The digital age of cyber publishing and intellectual property raises many questions about copyrighting. If you have never published anything in your life, you still hold copyrights. If you do publish your work, how do you know your copyrights are in place? Copyrighting is not complicated or difficult, there is a quick and easy way to copyright any creative material you produce.
Copyright law in the United States is extremely generous toward the creators and owners of new works. Legal copyright protection is in effect immediately and automatically upon the creation of any “original work of authorship” that is “fixed in any tangible medium of expression.”
In other words, a copyright notice is not necessary for your work to comply with U.S. Copyright law. For example, when authors, webmasters, amateur writers or anyone else submit creative material of any kind for publishing, that creative material is automatically copyrighted. No copyright notice is necessary to be legally binding.
The laws are so generous in fact that the notes or scribbles you mindlessly make while speaking on the phone are considered copyrighted material, even if you wad it up and toss it in the trash at the end of the call. This does not mean that copyrighting should be taken lightly. There are significant legal advantages to using a copyright notice.
Copyrights can also be given away in part or in whole and must be agreed to in writing. The details of this are way beyond the scope of this writing. All authors and publishers have taken part in copyright agreements knowingly or unknowingly.
Quick and Easy Copyrighting:
The conventional copyright notice consists of 3 elements. The the word “copyright” or the copyright symbol, the year, and the name of the copyright owner.
Copyright © 2006 [Your Name or Company]
To comply with current copyright law and to copyright any computer generated creative materials follow this formula. First, add the copyright notice as described above to the end of the document. When you have finished editing, save your document as a file.
Finally, print the complete document with the title or file name and the current date. Set these to be printed in your printer settings or use the header and footer options of your text editor. Optionally you can simply type the title and date along with your copyright notice manually.
For example:Copyright © 2006 Lyle Cochran
Copyright Procedures, Quick and Easy, July, 19, 2006
The printed hard copy becomes your Master Document. This document should be protected at all cost as it is proof that you are the author of the created material.
Other medium:
If your creative material is on some fixed and tangible medium other than computer, your hand written signature and date is usually enough copyright protection until you can apply for copyright.
Summary:
I know that the procedure outlined here sounds too easy, but it is the procedure recommended by the U. S. Copyright Office. This short procedure is valid and will stand on its own in litigation. Remember that the original date is key and a hard copy adds considerable weight to ownership.
If you wish to make your copyright bullet proof, you can begin copyright procedures online at the United States Copyright Office. ( http://www.copyright.gov/ )
Quotes Resource: http://www.copyright.gov/
Archive for February, 2010
Copyright Procedures; Quick and Easy
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The Cost Of A United States Trademark Registration
How much does it cost to receive a U.S. Trademark Registration? Here is what you need to know about the costs involved in registering a trademark in the U.S.
The ETEAS and ETEAS PLUS Systems
The United States Patent and Trademark Office (“USPTO”) charges either $275 or $325 per class of goods or services to file an application for a U.S. Trademark Registration.  Whether the cost per class is $275 or $325 depends upon system the applicant uses at the USPTO.
The traditional filing system, known as the TEAS system, permits applicants to write their own identification of goods or recitation of services with which they wish their trademark to be registered. For instance, Nike would seek registration for a trademark using an identification of goods such as “athletic shoes” in International Class 25. If Nike writes their own identification of goods using the TEAS system the cost is $325 per class of goods or services in which the application is filed.
We’ll explain below what “per class” means.
As an alternative to the traditional system, in recent years the USPTO initiated a new system known as the TEAS PLUS system. The TEAS PLUS system is designed to both reduce the cost of the trademark process while speeding up the registration process. In this regard, provided that applicants meet certain specific criteria and use only identifications of goods or recitations of services from a pre-approved list the cost to register their marks is reduced from $325 to $275 per class of goods or services.
Accordingly, the base price to apply to register a trademark with the USPTO is either $325 or $275 depending upon which system is used.
