Please join our ongoing discussion about 
the fundamentals and 
sometimes the nitty-gritty of 
Patenting Inventive Ideas.

AIA impact on Product Marking

posted Feb 4, 2013, 2:18 PM by Robert Crownover   [ updated Mar 7, 2013, 8:35 AM ]

With Bon Tool opening the door for statutory damages of up to 500 dollars per infringing unit, and private actions under qui tam Patent Marking cases exploded and reached a high watermark with Solo Cup holding that knowingly marking a product with an expired patent gives rise to the rebutable presumption of intent to deceive.

The AIA has stemmed the tide and changed the law in this area. 

Under the AIA statutory damages can only be recovered by the Government, no longer under qui tam.
Under the AIA damages are limited to actual damages suffered from the false marking.
Also, under the AIA the cause of action for marking a product with an expired patent has been eliminated.

How To Patent: 04 Provisional Applications

posted Jan 26, 2013, 4:54 PM by Robert Crownover   [ updated Feb 8, 2013, 10:11 PM ]

My fourth video about Provisional Applications is now up. You can view this at:

This video discusses problems with provisional applications like prosecution history estoppel, Patent unenforceability, and EPO scope issues.

The video also describes when Provisional Applications might be the best option. This can occur when you are getting close to a statutory bar and do not have enough time to file a non-provisional application. If this is the case a provisional may be better than gifting your idea to the public.

Also, some entities do prefer to file Provisional applications. They get around the problems associated with Provisional Applications by filing a 35 U.S.C. 112 paragraph 1 compliant specification and drawings as well as a complete set of claims.

How To Patent: 03 Types of Intellectual Property

posted Jan 20, 2013, 9:47 AM by Robert Crownover

The third video covering various Intellectual Property rights has been posted to YouTube. This video loosely covers the subject matter covered in the types of coverage blog post. The video covers patents, copyrights, trade secrets, and trade marks. The video does not cover plant patents and design patents which are covered in the aforementioned blog post.

This video also covers some examples such as the creation of software. Software can give rise to intellectual property in the form of copyright and patents. The code itself is considered artistic expression and therefore covered under copyright. The solutions presented can be ideas covered under patent law.

Software is patentable. Every year many software patents get drafted, filed, issued, licensed, and litigated. The real question is not whether software is patentable but how it is. How should software claims be drafted, how should software specifications be written, and how should software claims be prosecuted.

This change in conversation, from should to how, is significant but if you want to play with the big boys, these are the questions that should be asked.

Computer Icons are also used as an example of a technology that may give rise to trademark, copyrights, trade secrets, as well as patents.

AIA Broadening of Prior Art

posted Jan 18, 2013, 2:31 PM by Robert Crownover

Under 35 U.S.C. § 102 of the AIA legislation, along with broadening the prior art considered under the statutory bar (previous 102(b) bar) also broadens what will be considered prior art under the previous 102(e)(2). Previously, (or currently depending on when this is read) a US or PCT published application in English will be considered prior art as of the PCT/US filing date with out regard to any foreign claim to priority.

Under the AIA legislation, the published US or PCT application will be considered prior art as of the priority claim. This expansion now allow publications to be considered prior-art as of their foreign priority date.

Statutory Bar under AIA

posted Jan 18, 2013, 2:19 PM by Robert Crownover

The newly minted 35 U.S.C. § 102(b)(1) under the AIA will create an exception in rather than affirmatively naming prior art. The intricacies of this exception will differ from that of the previous statutory bar under 102(b).

 Patent Act of 1952


patented/described in this or foreign country


public use or on sale in this country


more than 1 year

1 year or less

Now, the disclosure under the 35 U.S.C. § 102(b)(1) AIA rule refers to the disclosures made under 35 U.S.C. § 102(a). This means that public use or sales anywhere (rather than simply in the US) more than one year, will now be considered prior art. This broadens the previous statutory bar.

Provisional Applications Filed Before March 16, 2013

posted Jan 18, 2013, 1:56 PM by Robert Crownover

The question arises, what law will apply to a Non-Provisional Patent Application filed after March 16, 2013 based on a Provisional Patent Application filed before March 16, 2013.

With the minefield of dangers inherent in to the Provisional Patent Application, a new danger exists when a Non-Provisional Application filed after the enactment of the AIA claims priority to a Provisional Patent Application filed before the enactment of the AIA.

If all the claims of the Non-Provisional Application can claim priority (be fully supported) to the Provisional Patent Application, the old (Pre-AIA) laws will apply.

However, as commonly happens, new material is introduced in the later filed Non-Provisional Patent Application. If this new material is claimed by ANY claim in the Non-Provisional, the ENTIRE Non-Provisional will be examined under the AIA laws. This substantially increases the scope of what can be considered prior-art. 

Even if a single dependent claim is filed without priority and later canceled, the application will be examined under the AIA rules.

Should you file a Provisional Patent Application?

posted Jan 18, 2013, 9:20 AM by Robert Crownover   [ updated Feb 8, 2013, 10:11 PM ]

Provisional Patent Applications are a double edge sword.

