I recently won U.S. patent no. 7,344,086 for the inventors of an innovative lottery ticket having features that prevent theft. The patent also claims methods for preventing lottery ticket theft. Major lottery ticket suppliers are considering licensing the patent.
Effective November 1, 2007, and applicable to pending applications in various ways, there are some major changes in the number of claims permitted in an application, and in the number of continuations permitted. A few highlights (with many details left out):
* No more than 5 independent and 25 total claims per application (5/25 rule). For applications exceeding the 5/25 rule, an examination support document (ESD) must be filed before the first office action, or the application must be amended to comply with the 5/25 rule.
* An ESD must include: a preexamination search statement, a listing of references deemed most closely related to the subject matter of each claim, an identification of claim limitations disclosed by each reference, a detailed explanation of patentability, and a showing of support under 35 USC 112 paragraph 1.
* For applications that exceed the 5/25 rule and have claims directed to more than one patently distinct invention, the applicant may submit a suggested restriction requirement (SRR) and elect an invention complying with the 5/25 rule before a first office action or restriction requirement.
* The USPTO will give notice to applicants whose applications exceed the 5/25 rule.
* The new claim rules are in effect for all pending applications for which an office action has not been received before November 1, 2007.
* An application or chain of continuation applications may have only two continuation applications and one request for continued examination (RCE). More than this number of continuations or RCEs must include a petition and showing.
* Divisional applications to non-elected inventions may be filed only if the USPTO issues a restriction requirement.
* The applicant must identify the claims in a continuation-in-part application that are supported by the prior-filed application.
* Applicants may file “one more” continuing application after August 21, 2007, regardless of the number of continuing applications filed before November 1, 2007.
* Applicants must identify other commonly owned pending applications or patents that have an inventor in common, and a claimed filing or priority date within two months of the claimed filing or priority date of the application.
* Applicants must file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure.
* Applicants may be required to put all patentably indistinct claims in a single application unless there is good reason for multiple co-pending applications having patentably indistinct claims. The single application would then be subject to the 5/25 rule.
* Applicants may request a refund of any excess claims fees paid on or after December 8, 2004 for a claim if the amendment canceling the claim is filed before an examination on the merits has been made of the application.
Links: USPTO Claims and Continuation Practice page, Federal Register - Final Rule (72 Fed. Reg. 46716 - 21Aug2007), Claims and Continuations Final Rule powerpoint slides.
I recently secured U.S. Patent No. D536,965 for the inventor of the wildly successful Bush Cards. The “Second Term Edition” of the deck of cards, which are now even “more slanted to the right,” mock President Bush and his administration.
Links: Bush Cards, U.S. Patent No. D536,965 “Slanted Box”,
Bush Cards: The Second Term.
Over 443,000 patents were filed and over 183,000 issued in the United States in 2006. This represents a 115% increase in patent filings from a decade ago. However, it now takes longer than ever to get a patent - more than 31 months on average. And only 54% of patent applications were allowed, the lowest rate on record; the rest were rejected as being unpatentable.
With a backlog of over 700,000 patent applications to examine, and over 1,000,000 applications pending, the patent office has been hiring examiners to keep pace with demand. The USPTO used its nearly $1.6 billion dollars in revenue to hire a record 1,218 patent examiners, creating a workforce totaling 8,189 employees. Still, even with a plan to hire over 5,000 more examiners over the next five years, the USPTO admits that they will not be able to keep up with the volume of applications.
Some more interesting facts from the USPTO Annual Report:
* Silicon Valley helped make California the leader in patents. California residents secured 23,579 patents, over three and half times that of Texas residents with 6,345 issued patents, and New York with 6,075. Wyoming and Alaska are at the bottom of the list with 57 and 44 patents, respectively.
* Residents of Japan were issued 36,481 US patents, nearly 20% of all patents issued for the year. Germany followed Japan with 10,083 patents. Taiwan trailed with 7,356.
* The USPTO translated 21,305,642 written words.
* In the last quarter, 28.7% of applications were filed electronically.
* The US Navy filed more patents (1,598) than any other government agency.
* The USTPO generated a net income of $80.2 million.
Source: United States Patent and Trademark Office Performance and Accountability Report, Fiscal Year 2006.