U.S. Filing Fees Are Per Class
Next, applicants should understand that the USPTO’s filing fees are per class. U.S. Trademark Registrations are goods or services specific. This means that when you seek a U.S. Trademark Registration you must specify the goods or services with which the trademark is, or will be, used.
For instance, Nike undoubtedly owns registrations for NIKE in Class 25 for running shoes whereas McDonalds retains registrations in Class 42 or 43 for restaurants.
There are currently 45 classes of goods and services recognized by the USPTO. Goods and services are defined into these 45 specific classes to both create certainty for the USPTO in regard to the goods or services for which specific Trademark Registrations will apply but also to allow for greater uniformity among international trademark offices of various countries as the world moves toward a unified global system of trademark protection.
As such, an application by a music band who also intends to sell CDs of their music would apply to register a mark in two classes:
Class 9:Â Â Â Â Â Â Â Â Pre-recorded music CDs.
Class 41:Â Â Â Â Â Â Live performances by a music band.
If they file using the TEAS system, their total filing fees would be $650 (2 classes x $325 per class). In the alternative, if they are able to use the TEAS PLUS system their filing fees would be reduced to $550 (2 classes x $275 per class).
As such, prospective applicants must be savvy in regard to not only the system which they use but also the classification system and how many classes their requested application may fall into to understand the true cost of the U.S. Trademark Registration for which they seek.
The Distinction Between Use and Intent-to-Use Applications
Next, if your trademark is in use at the time of filing the application should be filed as a use-based application under what is known as Section 1(a). However, if the trademark is not in use as of the date of filing it is required to be filed as an intent-to-use application under Section 1(b). If it is filed as an intent-to-use mark, additional fees will apply in order to get the mark registered.
In short, should the USPTO deem the application worthy of registration rather than receiving a Certificate of Registration like a use-based application, an intent-to-use application receives what is known as a Notice of Allowance.
The Notice of Allowance is akin to a permission slip which allows the applicant to complete the registration process and receive its Certificate of Registration upon filing what is known as a Statement of Use. This subsequent filing, however, requires an additional charge of $100 per class of goods and services.
Accordingly, if you have a 2-class intent-to-use application filed under the TEAS system the fees to register the mark would look something like this:
Application Fee = $650 (2 x $325);
Statement of Use Fee =Â $200 (2 x $100);
Total Fees to Register a 2-Class Intent-to-Use Application = $850.
But it does not end here. We mentioned above that to file the Statement of Use costs $100 per class. Of note, from the date of the Notice of Allowance an applicant has only 6 months to file their Statement of Use establishing use of the mark. If the mark is yet to be in use by this date an applicant may file for an extension of time in which to file their Statement of Use. An extension of time to file the Statement of Use costs $150 per class. An applicant may file up to 5 extension requests per mark or may extend the due date of the Statement of Use for up to 2 and one half years (5 x 6 months) following the conclusion of the initial Notice of Allowance Period.
So let’s look back at our example above changing the situation slightly to reflect a need to file the Statement of Use 8 months after receiving the Notice of Allowance. Recall, this would require one extension of time to file the Statement of Use as an applicant is only permitted 6 months to file the same following receipt of the Notice of Allowance. Under that scenario the same would look something like this:
Application Fee = $650 (2 x $325);
Extension of Time in Which to File Statement of Use = $300 (2 x $150);
Statement of Use Fee =Â $200 (2 x $100);
Total Fees to Register a 2-Class Intent-to-Use
Application with One Extension of Time = $1150.
As you can see, the base price to apply for a U.S. Trademark Registration can vary widely depending upon the (1) USPTO system used, (2) the number of classes for which the application is made, (3) whether the application is use-based or an intent-to-use, and (4) whether, if an intent-to-use, an extensions of time are required prior to filing the Statement of Use.
Law Firms and Filing Services
Lastly, we would be remiss if we did not mention the cost of assistance in the trademark filing process. The cost to have a law firm and/or filing service file for a trademark on your behalf typically ranges from $149 to well over $3000 depending upon the size of the firm or company and the level of experience they retain in the trademark arena.
