Once you're in the mindset of building an IP portfolio, sometimes it's easy to get carried away and go overboard with filing applications. I've seen applicants file trademark applications, patent applications, and copyright applications all at the same time for the same product/invention or for the same line of products/inventions. While it may be convenient (and maybe satisfying) to file everything at the same time and get applications out of the way and over with (for a while), it is important to time applications right.
Timing the filing of applications allow applicants to: 1) budget wisely; 2) manage workload during prosecution; 3) coordinate approximate publication dates, issue dates, and registration dates; 4) strategize product/service launching; 5) coordinate funding; and 6) prioritize needs vs. wants.
2016 is right around the corner so I thought it would be fun to do a countdown of my most frequently asked questions from this past year. I have a feeling that this list will look pretty similar next year, but maybe not after reading this article.
Here is my top 10 FAQ:
I've filed Patent Cooperation Treaty (PCT) applications in the past but I've filed a bunch recently so today, I'm going to provide an overview of how you can prepare a PCT-EAZY .zip file. First, I should note that there are three ways to file a PCT application: 1) paper application ($1384)*; 2) electronic application ($1280)*; and 3) electronic application with PCT-EASY .zip ($1176)*. I would not recommend filing anything in paper nowadays (either for patents or trademarks, but PCT is for patents FYI). It's expensive, inconvenient, and time consuming. There's really no good reason why things shouldn't be filed electronically now. Some old school law firms may still use paper applications but I have never used paper applications in practice as an attorney.
What is a PCT-EASY .zip file? It's basically what it sounds like. You put all of your application material for your PCT application in a "folder" and compress it so that it's easy to upload and everything is in one place.
This is sort of a second part to the second to last article I wrote about inventorship. By now you know that an inventor is someone who conceives the invention but what does that really mean, and how do you show it? I don't think a lot of patent attorneys think about these questions. Most are eager to learn about the invention so it can be easy to lose the sight of making sure that other parts of the application are accurate and thoroughly investigated. But it is important to understand what an inventor is and what qualifies as conception of an invention. And if you don't think it's that important, your licensee, assignee, or your investor certainly will. So without further delay, let's dive in.
Conception is generally defined as a definite formation of an invention in an inventor's mind.Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). This means that conception is not just some fleeting thought or something that briefly came across your mind for a moment in time. If you have a definite formation of an invention, that means that you have to be able to clearly describe to someone what your invention is, and how one would reduce it to practice and use it. Gunter v. Stream,573 F.2d 77, 197 USPQ 482 (CCPA 1978).