How to Rescue a Patent That Expired for Failure to Pay Maintenance Fees

Friday, 09 March, 2012 23:31 Written by Mark Malek 2 Comments

You may recall that my last article, was directed to the requirement to pay maintenance fees in order to keep your patent alive. As was discussed in that article, maintenance fees must be paid at 3.5 years, 7.5 years and 11.5 years after the patent has issued.

When someone has not paid a maintenance fee on their issued patent, however, that patent will expire. Unfortunately, this is a question that we get a lot at our firm. The story is usually something along the lines of “so I was looking through some old files and noticed that there was a requirement to pay maintenance fees on my patent – what happens if I have not paid them?” After I tell them that their patent has now expired, the immediate question I get back is “well how do I get it back?”

Well – it’s not cheap, but there is a provision to “revive” a patent that has gone abandoned for failure to pay a maintenance fee. This can be found in chapter 2590 of the Manual of Patent Examining Procedures.

In short, there are two ways to revive a patent that has gone abandoned for failure to pay maintenance fees. Both involve filing a petition. The cheaper of the two petitions is a petition to revive an abandoned patent that has unavoidably gone abandoned, and the second is a petition to revive an abandoned patent that has unintentionally gone abandoned. In order for the Patent Office to find that the patent has gone unavoidably gone abandoned takes an act of God…no, literally. It is nearly impossible to get the Patent Office to agree that failure to pay the maintenance fee was unavoidable. Not having the cash at the time the fee was due is not good enough. There has to have been something that prevented you from getting the cash to the government such as, for example, a lunatic held you down and would not let you put your payment in the mail (and that this is all documented), or that you can prove that the payment was sent, and the postal service lost it on the way, or some other measure that is completely out of your control.

More than likely, however, you will need to file a petition to revive a patent application that has unintentionally gone abandoned. The only requirement there is that you check the box on the form that reads, “the failure to pay the fee was unintentional.” Translation is “my bad.” If you file such a petition, along with the petition fee, and the maintenance fee, the patent will be revived.

If you have run into this situation, contact your patent attorney to see if you can have your patent revived. If you have more questions, you can contact me here.

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 1 Comment

By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process. In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story. That is not the case in the field of patent prosecution. Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process. Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of. Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention. The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret. In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off. Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable. This includes informing the patent Examiner of any prior art that you may know of. That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with. That is – your attorney is your ally in this process. Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art. The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability. The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention. I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

You Can’t Patent Godly Powers

Thursday, 05 January, 2012 23:59 Written by Danie Roy 1 Comment

Danie Roy

I know I’ve had fun with some pretty unusual patent applications before, but this particular application was just begging for an article all its own. This application came to my attention via Intellogist’s Twitter feed, and may or may not have inspired an afternoon of awe and wonderment. We didn’t even bash our heads against the desks, because we were so taken by this work of art.

Behold, U.S. Patent Application Number 11/161,345 to Christopher Anthony Roller, aka “godly entity.” Really, the published application in Google Patents does NOT do it justice, so I’m going to walk you through the image file wrapper of this thing. Before you start cringing in fear and/or agony, this is the most interesting file wrapper in the world. That’s not saying much, because file wrappers are generally slightly more boring than watching paint dry, but, I will tell you that Mark and I reviewed this thing, and we were GREATLY entertained. I will skip through the forms unless there’s something particularly hilarious, though.

First, the specification. It is, and I am quoting it in its entirety here:

Christopher Anthony Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet earth.

It’s not an enabling specification, so we have a strike against the application. But read on to the claims:

[Claim 1] Godly powers are being used on planet Earth.
[Claim 2] Many magicians are using godly powers to power their “illusions”. One is David Copperfield – US District Court case 05-446 document #18 proves this true.
[Claim 3] Technology (Electronic and Medical for example) is being assisted by godly powers throughout the planet.
[Claim 4] Christopher Anthony Roller is a godly entity. Godly powers on planet Earth are powered via Chris Roller. Chris has had a web site publishing his godliness since October 2002, but did not realize the surrogate deception (use of his powers) until 2004.
[Claim 5] There yet has been no accreditation nor financial gain to Chris Roller from the use of godly powers on planet Earth.

I know Claims 1 and 3 are going to divide people up depending on their views, but Claim 2 really raises more questions than it answers. If you look up this particular case, you will realize that the godly entity filed MANY cases against David Copperfield and other magicians for using his godly powers. This led to the godly entity accusing people (including a judge) of molesting his spiritual children, as claimed on his website, but I digress. As for Claims 4 and 5… the godly entity DOES have a website called www.mytrumanshow.com. He has SEVERAL websites, but I’m here to talk about the patent application. Now we’re up to the abstract, which is the first REAL glimpse of the wild ride we’re in for.