The obvious expense to using a law firm or filing service is the additional costs involved in employing the same. The benefits, however, typically far outweigh the burden of the costs insofar as a skilled firm can not only reduce or minimize the costs involved as referenced above but also retain invaluable experience in what can be a complex system to garner a U.S. Trademark Registration.
Often the cost of the legal services are fully offset by the firm or company’s ability to have an applicant’s application filed in the TEAS PLUS system versus the TEAS system, reducing the number of classes filed for, and even working with the applicant to determine whether an application may be filed as a use-based application versus an intent-to-use or otherwise.
Moreover, as the USPTO’s filing fees are non-refundable most consumers prefer the added confidence of knowing that their application is being prepared and prosecuted by a seasoned professional.
Summary
In conclusion, there is much to know about the costs involved in filing for a trademark. Whether it is that the costs involved are dependent upon the filing system used, the number of classes filed for, or whether the application is filed once use has begun or not will all affect the price of your trademark application. Additionally, most consumers prefer to rely upon the experience of seasoned professional to sort through the filing costs, reduce filing fees whenever possible, and advise them as to the availability of their mark prior to incurring non-refundable filing fees.
Without assistance, the cost for a U.S. Trademark Registration can be as low as $275 for a one-class mark filed using the TEAS PLUS system. However, if the applicant does not satisfy all of the requirements of the TEAS PLUS system additional fees will apply.
In the alternative, applicants may seek to assistance from an experienced law firm to assist in the registration process. In that case they should expect the lowest cost to be in the nature of $424 for a One-Class Mark filed using the TEAS PLUS system ($275 for the USPTO filing fee, $149 for the law firm’s services).
What Any Decision Maker Needs to Know About Patent Protection
What Any Decision Maker Needs to Know about Patent Protection
Richard Neifeld, Ph.D., Patent Attorney and Robert Crockett, P.E., Patent Attorney
I. Introduction
This paper explains the basic information a decision maker needs to know regarding patents. There are certain concepts the understanding of which is a prerequisite for this topic. Those concepts are provided in section II. Section III relates patents to countries. Sections IV and V explain the legal requirements for getting patents and how long patents last. Section VI discusses patent treaties. Section VII provides ballpark cost estimates for acquiring patents.
II. Prerequisite Definitions
The term “property right,” also called “ownership of property,” means the right to exclude others from using the property. Property was historically classified as either land or personal, personal property encompassing all property other than land.
The term “intangibles” means rights that are not land or tangible personal property. Intangibles include contractual rights, good will, and intellectual property.
The term “intellectual property” means property rights in certain intangibles, such as patents, trademarks, and copyrights.
Assignment means transfer of ownership of property. (For basic information on invention ownership issues, see http://www.neifeld.com/introart3.html.)
A patent is a property right that has the attributes of personal property. Those attributes include the ability to be bought sold (assigned), and licensed. Like all property, its exclusive right can be enforced. Enforcement of any property right includes the right to sue in a court for (1) damages and (2) an injunction to stop unauthorized use of the property.
There are different kinds of patents, including utility patents, design patents, plant patents, utility models, architectural design rights, and circuit architecture rights. This paper will describe only the most commercially important, which are utility patents.
Utility patents provide a property right to things having an industrial utility, including products, and processes of making and using products. Under current U.S. law, products include computers programmed to perform a useful function, including, for example, a business accounting function, and methods of using include computers running such programs. European law currently does not allow patents on accounting functions, also referred to as business method patents. On the issue of business method patents, Japan’s law is currently somewhere in between that of the U.S. and Europe.
The exclusive right is defined by the claims and the disclosure of a patent. What the claims cover is called subject matter. That is, claims define or delimit “subject matter” to which the patentee has an exclusive right.
Unauthorized use of an intellectual property right is called infringement. Remedies for infringement typically include damages (money equivalent to the harm caused to the owner of the patent by the past infringement) and injunctions (a court order forcing the infringer to stop his infringing activity).
