Can I change my patent application after it is filed?
Clients often ask me if they can change their patent application after it has been filed with the Patent Office? Yes, but there are certain restrictions to be aware of.
The most common mechanism for changing a patent application is by amendment. However, there may be times when it is necessary, or desirable, to file a divisional application, a continuation application, or a continuation-in-part application. What is the difference between a divisional patent application, a continuation patent application, and a continuation-in-part patent application? There are subtle, but important differences.
A divisional patent application is typically filed when the Examiner issues a restriction requirement (saying that you have tried to claim more than one invention), and makes you withdraw the claims. You can file a divisional patent application including the withdrawn claims. A continuation patent application is typically filed when you want to file another application with claims which were described and enabled by the specification (and/or drawings), but not claimed.
Because no new matter is added in either the divisional or the continuation, these patent applications will have the same filing date as the parent application, provided the parent application (or a child application) is still pending. Therefore, it is important to discuss the possibility of filing divisional or continuation applications before your patent application issues or goes abandoned.
A continuation-in-part (CIP) may be filed to add new material to the specification, drawings, and/or claims. CIP applications are typically considered when the inventor makes a change or addition to his or her invention. Anything which was previously described in the parent application specification and drawings, receives the filing date of the parent application. But any new material receives the filing date of the CIP application. Therefore, the bar dates apply to any new material. That is, if the new material was publicly disclosed or publicly used, sold/offered for sale, or published, the CIP application must be filed within one year of such an event or the new material is considered to be in the public domain. Just as with the divisional and continuation patent applications, a CIP application also must be filed before issuance or abandonment of the parent application (or a child in the chain of applications if there is more than one patent application).
Changes with the new patent legislation which was enacted in 2011 may also affect your filing strategy. Therefore, it is important to discuss any changes or new aspects of your invention with your patent attorney as soon as possible to avoid losing important legal rights to your invention.
Denver patent law firm welcomes paralegal Marcie King to the team
Denver patent law firm Trenner Law Firm, LLC is growing. This April, we welcomed intellectual property paralegal Marcie King to the team.
Marcie King earned her paralegal certificate from Denver Paralegal Institute in 2002 and has been working in the intellectual property field ever since. She has worked with both small and large firms and has experience working with patents, trademarks and copyrights.
We look forward to working with Marcie to better serve our clients.
Colorado Patent Attorney Mark Trenner to be featured on Tom Martino’s Troubleshooter Show on Denver’s KHOW Radio 630AM
Tune in to Tom Martino’s Troubleshooter radio show on Denver’s KHOW Radio Station (630AM) on Thursday, April 19 from 9am-12 noon. Colorado Patent Attorney Mark Trenner will be featured in the Help Center, answering your questions about inventions, patent applications, and the patent process.
Mark Trenner has previously been featured on Martino TV and was also a guest of Tom Martino’s radio show.
Mark Trenner is registered as a patent attorney before the US Patent Office and to practice law in the state of Colorado. Mark Trenner works with individual inventors, and businesses of all sizes, to protect their inventions and other intellectual property (including trademarks and copyrights) in the United States and throughout the world.
The software patent debate
I often receive comments from people who tell me “software shouldn’t be patentable.” To clarify, under Section 101 of the US Patent Laws, software per se (by itself) is not patentable. But software can be claimed in a patent application in such a way that it does comply with the US Patent Laws. That is, the claims of a patent application can be written such that the software is logic instructions which are stored on a computer readable medium (e.g., a hard disk drive) and executable by a processor to transform a machine (e.g., a computing device) to carry out transformative operations. See the US Patent Office Guidelines for computer-related inventions.
Perhaps this is a technicality, and I’ve had people tell me that this is still “patenting software.” Now we get into a philosophical discussion. For example, I’ve had someone tell me recently that “software is essentially a book written in a different language, and thus software should have stayed within the realm of copyright protection.” While I disagree – that is a book cannot be used to produce any useful result by itself – again, this is merely a philosophical discussion.
The reality is that software can be patented (if new over the prior art as defined by the patent laws, and if properly claimed). The reality is that if you are a small business or startup, or even an individual inventor that has new software, you should discuss your invention with a patent attorney and seriously consider filing a patent application for your software. We can argue all day about whether software should be patented. But the reality is that the smart companies are patenting their software everyday. Don’t believe me? Take 5 minutes and do a quick search at the US Patent Office patent search site to see some of the patents granted to major players in the software industry, like Microsoft and Apple.
