Patent FAQs USPTOExample A An applicant based in Chicago, Illinois, directs US counsel to prepare, file and prosecute an application in the United States Patent and Trademark Office. The US counsel subsequently sends the application to foreign counsel for filing and prosecution in foreign jurisdictions. Patent research software for searching and analyzing patent data. AcclaimIP has over 80 million global patent documents, family and legal information in an. The European Patent Office offers Espacenet as a free tool for beginners and experts to perform patent searches for inventions and technical developments. I want to use the Indy 10 component TIDFTP client to get a file from a ftp server Everything is okay for the general setting, then comes the problem for. A federal court issued a preliminary injunction against World Patent Marketing, an invention promotion company the FTC charged with being a scam. The information available on the prosecution history associated with US patent documents, from USPTOs Public PAIR, is invaluable. Studying the negotiations that. The US counsel directs foreign counsel to provide copies of all communications from the foreign office by fax or overnight mail within seven days of receipt thereof, and expressly reserves all decision making authority as to prosecution of the US and foreign applications. On January 5, 2. 00. Germany receives a communication from the European Patent Office that includes a list of citations of patents. On January 8, the foreign counsel, pursuant to the standing instructions of US counsel, sends by overnight mail, a copy of the communication from the EPO. Patent File Wrapper Search' title='Patent File Wrapper Search' />Start your free patent search with this 2800 word definitive guide on Google Patents to learn all simple to advance concepts. Understanding PatenteseA Patent Glossary Arnold B. Silverman and George K. Stacey. All too frequently, intellectual property attorneys use patent jargon and, as. Improve your patent prosecution outcomes and overcome Alice patents rejections with LexisNexis PatentAdvisor, software for patent analysis and portfolio management. A noun phrase defining the extent of the protection conferred by a patent, or the extent of protection sought in a patent application. Clearance search and opinion. A. The document is received by US counsel on January 1. On January 3. 0, the US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 1. Example B An applicant based in Paris, France, directs French counsel to prepare, file and prosecute an application in the European Patent Office. The EPO application is then sent to US counsel by French counsel to be reviewed, edited and prepared for filing in the United States Patent and Trademark Office. The US counsel works with the French counsel to review the edited application, and then files the US application. The review and editing of the US application also leads the French counsel to amend its EPO application. On January 5, 2. 00. French counsel receives a search report from the European Patent Office that includes a list of six patents. On January 2. 0, 2. US counsel receives from French counsel by overnight mail a copy of the communication from the EPO and suggests that the US counsel review the search report and take appropriate action. On January 2. French counsel provides a copy of the search report to the applicant. On January 3. 0, 2. US counsel reviews the document and discovers a previously uncited patent. A copy of the patent and an IDS is then prepared and filed by the US counsel on February 1. Example C An applicant based in Chicago, Illinois, hires US counsel to prepare an application suitable for filing in the United States and the European Patent Office. The US counsel engages a German attorney to assist in the review and editing of the application to take account of issues relevant to EPO practice. The US counsel then reviews the edited application, approves the changes, and files it in the United States. The US counsel then directs the German attorney to file the application in the EPO. During prosecution of the US case, the US counsel receives an office action citing three patents. On December 1, 2. US counsel sends the three patents to the German attorney for review and appropriate action. On January 5, 2. 00. German attorney receives a search report from the EPO that cites the three previously cited patents, plus a fourth patent, designating all as X references. S Microsoft Powerpoint 2007 Full Version. On January 1. 5, the German attorney reviews the fourth patent and compares it to the three patents cited in the US prosecution. The German attorney concludes that the fourth patent is duplicative of one of the three patents, and takes no further action. On March 1, 2. 00. US counsel is informed of the citation of the fourth patent by the EPO and the decision of the German attorney that the information in the newly cited patent was duplicative of the three patents previously cited by the USPTO. The US counsel also obtains copies of the newly cited patent on this date. On March 5, 2. 00. US counsel files an IDS containing the newly cited patent. Introduction. 37 CFR 1. CFR 1. 9. 7 and 1. CFR 1. 7. 04c6, c8, c9, or c1. CFR 1. 5. 6c more than thirty days prior to the filing of the information disclosure statement. The determination of when the thirty day period begins to run is dependent on the role of each entity involved in the prosecution of the US and foreign applications, and the role that each plays if any vis vis the US application. The inventors, the assignee and the US patent counsel are all individuals designated in 3. CFR 1. 5. 6c. The issue is whether the foreign patent counsel is also an individual designated in 3. CFR 1. 5. 6c. 3. CFR 1. CFR 1. 5. 6 are Each inventor named in the application Each attorney or agent who prepares or prosecutes the application and. Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application. Based on these elements of 3. CFR 1. 5. 6c, the following would be the conclusions of the Office in the three examples cited above. Answer to Example A The thirty day period would be calculated from January 1. As such, the IDS filed on February 1. CFR 1. 7. 04d, and thus would not result in a reduction of any patent term pursuant to 3. CFR 1. 7. 04c6, c8, c9, or c1. In this example, the foreign counsel has no substantive role in the prosecution of the US application. The explicitly defined role of the foreign counsel relative to the US counsel in combination with the practice in the described fact pattern removes any potential doubt as to the role of the foreign counsel. Answer to Example B The thirty day period would be calculated from January 5, 2. As such, the submission of the IDS would not be received within the thirty day window in 3. CFR 1. 7. 04d, and thus could result in a reduction of any patent term pursuant to 3. CFR 1. 7. 04c6, c8, c9, or c1. In this example, the USPTO would consider the French counsel to have been a party within the meaning of 3. CFR 1. 5. 6c. The French counsel, based on the above facts, played a material role in the preparation and prosecution of the US application e. US counsel to amend the application and subsequently amended the EPO application based on the work product produced with US counsel. In addition to the French counsel, the applicant would in any case be a party within the meaning of 3. CFR 1. 5. 6c. Answer to Example C The thirty day period would be calculated from January 5, 2. As such, the submission of the IDS would be determined to have not been received, received within the thirty day window in 3. CFR 1. 7. 04d, and thus could result in a reduction of any patent term pursuant to 3. CFR 1. 7. 04c6, c8, c9, or c1. In this example, the USPTO would consider the participation of the German counsel in the prosecution and decision making as to the relevance of the newly cited art vis vis the previously cited three patents to be a material participation in the US prosecution. As such, the German counsel would be considered by the USPTO to be a party covered by 3. CFR 1. 5. 6c, and as such, would evaluate compliance with 3. CFR 1. 7. 04d from the date that the foreign counsel first learned of the fourth patent i.