A specification is a written description, often including figures, of subject matter sought to be patented, such as an invention. I try to limit the use of the word “invention” in this paper because it is in many senses mis-descriptive of what a patent can protect.
A filing date is the date that a national or international patent office recognizes its receipt of an application filed in that office.
Prior art means knowledge generally known by other than the patent applicants prior to when the applicants made their discovery or invention. This is a generally applicable definition in the sense that there are several exceptions and fine points that vary from country to country. One major exception is that almost all countries other than the U.S. define the date of discovery or invention claimed in the patent application as the filing date of the application, not an earlier date when work leading to the discovery or invention was done.
III. Who Grants a Patent and Where is Each Patent Enforceable
Generally speaking, patent rights are granted by nations. Each patent is only enforceable in the nation in which it is granted. There are some international treaties that extend the one patent per nation concept. Europe, for example, has one agency, the European Patent Office, that grants European patents. There are a few other such regional patenting authorities, one for the states of the former Soviet Union, and one for certain states in Africa.
Currently, there is no international patent. That is, there is no single patent granted by any patenting authority that is legally enforceable everywhere. However, a world patent has been discussed for decades, and international organizations are making incremental progress towards such an international patenting system. Don’t hold your breath, though. Most people in the patent business expect no international patent in the near future. Also, see below regarding international treaties that ease the burden of obtaining a patent on one invention in many countries.
IV. How Long Are Patents Enforceable
Generally speaking, patent are enforceable for twenty years from when the application for the patent is filed. There are of course exceptions and variations from country to country and application to application.
V. What are the Core Conditions for Obtaining a Patent on Anything
A. The Substantive Requirements for Obtaining a Patent
The core requirements worldwide for obtaining a utility patent are (1) that the thing is useful and (2) that the thing is novel. There is a third requirement, which is referred to as either the “inventive step” or the “non-obviousness” requirement, which generally means that the thing being patented would not have been readily apparent or immediately obvious to someone working in that technology field. The U.S. applies the non-obviousness standard. Europe applies the “inventive step” standard. (The U.S. has imposed an additional requirement, called the “best mode” requirement, but that is a technicality not relevant to the purpose of this paper.)
B. The Procedural Requirements for Obtaining a Patent
The process of obtaining a patent includes the steps of preparing and filing an application for the thing to be patented, prosecuting the patent to issuance, and paying applicable government fees. While this sounds simple, it definitely is not. The preparation of a quality disclosure for a patent application is essential to the government eventually granting the patent and the resulting patent being legally enforceable and therefore accorded respect by potential business competitors.
Generally speaking, the specification must include a sufficient description to enable one of ordinary skill in the art to which it pertains to make and use the claimed subject matter in order for the application to result in a patent. This is generally true in all countries that issue utility patents. In addition, in the U.S., the specification must also disclose the best mode that the inventor had in mind for making and using the invention at the time of filing of the application.
Failing any of the substantive or procedural requirements can fatally flaw the attempt to obtain a patent.
VI. Treaties that Facilitate Obtaining Patents in More than One Country on the Same Thing
There are currently two mechanisms to facilitate extending patent protection on something to more than one country. They are the Paris Convention and the Patent Cooperation treaty.
A. The Paris Convention
The Paris Convention’s core feature is that it allows the filing of a patent application in a second country that is a member of the Convention to be accorded the filing date of an earlier filed application filed in a first country. That allows a patent applicant to file the application in one country, and then to have copies of the filed application sent to agents in other countries for filing there. The Paris Convention has a time limit of one year (for utility patents). That is, the subsequently filed applications in the other countries must be filed within 1 year of the first filed application in the first country, to be accorded the earlier filing date. This right is incredibly important because, in most countries, public disclosure of the subject matter of a patent application prior to filing the application is an absolute bar to obtaining a patent for that subject matter. The Paris Convention allows the applicant to file a single patent application in one country, and then publicly disclose and sell products and processes disclosed in the application without automatically losing the right to a similar patent in the other countries that are members of the Paris Convention. Almost all countries of industrial/commercial significance are members of the Paris Convention. The Paris Convention has been in existence since about 1900 CE.
