New revenue extraction scheme from the PTO January 31, 2012
Posted by Brian Schar in General.add a comment
I just received two letters from the USPTO in response to a filing of drawings and other papers in response to a notice of missing parts in two separate cases. In each case, the Legal Instruments Examiner (appropriately, the “LIE”), who was the same for each case, abandoned the application for failure to respond to the notice of missing parts. The failure to respond was purportedly a problem with the margins of one or more drawings – a problem which the LIE failed to identify by figure number or sheet number.
It might be time to contact the Ombudsman again and figure out what to do about this blatant extortion. Apparently no one trained the LIE on 37 CFR 1.135(c).
Patent office pet peeves January 6, 2012
Posted by Brian Schar in USPTO.add a comment
Office Action response: Make argument A against rejection
Final Action: Copy and paste contents of first Office Action, ignore argument A
Appeal Brief: Make argument A that was previously ignored
Receive call from Examiner reopening prosecution to address new argument A. ???
An interesting bit of history January 5, 2012
Posted by Brian Schar in USPTO.2 comments
US Pat. No. 2297256 is an interesting historical tidbit. The inventor, one Winfried Schumann, was a German national who filed a patent application in the USPTO in 1939, based on a German application filed in 1938. The patent wasn’t issued until 1942. Of course, in the interim Germany and the US went to war. That didn’t stop the patent from issuing. The interesting part is the first text page that sets out inventorship and ownership: “Winfried Otto Schumann, Munich, Germany, vested in the Alien Property Custodian.” I had no idea there had been such a thing as the Alien Property Custodian, but I suppose it makes sense that the USPTO wouldn’t grant patent rights to a citizen of a country against which the USPTO declared war, and that the APC would take control of that patent. In my ample spare time I may attempt to find out more about the Alien Property Custodian, and whether the APC relinquished title to the inventor after the conclusion of hostilities.
Additional thoughts about patent prosecution strategy and tactics January 4, 2012
Posted by Brian Schar in Patent prosecution, USPTO.add a comment
As patent attorneys, we are first and foremost attorneys, regardless of our chosen specialty. As such, we have training and experience in arguing the law as well as the facts. Patent examiners, as well-trained as they may be in the MPEP and in the mechanics of patent examination, are rarely attorneys. Consequently, in a matchup between a patent attorney and an examiner, the advantage goes to the patent attorney in the legal aspects of patent prosecution. Strategically, a patent attorney wants to be in that position of arguing the law and playing to his or her advantage in that subject.
Tactically, a patent attorney gets to that position on appeal. On appeal, cite cases, argue the law, and treat the appeal brief just like any brief you would file in the course of patent litigation. If you simply engage the examiner on his or her own terms in the appeal brief, you have conceded your most valuable advantage. I smile when I receive an Examiner’s Answer that simply reiterates the final action and ignores the legal arguments in the appeal brief, because the reply brief is then short and sweet – a quick reiteration of the most important legal points, followed by an argument under Zurko that the examiner has ignored the law and thus acted arbitrarily and capriciously by definition, with the addition of any other highlights that improve my odds of winning.