Christopher Anthony Roller is a godly entity. “Granters” had been given my powers (acquired my powers) (via God probably). These “granters” have been receiving financial gain from godly powers. These “granters” may be using their powers without morals. Chris Roller wants exclusive right to the ethical use and financial gain in the use of godly powers on planet Earth. The design of godly-products have no constraints, just like any other invention, but the ethnic consideration of it’s use will likely be based on a majority vote of a group, similar to law creation. The commission I require could range from 0-100% of product price, depending on the product’s value and use.

The godly entity appears to permit racism, unless he made a typo. But, you get the basic idea of what the godly entity is trying to patent here: something that falls under a 102(b) bar for public use. Even with the applicant admission, I’m surprised the Examiner never picked up on this. In any case, you may have noticed there were five independent claims, which led to a Notice to File Missing Parts. The godly entity’s response:

Hello Sir/Miss,

Enclosed is a CD with the latest ABX called GodlyPowers.doc of my patent.
I was in a hurry to grab the patent, and submitted the ECF a little premature.
I have made recent revisions – Preliminary Amendment.
This is a very complicated patent as you can imagine.
I may revise the claims further in the future – probably based on your input.
A future claim might state – Chris Roller has created one of the weirdest patents on the planet.
This latest GodlyPowers.doc has 2 independent claims (1 and 2) – the rest are dependent on 1 and 2.
Thus I have included $415 for fees to continue this patent. I have also included a separate check for $180 for what I feel may be a “multi dependent claims” fee. Shred it if you don’t need it.
If you conclude that I am wrong about fees, send me a notice and I will send another check for any further fees.

Thanks,
Chris Roller

Yes, the smiley WAS included in the letter. At this point, some of you may be shouting “TROOOOOOLL!” but hold judgment a while longer. Yes, he did say shred the check. And, yes, he DID say “multi dependent claims.” Any patent practitioner who has seen an independent inventor try to draft multiple dependent claims before knows EXACTLY where this is going. The amendment:

[Claim 1] Godly powers are being used on planet Earth.
For example, technology (i.e. Electronic and Medical) is being assisted by godly powers throughout the planet.
Godly powers could be used prior, during, and after godly product/procedure. For example;
Before – in the making of a device, like a micro-processor chip.
During – in the operation of a device, like an inkjet printer cartridge.
Afterwards – like gradual scar removal from breast implant surgery.
A magician might perform magic before, during, and after, for an given trick (“illusion”).
[Claim 2] There is a plan governing our existence and actions – God’s plan.
[Claim 3] Christopher Anthony Roller is the godly entity powering Earth with godly powers as stated in Claim 1.
[Claim 4] From Claim 2, God’s plan (or Game of Life) puts restrictions on what can currently be done with godly powers, or even if/when.
[Claim 5] From Claims 2 and 4, there are restrictions on what magic (godly powers) can be in Chris Roller’s presence – what Chris Roller can actually witness, which can differ from what everyone else can witness (in Claim 4).
Also, the magic needs to have a plausible explanation for its end product, like magicians calling their magic “illusions” or “tricks”
[Claim 6] From Claim 1, godly powers can be transferred once a grantor – a grantee.
A grantee can be a grantor only if granted the right, and only a subset of the rights a grantor possesses.
[Claim 7] From Claim 1 and 6, some grantees may be using their powers without morals.
[Claim 8] Claim 1 is proved via David Copperfield, who has been using godly powers for his financial gain (MN Federal case 05-446 JRT/FLN) and hiding knowledge of godly powers as stated in Claim 7.
[Claim 9] From Claim 1, there are many phenomenons associated with godly powers – most of them discussed on www.mytrumanshow.com.
[Claim 10] From Claims 5 and 9, anything Chris Roller finds out is fact (information from all senses except psychic/imagination – i.e. global information via television from eyes and ears) becomes a state of reality on planet Earth.
[Claim 11] In association with Claims 7 and 9, will-power can be cast on another to control people’s fate.
[Claim 12] From Claims 2, 5, and 9, reality can be reconstructed. Chris sometimes calls this re-ravel.
Magic completely countered/reversed is called unravel.
[Claim 13] From Claim 12, information via psychic/imagination (not real yet) (non-eyes/ears) can be reversed/re-raveled/unraveled.
[Claim 14] From Claim 12, 5, and 10, unravel/re-ravel can only be done before Chris Roller gets the “real” news, and almost entirely governed by God’s plan as stated in Claim 2.
[Claim 15] Immoral activity from Claim 7 can be covered up with reality restructuring mentioned in Claim12.

