Intellectual Property Attorneys - IP Lawyers

March 2009 Archives

Top Ten Pitfalls Inventors and Small Companies Should Avoid When Protecting Their Intellectual Property

By Christopher J. Maier on March 31, 2009 4:23 PM | No Comments | No TrackBacks

Eret C. McNichols
Maier & Maier, PLLC

Real World v. Patent World

Legend has it that long ago King Hiero II was given a golden crown that was made by a local goldsmith. The King was leery of the goldsmith's honesty and tasked Archimedes to determine the authenticity of the golden crown. Archimedes had to accomplish this task without damaging the crown in any way. He was fraught with anxiety on how to determine the authenticity with out damaging the King's new gift. To ease his nerves one night, Archimedes took a hot bath. As he stepped into the tub he noticed the water level rise, spilling some on the floor. Instantly, he realized that the water rose by an amount that was equal to the volume of his body. Archimedes knew that without damaging the crown he could use the volume and the weight of the crown to determine what whether it was a fake and made of mere silver or authentic and made of pure gold. He was so excited he ran through the streets, dripping wet and naked, shouting "Eureka!" which means "I have found it!"

This anecdote teaches us that conception is the foundation of innovation. Nearly every free thinking person that has both an imagination and an inquisitive mind has conceived of at least one idea. Conception is that "eureka moment" when the solution to a problem becomes instantly clear.

As any inventor knows, the real world and the patent world are mutually exclusive. For example, an inventor may invent a widget that does something or makes a task easier. That inventor may build and use the widget to improve her own way of life. In such an example, her widget is so useful that her neighbors want one for themselves, so being the good neighbor she builds each of them one. As the idea catches on and the orders come in, our inventor realizes that she could sell these widgets to offset her time spent building them, which she does. But a person in the next county begins building the widgets at a faster pace and selling them for a lower price. Naturally, our inventor cries "no fair."

The moment an inventor desires to profit off of their idea or prevent others from making it, they enter the patent world. This is a world full of mundane details, antiquated language and strict timelines. The line between an inventor maintaining their rights in their invention and losing them is as this as a knife's edge.

There are many important steps that inventors and small companies must know to successfully maintain their rights in their invention. Below is a Top Ten Pitfalls list of the most common mistakes every inventor or small company should avoid during the patent process.

Continue reading Top Ten Pitfalls Inventors and Small Companies Should Avoid When Protecting Their Intellectual Property.

Chinese SIPO Received 828,328 Chinese Patent Applications in 2008

By Christopher J. Maier on March 30, 2009 11:58 AM | No Comments | No TrackBacks
The Chinese State Intellectual Property Office recently announced that it had received 828,328 patent applications from Chinese applicants in the year 2008. The figure includes invention, utility model and design applications, and represents an increase of 19.4% over the previous year.

The SIPO also received a total of 289,838 applications for invention in 2008, an increase of 18.2% over the previous year. Of these, 194,579 applications were filed by Chinese applicants and 95,259 applications were filed by foreign applicants. This represents an increase of 18.2% in Chinese applications and an increase of 3.4% in foreign applications over the previous year.

The SIPO also granted a total of 411,982 applications, an increase of 17.1% over the previous year.

Stay tuned to www.maierandmaier.com for further information about this topic.

Federal Circuit Upholds USPTO's Authority to Issue Claims and Continuations Final Rules and Concludes that Certain Final Rules Are Consistent with the Patent Act

By Christopher J. Maier on March 25, 2009 1:34 PM | No Comments | No TrackBacks
On March 20, 2009, the Federal Circuit issued a decision addressing:
(i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO's rulemaking authority and
(ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency's rulemaking authority.

The Court also concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Court remanded several issues to the district court. The litigation remains pending. The Final Rules will not be implemented at this time.

Post-Grant Review Proposals in 2009 Patent Reform Act

By Christopher J. Maier on March 24, 2009 2:37 PM | No Comments | No TrackBacks
Writing for Patently-O, Charlez Gholz, the head of Oblon Spivak's Interference Section, discussed post-grant review proposals in the Patent Reform Act of 2009.