B. The Patent Cooperation Treaty
The Patent Cooperation Treaty goes one step beyond the Paris Convention. The Patent Cooperation Treaty allows a patent applicant to legally effect filing in every country that is member to the PCT by filing a single application, a PCT application, in any country that is a member of the PCT. The PCT application, however, will not issue into an international patent. Instead, if the applicant decides to obtain a patent in a country from the PCT application, the applicant must still file and pay for the “national stage proceeding” of the PCT application in that country. The benefits of filing a PCT application instead of national stage applications are (1) the PCT application allows for a minimum of 30 months to file “national stage” application during which time the applicant has no substantial patent [...]
Knowing and Understanding Copyrights
Copyright infringement and patent infringement are not quite the same thing, although they are based on the same principle, don’t steal what isn’t yours. Copyright infringement refers to not stealing someone else artistic or intellectual property, such as writings or music while patent infringement refers to refraining from stealing an actual product that doesn’t belong to you.
The U.S. Copyright Office is responsible for holding onto the records of everything that has been copyrighted to help ensure that an individual’s artistic or intellectual property remains their own. However, it is not legally necessary to register a copyrighted material with the office.
It is sufficient to place the copyright icon in front of a copyright statement and is adequate protection for copyright laws. However, it is still more secure to register copyrighted material with the U.S. Copyright Office.
Copyright infringement is the theft of written, artistic, or intellectually produced material. Copyright infringement differs from patent infringement only in the actual material, which can make determining copyright infringement and patent infringement easier to detect.
In business, it is not so unheard of for advertisement media to be copied, thus becoming a copyright infringement. However, there is a difference between stealing the advertising media which creates the copyright infringement and stealing the icon or symbol used to create consumer recognition which is then a trademark violation.
Patented material, such as the product, is the only avenue which a patent infringement can occur. Why is this important? Because from conception to marketing, to advertising, all the way down to the jingle used in the television or radio campaign, stealing any part of the product, the advertising, the logo, the writing, the product enhancement, or any other related idea as it applies to any particular patented or copyrighted material can mean the end of a company.
These various rules can become confusing and even a little hard to wade through when there are numerous people working on any given project. Thus, enlisting the help of a Copyright attorney may be the only way to make sure all of the potential bases are covered.
A copyright attorney can be influential in preventing copyright infringement via advertisement or other written avenue, such as products that are written materials.
Bearing in mind that all printed materials are typically copyrighted, even if they have failed to register with the copyright office, a copyright attorney can still effectively guide a copy writer from accidentally becoming guilty of copyright infringement.
In most cases, any large company or media of copyrighted materials that are likely to be used beyond basic small press use will be registered with the copyright office, as registering with the U.S.
Copyright Office is a failsafe against copyright infringement. Thus, if a small time writer claims against a big company an explicit use of copyrighted material, but the large company registered with the Office, the small time writer can hold no claim even if they copyrighted their own material, simply because the large company registered with the Office.
While a copyright attorney is likely required to determine the exact definition of the laws as they apply to any given case, the likelihood of being held accountable for a copyright infringement that was not registered with the U.S. Copyright Office, and they granted a copyright, there really is no case, regardless of how talented the copyright attorney may be.
The bottom line is still pretty basic, despite the variation in copyright infringement and patent infringement. Hiring a patent or otherwise known as copyright attorney from the beginning of any substantial project is the best protection against being accused of any type of copyright infringement.
Registering a copyright with the copyright office protects the copyrighted material against theft. All of these simple and basic steps should be taken by any company who intends to market a product, whether they anticipate being a small company of local distribution or a large company with global potential.
By registering copyrighted material with them and by hiring a copyright attorney to oversee the basic laws are covered, any company with a marketing plan will know they are protected under copyright infringement laws as well as patent infringement laws.
