What is a Patent Office 103 Rejection of My Patent Application?

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QUESTION: The examiner had issued a 103 rejection based on a single prior art reference. After my counter-arguments, he now issued another 103 rejection again based on a single reference, but different from the first one. He wrote the following: In the event the determination of the status of the application as subject to AIA 35 USC102 and 103 (or as subject to pre-AIA 35 USC 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. What does that mean in plain English?

ANSWER: Depending on when your patent application was filed will dictate what laws apply – pre-AIA or AIA. The 103 rejection means that the patent office has found your patent application (specifically, your patent claims) to be obvious in view of the prior art.

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Protect Your Idea When Working with Manufacturing Company

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QUESTION: I have an idea for a new invention, in order to begin to prototype, I would have to hire a company to have it be made. Being that there are multiple manufacturers out there, I know that I may have to discuss my idea during each consultation I have. Is there something I can do to ensure they won’t run off with my idea if I decide to not work with them?

ANSWER: At least use a non-disclosure agreement with the companies. And better yet, also file a provisional patent application before starting your discussions.

 

Does a Provisional Patent Need Patent Claims?

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QUESTION: Should an inexperienced person filing a provisional patent application just leave out the claims (as allowed), or is it better to add at least one claim that is very broad in scope? What is the benefit of putting a claim in a provisional patent since claims can be totally amended later during the non-provisional application? For example: I want my eventual claim to be as broad and powerful as possible, and I’m pretty sure my claim can cover all sorts of variations of what I want to make, but I’m not positive if any of these many possible variations have been made before. If I attempt to make my claim to cover every variation am I shooting myself in the foot by not being specific enough, or can I totally change the claim to be more specific later if needed when I working with an actual patent lawyer for the non-provisional? Care will be taken to make a very detailed description of different embodiments in the provisional application.

ANSWER: It can be beneficial to add one or a few independent claims, particularly if you want to use the provisional application to claim “priority” in a PCT application.

Protection of a Slogan

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QUESTION: If I have a tagline that I want no one else to be able to use, is that considered copyrighting or trademarking. It’s a memorable tagline that has my last name in it. For example let’s say my last name was Gold. My tagline might say Have faith in Heather Gold, she outshines the rest.

ANSWER: A slogan may be protected by trademark, if it being used as a trademark. Slogans that are merely descriptive of the services or goods may not qualify as a trademark. Your slogan may have difficulty in getting trademark protection.

 

How to Oppose the Registration of a Conflicting Trademark

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QUESTION: We have been using a trademark since January 2015. We are selling products with the trademark displayed on packaging and product labels. We also own the trademark domain name. However, we never filed with the USPTO since we were told that it is unnecessary and we would still be protected if we actively using it in commerce. Now, someone filed it and their mark is published for opposition in September. I am planning to have a Notice of Opposition filed as soon as they are published. Any suggestions?

ANSWER: If you have been using your trademark in other states and there is a likelihood of confusion between your trademark and the later used trademark, you can file an opposition. After filing the notice of opposition, the process is similar to a lawsuit.

Conflict Between Three-Word and Two-Word Trademarks

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QUESTION: I have a question on compound word trademark registrations. Without disclosing the actual name, we have a trademark application that has passed through opposition. we have submitted the specimen and are awaiting a registration. Two months ago a new application (has not been issued an examiner) was submitted with a similar name, in the same category, 03. our name is: GoodSkinActives competitor application is: Good Actives. What are the chances that the examiner will see a conflict with our mark which hopefully will be registered by the time an examiner is issued to our competitor?

ANSWER: Typically, when the latecomer to the same market removes one word of a multi-word trademark by an earlier user, the earlier user of the multi-word trademark has prior rights. Therefore, if the earlier user has  filed a trademark application, and the examiner finds it, the latecomer’s application will likely be rejected.

Can You Patent Chemical Formulation

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QUESTION: Can I patent a formula of essential oils and carrier oil? I want to produce a cleansing product and I would like to know if I can patent the formula which involves several essential oils and a carrier oil.

ANSWER: Yes, if your formula has not been formulated by another before your invention, and your formula is not obvious in view of what has been formulated before your invention.

Patent Rights After Leaving a Company

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QUESTION: I am working in a company which filed a patent application for me (I am the only inventor and the assignee is the company). Currently I have the application number but the patent is still under review. Now I am thinking of switching job to another company in the future but wondering if I will need to wait till the final publication of the patent.

ANSWER: Even if you leave your employer, you will still be an inventor of the patent. However, whether you leave now or after the patent issues, you will not be an owner of the patent. Your employer will be the owner.

Inventor of Improvement to Patent Pending Idea

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QUESTION: If a manufacturer makes improvement to the patent pending idea, is the company considered a co-inventor to the invention moving forward to update the patent application? If so would the manufacture now be more likely to have an invested interest to help fund the development?

ANSWER: An improvement to an existing idea can be patentable. The inventors of the improvement are not necessarily the inventors of the existing idea. If the manufacturer was not the inventor of the original patent pending idea, an improvement does not make them an inventor of the original idea.

Cease & Desist Over Provisional Patent Application

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QUESTION: Can someone stop me from doing business just because she has filed a provisional patent application with the USPTO? FACT OR EXTORTION? I received a Cease & Desist Order via email directing me to stop manufacturing my metal greeting cards because this party has filed a provisional patent application for “metal greeting cards.” Subsequently, this party contacted Kickstarter and personally suspended my $285,000. fundraising campaign charging that I have infringed on her patent. She has refused to give me product details supporting her application, so, I have no idea if my product and hers are the same. Then, she had her attorney prepare a formal licensing agreement that would require that I pay her $3000. monthly to make my metal cards. Her application does not go before the USPTO examiners until Sept. 17, 2017, at which time, she may, or may not, receive an “issued patent.”

ANSWER: Generally, one does not have patent rights from a pending provisional patent application to sue for infringement. Only issued patents can be used to sue for infringement.

And, the USPTO does not examine provisional patent applications in a substantive fashion that allows the application to issue as a patent. In your case, if the application is in fact to be examined, the application must be a non-provisional application.