Responding to Post-KSR Obviousness Rejections before the USPTO — What Now?
Download a complimentary white paper discussing the significant change of Supreme Court's decision, KSR International Co. v. Teleflex Inc.

After the decision in KSR International Co. v. Teleflex, Inc., arguments to an examiner rejecting a patent application claim as being 'obvious' need to be different. Read more about the standard tests for obviousness and why they are now in question. And, receive in this complimentary white paper, recommendations for effective arguments supporting an obviousness rejection.

Download the File in PDF Format

Stretching Time
Are You Making Use of the Benefits Offered by the Provisional Applications?

Often overlooked by non-U.S. applicants, the provisional application is available to effectively extend patent term while securing an early filing date.

The U.S. Patent & Trademark Office (“USPTO”) permits the filing of “provisional” applications. A provisional application is different from a regular application in that it is not examined and therefore cannot directly issue as a patent. Instead, the provisional application secures a filing date from which priority may be claimed in later-filed regular U.S. or non-U.S. patent applications. The formatting flexibility and potential procedural benefits provided by a provisional application make it a useful tool that should be considered by non-U.S. applicants and practitioners.

The format requirements for a provisional application are minimal, and therefore the form of a provisional application is quite flexible. To be accepted by the USPTO, a complete provisional application must include a cover sheet (which identifies the application as a provisional application, provides the names and addresses of the inventors, and provides the title of the application), a written description, and drawings (if necessary). No background, summary, abstract, or claims are required. Accordingly, almost any type of information, including lab notebooks, raw data, and design drawings, may be submitted as a provisional application. It is recommended, however, to include a specification that is similar to a regular U.S. application to ensure that it adequately supports the claims submitted in a later-filed application, thereby validating your right to claim priority to the provisional application filing date. A provisional application is not entitled to claim priority to any other application, and therefore must be the first-filed application.

The primary procedural benefit afforded by a provisional application is preserving an early filing date without reducing the term of any patents issuing from later-filed applications that claim priority to the provisional application. When a provisional application is filed, the USPTO will issue a filing receipt which identifies a filing date. The applicant has one year from the provisional application filing date in which to file a regular U.S. application and any non-U.S. applications that may claim priority to the provisional application. Consequently, references cited in the later-filed applications must pre-date the provisional application filing date. Significantly, however, the term of a patent issuing from the later-filed regular U.S. or non-U.S. applications is measured from the filing date of the later-filed application, and not the provisional application. Accordingly, the provisional application process can be used to secure an early filing date while effectively extending patent term.

The patent agents and attorneys at Miller, Matthias & Hull have extensive experience preparing and filing provisional patent applications. This is just one of the ways we help our clients use the full extent of benefits afforded under U.S. patent law. If you would like us to assist you with the U.S. filing process, or if you would like pricing or additional information regarding provisional applications or other aspects of U.S. patent practice, please contact us.

This One’s On Us
Pay for the Work Completed on Your Behalf – Not for Attorneys "Coming To Work"
Tired of being nickel and dimed by your outside counsel? Hourly rates are one thing, but in our opinion, separately billing for out-of-pocket expenses amounts to little more than piling on the invoice. At Miller Matthias & Hull, we make it a point to never charge our clients for such incidentals. For example, one of our clients is headquartered in Wisconsin, a couple hours drive from our offices in the Chicago loop. It is not uncommon for one or more of us to attend a meeting at their facilities once or twice a month for interviewing inventors, participating in a design team meeting, or a strategy session with the in-house attorneys. At other firms, including those at which we were formerly associates and partners, the drive time and mileage/gas charges to get there would have been directly billed to the client. The same would have been true for the meals had en route, or if overnight accommodations were required, the cost of the hotel or other lodging.

Not at MMH. We like to view ourselves as a part of your team. If we are fortunate enough to be asked to represent our clients, we would never think of charging them for the time it takes simply to “come to work.” In fact, this is one of the founding business principles when we opened our doors for business three years ago. The same is true of other expenses we view as simply the cost of doing business, such as telephone charges, facsimile charges, overnight delivery charges, postage, and photocopying. You hire us to protect your ideas, not pay for our office supplies. For more information on MMH, our schedule of charges, hourly rates, or a proposal tailored to your specific business and technology, feel free to contact one of us.