According to Gholz, the PTO officials involved in administering patent interference matters had expected post-grant review proceedings to be governed by 37 C.F.R. 41, (Practice Before the Board of Patent Appeals and Interferences) Subpart D (Contested Cases). However, proposed 35 USC 326 provides that the Director shall prescribe regulations governing post-grant review proceedings.

Gholz goes on to say:
Continue reading Post-Grant Review Proposals in 2009 Patent Reform Act.

Third revision of China's Patent Law -- Criteria for Granting Patent Rights

By Christopher J. Maier on March 23, 2009 3:42 PM | No Comments | No TrackBacks
The Chinese Legislature approved a number of amendments to the Chinese Patent Law on December 29, 2008, resulting in the third revision of the Law. The revisions dealt with changes to patent application filing, criteria for granting patents, protection of patent rights, and compulsory licensing. 

Below are the revisions to the patent law that deal with changes to criteria for granting patent rights. Stay tuned to the blog for further updates to this topic.

Previously in this topic: Third revision of China's Patent Law -- Patent Application Filing

Absolute Novelty

Revised Article 23:


"Any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability.

Novelty means that, the invention or utility model shall neither belong to the prior art, nor has any other person filed before the date of filing with the Patent Administrative Department Under the State Council an application which described the identical invention or utility model and was published in patent application documents or announced in patent documents after the said date of filing.

Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress.

Practical applicability means that the invention or utility model can be made or used and can produce effective results.

The prior art referred to in this Law means any technology known to the public in this country or abroad before the date of filing".

In the revised patent law, the definition of "prior art" is broadened to include public use or other means of disclosure outside China. In the previous Chinese patent law, disclosure of an invention to the public by means other than publication (such as, for example, use, sale or display) did not constitute a novelty bar.


Patentability requirements for design patents

Revised Article 23:
"Any design for which patent right may be granted shall neither belong to the prior design, nor has any other person filed before the date of filing with the Patent Administrative Department Under the State Council an application which described the identical design and was announced in patent documents after the said date of filing.

Any design for which patent right may be granted shall be obviously differentiable from the prior design or a combination of features of the prior design.

Any design for which patent right may be granted must not be in conflict with any prior right of any other person.

The prior design referred to in this Law means any design known to the public in this country or abroad before the date of filing".

In the revised patent law, an inventive step is now added to the novelty analysis for design patents. Furthermore, the definition of "prior design" is added, covering all disclosed designs in China and abroad.

Non-patentable subject matter for design patents

Revised Article 26, Paragraph 1, Item 6:

"For any of the following, no patent right shall be granted: 
(6) Two-dimensional designs made of patterns, colors or their combination, for the purpose of indication".

Under the new patent law, two-dimensional designs such as labels, or having labeling as their primary function will no longer be granted protection.

Stay tuned to www.maierandmaier.com for further updates on this and other IP topics.

The Pitfalls of Provisional Patent Applications

By Christopher J. Maier on March 18, 2009 4:09 PM | No Comments | No TrackBacks
In another episode of our ongoing intellectual property and patent law video series, Timothy Maier describes the differences between provisional and non-provisional patent applications,  and how the applicant can protect him or herself from the risks and pitfalls of provisional applications.

Third revision of China's Patent Law -- Patent Application Filing

By Christopher J. Maier on March 16, 2009 4:38 PM | No Comments | No TrackBacks
The Chinese Legislature approved a number of amendments to the Chinese Patent Law on December 29, 2008, resulting in the third revision of the Law. The revisions dealt with changes to patent application filing, criteria for granting patents, protection of patent rights, and compulsory licensing.

Below are the revisions to the patent law that deal with changes to patent application filing. Stay tuned to the blog for further updates to this topic.

Disclosure of Genetic Resources

Revised Article 5 paragraph 2:
"No patent right shall be granted for an invention-creation of which the completion depends on genetic resources, but the acquisition or exploitation of said genetic resources violates the relevant laws and administrative regulations of the State".

