Mark Manley is a patent agent and former US patent examiner. He is located in Sedalia, Missouri, but will work with clients anywhere. Mark can conduct a patent search for $400 and can file provisional and full patent applications. Cell: 660-287-4890
E-mail: mamanley@hotmail.com -- Paul Niemann
217-224-8194 · 800-337-5758 http://www.MarketLaunchers.com niemann7@aol.com
Market Launchers, Inc. | 2614 South 24th Street | Quincy | IL | 62305
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-- "USPTO 2008 Fiscal Year-End Results Demonstrate Commitment to Sustaining High Performance
-- Patent and Trademark Operations Rose to Highest Performance Levels in Agency’s History" --

-----------------------------------------------------------------------------> >
 President's Strategy for American Innovation
Posted Wednesday, September 30, 2009 by Jim Ruttler.

The Executive Office of the President has released a paper detailing the President’s strategy for American innovation. The essence of the paper is that bubble type growth in dot coms, housing, and finance are not sustainable drivers of economic activity. The President suggests that a returned focus on innovation is necessary for Americans to thrive in an increasingly competitive global economy. In order to achieve the goal of an innovation based economy, the President seeks to promote research, invest in education, improve our physical infrastructure, increase internet access, open capital markets, and implement policies that encourage innovation. Notably, the President believes that the government’s role should be in providing tools to foster innovation. With respect to the U.S. patent system, the paper stated:

“Intellectual property is to the digital age what physical goods were to the industrial age. We must ensure that intellectual property is protected in foreign markets and promote greater cooperation on international standards that allow our technologies to compete everywhere. The Administration is committed to ensuring that the United States Patent and Trademark Office has the resources, authority, and flexibility to administer the patent system effectively and issue high-quality patents on innovative intellectual property, while rejecting claims that do not merit patent protection.”

The paper can be read in its entirety at: http://www.patentlyo.com/sept-20-innovation-whitepaper_final.pdf.

-- -- The Independent Inventor gets a fair representation at the USPTO:

Provisional Patent Application --------------------------------------------------------------------------------------------------> >
-- -- "How Inventors Can Deal with the Patent Backlog”
By Don Debelak of One Stop Invention Shop

As you probably have heard, the US Patent and Trademark Office (USPTO), has some problems. - For a number of years, there has been a battle raging over patent reform, with new Patent Acts proposed about every other year. The biggest problems facing inventors involve the backlog of patent applications. Not only can it take years to receive your patent, but also the Patent Office, in an attempt to deal with the backlog, is rejecting applications at record rates. This is certainly bad news for inventors, but if you read on, you can gain some tips in dealing with these problems.

At the end of 2008, there were over 1,200,000 total patent applications pending; about 800,000 of which were still awaiting first action. On average, it took 25.6 months for the Patent Office to take its first action with an application, despite the fact that under normal circumstances, it is only supposed to take 18 months for a patent to be issued! This is a serious and growing problem.

At the same time, there has been a lot of pressure for the quality of patents to increase. The Office of Patent Quality Assurance randomly pulls newly issued patents and reviews them. If they think the patent should have been rejected, the Patent Examiner who reviewed the application will get negative marks in his or her Performance Reviews. Then the Performance Reviews are used to determine employee bonuses. The result: Examiners err on the side of caution so that they don't lose their bonuses.

Furthermore, rejecting applications is the easiest way to make in-house work quotas and cut down on the backlog. To give you an idea on how much this has affected the way Examiners work, consider this: In the late 1990s, Examiners rejected less than 30% of all Patent Applications; in the second quarter of 2009, they rejected 59%!

Compound these difficulties: Two recent cases, KSR v. Teleflex and In Re Bilski, have also caused more changes and challenges for Patents. - KSR v. Teleflex was a case heard by the Supreme Court, that has changed the way "Obviousness" is defined for Patent Allowances, making it much more difficult to prove your Patent Application is "Non-obvious." - In Re Bilski, is a Lower Court Decision that greatly restricts Business Method Patents.

