Inter partes review (IPR) is a trial proceeding that was introduced by the America Invents Act (AIA). It became available for all patents on September 16, 2012, regardless of the priority date of the patents. This is a procedure that is conducted before the Patent Trial and Appeal Board (PTAB).
IPR allows a petitioner to challenge the patentability of one or more claims in a registered patent only on a ground that could be raised under Sections 102 (anticipation) or 103 (obviousness), and only on the basis of prior art consisting of patents or printed publications. The petitioner can institute an action after the later of either: 1) 9 months after the grant of the patent/issuance of a reissue patent; or 2) after the post grant review. These deadlines are not applicable to pre-AIA patents.
By now I've worked with individual clients, small businesses, large institutions, and everyone in between. But recently, I've been surrounding myself with small businesses, and many of them ask me, “What general advice (in the realm of intellectual property law) do you have for small businesses or start up companies?” So, I decided to come up with a few things that you can keep in mind if you're a small business or a start up.
Yesterday, USPTO granted 34 new patents to Apple Inc. One of the patents, U.S. Patent No. 8,934,045, relates to a wearable camera system that can be controlled via a remote. This patent is pretty interesting for a couple of reasons, and seems to stand out from the rest of the patents granted to Apple Inc.
First of all, this patent takes a jab at GoPro cameras, saying that:
[T]he HD Hero2 camera includes only a single image capture system, which captures images using an optical axis directed outward from the ‘front’ of the camera. This can cause excessive wind resistance and presents a high profile that is more susceptible to damage and image artifacts from vibrations in some situations.
Karn, col. 1, lns. 43-49.
I realize my last post was kind of blah so I figured I’d buckle down and write something more substantive.
By now, I’m sure you’ve heard about the 2014 Interim Guidance on Patent Subject Matter Eligibility. Perhaps you’ve perused through it, or even looked at the subject matter eligibility test for products and processes chart. I saw that this was posted last month on the USPTO website, but I went on a vacation, and didn’t really feel like reading it so I put it off for a couple of weeks. And last night, while I was watching The Millionaire Matchmaker, I decided to finally read it. If you’ve been lazy like me, and you haven’t read it yet, you’re in luck because here’s my quick summary on the new guidance.
I visit the USPTO website so much that finally decided to save it as my homepage. Lame? A little. Anyways, I’ve noticed for a while now that the USPTO website includes a tab for kids. I never bothered to click on it because I’m not a kid, and I usually don’t have the time to explore the website extensively.
This morning, I was reading the January issue of ABA Journal, and what do I see on page 13? An article about the kids section of the USPTO website (titled, “Mommy, What’s a Patent?”). So I decided to check it out.
If you apply for a patent in Mexican Patent Office, you receive a patent protection in Mexico when your patent registers.
If you apply for a patent in Canadian Intellectual Property Office, you receive a patent protection in Canada when your patent registers.
If you apply for a patent in United States Patent and Trademark Office, you receive a patent protection in the U.S. when your patent registers.
Are you starting to see a pattern here? I hope so.
If you remember from one of my previous articles, I wasn't a huge fan of the After Final Consideration Pilot (AFCP) program. It was launched May of 2013, and it expired by the end of September 2014. Well, it's back, and it will be around through September 30, 2015.
Apparently, AFCP now has a new feature designed to enhance communication between the Office and applicants. Like before, AFCP gives examiners more time to search and consider responses after final rejection. Examiners will be able to use the additional time to also conduct an interview with applicants, which is supposedly a plus since applicants don't have the right to an interview after final rejection. But for me, it's not a big plus because I've never had problems scheduling an interview after final rejection.
By now I've worked on hundreds of patent applications... I've written about mundane inventions like beach towel weights to sophisticated inventions like treatment for cancer, and everything in between. If you were to ask me what type of inventions are my least favorite to work on, I'd tell you, "business methods" without missing a beat.
I say business methods for a couple of reasons. First, these methods often sound complicated, but the result is always the same: make more money by moving money around. There are many ways to move money around, and it's such an abstract concept to transfer money from one account to another. Nothing really changes when money is transferred. Sure, you see the numbers in different accounts change. But that's all it is. Numbers.
This week, I interviewed an Examiner and filed a response to a non-final Office Action. The next day, I found out that another person in my office filed his own response to the same non-final Office Action. My first reaction was, "Ugh. Why." Then I was like, "Ok, what do I do about this."
As I do every time I don't know what to do, I skimmed through the MPEP. But MPEP didn't really have what I needed, so I called the Examiner. He told me to call customer service at USPTO. Normally, I don't like calling customer service because I'm never really sure if they're giving me the right answer. But the Examiner did tell me to call so I did. (For once, I didn't have to wait like 30 minutes, so I didn't really mind.) Funny though, because when I spoke to a customer service representative, he told me that I should call the Examiner. (Good ol' talk to this guy, no, talk to that guy game).
Well, calling the Examiner back wasn't a bad idea because he's the one examining this application, so I was happy to go with whatever he wanted to do. So here's the rule when there is no rule:
Ask the Examiner and if whatever he or she says sounds reasonable to you, go with it.
And just for good measure, here's another rule: Write down (make it look all official) whatever you discussed with the Examiner and submit it as a transmittal letter. This is good to do so that the Examiner can't come back later and say, "Hey, we never discussed this, or whatever." Also, it makes you look like you know what you're doing. Sort of. Fake it 'til you make it. Don't worry. Everyone does it.
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Maybe not that fast. But still, faster than you normally would.