On one hand they are easy to file, and can be very cheap. This is because individuals can file with the USPTO on their own and pay only the filing fee which is about 125 dollars. There are even companies that will do most of the paper work for you and charge a nominal fee.

What most inventors fail to consider is the problems that a Provisional Patent Application can create.

  1. Prosecution History Estoppel (PHE) is a doctrine of forfeiture. The forfeiture occurs when a Non-Provisional Application is filed with narrower claims. The subject matter between the claims in the Provisional Patent Application and the Non-Provisional Application is arguably forfeited. This is an area for litigants to argue over, but is it worth it?
  2. Patent Unenforceability. When the Non-Provisional Patent Application claims priority to the Provisional Patent Application, usually the claim is made generally and broadly. If any new material was added to the Non-Provisional (and there almost always is) this claim of priority is not entirely true. When this occurs it can be argued that the statement constitutes fraud on the patent office. The consequence is Patent unenforceability.
  3. EPO claim scope needs to be justified in the Provisional Patent Application. If people are going to file with the EPO, the claim scope of the eventually filed Application will need clear support in the Provisional Patent Application. Most practitioners meet this requirement by drafting entire sets of claims and placing them in the body of the Provisional Patent Application or in the Brief Summary of the Invention of a Provisional Patent Application.
That said, a properly created Provisional Patent Application will be almost as expensive as drafting the Non-Provisional Patent Application.

Is there ever a great reason to file a Provisional Patent Application? The single time it makes sense is when an inventor is running up on a statutory bar and absolutely does not have enough time to draft a Non-Provisional Patent Application. In this situation, a Provisional may preserve more rights that complete forfeiture under a statutory bar. 

Types of Intellectual Property Coverage

posted Jan 17, 2013, 4:04 PM by Robert Crownover

It is all too easy to specialize and focus only on a single area of IP, like patents, trademarks, trade secrets, or copyrights. However clients generally have intellectual property that spans several of these rights simultaneously. Below is a chart that attempts to provide a thorough overview of the various IP rights.

The table below briefly describes the various types of intellectual property protection available. Some helpful links are included.

Property Type:

Scope of protection:      

Type of protection:  



Plant Patent

New Plant variety, asexually reproduced

Used to prevent asexual reproduction, selling, or using the variety of plant.

20 years from filing.

Damages, injunctions, Attorney's fees.

Utility Patent

Functional aspects of an idea, invention, or solution.

Used to prevent making, using, selling, importing, or offering the invention for sale.

20 years from filing.

Damages, injunctions, Attorney's fees.

Design Patent

Ornamental design on an article of manufacture.

Used to prevent making, using, copying, or importing a similar design.

14 years from issuance.

Damages, injunctions, Attorney's fees, infringer's profits.


words, names, symbols, sounds, smells, trade dress.

Prevent consumer confusion, and deception.

Forever as long as properly used.

Damages, profits, punitive damages, injunction, seizure, statutory damages.


Artistic expression

Used to prevent copying, distribution, performance or display of the expression.

Generally it is the life of the author plus 70 years. Many exceptions exist.

 Statutory damages, damages, injunctions, and seizures. 

Trade secret     

Secrets having value from being secret.

Used to prevent misappropriation or improper disclosure.

Forever as long as the secret is properly maintained.

Damages, punitive damages, attorney fees, injunctions.

Pre-Appeal Brief Conference

posted Jan 14, 2013, 3:19 PM by Robert Crownover

The pre-appeal brief conference has proven to be a useful tool in avoiding the time and expense of appealing an Examiner's rejection. Nearly 40% of applicants that file for the pre-appeal brief conference have prosecution reopened and do not have to generate the appeal brief, pay to file the appeal brief, and most importantly wait for the PTAB to issue a decision.

The pre-appeal brief conference must be filed by request when filing the Notice of Appeal. Along with the request an argument of no more than 5 pages should accompany the request. Please see the USPTO FAQ for information on how to file the pre-appeal brief conference.

How To Patent: 02 Cost.

posted Jan 14, 2013, 2:50 PM by Robert Crownover

The single biggest question I get is: "How much would it cost to patent my idea?"

This video has been posted and addresses the current costs that an inventor should expect to pay to protect an invention. The video also includes a WARNING about fees that most inventors do not expect and are surprised to find tacked on to the end of their bill.

The surprise is generated when inventors get a quote for help filing an Application. With most Patent Attorneys a quote is for legal services only. Additional costs are generated beyond Attorney's Fees and Inventors should know ahead of time what these costs are.

When a quote is given for Attorney's Fees, Drawings are sometimes not included. Drawings can run 50-100 dollars per page and can add up quickly.

USPTO costs are almost never included in a Quote. For a small entity Fees can run a little over 600 dollars and for a large entity Fees can run a little over 1200 dollars.

Search costs are sometimes included in a quote, but more often than not, they are extra. Search costs can run 500 to 1000 dollars.

1-10 of 17