Eye On IP®: February 2011

Tuesday, February 22, 2011

Try Out This Fast IP Search Tool - IP-Screen(sm)

Sheldon Mak & Anderson PC is happy to sponsor this innovative service to the business community.

WHAT IS IP-SCREEN?

IP-Screen does one thing only, but does it fast.

If you know the name of a company, an IP-Screen search is currently the fastest method you can use to get a list of the U.S. intellectual property owned under the entity name. Just type in the name once, and in a flash you will get back results from several U.S. government public access databases on IP (Patents, Trademarks, Copyrights, and U.S. Customs). Summary results are presented all on a single screen for easy navigation.

America is a great country, and America has the strongest Intellectual Property system in the world. Simpler and faster public IP data access will be good for IP development.

WHAT IS IP-SCREEN USED FOR?

IP ownership tells you a lot about a business. An IP-Screen search is the quickest way to size up any competitor.
An IP-Screen search should be the first step in any M&A DD project.
It would be a rare American business, especially a long established one, that does not have registered intellectual property. So next time you get any sort of business proposal, do an IP-Screen search on the company.
You are at a trade show, and you come upon an unknown company. Just pull out your smart phone and IP-Screen search the company name.
Your competitor's lawyer comes up to your booth at a trade show and demands that you take down your display because of some alleged infringement. Keep him honest by doing an IP-Screen search to see what rights his client may have.
You are waiting for that rare conference with your department head, and need to show that you are up on the development within the company. What better way than to quickly IP-Screen search and come up with some points of interest?
You are sitting outside the room for your job interview. Do an IP-Screen search on the employer and come up with intelligent talking points.
Dead trademarks can tell a lot. Do an IP-Screen search to see what TM registrations and applications were dropped by the company.
Showing all the IP in one place gives you a focused view of the entity (this is especially helpful to attorneys).

IP-Screen search is a quick, simple tool; by design it is neither comprehensive nor complete. But you can do the search yourself, whenever and wherever you are, and the price is right!

I am sure you will come up with new ways and reasons for using IP-Screen. Do share by sending feedback to the site.

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Friday, February 18, 2011

PATENT OFFICE ISSUES GUIDELINES RE THE DEFINITENESS REQURIEMENT

Patent claims need to be definite. The Patent Office recently issued guidelines to its examiners on how to apply the definiteness requirement. (76 Fed. Reg. 7162) (http://www.gpo.gov/fdsys/pkg/FR-2011-02-09/pdf/2011-2841.pdf) According to these guidelines:

A. The claims are to be given their broadest reasonable interpretation. The words of the claim are given their plain meaning, unless such meaning is inconsistent with the specification.

B. If the claim can be read with more than one reasonable interpretation, a rejection for indefiniteness is appropriate. If the boundaries of the protected subject matter are not clear, the claim is indefinite.

C. A broad claim is not indefinite merely because it encompasses a wide scope of subject matter.

D. Functional language can be suspect. The primary inquiry is whether the language leaves room for ambiguity. The following factors are to be considered when examining functional language for indefiniteness:

(i) Is there a clear cut indication of the claim scope;

(ii) Does the claim set forth well-defined boundaries of the invention or does it only state a problem solved or result obtained; and

(iii) Can one skilled in the art know what structure or steps are encompassed by the claims?

E. When terms of degree are used, does the specification provide a standard for measuring that degree?

F. If a subjective term is used, does the specification provide some standard for measuring the scope of the term?

G. With regard to Markush claims, can one skilled in the art envision all of the members of the Markush group, and does the claim contain an improper grouping of species?

H. Examiners will apply 35 U.S.C. Section 112, paragraph 6 to a claim limitation that:

(i) Uses the phrase “means for” or “step for” or a non-structural term that does not have a structural modifier;

(ii) The phrase is modified by functional language; and

(iii) The phrase is not modified by sufficient structure, material, or acts for achieving the specified function.

I. If it is unclear if the claim invokes 35 U.S.C. Section 112, paragraph 6, a rejection for indefiniteness may be appropriate.

J. If the claim invokes 35 U.S.C. Section 112, paragraph 6, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function.

K. For computer implemented means-plus-function limitations, the corresponding structure is not a general purpose computer, but rather must be a special purpose computer programmed to perform the disclosed algorithm.

These guidelines and supplemental examination information are effective February 9, 2011 and apply to all applications filed before, on or after the effective date.

The USPTO is inviting comments on these guidelines and supplemental examination information. To be ensured of consideration, written comments must be received on or before April 11, 2011. No public hearing will be held. Comments concerning these guidelines and supplemental examination information may be sent by electronic mail message over the Internet addressed to SEGuidelines112@uspto.gov

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Monday, February 14, 2011

USPTO Offers Online Tools to Solicit Public Feedback on Patent and Trademark Examining Procedures

The USPTO has introduced two online discussion tools designed to solicit input from the intellectual property community on how the USPTO can update and improve the Manual of Patent Examining Procedure (MPEP) and Trademark Manual of Examining Procedure (TMEP).

Selected chapters from the MPEP and TMEP were selected to draw commentary from a wide spectrum of users. The USPTO plans to post additional chapters in the coming months. Feedback will be used to consider potential modifications to the tools or the conditions for their use in order to increase meaningful participation. Current chapters open for discussion include:

MPEP Chapter 500 - Receipt and Handling of Mail and Papers and Chapter 600 - Parts, Form, and Content of Application, and

TMEP Section 904.03 - Material Appropriate as Specimens for Trademarks and Chapter 1200 - Substantive Examination of Applications.

Those interested in contributing comments can access the tools on the following websites http://uspto-mpep.ideascale.com/ and http://uspto-tmep.ideascale.com/.

This project is one of several open government initiatives the USPTO is undertaking to collaborate with the public and increase agency transparency. For more information on these initiatives, go to:

http://www.uspto.gov/news/pr/2010/10_22.jsp, www.uspto.gov/dashboards, www.peertopatent.org and www.uspto.gov/blog.

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Monday, February 7, 2011

Sheldon Mak & Anderson Super Lawyers

Sheldon Mak & Anderson is pleased to congratulate two of our attorneys for being named as Southern California Super Lawyers!

Robert Schroeder was honored in the Intellectual Property Litigation category. This is his fifth consecutive year on the list. Jeff Sheldon was named in the Intellectual Property category and this is his seventh year in a row being so recognized.

We're proud to have them!

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