Sunday, September 17, 2006

USPTO Examination of Patent Applications

The USPTO goes through a significant examination of patent applications. Examination overview:

To be patentable, the subject matter must be both new and nonobvious in comparison to what is known.

All patent applications (except provisional applications) undergo a serious examination by a USPTO patent examiner.

This examination includes a search and initial determination on whether the subject matter, as defined in the claims, meets the new and nonobvious patentability standards.

Examiner's initial rejections of claims are embodied in an Office Action ("Action").

A professional response to claim rejections is typically a combination of claim amendments and arguments on the law as applied to the case's specific facts.

A professional application preparation incorporates the support and fall-back positions for such claim amendments and arguments.

Actions also include any other objections - typically routine and/or minor if application was professionally prepared.

No one can guarantee that a meaningful patent will ever issue.

The odds of obtaining meaning patent protection increase with the skill and experience of the attorney you select.

Reprinted from my website at

Sunday, September 10, 2006

It Ain't Easy

You have a product. You want to make millions from it. It ain't easy, and please move off the millions. We are talking about less than that.

If you want to get it out there, to the general public, and its a good product, you need good patent protection first. Without good patent protection, any market success is a free market survey gifted to your competitors.

Next is product development. It must be put into commercial form, and into the appropriate commercial form for your target market. Problem here. This takes money, sometime lots and lots. Also you have not found the target market. See the next.

Next is target market. Walmart kills off a lot of small businesses, so perhaps your lucky if they reject it. Or is it independent retailers? Or is it found on the Internet? Or is it a limited group you reach through your normal hobbies or other activities?

The product development and target market can be frustrating paths. Give up or continue? There is no universal answer.

See more on my IP Law for All blog at and my website at

Monday, September 04, 2006

Patenting a Slogan - a Wrong Pager

Patenting a slogan question is definitely a wrong-pager

A slogan cannot be protected by patenting. Patenting is for inventions, which a slogan is not.

But I have heard this question, more than once.

See Introduction to IP Law page on my website for a primer on the different IP areas, what they are and are not. But the heart of the slogan-protect question might be elsewhere.

If you have a slogan for your business or organization, you have a potential for trademark protection.

If you have a slogan but no business or organization, why do you have a slogan?

Why you have a slogan without a business or organization:
- you believe the slogan will sell products, such as T-shirts, coffee mugs, etc
- you believe the slogan will sell someone else's products, such as General Motors cars, or Coca Cola's softdrinks, or Hershey's chocolate bars, or . . .

If you are in the T-shirt-coffee-mug group, protect the slogan if possible via federal trademark registration and getting into the T-shirt-coffee-mug business (with caution).

If you are in the someone-else's-product group, there are problems. Established companies routinely require non-confidentiality agreements before they will look at an outside idea. That means no remuneration, even if they use it, unless you have patent protection. (Again, cannot patent a slogan.)

Will trademark protection on the slogan for T-shirts (federal registration is limited to the specific products on which you use the trademark) provide the safeguards needed for idea submission under non-confidentiality agreements? Might not.

See more about slogans at on my website.

Why Patent your Innovation?

Let me count the whys:
- to secure an exclusive market
- to license the innovation
- to find capital and/or partners
- details below

Ask yourself:
- why did you bother innovating?
- do you want to profit from it?
- does the innovation have value?
- does it have a potential spot in the market?

An innovation with value and a potential spot on the mark is a profit candidate, but candidate only, not a certain contender.

Established businesses - can upgrade their current lines with exclusive products and/or services, and facilitate finding the working capital, if the innovation has patent protection.

Other than established businesses - it ain't easy, particularly without product development experience, without available trade lines and often without a good handle on value and market-potential realities.

Patent thresholds - must be new and nonobvious given what is known (what is known includes far more than what you see out there) and then must be aptly patented.

Finding capital and/or partners is near impossible without the means to protect your market, and that the means is decent patent protection.

Reprinted from my IP Law for All blog at and more information about patents on my website.