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.
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 application and sets a
If you prosecute patent applications long enough, you are bound to receive a restriction requirement. Restriction requirements have become quite common, with the overall restriction rate estimated to be a little more than 50%.
Restriction requirements can create headaches for applicants by limiting the ability to amend claims during prosecution. Applicants should also beware that other strings are attached to restriction requirements. For example, in the case of a species restriction:
“If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.” (MPEP 809.02(a))
That is, for the remainder of prosecution after a species has been elected, any added claims need an extra statement to indicate their species. An extra statement may seem small in the scheme of everything, but forgetting this little indication could give the Examiner an avenue to stall the application.
Avoid getting …
Food processing technology is an active area for patent filings. Even the fundamental concepts of a new restaurant can be the subject of patent protection. Today we tell the story of one such patent as gleaned from publicly available documents and other on-line resources.
The story of US Patent 10,528,915 (Sanadidi, et al.) issued January 7, 2020 is that of a father and son inventor team who start their own restaurant (Bella Pita) in the LA area (there are two locations). M. Y. Sanadidi and his son Ezedin co-invented the idea for the new Mediterranean-style restaurant, which they opened in 2007. As M. Y. explained, they wanted to do something different:
“… we  resolved to determine whether there was any innovation that we could bring to the field of Mediterranean-style restaurants that would make us stand out from the many other restaurants of this type.”
It turns out M.Y. was a professor of computer science at UCLA and an inventor on several patents related to computer network…