If you thought “bad patent language, good fantasy book,” please join me at the nerd table. This is, once again, better spec than claims… but it’s still barred under 101 and 102; never mind that we can’t make or use godly powers as claimed by the godly entity. The abstract, however, offers a slightly better argument for patentability:

Christopher Anthony Roller is a godly entity, powering Earth with godly powers for years. People have been granted Chris’ powers (grantees) somehow (by God?). One example is the mob. These grantees can then grant powers to others – called grantors. One grantee is David Copperfield, who has been using godly powers for his financial gain (MN Federal case 05-446 JRT/FLN). Chris Roller realized he was a godly entity in early 1999. He has had a global web site (www.mytrumanshow.com) publishing his godliness since October 2002, but did not realize the surrogate deception (use of his powers) until 2004, and on 29 July 2005 (filing of this patent), Chris Roller has yet had no accreditation nor financial gain from the use of godly powers on planet Earth. The design of godly products have no constraints, just like any other invention:

Design is via the imagination, with claims, references, abstract, description, images, etc., just like any other patent, trademark, or copyright.

There are some restrictions on the godly-feasibility of the product – having a prototype. You see, God’s plan (or Game of Life) puts restrictions on what can currently be done, but that shouldn’t stop a patent from being created, but simply when/if it can/will be used.

The ethnic consideration of its use will likely be based on a majority vote of a group, similar to law creation.

The commission I require would range from 0-100% of product price, depending on the product’s value and use.

Of course, there was some confusion with the CD and another Notice to File Missing Parts because of it, but that was not particularly interesting. The explicit admission of public use, though, still stands in that abstract.

The first Office Action came in, and, of course, the multiple dependent claims were objected to, everything was rejected under 112 for failing to distinctly point out and claim the invention, and lack of enablement. The examiner did make a 102(b) rejection though – for a magic game. Not quite the 102(b) I had in mind, but still a decent rejection. This did, however, lead to an Examiner interview (and how I wish I could have listened to it), in which the Examiner and the Examiner’s Supervisor both told the applicant to seek help from a registered attorney or agent, because the application was so very very far from formal.

As we run further down the rabbit hole… I mean, image file wrapper, we see a complaint filed with the PCT legal administration. Apparently, Mr. Roller attempted to file a PCT application, the application did not get processed, but the check he sent was cashed. The refund demand letter was actually fairly professional. The demand letter sent to the PTO was not quite as professional… because of it’s size, you can look at it here. Go ahead. Click it. You know it’s worth it.

Despite the godly entity’s urging for the USPTO to “pretend like it is a big deal, because it is” and insinuations that the mob and the USPTO were connected, a patent remained unissued. Mr. Roller sent in another revised specification (found here), in which he offered more insight into godly powers:

Existent in nature, it may not even be apparent that it’s godly powers; you’ll discover a use, usually through new technology, like follicular transplants, then profit from it. Existent in nature may be nasty scar removal; follicular hair transplant healing; savant extra-ordinary ability; deep fat frying at 375 degrees; hypnotism and power of suggestion. Some things are naturally getting better with time, like motor power ratio better than unity (power out > power in)

Let’s see, we’ve got… laws of nature, alternate realities, hair transplants, psychics, deep fat dinner, hypnotism, and perpetual motion. The only remotely statutory subject matter in that mess is hair transplants, and I’m pretty sure that’s not the crux of godly powers. On a side note, Mr. Roller did sue Bosley for botched hair transplants. The godly entity’s site is a veritable cornucopia of unusual lawsuits.

In the Claims, 1-15 were cancelled, and 16-19 were added:

16. (NEW) Godly Powers is a method (process) comprising
a) the use of supernatural powers which defy laws of physics.
17. (NEW) Use of said godly powers of claim 16 results in a real end-result.
18. (NEW) Said godly powers of claim 16 are manipulated via the mind via thoughts.
19. (NEW) Said godly powers of claim 16 may be inherent in a natural process.

Claim 16 can’t be patented because defying the laws of physics means it shouldn’t work, which means the subject matter falls under a 101 rejection. 17 and 18 will fall because 16 falls, and 19 is barred because natural processes are not patentable subject matter. State Street and Bilski cannot help here.

The new abstract, found here, is similar to previous iterations of the abstract except now, Mr. Roller added a spectacular sentence:

Chris Roller is addressing godly powers so a new stage of reality can exist, one with which to create new-use patents from godly powers on planet Earth.

