Patent Attorneys' Discussion Thread...

[Houston Techsan]

I Can't see how denial of petition affects the six months period for filing missing parts. If it had been after the six months you would have had to refile the whole thing. If you aren't worried about priority you may do this anyway, but it could confuse foreign filings later. I know this is supposed to be common, but in my 25 years I have never had this problem, even dealing with ex-employees who may have left on unhappy terms.

Speaking of foreign filings, what are your thoughts on provisional applications as priority documents? It appears that most countries accept them and so you might have the filing date of the provisional running against you. I know provisionals were initially set up to get around this, but it seems to put some doubts in some minds. My associate always assumes that he's up against the provisional filing date, and gets his Convention applications on file by that date. I personally don't like provisionals and have only filed a couple. At first the requirements were so much looser, but now you really need a full blown application (less claims) if you plan to rely on it even for US priority, so the applicant is really only saving on the filing fee.

[Guisslapp]

I Can't see how denial of petition affects the six months period for filing missing parts. If it had been after the six months you would have had to refile the whole thing. If you aren't worried about priority you may do this anyway, but it could confuse foreign filings later. I know this is supposed to be common, but in my 25 years I have never had this problem, even dealing with ex-employees who may have left on unhappy terms.

Speaking of foreign filings, what are your thoughts on provisional applications as priority documents? It appears that most countries accept them and so you might have the filing date of the provisional running against you. I know provisionals were initially set up to get around this, but it seems to put some doubts in some minds. My associate always assumes that he's up against the provisional filing date, and gets his Convention applications on file by that date. I personally don't like provisionals and have only filed a couple. At first the requirements were so much looser, but now you really need a full blown application (less claims) if you plan to rely on it even for US priority, so the applicant is really only saving on the filing fee.

I don't have a problem with claiming priority to provisionals. But like you said, with the current law of written description, you really shouldn't skimp on a provisional application. Drafting it just like you would a nonprovisional (except for maybe satisfying the formal requirements) is the only safe way to go. The real benefit of a provisional, IMO, is that you get a priority date in the US without losing patent term. If you want to claim priority in a PCT application to the provisional, you need to get the PCT on file within 1 year of your provisional.

[Guisslapp]

A case I am currently dealing with -

Application is filed for invention invented by A and B. Cannot get B to sign declaration, so file a Petition under 1.47 to accept application without B's signature. Petition is refused because USPTO attorney sucks (the Petition set forth all the statutory requirements and contained the necessary evidence, but this case has strange facts that this USPTO attorney probably has never seen before). While trying to address problems that USPTO attorney has with Petition, declaration signed by B comes in. We are not beyond 6 months from the Notice of Missing Parts. What do I do?

The answer is - you can file the oath/declaration as part of a "Request for Reconsideration of Petition".

[Houston Techsan]

Good work.

[Guisslapp]

New post-KSR guidelines were posted in the Federal Register today.

[DogtorEvil]

zzzzzzzzzzzzzzzzzzz

[Houston Techsan]

Yes. US District Court Judge David Hittner (Southern District of Texas) defines boring as a patent case. They're not boring to either party. What the judge is trying to do is put it into perspective if you have a jury. Did a trade secret case (based upon filing on a stolen invention See Proler v. Modern Equipment Co. about 1984 or 85 it's in the PQ) many years ago when our lead counsel used a "who dunnit" theme and kept the jury interested. Judge slept and missed the most important testimony and threw out a $75 million verdict. Settled before the new trial on damages.

Point is, if you're not a patent attorney ZZZZZZZZZZZZZZZZZZZZZZZZZZZZZ!!!!!!!!!!! But we love it.

I remember when I was a research engineer I thought reading patents was boring. Now I know how much technical info is in them and how to read them (after having written several hundred).