Monday, November 5, 2007

Updates to Patent it Yourself (15th and 14th eds.)

Patent It Yourself--15th Ed.--Updates

The American Inventors Act was passed on 2011 Sep 16. For a detailed summary of the AIA, go to Then click "Patent, Trademark, and Copyright" on the left side. Then click "Legal Updates" on the bottom left. Then click "Major Changes Made To Patent Law" in the center. Finally click "an analysis of the AIA" in the paragraph in the center.

Other updates to the 15th ed. are coming.

Patent It Yourself--14th Ed.--Updates

The below updates to the 14th edition are arranged by chapter.
The date I published each post is in brackets at the end of the post.


P. 2, col. 2, at the end of Par. C., “Using An Attorney”, insert

I have seen a number of inventors who were victimized by their attorney (or agent) by allowing the attorney to file an application or continue prosecution at great expense even though the invention had a serious commercial drawback (see Ch. 4) or was mostly anticipated by prior art (see Ch. 5). Had they read this book, taken more interest, and followed what the attorney and/or PTO was doing, they would have known that it would have been unwise to continue and could have saved hundreds, or even thousands of dollars by terminating at an earlier stage. [2010 Jul 26].

Chapter 1
P. 9, col. 2, after par. 1, insert:

Common Misconception: One needs a patent in order to manufacture a product.

Fact: You may manufacture any product freely whether or not you have a patent on it, so long as the product is manufactured legally and so long as no one else holds an in-force patent on the product. A patent is an offensive weapon only and will not give you any defense against infringing another’s patent. “You don’t need a patent to go into business; you get a patent to keep others from going into your business.” -Steve Mendelsohn, Esq., Phila. [2010 Jun 4]

Chapter 2

Chapter 3

P. 58, col. 1, above the heading (“5. Disadvantages of the PPA”) insert:

· If you file a PPA and thereafter make any changes in the invention, you can file additional PPAs to cover the changes. You can claim the benefit of as many PPAs as you want in any RPA(s) you file, so long as all PPAs that you claim priority from were filed within a year preceding the RPA’s filing date.

· You can put multiple inventions in a single PPA and claim the benefit of these in separate RPAs, provided the RPAs are filed within a year after the PPA was filed. [2010 Jun 9]

Chapter 4

Chapter 5
P. 95, col. 2, at the end of the In re Bilski sidebar add:

Unfortunately the Supremes didn’t get it and decided to renege on their earlier assertion that everything under the sun made by humans could be patented. On 2010 Jun 28 they affirmed the CAFC’s decision in Bilski, saying Bilski’s invention was too abstract to patent. (Four of the judges would even have held that all business methods, even if tied to hardware, should not be patentable.) So if you invent a business or any other method, make sure you describe and claim it so that it either (1) is tied to a particular machine or apparatus, or (2) transforms a particular article into a different state or thing. [2010 Jun 28]

P. 97, at end of Item 4., insert:

A trial court recently held that genes were not patentable subject matter, but this decision is being appealed. Assn. for Molecular Pathology v. Patent and Trademark Office (U.S.D.C.S.D.N.Y, NY Times, 2010 Mar 29). [2010 Jun 4]

P. 115, col. 1, add at end of column:

H. Don’t Make Assumptions About the lawWhile I’ve tried to explain as much as possible about patent law, unfortunately I can’t cover everything. So if you encounter an issue you don’t know the answer to and can’t find the answer in this book, I strongly suggest that you don’t act on any assumptions since you could suffer for acting on an incorrect assumption. True examples: 1. LeRoy assumed that because a regular patent application had to have at least one claim to be entitled to a filing date, his application, which had four independent claims, counted as four patent applications. He then advertised that he had four patents pending that covered his invention. 2. Griselda assumed that if a prior patent showed her invention, but didn’t claim it, then she was entitled to get claims to this invention allowed in her patent application. To avoid these incorrect assumptions and the harm that could befall you, I suggest that if you can’t find the answer to an issue, you look further, ask a patent attorney, call the PTO’s Help Desk at 800-786-9199, or ask an inventors’ organization. [2010 Jun 14]

Chapter 6
P. 149, col. 2, l. 11, delete "be" (first occur.). [2010 Apr 21]

Chapter 7

Chapter 8
P. 192, col. 2, above “Use Copious Headings” insert:

Most writing tends to be less formal and even sloppy now because people do a lot of informal texting and emailing. However a patent application (and any other legal document), should be perfect and free of any errors since any flaw or error or solecism will be attacked or looked upon with disdain by anyone who reads the application, such as an examiner, a potential licensee, or a judge. [2010 Jun 9]

Chapter 9
P. 227, col. 2, under "d. Manual Methods", indent the second line of the claim and label it "a.". Re-letter paragraphs a.-d. as paragraphs b. to e., respectively, and insert --and-- at the end of former paragraph c., now paragraph d. [2010 Apr 21]

P. 239, col. 1, at end of column, insert:

19. Make Sure Relative Terms Are Not Ambiguous
--Generally the PTO will hold that a claim with a relative term, such as small, large, close, etc. is indefinite, i.e., it fails to particularly point out and distinctly claim the invention under Sec. 112, Par. 2. However if the relative term is such that it would normally be understood by a person having ordinary skill in the art (PHOSITA), the Patent Court has held that the PTO should accept it. Power-One v. Artesyn Tech (CAFC 2010 Mar 31). In this case a claim that stated that a regulator was “near” a load was held to be unambiguous to a PHOSITA since the description stated that the regulator was to be placed close enough to the load so that the system will operate properly and thus no specific distance was needed.-- [2010 Jun 3]

P. 250, add another checklist item as follows:

--[ ] Method limitations and apparatus limitations aren’t used together in any single claim or in any Markush group. (If an application contains a method parent claim, the PTO will usually allow a dependent apparatus claim if the dependent claim recites more details about an apparatus element in the method parent claim.)-- [2010 Jun 4]

Chapter 10

P. 276, col. 2, at end of “Box 16” par., insert

One advantage of allowing your application to be published is that if you file an application on your invention and later abandon the application after it’s published, and someone else later files on the same invention, your published patent application will block this person from getting a patent on your invention. If you file an NPR and abandon the application and someone else files on your invention, this person can get a patent on the invention and prevent you from ever making, using, or selling your own invention! [2010 Jul 22]

P. 297, col. 2, at end of “Become A Registered eFiler” sidebar, add

The PTO now has an optional “e-Office Action” service whereby they will send all correspondence to up to three of your email addresses in lieu of postal mail. To guard against lost emails, they will send a postcard reminder if the email is not opened within a week. This service can be useful if you’re traveling, your mail is unreliable, or you want to get correspondence quickly. If you’re a registered eFiler you can sign up for this service by going to Then click “Private PAIR”, sign in with your Digital Certificate and Password, click “View Customer Number Details”, click “Request Customer Data Change[s]”, and choose “Receive Correspondence Notification via e-Mail”. [2010 Jul 26]

Chapter 11

Chapter 11

P. 304, col. 2, par. 4, after “Examples of” insert –some companies that have claimed to be—. [2010 Jun 24]

Chapter 12

Chapter 13
P. 339, col. 1, after Item 10, insert:

11. Enhanced First Action Interview Pilot Program
The PTO is testing a program under which some applicants will have an opportunity to interview their examiner before the first office action but after the examiner makes a search. The goal of the program is to dispose of application early without the need for office actions and amendments. If your application is legible for the program and you feel confident enough to study the references, redraft your claims, and handle an interview, I recommend you enter the program. The program is scheduled to end 2010 Oct 1, but may be extended or implemented permanently. To see if you’re eligible, and to see if the program has been extended, you can view the list of eligible applications and see all of the PTO’s notices with the full details by going to the PTO’s home page ( and entering “First Action Interview Pilot Program” in the search box. To enter the program you must be a registered e-filer and you must file a request on Form PTO/SB/413C. [2010 Jun 7]

12. Ombudsman Pilot Program

The PTO has implemented an Ombudsman Pilot Program under which you may be able to resolve breakdowns in the normal patent prosecution process with the aid of a Technology Center Ombudsman (TCO). This program is not intended to resolve normal issues, such as patentability, but only when you have a question about a specific application in prosecution and have not been able to find the right person to assist you or when you have been able to obtain assistance from your examiner or the Supervising Patent Examiner (SPE). To invoke the aid of a TCO, go to and read the notice and the FAQs to see if it is applicable to your situation. If so, complete and submit the form in the notice. The TCO will contact you by phone to obtain the details from you orally. [2010 Jun 7]

P. 376, col. 1, after par. 2 insert

N.b. that even if an independent claim was rejected under § 102 (lack of novelty) over a single reference, you have to cover §§ 102 and 103 as follows: (1) rebut the § 102 rejection by showing that the claim contains novelty over the single reference, and (2) cover § 103 (obviousness) by showing that the novel feature(s) are also unobvious over the single reference.