At this point, if I were the Examiner, I’d probably be threatening to quit or begging for a transfer. I wouldn’t have even made it to the applicant’s argument… in which the godly entity included a document from one of the David Copperfield cases. If you’re going to submit arguments for patentability, submitting an unflattering document that has little to nothing to do with the application in question isn’t going to help. In any case, the Examiner issued a final rejection, noting that the abstract was too long, the specification contained new matter and was non-enabling and indefinite. The subject matter was non-statutory, and the Examiner does note Applicant admission for natural process. The Examiner reissued the 102(b) rejection and probably prayed (or not, we are dealing with a godly entity after all) that he wouldn’t hear from the applicant again. Fortunately for us, the godly entity answered the prayer with one final thought: “Please issue this thing” because “Just the idea is worth a Nobel prize.”

Tl;dr – ALWAYS contact an attorney or agent before you file. You will save time and money if you’re trying to patent something that just can’t be patented… and you application will be in better shape than going alone.

A Refresher on “Patent Pending”

Thursday, 29 December, 2011 09:11 Written by Scott Nyman 0 Comments

Scott Nyman

Not quite a year ago, I posted an article about the term, “patent pending” and its sufficiency towards protecting your invention. Since that time, I’ve had a good number of people ask me just what the term means. I’ve also had people ask me, “so now that my patent is pending, I can sue people?” It seems the demand for these answers is high, so a refresher on “patent pending” seems appropriate.

Let’s start with the basics. What exactly does “patent pending” mean? The term “patent pending,” or something similar such as “patent applied for,” is used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. Use of these terms should not be abused, for example by printing “patent pending” on a product for which no patent application has been filed. The law imposes a fine on those who use these terms falsely to deceive the public.

However, just because a searching party cannot locate a patent application on the invention through popular searches, such as Google Patents or the USPTO website, does not mean that no patent application is pending. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published.

Once a patent application has been filed with the US Patent and Trademark Office, the disclosed invention may be considered “patent pending.” This holds true for both provisional and non-provisional patent applications. Provisional patent applications are not examined by the USPTO for patentability, but provide a disclosure of the invention with enough sufficiency to receive a filing date.

Non-provisional applications are examined by the USPTO, and may result in the issuance of a patent. In order to have any patent protection, an inventor is required to file a non-provisional application. To keep the filing date of a provisional patent application, an applicant is required to convert the provisional patent application into a non-provisional patent application within one year of filing the provisional.

So, can you sue if you believe someone is infringing on your patent pending invention? Not just yet. In short, the USPTO states, “These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.”

The term “patent pending” describes the period between the filing of a patent application with the USPTO and the final disposition on the application, which may include abandonment, rejection, or allowance of the application. Having a “patent pending” status does not afford an applicant any patent protection, it simply puts would-be infringers on notice that they may be subject to a lawsuit if the application issues into a U.S. patent.

Furthermore, 35 U.S.C. 287 provides the notice requirements for issued patents, stating, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”

By providing notice to the public that your invention is in the process of potentially receiving patent protection, you are providing notice that continued potentially infringing conduct related to the applied-for invention may result in patent infringement. Although patent protection may not begin until the date a patent is issued, including a notice that such date is pending may help allow an inventor claim satisfaction of the notice requirement being met close to the actual date issue date of the patent, so long as the inventor promptly complies with the patent marking requirements of 35 U.S.C. 287.

However, the courts have routinely decided that “patent pending” alone is insufficient to support a finding of willful infringement. The Federal Circuit has stated, “A patent pending notice gives one no knowledge whatsoever. It is not even a guarantee that an application has been filed. Filing an application is no guarantee any patent will issue and a very substantial percentage of applications never result in patents. What the scope of claims in patents that do issue will be is something totally unforeseeable.” Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1562.

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 5 Comments

By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office. Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on. I could not figure it out. I know that my digital certificate is up to date and I know that I had the right password. What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome. My paralegal that does most of the filing uses Internet Explorer. That had to be the problem, right? Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft! So, I open up IE and try to log on. Guess what? Authentication error again. Now the mild cursing begins (if you know me, you know that this is when spectators start giggling). I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one. You guessed it – that didn’t work either. How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO. After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone. I explain the problem to her and her first reaction was the following: “Did you update Java?” Well, not intentionally. I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates. That’s when it must have happened. To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java. Really? The United States Patent Office? The forefront of technology was not ready for the?

Here’s my single biggest gripe. I receive an update from the PTO every couple of days via email. It is some sort of breaking news, or some story about happenings within the PTO. Would it have killed you to let me know about this problem that way? How hard would it have been to send a quick email blast to every patent practioner out there about this issue? I was humored when the technician told me that about 80% of the calls she received lately were for this very issue. By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick. I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it. I haven’t even told you the good part yet. Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.” What the heck kind of government operation was this? When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.” Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue. A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

Posts Tagged ‘application’

How to Rescue a Patent That Expired for Failure to Pay Maintenance Fees

The Duty of Disclosure When Filing A Patent Application

You Can’t Patent Godly Powers

A Refresher on “Patent Pending”

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

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