Is there hope? Yes. - The USPTO is starting to make some changes: First, the former USPTO director, John Dudas, resigned and soon there should be a new Director appointed who will hopefully turn the Patent Office around. Also current Acting Commissioner, Peggy Focarino, is starting some initiatives to train Examiners to work more efficiently and allow more Patents. Furthermore, In Re Bilski, is currently in front of the Supreme Court and many are hoping that the decision will be turned over. In addition, there is talk that Congress might legislate over KSR v. Teleflex to make it easier to receive Patents again.

So what should Inventors do to deal with these challenges? - We talked with Eric Hanscom, our Patent Law Associate, about how he is advising Inventors dealing with these challenges and what actions he has taken to deal with these changes.

"Our strategy in dealing with KSR and Bilski, is to examine the Office Actions, and in the many cases where the Application would have been likely to be allowed before KSR and Bilski, but is not probably 'not allowable' under the new laws, to file a Continuation-In-Part (CIP) Application and hope that the laws change before the CIP is examined," says Hanscom. With the long wait times at the USPTO, the chances are pretty good that something will change before a CIP is examined. The same goes for those who are facing Final Rejection. "We are also suggesting," says Hanscom, "that clients who are facing a 'Final Rejection', consider filing for RCE's (Requests for Continued Examination) or even appeal the Rejections." This again will buy them time and give them a chance to have changes take place before their Application is Re-examined.

To better deal with this situation, Hanscom has hired a former USPTO Examiner to help go over Office Actions and advise on strategy to get around KSR v. Teleflex and In Re Bilski.

Hanscom adds one other piece of advice.. The recent Egyptian Goddess case substantially strengthened Design Patents. Previously, he would only advise a client to get a Design Patent, if it wasn't possible to get a Utility Patent. But after KSR v. Teleflex, this is no longer the case. "Design Patents are much less expensive, have a much higher rate of success, (particularly after KSR and Bilski), and are examined much more quickly than Utility Patent Applications, (an average of 8 months, as opposed to a year or two for most Utility Patent Applications). Thus, until KSR is overturned, we are suggesting that clients who previously did not consider Design Patents, to seriously consider them." You will need to talk to him to find out if a Design Patent will work for you. But this will be good news for some Inventors, on how they can take advantage of this recent development.

So there is hope, and some ways you can deal with this troublesome situation. Although there are many Do-it-Yourself Patent Books, we have always recommended working with a Patent Professional to make sure you get the best protection possible and to maximize the chances of getting a patent. Now more than ever you will want the best advice available to make sure you get a patent.

To contact Eric Hanscom, write him at eric@iciplaw.com

# # #

-- --> "Everything comes to him who hustles while he waits." -- Thomas A. Edison

-- Your mom or dad had to help you. You said to yourself, "Someday, when I'm a big boy, I'll be able to do it all by myself." -- Now that you're grown, a prototype is a model of your invention and you may have to put it together by yourself? ;-)

-- Take a break :-) I'm reminded of the story of the father who was taking his medicine and swallowing a pill in front of his small son: "Daddy, let me...let me!" insisted the child. -- The father gave the child the bottle that was protected by the safety cap. -- The child twisted and twisted and of course couldn't get the cap off. -- The father said sternly to the boy, "It knows you're too little to take grown-up's medicine." The bewildered child looked at him, "How does 'it' know that I'm not a 'big' boy?" -- The father smiled, "It knows ...it knows." --

-- "Prescription Drug Information and Health Information" --

--> Anyway, those many models that were made years ago when it was necessary to submit a model to gain a patent, can be seen here: -- "The History of the Rothschild Patent Model Museum"

--> Also read "Invention Trivia 9811" -
('Vas u der, Cholly?' :-) then go back to the '40s, sit next to the radio and remember the answering of the telephone at "Duffy's Tavern": "Duffy's Tavern: Where the elite meet to eat meat. Archie the waiter speaking, Duffy's not here.." -->
"Recording History"

-- Our Invention Heroes - Those We Can Look Up To -- "The Invention Dimention: This Week's Hero"

-- -- OIIP has improved responsiveness to inventor needs by establishing customer service centers within each major patent and trademark examination division, developed various projects to counter the growing menace of fraudulent invention marketing firms, provided a variety of outreach educational tools for inventors, and helped expand the PTO web site with pages dedicated to serving special needs and interests of the independent inventor and entrepreneur.