Moreover, even if you show that that the independent claim is novel and unobvious over the single reference, you should also show that the independent claim is also patentable over the combination of the single (main) reference in combination with any pertinent secondary references. This is because, even though the independent claim is novel and unobvious over a single reference, it might be obvious to combine the main reference with a pertinent secondary reference. I.e., to cover all bases you have to show that no valid combination of the main reference and a pertinent secondary reference shows all the features of the independent claim.

Once you argue the patentability of the independent claim over the single reference and any combination of the single reference with any pertinent secondary reference(s), you don't need to cover any claims that are dependent on this independent claim since they are narrower than the independent claim and thus are a fortiori (by stronger reason) patentable over any combination of the main reference with any pertinent secondary references. [2010 Jun 24]

Chapter 14

Chapter 15
P. 408, col. 2, Sec. D, in ¶ 2, line 1, change “278” to –287—; at end of col. add:

If you do mark, be careful since you can be subject to substantial damages if you mark improperly. A statute, 35 USC § 292, states that if you mark falsely with intent to deceive, you can be subject to $500 in damages for each offense. In Pequignot v. Solo Cups (CAFC 2010), a patent attorney sued Solo to obtain damages because Solo marked its paper cup lids with the number of an expired patent. The court held that Solo was not liable for the $500 penalty per lid since they marked on the advice of counsel and to save money in mold costs and prevent business disruption. I.e., they had no intent to deceive. So if you do mark, make sure the patent’s claims cover the product and the patent is still in force and maintenance fees have been paid up to date. [2010 Jun 28]

Chapter 16

P. 443, insert below the two existing columns:Desiderata For The Patent System

Currently there are several bills to “fix” the patent system and various parties are arguing over whether it needs to be “fixed” and if so, how. One great bone of contention is whether to continue with the present “first-to-invent” system or to change over to a “first-to-file” system. I prefer the latter since it will make things easier for independent inventors by eliminating costly interferences, but I recognize that there are two sides to this issue. I could discuss various other issues but to me they are all small potatoes and will not make much difference either way. My main complaints about and desires for the present patent system are much more fundamental and I have listed them below

My main desire is to provide a way to help those patentees who have an infringement but find that the damages aren't great enough, or the infringer isn't flush enough, to make it worthwhile for a contingent-fee litigator to take the case. As it is now, such patentees have a worthless patent. Thus it rarely makes sense to file for a patent unless the invention will be big enough for a contingent-fee litigator to take it if it's infringed. If we could have the PTO or some other agency adjudicate infringements in a cheap manner that doesn't require a skilled litigator or a guy with the persistence of Dr. Robert Kearns (see the movie "Flash of Genius"), that would immensely increase the value and incentive of patents.

Also the CAFC has been issuing a lot of decisions in the past few years that have invalidated patents for minor reasons, thereby providing many traps for those who may not have written the application in accordance with all of the CAFC’s picayune rules. Most of the CAFC judges have no experience in the real world of patents and have never written a patent application. Legislation to overrule these irksome decisions, eliminate invalidating claims or patents for minor technical errors, and require CAFC judges to be registered before the PTO would help a lot.

Lastly, we could use legislation to simplify and loosen the requirements of patent applications and amendments to make things easier and cheaper for independent inventors. Almost everyone trips over the new rules for presenting claims in amendments, so much so that each Group in the PTO now has a special person, called a Legal Instruments Examiner, just to check amendments to make sure they're canonical (in the proper format). If not, they will make you resubmit the amendment or part of it. Recently I filed a PCT application where I used an /S/ signature ("/John Smith/") but I didn't retype the signer's name ("John Smith") underneath the /s/ signature so they went to the trouble of sending me a letter, objecting to the paper but not telling me why. When I called the PTO the clerk said I had to resubmit the paper with the signer’s name typed below his /s/ signature! [2010 Jun 25]


Appendix 1
, col. 1, change “CFIM Contingent-Fee Invention Marketer” to –CFIB Contingent-Fee Invention Broker—.

Appendix 1, col. 2, add –FBIE Fee-Based Inventor-Exploiter—. [2010 Jun 24]