The United States Patent and Trademark Office (USPTO) has implemented a Full First Action Interview Pilot Program which allows the applicant to conduct the interview prior to the first office action on the merits. In my experience, telephonic interviews are in general fruitful in that a dialogue is started with the examiner to understand the […]
The Federal Circuit made new ground when it decided TianRui Group Co. v. ITC. This decision gives U.S. companies the right to stop importation of goods at the border when the goods were made using misappropriated trade secrets of a U.S. company. This is a big win for U.S. trade secret owners since the importation […]
The patent search is an optional step prior to filing a patent application. The patent search attempts to find the most relevant prior art references in relation to the invention at issue. Based on the search results during the search stage, an opinion is rendered as to the patentability of the invention. The patent search may also referred to as a novelty search, comprehensive search and patentability opinion. During the search process, a patent attorney reviews the uncovered references and determines whether the invention is disclosed by the prior art. The issue is whether the invention is novel (i.e., new) with respect to the prior art references
Under the America Invents Act, virtual patent marking is allowed. Products may be marked “patent” with a web address that maintains a list of products and patents. Also, false patent marking lawsuits are available to the government and those with a competitive injury.
Everyone “substantively involved” with the preparation, filing and prosecution of a patent application must disclose relevant information to the Patent Office. In the following case, the Court reviewed who might be included in the definition of “substantively involved.” The non-inventor president of a small closely held company was under the duty to disclose. He failed to disclose a sales presentation that occurred more than one year before the filing of the patent application. Court held: patent is unenforceable for inequitable conduct. Lean on the side of disclosure. When in doubt, disclose.