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7

The answer to this turns on 35 USC § 102(a), which reads: A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent ...


5

Why does it puzzle you? If it is not available to the public, it is not prior art. I think relevant US provision is here (MPEP 901.02) https://www.uspto.gov/web/offices/pac/mpep/s901.html#ch900_d225b5_2caa7_e7 Notice that it only mentions printed or published provisionals OR provisionals that are publicly available because they ended up to normal filings, ...


5

Since you mention Articles 33(2) and (3) PCT, I assume that you requested International Preliminary Examination, and that the Examiner who drafted the International Preliminary Examination Report (IPRP) found that some of your claims are not novel. However, the IPRP is just that - preliminary. You may respond to the IPRP to try and overcome the objections ...


5

We were trained to start by reading claims, but claims are often hard to decipher. So, here's a few tips that may help you. 1 and 2 are the easiest, while 5 is probably the most authoritative. Look at the last 1 or 2 elements in the claim. "Claim 1: Blah ... blah ... blah ... [all very ordinary standard items] WHEREIN [something special, this may be what ...


5

Novelty just means a method is new/original, and has not been disclosed (with certain caveats, dependent on region.) Novelty is distinct from obviousness. Novelty is defined in the US as follows: [a] person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or ...


4

Francisco, another option to consider is a prior art submission to the USPTO under 37 CFR 1.501 and 35 USC 301. See ==> http://www.uspto.gov/web/offices/pac/mpep/s2205.html This creates a written record of the applicability of the particular patent(s) and/or printed publication(s) submitted. If the patent owner attempts to assert this patent against a ...


4

I think this question is based on a misunderstanding. I think this misunderstanding is based on two facts. Patent trolls do try to get broad patents on existing technology and then sue others. They don't do that by patenting the prior art but by filing divisionals / continuations and fuzzy claims. Essentially they try to take an inventive idea and ...


4

Generally speaking, it does not matter who the authors of a prior art document are. If a prior publication was made by the inventors applying for a patent themselves, it is generally just as novelty-destroying as somebody else's relevant publication. In some countries, notably the US, a "grace period" of 6-12 months exists, during which inventors may still ...


3

As some other answers have suggested, there are two major requirements that are relevant to your question. The two requiresments are: novelty and nonobviousness. (Nonobviousness is a U.S. term; in Europe this is referred to as inventive step.) To earn a patent, your invention must pass both tests. In your case, the invention passes the test of novelty ...


3

No. One of the basic sections of the patent law is 35 USC 102. It describes some of the requierements for getting a patent, especially novelty. While the law is mostly short and doesn't offer a lot of explanation, there is a manual for patent examination (MPEP). The relevant section is this one. A claimed invention may be rejected under 35 U.S.C. 102 ...


3

If they use your patented invention, they need to obtain a license from you. If you want to use their improvement, you would need to obtain a license from them.


3

For improvement over a patent pending product or process, you may go ahead with filing Continuation-In-Part Application (CIP, under the US patent system) during the pendency (before issuance or abandonment) of the earlier filed patent application (parent application). CIP application is mainly filed in situations where a patent application (parent ...


3

The changes to section 102 boil down to changing what can be used against an application. Allowing anything filed before you to be used against you is what creates "first to file". We do not literally have a strict first to file in that if you filed last but the first filer "stold" the invention from you, there is a way to try to prove it and win even though ...


3

First of all, your understanding of 54(3) EPC seems to be right. More information can be found in the guidelines for examination where one can also read that the EP application has to be valid (e.g. not withdrawn) at the date of publication to qualify as prior art for 54(3). Could the EP application be allowed to grant if the PCT application has not yet ...


3

(A) Prove the primary reference contains an “enabled disclosure;” (B) Explain the meaning of a term used in the primary reference; or (C) Show that a characteristic not disclosed in the reference is inherent. Non of these apply to your example. The definition of novelty is - for practical purposes - that a single source had the invention before you did. ...