Without the assistance of a copyright attorney or patent attorney, a business is playing with the potential of an accidental copyright infringement or patent infringement. It is much safer to cover all the bases and protect the company and the brainchild behind the fabulous ideas that can launch a company into the land of happy returns.
Strategies for Preparing for a Patent Interference
Strategies For Preparing for an Interference
Table of Contents
I. The Benefits of Timely Recognizing a Potential Interference
II. Obtain and Use Competitive Intelligence
III. Patent Procedures Relating to Competitive Intelligence
A. Limit Access to Your Client’s Applications
B Obtain Information Regarding Competitor’s Patent Applications
IV. The Law Relevant to Requesting an Interference
A. 35 USC 102(g)(1) – Procedural Limitations on Secret Prior Art
B. 35 USC 135(a) – Criteria for an Interference
C. 35 USC 135(b) – The Statutory Bar
D. 37 CFR 1.604, 1.607, 1.608, and 1.617, and Requesting an Interference
E. 37 CFR 1.658(c) Estoppel, Interference Estoppel, and Issue Preclusion
1. In the USPTO
2. In Subsequent Litigation
V. File Early
VI. Respond to Published United States or PCT Applications
VII. Consider Splitting Subject Matter Between Applications in View of Temporal Delays and Interference Estoppel
A. Probable Time Line for an Interference
B. Predicting the Outcome and Consequences of the Outcome
1. Consequences of Losing the Interference
2. Consequences of Prevailing in the Interference
C. Costs of an Interference
VIII. Count Formulation for an Interference Request
IX. Table 1 – Comparison of Data Sources
I. The Benefits of Timely Recognizing a Potential Interference
Timely recognizing a potential interference allows your client to act before certain legal and business options are foreclosed. Failing to request an interference within one year of the issuance of the target patent bars your client (1) from obtaining an interference and (2) from obtaining patent claims defining substantially the same subject matter as claimed in the patent.1 Failing to request an interference within one year of the publication of an application will under certain circumstances also bar your client from obtaining both an interference and the claims in the published application.2
Applications targeting a patent for an interference that are filed after the issuance of the target patent must make certain showings in the interference by the burden of clear and convincing evidence as opposed to the otherwise generally applicable burden of the preponderance of the evidence.3 Promptly requesting an interference with a target application may result in an interference with the target application as opposed to an interference with a patent issued from the target patent. Dragging the target application into an interference before it can issue into a patent can be advantageous because, normally, no patent will issue from the target application until judicial review of the interference is terminated.5 The duration of the interference and all judicial review can be substantial. Therefore, failing to timely request an interference could result in your client unnecessarily facing a patent instead of an application for the duration of the interference and judicial review of the interference. Furthermore, if your client requests a stay in litigation in which it has been accused of infringement of a patent based upon the existence of an interference involving the patent, it is more likely that the stay will be granted if an interference is procedurally advanced relative to the litigation than vice versa.6 Finally, late recognition of problem patents increases the costs of designing, licensing, or abandoning the market.
For all of the foregoing reasons, early recognition of the potential for an interference can be advantageous. Conversely, preventing a competitor from timely identifying your client’s patent applications increases the value of your client’s patent portfolio. I focus in this paper on practices you can employ to identify relevant patent information, such as potential interferences, to prevent competitors from identifying your client’s patent information, and to explain what you can or should do when you identify a potential interference.
II. Obtain and Use Competitive Intelligence
Your client will never know a patent problem exists (until it is too late) unless it is obtaining competitive intelligence. Each company should employ a procedure to obtain competitive intelligence. Most companies set up an information “watch,” which is a periodic retrieval of targeted information, as part of this procedure.
There are numerous commercial databases containing relevant patent and non-patent information. Table 1 (see section VIII) lists some of the more popular commercial database sources, and it lists pros and cons of each vendor’s services.7 As Table 1 shows, no one vendor supplies all potentially useful sources of competitive intelligence. Therefore, a good policy is to use a plurality of database vendors to gather relevant information for analysis.
