Patent It Yourself - PDF Archive

ChaPter 13 | GETTING the Pto to DELIVER | 395
go a long way toward helping your case. As I stressed in
Chapter 3:
• Record all steps in your invention development
(conception, building, and so on) carefully. (Inventor’s
Commandment 3)
• Be diligent in building, testing, and recording your
invention—unless you’ve filed a Provisional Patent
Application (PPA) and are relying on that filing as
your priority date. (Inventor’s Commandment 4)
• File a patent application promptly.
Who wins an interference? As briefly stated in Chapter
5, the winner in an interference will not necessarily be the
first to file a patent application on the invention. Rather,
the first inventor to “reduce the invention to practice” (file
a patent application or build and test the invention) will
prevail, unless the other party conceives the invention first
and has been diligent in effecting a reduction to practice.
This means that the typical interference involves lots of
testimony and introduction of documents by both sides,
all for the purpose of proving priority. It’s this triallike
aspect of the interference that virtually necessitates
professional help.
Although there are certain advantages to the U.S.’s “first
to invent” system, all other countries, except the Philippines,
have a “first to file” system, which eliminates interferences
and their attendant tremendous expense, complexity,
and time delays. Some have called the interference laws
a “patent attorney’s relief act.” If you agree, write your
Congressperson or have your inventors’ club launch an
effort to simplify this area of the law.
L. Statutory Invention Registration (SIR)
If you intend to abandon your application, but want to
prevent anyone else from ever getting a valid patent on
your invention, you can have an abstract and one drawing
figure of your application published in the OG–Patents
(see Chapter 6 and Appendix 2, Resources: Government
Publications, Patent Websites, and Books of Use and
Interest) and have your application printed like a patent.
This is called “converting your application to a Statutory
Invention Registration (SIR).” For the reasons stated in
Chapter 14, Section G, I strongly recommend against using
a SIR.
M. If Your Application Claims
More Than One Invention
Often patent applications claim several embodiments of
an invention, and the PTO will regard these embodiments
as separate inventions. The PTO will thus require you to
“restrict” the application to just one of the inventions. The
theory is that your filing fee entitles you to have only one
invention examined.
Also, if two of your claims are directed to the same
invention, but the examiner feels that the two claims are
directed to subject matter that is classified in two separate
subclasses (see Chapter 6), the examiner can require you to
restrict the application—that is, to elect one set of claims for
prosecution.
Another situation in which restriction may be required
occurs when your application contains both method and
apparatus claims. Even when both sets of claims are dir ected
to the same invention, examiners often consider them two
separate inventions and require you to elect either the method
or the apparatus claims.
Generally speaking, it’s very difficult to successfully
“traverse” (argue against) a PTO- imposed restriction.
Fortunately, it’s possible to file a second application (called
a divisional application—see Chapter 14) if you think
pursuing the nonelected claims is worth the cost (new
filing fee) and if present indications are that your divisional
application will comprise allowable subject matter. You
can file the divisional application any time until your first
(parent) application issues, and your divisional application
will be entitled to the filing date of your parent application.
However, you should file any divisional application(s) as
soon as possible since, under GATT law, any patent that
issues on the divisional application will expire 20 years
from the filing date of the original application in the chain.
One way to overcome a requirement for restriction
is to add or include a “linking” claim—a claim that
includes features of both inventions. If a linking claim is
found allowable, the examiner will drop the restriction
requirement. A linking claim is one that includes features of
both inventions. For example, product and process claims
can be linked by a claim to the product made by the process.
While details of linking claims are found in MPEP 809.03, I
recommend that you seek professional help in this area.
Another, related situation occurs when you claim several
embodiments or “species” of one invention. In the first OA,
the examiner may require you to elect claims to one species
for purpose of examination; this is to facilitate the search.
If you don’t get any generic claim allowed—that is, a claim
that covers all of your different species—you’ll be allowed
to claim only the elected species; you can file divisional
applications on the nonelected species. (In this case, the
PTO will consider each species to be a separate invention.)
If you do get a generic claim allowed, you’ll be allowed
to claim a reasonable number of different species of the
invention (Rule 146).