-- The Patent and Trademark Office (PTO) is an agency of the U.S. Department of Commerce. The role of the Patent and Trademark Office is to grant patents for the protection of inventions and to register trademarks. It serves the interest of inventors and businesses with respect to their inventions and corporate products and service identifications. It also advises and assists the bureaus and offices of the Department of Commerce and other agencies of the Government in matters involving "intellectual property" such as patents, trademarks and semiconductor mask works. Through the preservation, classification, and dissemination of patent information, the Office aids and encourages innovation and the scientific and technical advancement of the nation. In discharging its patent related duties, the Patent and Trademark Office examines applications and grants patents on inventions when applications are entitled to them; it publishes and disseminates patent information, records assignments of patents, maintains search files of U.S. and foreign patents, and maintains a search room for public use in examining issued patents and records. It supplies copies of patents and official records to the public. Similar functions are performed relating to trademarks.

-- "Complete Collection of U.S. Patents Now Available on DVD-ROM" -- -- "Cassis Optical Disc Information"

http://www.uspto.gov/web/offices/ac/ido/ptdl/patreaso.htm

-- -- Thought of the day --

-- "All of the great achievers of the past have been visionary figures; they were men and women who projected into the future. They thought of what could be, rather than what already was, and then they moved themselves into action, to bring these things into fruition." --

-- Bob Proctor

=========================================
To: marinakis44,
inventors_council@yahoogroups.com
From: patagent@evansville.net
Subject: Re: [Inventors Council]

Date: Thursday, December 4, 2008 10:33 PM

Minor point, you can add new matter at the time of the formal drafting, you just don't get the earlier priority date. You can also add to a provisional, and refile with the new matter, to establish a priority date prior to writing the formal.

So, while your horror story about the potential buyer filing his own improvement is an example of what could go wrong, that would have been precluded by just refiling the provisional prior to the potential buyer filing his.

Also, if the original provisional was inventive material, with that priority date, and a subsequent patent issued with the original material & priority date, the inventor may still have rights if the improved product infringed on the basic patent.

Also, I have had a case where the inventor revised his original submission three times before he finalized it, and we filed three additional provisionals (amended) in each case, and then filed the formal. It was a very well throught out formal.

Before provisionals, all too often an inventor would come in with his invention, we would make the formal filing, and then six weeks later he would come in with a major improvement. - As a practical matter, usually the provisional is the way to go. Not to save money, but to insure the best possible formal application.

I have found for mechanical or mechanical/electrical type products, as manufacturing developments, the advantages have outweighed the disadvantages, over the years, for my clients.

However, this may well not be true for other types of inventions, such as pharmaceuticals, biological, or whatever & for other situations.

I am merely speaking from my experience. I hope that helps.

Best wishes to all, patagent@evansville.net ========================================= To: Robert Scheinkman
From: patagent@evansville.net
Subject: Re: [Inventors Council]
Provisionals: panacea or placebo?
Date: Friday, December 5, 2008 3:31 PM

Thank you. I am honored that your vernerable organization thought it of use. I suspect too many attorneys "diss" provisiionals as they do give a chance for inventors to "test the waters" so to speak, informally, prior to filing a formal application. The inventors can then drop the matter if they find a complete lack of interest, or perhaps they change their mind as they get deeper into the project. This means the practioner makes less money than otherwise on the application process.

Provisionals are a very powerful tool.

This past year I had a couple of articles on patents published in Machine Design. One, "Patent Myths" is on the inventor's resources page of my website. http://www.evansville.net/biz/patagent

Best wishes and highest regards.
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