Inventors: Basics You Need To Understand About Provisional Patent Applications
Inventors: Basics You Need To Understand About Provisional Patent Applications
A provisional patent application automatically goes abandoned after one year from the date of filing. Therefore, inventors must file a regular patent application claiming priority to their provisional patent application before the one year expires.
Inventors often ask “Then why should I file a provisional patent application if it goes abandoned after one year?” Denver patent attorney Mark Trenner offers these four very good reasons for filing a provisional patent application:
- Filing a provisional patent application may be a good idea if you are watching your budget. As you will see below, provisional patent applications can be filed relatively inexpensively. After you file a provisional patent application, you can mark your invention (and any marketing materials describing your invention) as “Patent Pending.” This shows customers, competitors, and potential investors that you are serious about your invention.
- You have up to one year to test-market your invention before investing in a regular patent application. If your invention is a success, you can file a regular patent application and claim priority to your provisional patent application. If after 9 or 10 months you realize that your invention just isn’t being received that well, you can drop it and you haven’t spent that much money yet.
- If you will be making changes to your invention, the provisional patent application at least identifies those aspects of your invention that belong to you at the time of filing. Any changes and improvements can then be added to the regular patent application without having to file a separate application.
- A provisional patent application can also be evidence that the invention belonged to you if someone you share your invention with later claims that the invention is theirs.
Inventors: Do You Know What A Prior Art Search Is?
We Provide Denver Patent Attorney Services
Inventors: Do You Know What A Prior Art Search Is?
Inventors may want to consider a prior art search to find out what is out there that might be the same or similar to their invention. The prior art search can give inventors a better idea of the state of the art related to their invention.
Inventors are not required to conduct a prior art search before filing a patent application (or at any time, for that matter). But in some cases, the prior art search turns up references that are the same as, or so similar to their invention. If this is the case, and the inventor decides not file a patent application, then they’ve just saved thousands of dollars!
Even if the prior art search indicates that one or more feature of the invention might be patentable, it is still a good idea to have an understanding of other inventions that are out there already. These might be the competition and inventors can see how to make their invention even better.
Oftentimes, seeing what else is out there will prompt inventors to think of additional features or enhancements for the invention, that can help better distinguish the invention over competitors. This can not only be helpful in preparing the patent application, but also for marketing the invention.
Of course, there is no guarantee that the prior art search will uncover all relevant (or even the most relevant) references. This is simply because there is so much information available, that it would be impossible to find and evaluate every reference that is related to the invention.
Public Domain – Denver Patent Law
Don’t Let Your Idea Become Public Domain!
The US patent law requires inventors to file a patent application for their inventions within a certain amount of time of certain events. These events trigger deadlines called “bar dates.” In the United States, inventors have one year from the date of first public disclosure, public use, publication, sale or offer for sale of an invention, in which to file at least a provisional patent application. Failure to do so prohibits (or forever bars, hence the term “bar date”) the inventor from filing a patent application for that invention. In other words, if an inventor does any one of these things on December 1, 2010, then the inventor must file at least a provisional patent application by December 1, 2011, or the inventor has essentially donated his or her invention to the public domain.
Most foreign countries have an even stricter standard – inventors cannot have disclosed their invention at all prior to filing a patent application.
STOP READING right now if you have done anything which might be considered to have triggered a bar date, and talk to a patent attorney right away to discuss your particular situation.
New Patent Website & Mission Statement
Trenner Law LLC, a Patent Law firm in Denver Launches New Site and Mission Statement
The mission statement details what the firm has always been about, but as they launch their new site geared more towards corporate patent law, it made sense to formalize the statement…
Here is an outline of the mission statement, for the full mission statement follow this link:
Corporate Colorado Patent Lawyer
Understand the law.
This may seem obvious for a law firm. But just knowing the law isn’t sufficient. New laws are constantly being written. Existing laws change. Courts interpret laws differently over time. Doing things the way it was done 10 years ago, 5 years ago, or even 1 year ago, can get your business into trouble. The law firm you choose to work with must continually learn and understand the current state of the law, in addition to where the law is headed tomorrow and into the future.