3

Many if not most patents are improvements on existing technology. While US5005266 patents a particular method of self-locking carabiner, it by no means patents the general idea of self-locking carabiners or every possible mechanism. In this case, the new patent has a different method of locking closed the pivoting gate mechanism. It is pretty clearly ...


3

In every country, prior art must be published (that is, available to the public). An expired provisional patent application which has not been used for priority is not available to the public: that is, even a motivated member of the public could not obtain a copy. Therefore it is not prior art, and you are correct in your thinking. Incidentally, while I'm ...


3

If A is unknown, then a B that is A plus a regular thing "delta" is inherently unknown. So, a claim that says, "the thing of claim 1 where the bottom is red" is inherently novel if claim 1 is novel even though making the bottom red is not very interesting.


2

A question for the new post-AIA patent bar exam? No, Bob should not get a patent. Under the post-AIA, post March 15th 2013, section 102(a)(2) the fact that the filing date of John's preceded Bob's makes John's patent prior art to Bob's even though John's was not filed in the US but only because he later did file in the US getting priority from the German ...


2

First, a small note about terminology: the word "limitation" is almost a synonym for "feature." To answer the questions, I'll come up with a simple example. Let's say your invention is a chair that levitates. You submit only three claims, and they read: A chair comprising: a stool and at least three legs. The chair of claim 1, further comprising a magnetic ...


2

You may also find that filing the algorithm with the copyright office is useful because it makes the content a matter of public record. Copyright isn't going to protect a procedural mechanism because mechanics are the domain of patents, but as a prophylactic, it may be quite effective, and provides iron-clad evidence of the date of the public disclosure. ...


2

DonQuiKong's answer is a good one and should be accepted. As an inventor, I thought I might share a few other insights. Obviousness really is vague and subjective. It is thrown out by examiners almost by reflex now a days. My experience is the examiner does a prior art search, finds some related patents and then rejects pretty much everything based on ...


2

Pre-AIA, when it was "first to invent", there needed to be a scheme to figure out who won that contest. It was essentially, first to conceive as long as the first conceiver proceeded diligently from conception to reduction to practice. Person A might reduce to practice (which can be accomplished by filing an enabling application) first, but lose to person B ...


2

A claim that survived reexamination is stronger afterwards than it was before. By definition, a claim that was originally dependent is narrower than the original independent claim. After reexamination the former dependent claim would be re-written in independent form. In general, the patent would cover a narrower territory, but be somewhat strengthened in ...


2

There are no continuations in part at the EPO. At the EPO you only have patent applications, and divisionals of patent applications. Divisionals have the same disclosure of the parent application or a more reduced disclosure, therefore they can be used to claim different embodiments that were initially disclosed, you cannot add any new matter. Your ...


2

There is no particular office I would say. Some patent offices have examiners more knowledgeable in some topics than others, then some examiners are better than others. You could file the same application twice with the same patent office and get two completely different search reports. Since no patent office guarantees a perfect search report, some ...


2

In the past I got several good searches with KPO as ISA. From the U.S. the cost is still about 1/2 what it would be from the EPO. When I started using Korea they were new and charged even less. It is not part of the body of the question but you could hire a search firm.


2

In Europe the problem-and-solution approach is used most of the times because it is said to be an objective assessment of inventive step/non-obviousness. Below I reproduce some points about it. The same methodology is used in some other countries, most notably China and Japan. In the problem-solution approach, there are three main stages: (i) determining ...


2

It is not a clear science but fortunately an examiner can't just say "seems obvious to me" In the U.S., first the examiner must find a base reference with an embodiment that has some of the elements of your claim, but not all. It must also be in the same field or could be "analogous art" from a different field where the same problem is ...


1

Yes it does - for that small part is not novel anymore. As long as the rest of the invention is novel and inventive, you are fine though. For a claim to get granted the whole claimed invention has to be inventive, not every part of it. Example: you could patent a whole airplane with fins instead of wheels (if not known yet) even though an airplane is known ...


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