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TMEP 1003: SECTION 44(D) 1003 Section 44(d) - Priority Filing Date Based on a Foreign Application Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants ( see TMEP 1002.02) who have filed an application in a treaty country as defined by §44(b) ( see TMEP §1002.03).If an eligible applicant files the U.S. application claiming §44(d) priority within six BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more MPEP 608.01(N): DEPENDENT CLAIMS, JUNE 2020 (BITLAW) M.P.E.P. Section 608.01(n): Dependent Claims. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised June 2020). Updated in BitLaw in November 2020 37 C.F.R. 1.821: NUCLEOTIDE AND/OR AMINO ACID SEQUENCE 37 CFR Section 1.821: Nucleotide and/or amino acid sequence disclosures in patent applications. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in 37 C.F.R. 42.71: DECISION ON PETITIONS OR MOTIONS, NOV 42.71 Decision on petitions or motions. (a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. MPEP 602.05(A): OATH OR DECLARATION IN CONTINUING M.P.E.P. Section 602.05(a): Oath or Declaration in Continuing Applications Filed On or After September 16, 2012. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 602.01(C)(1): CORRECTION OF INVENTORSHIP IN AN 37 C.F.R. 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application. (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include: (1) An application data sheet in accordance with § 1.76 that identifies MPEP 602.01(C)(2): CORRECTING OR UPDATING INVENTOR NAME 37 MPEP 602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in MCRO, INC. V. BANDAI NAMCO GAMES AMERICA INC., 837 F. 3DSEE MORE ONBITLAW.COM
TMEP 1003: SECTION 44(D) 1003 Section 44(d) - Priority Filing Date Based on a Foreign Application Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants ( see TMEP 1002.02) who have filed an application in a treaty country as defined by §44(b) ( see TMEP §1002.03).If an eligible applicant files the U.S. application claiming §44(d) priority within six 37 C.F.R. 11.204: PRACTITIONER SERVING AS THIRD-PARTY 37 CFR Section 11.204: Practitioner serving as third-party neutral. Taken from the 9th Edition of the MPEP, Revision 10.2019, (Last Revised June 2020). Updated in BitLaw in November 2020 MPEP 608.01(N): DEPENDENT CLAIMS, JUNE 2020 (BITLAW) M.P.E.P. Section 608.01(n): Dependent Claims. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised June 2020). Updated in BitLaw in November 2020 35 U.S.C. 102 (PRE‑AIA): CONDITIONS FOR PATENTABILITY 35 U.S.C. 102 (pre‑AIA): Conditions for patentability; novelty and loss of right to patent. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw inFebruary 2018
MCRO, INC. V. BANDAI NAMCO GAMES AMERICA INC., 837 F. 3D McRO, Inc. v. Bandai Namco Games America Inc., 837 F. 3d 1299. The invention in McRO related to automated lip-synchronization and facial expressions in computer-generated animations. The claims required the obtaining of rule sets and time data files, generating both an intermediate and final stream of “output morph weight sets,” andfinally
MPEP 2173.05(E): LACK OF ANTECEDENT BASIS, JAN. 2018 (BITLAW) Lack of Antecedent Basis. This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018. MPEP Chapter Index. Chapter 2100: Patentability. 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention. 2173.05: Specific Topics Related to Issues Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, SecondParagraph.
MPEP 214.02: UNINTENTIONALLY DELAYED PRIORITY CLAIMS, JAN MPEP 214.02Unintentionally Delayed Priority Claims. MPEP 214.02. Unintentionally Delayed Priority Claims. This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018. MPEP Chapter Index. Chapter 200: Types and Status of Application; Benefit and Priority Claims. 214: Formal Requirements of Claim for ForeignPriority.
35 U.S.C. 103 (PRE‑AIA): CONDITIONS FOR PATENTABILITY; NON 35 U.S.C. 103 (pre‑AIA): Conditions for patentability; non-obvious subject matter. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 HOW TO DEAL WITH A DESCRIPTIVENESS REJECTION (BITLAW GUIDANCE) Dealing with a descriptiveness rejection in a trademark application. A descriptiveness rejection is made in an office action on your trademark application when the trademark examiner believes that your trademark is merely descriptive of your goods and services. Merely descriptive marks may not be registered on the principal register, butthere
MPEP 821.03: CLAIMS FOR DIFFERENT INVENTION ADDED AFTER AN 821.03 Claims for Different Invention Added After an Office Action Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicatedin 37 CFR 1.145.