Senior officials of the United States Patent and Trademark Office, as well as a representative from the Patent and Trademark Depository Library Program, will be available live on-line on Thursday, November 16 , from 2 to 3 pm (ET). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the chat will be posted on the home page of the USPTO website at 10:30 am (ET) on Thursday. Inventors can begin logging on at 1:30 pm.
Links: transcripts and index from previous on-line chats.
The United States Patent and Trademark Office (USPTO) is publishing procedures setting forth requirements for patent applicants who want a final decision by the examiner on whether their application for a patent will be granted or denied within twelve months.
Links: Press Release, Notice, Federal Register.
The United States Court of Appeals for the Federal Circuit (CAFC) is posting oral arguments in mp3 format. All future argued cases will be available twenty-four hours after argument is completed.
The CAFC has nationwide jurisdiction in a variety of subject areas, including international trade, government contracts, patents, trademarks, certain money claims against the United States government, federal personnel, and veterans’ benefits.
If you would like to browse all cases, simply enter the letter “v” in the Caption field of the search page and click on “Search”.
Links: Oral Arguments MP3s, CAFC.
U.S. Patent No. 7,011,528 was recently issued to the inventors of the widely used Medical Emergency Response Simulator (MERS) computer program. The patent was written and prosecuted by Elliot Furman. MERS is used by Emergency Medical Service (EMS) workers for primary, refresher and recertification training. The product evaluates the worker’s performance in compliance with Department of Transportation (DOT) standards.
Links: U.S. Patent No. 7,011,528 “Method and system for generating a skill sheet”, MERS.
The USPTO’s pdf based Electronic Filing System (EFS-Web) will go live on March 17. EFS-Web promises to greatly simplify and streamline the filing of patent applications, enabling applicants to file documents as pdf files twenty-four hours a day.
Links: EFS-Web help.
Senior officials of the United States Patent and Trademark Office will be available live on-line on Wednesday, February 22, from 2 to 3 pm (ET). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the on-line chat will be posted on the home page of the USPTO website at 10:30 am (ET) on Wednesday. Inventors can begin logging on at 1:30 pm.
Links: transcripts and index from previous on-line chats.
It took 75 years to get from patent No.1 to patent 1 million. It has taken less than one tenth of that time to go from 6 million to 7 million patents.
* Patent No. 1 was issued in 1836. Earlier patents were not numbered, although the first U.S. patent was issued in 1790. Approximately 10,000 patents were issued between 1790 and 1836.
* Patent No. 1 million was issued on August 8, 1911, for a tubeless vehicle tire.
* Twenty-four years later, on April 30, 1935, patent No. 2 million issued for a vehicle wheel to increase the safety and longevity of pneumatic tires.
* Patent No. 3 million issued 26 years later on September 12, 1961, to an inventor at the General Electric Co., for an automated system that translated letters, numbers and symbols to data processing code.
* Patent No. 4 million issued 15 years later on December 28, 1976 for a process for recycling asphalt aggregate compositions.
* Fifteen years later, on March 19, 1991, Patent No. 5 million issued to a University of Florida inventor, for a more efficient way to produce fuel ethanol.
* Only eight years later, patent No. 6 million issued on December 7, 1999, to 3Com Corporation’s Palm Computing for its HotSync technology.
* And now just a little more than six years later, patent No. 7 million issues to DuPont researcher John P. O’Brien for “polysaccharide fibers” and a process for their production.
Link: USPTO Press Release.
A record 409,532 patent applications were filed, and 165,485 patents were issued in 2005 according to the United States Patent and Trademark Office (USPTO) Annual Report. Compared to 2004, this represents an 8.1% increase in filings, and an 11.6% decrease in issued patents (chart).
Expect to wait over two years for your patent to issue as the average total pendency (the time from when an application is filed until it is issued or abandoned by the applicant) was 29.1 months (in 2004 it was 27.6 months).
California led all other states with 48,568 patent applications filed, followed by Texas with 12,951, and then New York with 12,521 applications.
More than four out of every ten patent applications were filed by residents of foreign countries, 184,380 in total. Japan led all other countries with 65,025 applications, more than three times as many as the next two countries, Germany (18,245) and Taiwan (16,865).
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The USPTO is offering applicants an optional procedure to review the examiner’s rejection prior to the actual filing of an appeal brief.
“Patent Authority”, “patentauthority” and “patentauthority.com” are trademarks of Elliot Furman.
