely valuable tool for inventors and small businesses. PPAs provide inventors with one-year of “patent pending” and then automatically expire. It is therefore important to have a formal patent application (a.k.a. “non-provisional patent application”) filed during this one-year pendency period so your formal patent application is able to claim priority to the PPA’s earlier filing date.

A well-drafted PPA can potentially be licensed or sold to a third-party during the one-year period of patent pending. It is important to note that a poorly drafted PPA can have the opposite effect by deterring a potential purchaser or licensor. Also, if you are manufacturing displaying your product or displaying it at a product show, you can put the “Patent Pending” notice on the product during the one-year period.

Finally, a PPA is significantly easier to draft than a formal patent application which requires the complex claims section and is examined by the U.S. Patent & Trademark Office. Using commercial tools such as PatentWizard software (owned by Neustel Software, Inc.), you will be able to easily prepare your own quality PPA at a fraction of what a patent attorney would charge – and you just might write a better PPA!

Federal Circuit Agrees to Rehear Controversial Tafas v. Doll

On July 6th, the Federal Circuit granted a petition to rehear the Tafas v. Doll case which a 3 judge panel previously held that the USPTO had authority to adopt rules limiting the number of patent claims in a patent application and the number of requests for continued examation (RCE), although it could not limit the number of continuation applications.  This is an important case for inventors and businesses because if the previous decision is upheld patent applicants (1) will be significantly limited in the number of claims they can include in a patent application and (2) have to file continuation applications instead of the faster RCE route.  See the Tafas v. Doll Order.

Michael Jackson Patent

Many people believe Michael Jackson is just a singer and performer when he also was an inventor of a patent on a “Method and Means for Creating Anti-Gravity Illusion” (U.S. Patent No. 5,255,452).  The patent is for a shoe system that allows the shoe wearer to lean forwardly beyond their center of gravity (a slot within the heel of the shoe would removably engage a hitch member on the stage by the wearer simply sliding the shoe forward).  See U.S. Patent No. 5,255,452.