Revised  Article 27 paragraph 6:
"For an invention-creation, the completion of which depends on genetic resources, the applicant shall indicate the direct source and original source of said genetic resources in the application documents; The applicant shall state reasons if the original source of said genetic resources can not be indicated".

For the first time in Chinese patent law history, genetic resource issues are addressed. The origin of a genetic resource must now be disclosed if the completion of an invention relies on the acquisition and exploitation of that resource. The impact of this provision will depend on how "genetic resource" will be defined, and what type of acquisition or exploitation will be deemed illegal.

Double Patenting

Revised Article 9 paragraph 1:
"For any identical invention-creation, only one patent right shall be granted. However, where the same applicant(s) had applied for both patent for utility model and patent for invention for the identical invention-creation on the same day, and the previously granted patent for utility model has not been expired, and the applicant(s) declares to abandon the patent for utility model, then the patent for invention may be granted".

The previous interpretation of Chinese Patent Law allowed the same applicant to file applications for invention patent and utility model on different days, allowing an applicant to obtain protection for the same invention for longer than 20 years if the applicant abandoned the earlier-filed application. Under the revised law, the same applicant may only file an application for invention patent and utility model on the same date, eliminating the loophole of the previous law.

Co-owner's Right

Revised Article 15:
"Where the patent application right or patent right is co-owned by two or more entities or individuals, if the co-owners have agreed upon how to exploit the patent, such agreement shall be followed; otherwise, any co-owner may exploit the patent alone or grant others an non-exclusive license to exploit the patent and the exploitation fee received shall be allocated among all co-owners.

Except as provided above in the preceding paragraph, exploitation of any co-owned patent application right or patent right shall obtain all co-owners' consent".
  
Under the revised law, when two or more entities or individuals co-own a patent application or patent, all co-owners must consent to the following acts, unless otherwise agreed:
  1. assignment of right to apply for a patent;
  2. assignment or withdrawal of patent application;
  3. assignment, abandonment or pledge of patent right; and
  4. license to others to exploit the patent in an excluded way.
Foreign Filing License

Revised Article 21 paragraph 1:
"Any entity or individual may file an application in a foreign country for an invention-creation completed in China, subject to a prior security/secrecy examination by the Patent Administration Department Under the State Council".

Under the revised patent law, entities or individuals intending to file a patent application in a foreign country for an invention made in China only need to get approval from SIPO. This revision gives more flexibility to foreign-invested companies in selecting countries when filing patent applications for such inventions. Furthermore, while the current Patent Law limits its first filing requirements for inventions created in China to Chinese entities and individuals, the revised patent law expands the foreign filing license requirements to include foreigners.

Unity of a Design Application

Revised Article 32 paragraph 2 :
"An application for a patent for design shall be limited to one design. Two or more similar designs for the same product or two or more designs which are incorporated in products belonging to the same class and are sold or used in sets may be filed as one application".

According to the revised patent law, two or more similar designs for the same product may be disclosed in a single design application, in addition to designs of products sold or used as a set.

Stay tuned to www.maierandmaier.com for further updates on this and other IP topics.

China advances in international patent application rating

By Christopher J. Maier on March 10, 2009 10:19 AM | No Comments | No TrackBacks
For the year 2008, China's State Intellectual Property Office filed 6,089 patent applications under the Patent Cooperation Treaty, an increase of 11.9% over the previous year. The increase in foreign-filed applications allowed China to move up from seventh to sixth place in the ranking of countries with the most international patent applications, surpassing the United Kingdom.

The first five places in the ranking were occupied by the United States, Japan, Germany, South Korea and France. Stay tuned to www.maierandmaier.com for further developments and information on Chinese Intellectual Property matters.

Differences between various types of patent applications

By Christopher J. Maier on March 4, 2009 4:13 PM | No Comments | No TrackBacks
Continuing our video blog series, Timothy Maier provides an explanation of the differences between continuation applications, continuation-in-part applications and divisional applications, as well as the strategies involved in choosing which of these applications to file.

« February 2009 | Main Index | Archives | April 2009 »