Team approach.
While an individual can make achieve great things, a team can often accomplish more. It is important to focus on relationships, not only with the clients, but also with vendors and support service providers.
Creative solutions.
No one wants to hear something can’t be done. Clients hire law firms to find out how things can be done – legally, ethically, and intelligently.
Differentiate.
Accommodate the client’s agenda, not our own.
Value.
While price is important, value does not simply mean lowest cost. Value means getting what you pay for, and then some.
Accessibility.
In today’s world of email and mobile devices, there’s no excuse not to be available.
Personal Touch.
Clients don’t want to be handed off to a junior co-worker.
Respect.
Always stay calm, polite, and professional. Respect the client, the client’s time, and the client’s desires. But only do business with people that reciprocate.
Balance.
Work hard for clients. Be committed to family. Be committed to the community.
Vision.
Thrive on change. Never abandon goals. The future is always far greater than the past.
Broncos 12th Man Infringement
Will The Broncos Have to Pay for Their “12th Man” Infringement?
Today is a big day in Colorado. Tim Tebow and the Denver Broncos are in the NFL playoffs, and they’re scheduled to play against the New England Patriots today. So what do the Denver Broncos have in common with intellectual property law? Plenty. Colorado patent attorney Mark Trenner of Trenner Law Firm, LLC in Denver explains.
According to the Denver Post article “Broncos could be in trouble with Texas A&M after fan flag” the university may take legal action against the Denver Broncos for using the school’s trademarked “12th man” phrase before last Sunday’s game against the Pittsburgh Steelers. Apparently a man parachuted into the stadium in Denver holding a “12th man” flag, and Texas A&M claims to own a trademark for this.
I checked the US Trademark Office records, and sure enough, Texas A&M does have a trademark registration (trademark registration number 1,612,053 registered in 1990) for “12th MAN” for “novelty buttons, towels, hats, t-shirts, polo-type shirts, golf shirts, sweaters, shorts, and athletic uniforms, in addition to college scholarship services.”
But what do any of these items have to do with the flag at the Broncos game?
Mark explains that with trademark law, potential infringers need to be aware that it’s not just identical uses, but what might be considered to be “confusingly similar.” Here, another sports team used the identical words “12th man” on a flag at a sporting event (I might add that it was a widely publicized and watched NFL television event). A flag isn’t the same as hats, t-shirts, etc., but given the circumstances (a football game with football fans who likely watch both college football and NFL games), arguably there may be an element of confusion. That is, those attending the NFL game may have been “confused” into thinking that Texas A&M was somehow associated with or involved in the parachute stunt – when apparently the university was not involved.
Do they have a case? Possibly. At least the Denver Post article quotes Jason Cook, vice president of marketing and communications at Texas A&M as tweeting that they “will defend our trademark.” And that wouldn’t be the first time either. According to the article, Texas A&M threatened legal action against the Seattle Seahawks for a similar stunt last season. The article says that they settled after “the NFL team was forced to pay the school a fee.”
Denver patent attorney Mark Trenner would like to acknowledge that the following trademarks: NFL, New England Patriots, Denver Broncos, Denver Post, and Texas A&M, are all trademarks of their respective trademark owners.
Colorado Patent Attorney presents to Small Business Owners at Conifer Chamber of Commerce
Mark Trenner with the Colorado patent law firm, Trenner Law Firm, presented to business owners at the Conifer Chamber of Commerce meeting on Friday, January 13, 2012.
More details below . . .
Title: Every business has Intellectual Property.
Summary: Small Business Owners . . . what doesyour intellectual property (IP) portfolio look like? Think you won’t have one . . . think again. Do you plan to offer a product or service for sale? Consider trademark protection. Do you plan to have a website or at least a brochure? Consider copyright protection. Do you plan to have a customer list? Consider trade secret protection. Conifer Chamber of Commerce business attendees learned simple steps they can take today for free and inexpensively to start protecting their trademarks, copyrights, and trade secrets, and start on a path to strategically analyze and build their IP portfolios. Business owners also learned how their intellectual property adds real value to the bottom line of their business, whether looking for financing, venture capital, a business partner, or eventual sale of their business.
Contact Colorado patent attorney Mark Trenner if you are interested having him speak at your business or group meeting.
