Protecting Inventions Outside the United States I

There is no such thing as an international patent. There is something similar to an international patent application, it's called a PCT (patent cooperation treaty) application, but it merely serves as a placeholder, for filing patent applications in individual foreign countries. Patent applications filed in foreign countries through the PCT receive the benefit of the PCT priority date. The priority date is the filing date of the priority document (if any) listed in the PCT application. A provisional patent application can serve as a priority document. Thus, filing a provisional application can be the first step to protecting your invention domestically and abroad.

Obtaining location updates about a mobile entity for use in a location-sensitive application

The BPAI reversed a patent examiner today on a 103(a) rejection of a claim, in Ex Parte Wilcock et al. The claim was to a method of obtaining the position of a mobile object from a first source at a certain frequency and sending to an application that uses the location data, and decreasing the frequency if there is also a second source of location data. Claim 1 is below:

A method of obtaining location data about a mobile entity for provision to a location-sensitive application, the method comprising:
periodically obtaining location updates indicative of the current location of the mobile entity from a first source of location data; and
extending the interval between the location updates from said first source when location data indicative of the current location of the mobile entity is available from at least one other source of location data that operates independently of said first source and the location updates provided thereby.

Here's the law (applying KSR) the Appeals Board used:

“‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

The examiner combined 3 references to obtain all the limitations in the claim. The Board found that none of the references showed varying the frequency based on the presence of a second location data source. This type of argument, if true, is usually the strongest type of argument a patent applicant can make to get over a rejection. Otherwise, the applicant is left to argue that it's impermissible to combine the teaching of the references, which is a tougher one to make if the references are about similar technology. In that case, the board likes to see, among other things, unexpected results when you combine the references, to overturn a rejection.


The Board said that the reference the examiner relied on, Mannings, at best, only provides a disclosure of varying the frequency of providing updates to a positioning system dependent upon changes in system conditions such as the speed of a vehicle, traffic conditions, highway maintenance, etc. (Mannings, col. 8, ll. 48-53 and col. 14, ll. 25-41). None of the references showed changing the frequency based on the presence of another data source.

What might have really won the day was Wilcock's Patent Attorney's argument that, if the teachings of Mannings were combined with Cisneros, the logical result would be that the frequency of location updates would be the same for both sources of location data, a factual situation which does not satisfy the requirements of appealed claims 1 and 14.Wilcock.pdf

Motion Sensor Activated Rock Light

Motion sensitive illuminated article Damian Krause
Is a Motion Sensor Activated Rock Light patentable? See US application serial No. 10/355,389. The Patent Appeals Board answered no, in Ex parte KRAUSE (decided July 14, 2008). The claim applied for was as follows:

1. An apparatus comprising:

a translucent housing having the appearance of an article that is
an element of nature;
a base to which the housing is sealed and in which there is an
access panel;
a light source located within the housing powered by at least
one replaceable battery which acts as a power source and
a motion detector adapted to be coupled to the power source
and to the light source for switching power to the light source
when it detects motion.

The prior art relied upon by the Examiner in rejecting this claim, 3 refefnces:


Animated display Chun Chung Fung


Lighted rock and method therefor Robert G. O'Connell


Pumpkin lighting fixture Sheng Ping Fan


Combined earthquake sensor and night light Lynda S. Samen

All the references together had all of the claimed elements. Fung had the transparent covering, and the motion sensor. O'Connel had a lighted rock. Fan had the access panel and Samen had the battery. All the elements of the separate references were united without any change in their respective functions. None of the benefits of the claimed device was recited in the claims. While the Specification may extol the virtues of Appellant’s invention, the Appeals Board evaluates the claim language alone to determine the propriety of the rejection.

A Patent On A Stick, Literally

U.S. patent 6,360,693 always reminds me there is always some uncertainty in the law of what's patentable. I have to hand it to the patent attorney that handled this patent application. Claim 1 of this patent claims (in fancier words of course) a floating animal toy having a main shaft and a minor shaft coming off the main shaft at an angle. That's it!

The actual text is:

An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein said animal toy is adapted to float on the water.

While this patent claim could be invalidated in a court, having an issued patent nonetheless can be quite annoying to one's competitors in the animal toy business. As a matter of patent prosecution strategy, this is why I may sometimes draft at least one claim that I think might be too broad so as to encompass the prior art. I may be wrong, and the client may be entitled to broader protection that I thought.

Patents For Recipes

Many recipes are considered obvious by the patent office even though it may never have been concocted before and it's highly popular. One way to getting a patent on a recipe for food or drink is to show unexpected results. US Patents, 7396555, 4737367, and 6551646 are examples of recipe patents that got granted. Patent applications, 2006/0121173 and 2005/0163908 are examples of recipes that got rejected.

A Recent Application of KSR And Obviousness

Ex Parte Wang et al

Claim Rejections Based On Large References

Can an Examiner reject a claim by selecting from a patent reference a large number of widely separated and logically unrelated passages, in cookie-cutter fashion, in order to cover the various concepts recited by the claims? The PTO Rules of Practice require the examiner to cite only what he considers the best references. Multiplying references, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution and should therefore be avoided.

The Appeals Board held that similar observations apply to citing parts of an individual reference. "The Examiner is not called upon to cite all parts of a reference that may be available but only the best. Multiplying citations to parts or a reference, any one of which is as good as, but no better than, the others, adds to the burden and cost of prosecution." So the answer is no.

See: Ex Parte Dewing et al Appeal No. 2008-0026 (BPAI July 9, 2008)

List of Patent Attorneys

The US Patent and Trademark Office advises inventors to seek help from a registered patent attorney. The US Patent Office has a publicly searchable database of licensed patent attorneys. Only attorneys on this list have a license to assist you in filing your patent application in the US Patent Office.

First Action Interview Program

The US patent and trademark office is starting a pilot program (called first action interview pilot program) to allow patent applicants to have an interview with the examiner after the first initial search is done on the patent application but before the examiner issues a first office action. This could improve the quality of first office actions. The criteria for participating are applications filed before September 2005 and in class 709 or applications filed before November 2006 in class 707. Info here:

Publishing Patent Applications

Publishing your patent application – You’ve come up with an invention and you want to protect it right away, so you file a patent application. What if someone you showed your invention immediately starts copying it? One way to start accumulating rights is to request immediate and early publication. Publishing it allows you to get provisional rights meaning if the patent issues with the claim substantially the same as the one published, you are entitled to a reasonable royalty from the time the infringer had actual notice of the application under 35 USC 154(d). One caveat, if you’re interested in seeking foreign patents, make sure you file them within one year of your application. If you’re an inventor with an application on file and this situation applies to you, ask your patent attorney to request early publication. Patent law on provisional rights can be found here:

Errors In Issued Patent Claims

US court of Appeals for the Federal circuit decides Fargo v. IRIS. This case deals with what happens when a patent claim being litigated has an obvious error in it. Fargo’s patent was for a printer ribbon supply rolls with identifying indicia and sensors to detect the indicia during operation of a printer. Fargo’s patent attorney argued that the clause: “the second supports other than the being oriented at known positions relative to the home position and at least one second support carrying a removable unmagnetized magnetic material identifier indicia” in claim 8 of US patent 5,755,519 could be understood and corrected by the Court.

The law regarding errors in claims is that a district court may only correct an error in a patent by interpretation of the patent “if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Since, this clause was ambiguous, the Appeals court denied Fargo’s appeal and found the claim to be invalid. Also, all the claims that depended from claim 8 were found to be invalid because of the error in claim 8.