Patent It Yourself - PDF Archive

394 | Patent it YOURSELF
7. Abandon Your Application
You must take any action in response to a final OA within
the three-month period for response or any time extensions
you buy (see Section Q, below); otherwise the application
will go abandoned. That is, you must either appeal, file
a continuation application, or get the examiner to allow
your application within the period for response. However,
if you’re going to file an amendment or an argument, you
should do it as soon as possible, preferably within one month,
so the examiner’s reply will reach you in time for you to take
any further needed action within the three-month period.
If all claims of your application are rejected in the final OA,
and you agree with the examiner and can’t find anything
else patentable in your application, you’ll have to allow the
application to become abandoned, but don’t give up without a
fight or without thoroughly considering all factors involved.
If you do decide to allow your application to go abandoned,
it will go abandoned automatically if you don’t file a timely
reply to the final action, since the ball’s in your court. You’ll
be sent a Notice of Abandonment advising you that the
case has gone abandoned because you failed to reply to an
outstanding Office Action.
If you do abandon the application, that doesn’t mean
that you’ve abandoned the invention. If your invention has
a unique shape and it hasn’t been made available to the public,
offered for sale, or sold more than a year ago, consider filing
a design patent application on it. Even if a utility or design
patent isn’t available, it may still be commercially viable;
consider trade secret or trademark protection. (See Chapter
7 for more information.)
K. Interferences
An interference is a proceeding conducted by the PTO (a
Patent Interference Examiner and the BAPI). An interference
is instituted to determine priority of inventorship—that
is, who will get the patent when two or more inventors are
claiming the same invention.
The PTO generally institutes an interference when they
discover two patent applications claiming the same invention.
However, since the PTO is such a large, complex, and
populous organization, and since its employees do not
always do perfect work, they sometimes make mistakes.
Thus they may allow an application that should have been
involved in an interference with another application to issue
as a patent without declaring an interference.
If this occurs and then an examiner or other patent
applicant sees the patent and believes it claims the same
invention as a pending application, an interference can be
declared with the patent, provided the issued patent has not
been in force for more than one year.
Monitoring Patent Applications
If you really want to do a superior job of patent
prosecution, find the class and subclass of your patent
application (you can find this by calling the clerk of
the examining division to which your application is
assigned) and then monitor the Official Gazette in
that class/subclass for all patents which issue and all
patent applications which are published while your
application’s pending. One service, www.FreshPatents.
com, will monitor all published applications that contain
any keywords you select each week for free. If you find
a patent that claims the same invention as yours, you
should get interference with it by copying its claims in
your application (see above). If you find a patent that is
relevant prior art to your invention, you should cite it via
a supplemental IDS (see Section B6 above).
How is the interference instituted by you, the applicant,
if you believe that you, rather than someone else, deserves
the patent? Simple. You merely copy (present) the claims
of the in-force patent in your application, informing the
patent examiner about the patent from which you copied
the claims, and showing the examiner how such claims are
supported in your application. Remember, you must copy
the claims of any patent within one year after it issues.
On the other hand, if you’ve been granted a patent, be
aware that there may be other patent applicants whose
applications contain the same invention as yours. All such
applicants have one year from your patent’s date of issuance
to copy your claims in their applications to get their
application into interference with your patent.
Procedurally, an interference is a very complex proceeding,
which would take another book of this size to cover. Unless
you have an exceptional grasp of patent law and formal
advocacy techniques, definitely seek help from a patent
attorney who’s experienced in trial work. Unlike some of
the other situations where I’ve recommended professional
help, representation in an interference proceeding is usually
very costly, usually running $10,000 to $25,000 or more.
Despite the need for professional help should an interference
occur, there’s much you can do on your own to
help your case. The Boy Scout motto will do nicely here: Be
prepared. If your application is one of the 2% that becomes
involved in interference, sufficient advance preparation will