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29 May
COMMERCIAL SUCCESS IS WELL AND ALIVE
  • by: Fidel Nwamu

Evidence that a patented product is commercially successful can be very important even where other factors say that the patented claims are obvious. In a recent decision by the PTAB, the Board said that the patented product’s commercial success was strong because sales of the patented product with flared tolerance rings for bearing assembles surpassed other tolerance ring designs without flared rings within three years of the patented product’s introduction. This finding outweighed a finding of obviousness based on three other factors. Intri–Plex Technologies, Inc. and Mmi Holdings, Ltd., v. Saint–Gobain Performance Plastics Rencol Limited, IPR2014–00309 (Paper 83)

17 May
Thinking of Abandoning that Patent or Trademark?
  • by: Fidel Nwamu

Abandoning a patent or trademark application during prosecution may require further analyses beyond cost-saving benefits. One client decided to abandon an application during prosecution. After conducting an analysis, we were able to convince the client to continue prosecution. Upon issuance, we sold the patent for a generous amount, earning the client a nice return on patent prosecution costs.

13 May
Examiner Office Actions
  • by: Fidel Nwamu

Responding to Office Actions from the patent office is neither art nor science and depends on the attorney involved. Approaches are varied and can range from conducting interviews, amending the claims to arguing without amendment etc. In my experience, it is always best to avoid the combative applicant approach. Whether preparing a response or conducting an interview, a non-combative approach will generate a quicker notice of allowance for that patent or trademark application.

12 May
Priority Claim
  • by: Fidel Nwamu

Have a claim for priority? Under the old regime, a claim for priority can be presented in the specification. Not so anymore. Under the AIA, the claim for priority must be presented in the Applicant Data Sheet.