As mentioned in our previous post, approaches for developing and managing your IP portfolio need to change to keep up with changes in technology. Due to rapid progress in technology, a patented technology may only be commercially desirable for a limited amount of time, such as a few years. However, patents typically have a term of twenty years. How can you make the most of your patent during the entire duration of its term? One approach during concept development and drafting of the patent application may be to include disclosure of how your inventive concept could be used in technologies that are only newly emerging, but may be mainstays down the road. For example, in automobiles, it may be wise to consider how an inventive concept could be used in a hybrid or all electric vehicle, or how the inventive concept could be used in an autonomously-driven vehicle. You could include claims directed to the use of the inventive concept in these newly-emerging technologies, or file a continuation application down the road. In this way, an inventive concept may be expanded across multiple technology areas, thus increasing the value of your IP portfolio.
Oobleck is a common name for a non-Newtonian fluid comprising cornstarch and water. Named after a substance humorously described in Dr. Seuss’s classic children’s story, Bartholomew and the Ooblek, the cornstarch and water concoction is frequently used in children’s science classes as a fun way to learn about fluid mechanics. You may have fond memories, yourself, of playing with oobleck as a youth. Oobleck behaves as a fluid when touched gently, but becomes hard as a solid when hit with great velocity. For example, a person could run across a swimming pool of oobleck without getting their feet wet. However, if a person stood still on the oobleck, then they would slowly sink. Because oobleck is a children’s plaything and because of its simple recipe (cornstarch and water), one may be surprised to learn that inventors have attempted to patent serious industrial uses for the material. As an example, one current patent application, US 2015/0016885 (now abandoned), is for a system of fi
The recent Infrastructure bill signed into law by President Biden affects many things, but one aspect that affects the automotive world is adaptive headlights. As noted by Jalopnik puts it somewhat crudely, this means “our headlights will suck way less” (link to https://jalopnik.com/finally-our-headlights-will-suck-way-less-1848067412 ). But with this sudden change, adaptive headlights in the US may be in for a particular messy IP situation since many companies may have considered it was not necessary to protect their adaptive headlight innovations in the US because of the 50-year old rule preventing such technology. Recent patents in the field from applicants such as Lumileds and Arex indicate that smaller players and startups may be able to break into the market which is expected to explode in the next few years once the final rules are implemented. For those in the industry that have typically avoided US patent filings in the adaptive headlamp area, they may want to rethink th
Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action. Frustrated, I couldn’t resist skimming the substance of the rejection. After all, like any patent practitioner, I thought my arguments were pretty irrefutable. The news only got worse… or so it appeared. The Office action was something called an “ Ex Parte Quayle action.” Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day. Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable. In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable. Accordingly, the mailing of these actions closes prosecution on the merits of the appl