If a company does not have an in-house information specialist, it may be cost effective and more reliable for it to contract with a consulting information specialist instead of attempting to internally implement a watch. This is because a suitable “watch†may involve retrieving data from multiple data vendors, and the watch may need to be tweaked from time to time to provide desired information. Moreover, it may be desirable to conduct non-automated database searches for certain information. Information specialist organizations include the Association of Independent Information Professionals (AIIP), the Society for Competitive Intelligence (SCIP), the Special Libraries Association (SLA), and the Patent Information User’s Group (PIUG).8
One source of patent competitive intelligence is disclosures by or to your client, typically in connection with offers to sell IP, settlement or merger negotiations, or duties pursuant to a joint venture. Consider including in the underlying agreement terms defining the rights to pursue inter partes administrative actions, such as interferences. Likewise, be aware of the possibility of requesting administrative action, such as interferences, if your agreement permits (or does not expressly exclude) them.
III. Patent Procedures Relating to Competitive Intelligence
In this section, I list procedures to employ for (1) limiting or delaying access to your client’s patent or confidential information and (2) obtaining access to information about patent applications of others.
A. Limit Access to Your Client’s Applications
If there is information that you feel obliged to submit in a 35 USC 111(a) patent application, a reissue patent application, or a reexamination, and you want that information to remain confidential, consider filing the information pursuant to MPEP section 724 concurrently with a rule 37 CFR 1.59 petition to have the information expunged if the information is found to be not important to patentability. If you file such a petition, the confidential information will not be made available to the public and will be returned to the applicant if an examiner determines that the information is not “important to a reasonable examiner in deciding whether to allow the application to issue as a patent.”9
Second, anyone can access the file of an abandoned unpublished United States patent application if the application is referred to anywhere in the file history (not just when it is referred to in the specification) of an issued patent.10 Why is this important? Partially because of the duty to disclose “Information Relating to or From Copending United States Patent Applications,”11 such as information “[f]or “different applications pending in which similar subject matter but [arguably] patentably indistinct claims are present.”12 Accordingly, it is a common practice to file IDSs containing copending application statements. These statements may include the specification, figures, claims, or merely the serial numbers of the related applications. Keep in mind that the claims are potentially material vis-a-vis a double patenting determination. In any case, that practice can eventually enable an adverse party to access the file histories of the cited applications – – even if those applications are subsequently abandoned. In addition, for reexaminations and reissue applications, that practice provides your client’s competitors potentially damaging information. Therefore, you may want to file a 37 CFR 1.59 petition along with each copending application statement.
B Obtain Information Regarding Competitor’s Patent Applications
If you are interested in whether there are any pending applications related to either a published United States application or an issued United States patent, simply look on the continuity link for parent and child data in PAIR, or telephone or fax your request for that information to the USPTO.13 Continuity and status information is extremely useful in targeting patent applications for an interference or a public protest.
In certain instances, an application priority to which is claimed in a PCT publication is not readily available from the USPTO. In those instances, be aware that copies of the priority applications may be obtained directly, promptly, and inexpensively from the International Bureau in Zurich.
You can request status information from the USPTO to determine whether a 371 application has been filed based upon a published PCT application by sending a request for status information to the PCT Legal Office either by mail or by facsimile to 703-308-6459, including a cover of the published PCT application, and a letter requesting status. The PCT Legal office will then mail you a letter providing status, including the US serial number, if one exists.14
Finally, you can now order from the USPTO a copy of any paper cited in the PAIR file for a published application.15
IV. The Law Relevant to Requesting an Interference
Deciding what action, if any, to take when you identify a potential interference requires knowing the relevant law. The relevant law includes inter alia 35 USC 102(g), 35 USC 135(a), 35 USC 135(b), 37 CFR 1.604, 37 CFR 1.607, 1.608, and 1.617, 1.658(c) and related interference estoppel, and 37 CFR 1.657. 35 USC 102(g) defines the circumstances in which secret inventions are prior art. 135(a) defines what constitutes interfering subject matter. 135(b) defines a patentability and interference [...]