IP in Depth

Michael Gzybowski, intellectual property attorney with Brinks Gilson & Lione, focuses on patents and the patenting process.

ARTICLES

IP in Depth: Avoiding Unnecessary Disclosures in Patent Applications

The distinction between disclosing how to practice an invention and explaining how an invention works is important to understand when drafting patent applications.

The disclosure of an invention in a patent application must meet the “enablement” provision of the U.S. Code, which states that the “specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”


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IP in Depth: The USPTO's Glossary of Terms Pilot Program

To participate in the pilot program, applications must include a glossary of terms at the time of filing.

On March 26 the U.S. Patent and Trademark Office (USPTO) announced that it will launch a new Glossary Pilot Program in which expedited processing of patent applications will be offered to applications that include a glossary of terms that defines the terms used in patent claims.


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IP in Depth: Effective Preissuance Submissions

Preissuance submissions are an opportunity to present prior art in such a way that a patent examiner will be convinced to apply the prior art to reject pending claims.

“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” says Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos.


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IP in Depth: Understanding the USPTO's Compact Prosecution Process

Under compact prosecution, examiners were expected to prosecute a patent application thoroughly in the first USPTO action.

Under compact prosecution, examiners were expected to prosecute a patent application thoroughly in the first USPTO action.


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IP in Depth: Expediting Patent Application Examinations

The USPTO developed four programs designed to speed up the examination of patent applications.

In August 2013, the U.S. Patent and Trademark Office (USPTO) reported a backlog of 591,665 patent applications waiting to be examined and an average total pendency (time from filing to end of examination) of 29.4 months.


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IP in Depth: What Happens to Abandoned Patent Applications?

Roughly 85% of all new patent applications are rejected in first Office actions.

Whether the process is performed by an independent inventor or a corporate entity that regularly files U.S. patent applications, having a patent application(s) drafted, filed, and prosecuted involves a substantial investment in invention development time and costs, as well as legal expenses. An additional emotional investment is often based on the hope that pursuing and protecting the invention(s) will result in financial rewards.


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IP in Depth: First-to-File Cautions and Strategies

The best strategy is for inventors and patent applicants is to file patent applications as early as possible.

When the U.S. Patent and Trademark Office (USPTO) adopted the America Invents Act (AIA) “first-to-file” system on March 16, the following scenarios became reality.


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IP in Depth: Preparing for First-to-File

On March 16, the U.S. Patent and Trademark Office (USPTO) will switch from the current “first-to-invent” system to a “first-to-file” system.


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IP in Depth: Preissuance Submissions

Under the provisions of the America Invents Act (AIA), the U.S. Patent and Trademark Office (USPTO) will allow the general public to become involved with the examination of pending patent applications owned by third parties
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IP in Depth: Changing the Patenting Process

On September 16, 2012, a number of the provisions of the American Invents Act (also referred to as the “Patent Reform Act of 2011”) will take place. One of the provisions will allow assignees of inventions to file U.S. patent applications.
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