MPEP 1893.03(C): THE PRIORITY DATE, PRIORITY CLAIM, AND 1893.03(c) The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application A U.S. national stage application may be entitled to: (A) a right of priority under 35 U.S.C. 119(a) and 365(b) based on a prior foreign application or international application designating at least one country other than the United States; and (B) the benefit of an earlier filed BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more MPEP 608.01(N): DEPENDENT CLAIMS, JUNE 2020 (BITLAW) M.P.E.P. Section 608.01(n): Dependent Claims. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised June 2020). Updated in BitLaw in November 2020 37 C.F.R. 1.821: NUCLEOTIDE AND/OR AMINO ACID SEQUENCE 37 CFR Section 1.821: Nucleotide and/or amino acid sequence disclosures in patent applications. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in 37 C.F.R. 42.71: DECISION ON PETITIONS OR MOTIONS, NOV 42.71 Decision on petitions or motions. (a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. MPEP 602.05(A): OATH OR DECLARATION IN CONTINUING M.P.E.P. Section 602.05(a): Oath or Declaration in Continuing Applications Filed On or After September 16, 2012. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 602.01(C)(1): CORRECTION OF INVENTORSHIP IN AN 37 C.F.R. 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application. (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include: (1) An application data sheet in accordance with § 1.76 that identifies MPEP 602.01(C)(2): CORRECTING OR UPDATING INVENTOR NAME 37 MPEP 602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in MCRO, INC. V. BANDAI NAMCO GAMES AMERICA INC., 837 F. 3DSEE MORE ONBITLAW.COM
TMEP 1003: SECTION 44(D) 1003 Section 44(d) - Priority Filing Date Based on a Foreign Application Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants ( see TMEP 1002.02) who have filed an application in a treaty country as defined by §44(b) ( see TMEP §1002.03).If an eligible applicant files the U.S. application claiming §44(d) priority within six BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more MPEP 608.01(N): DEPENDENT CLAIMS, JUNE 2020 (BITLAW) M.P.E.P. Section 608.01(n): Dependent Claims. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised June 2020). Updated in BitLaw in November 2020 37 C.F.R. 1.821: NUCLEOTIDE AND/OR AMINO ACID SEQUENCE 37 CFR Section 1.821: Nucleotide and/or amino acid sequence disclosures in patent applications. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in 37 C.F.R. 42.71: DECISION ON PETITIONS OR MOTIONS, NOV 42.71 Decision on petitions or motions. (a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. MPEP 602.05(A): OATH OR DECLARATION IN CONTINUING M.P.E.P. Section 602.05(a): Oath or Declaration in Continuing Applications Filed On or After September 16, 2012. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 602.01(C)(1): CORRECTION OF INVENTORSHIP IN AN 37 C.F.R. 1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application. (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include: (1) An application data sheet in accordance with § 1.76 that identifies MPEP 602.01(C)(2): CORRECTING OR UPDATING INVENTOR NAME 37 MPEP 602.01(c)(2) Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012 This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in MCRO, INC. V. BANDAI NAMCO GAMES AMERICA INC., 837 F. 3DSEE MORE ONBITLAW.COM
TMEP 1003: SECTION 44(D) 1003 Section 44(d) - Priority Filing Date Based on a Foreign Application Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants ( see TMEP 1002.02) who have filed an application in a treaty country as defined by §44(b) ( see TMEP §1002.03).If an eligible applicant files the U.S. application claiming §44(d) priority within six 37 C.F.R. 11.204: PRACTITIONER SERVING AS THIRD-PARTY 37 CFR Section 11.204: Practitioner serving as third-party neutral. Taken from the 9th Edition of the MPEP, Revision 10.2019, (Last Revised June 2020). Updated in BitLaw in November 2020 MPEP 608.01(N): DEPENDENT CLAIMS, JUNE 2020 (BITLAW) M.P.E.P. Section 608.01(n): Dependent Claims. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised June 2020). Updated in BitLaw in November 2020 35 U.S.C. 102 (PRE‑AIA): CONDITIONS FOR PATENTABILITY 35 U.S.C. 102 (pre‑AIA): Conditions for patentability; novelty and loss of right to patent. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw inFebruary 2018
MCRO, INC. V. BANDAI NAMCO GAMES AMERICA INC., 837 F. 3D McRO, Inc. v. Bandai Namco Games America Inc., 837 F. 3d 1299. The invention in McRO related to automated lip-synchronization and facial expressions in computer-generated animations. The claims required the obtaining of rule sets and time data files, generating both an intermediate and final stream of “output morph weight sets,” andfinally
MPEP 2173.05(E): LACK OF ANTECEDENT BASIS, JAN. 2018 (BITLAW) Lack of Antecedent Basis. This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018. MPEP Chapter Index. Chapter 2100: Patentability. 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention. 2173.05: Specific Topics Related to Issues Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, SecondParagraph.
MPEP 214.02: UNINTENTIONALLY DELAYED PRIORITY CLAIMS, JAN MPEP 214.02Unintentionally Delayed Priority Claims. MPEP 214.02. Unintentionally Delayed Priority Claims. This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018. MPEP Chapter Index. Chapter 200: Types and Status of Application; Benefit and Priority Claims. 214: Formal Requirements of Claim for ForeignPriority.
35 U.S.C. 103 (PRE‑AIA): CONDITIONS FOR PATENTABILITY; NON 35 U.S.C. 103 (pre‑AIA): Conditions for patentability; non-obvious subject matter. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 HOW TO DEAL WITH A DESCRIPTIVENESS REJECTION (BITLAW GUIDANCE) Dealing with a descriptiveness rejection in a trademark application. A descriptiveness rejection is made in an office action on your trademark application when the trademark examiner believes that your trademark is merely descriptive of your goods and services. Merely descriptive marks may not be registered on the principal register, butthere
MPEP 821.03: CLAIMS FOR DIFFERENT INVENTION ADDED AFTER AN 821.03 Claims for Different Invention Added After an Office Action Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicatedin 37 CFR 1.145.
MPEP 1893.03(C): THE PRIORITY DATE, PRIORITY CLAIM, AND 1893.03(c) The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application A U.S. national stage application may be entitled to: (A) a right of priority under 35 U.S.C. 119(a) and 365(b) based on a prior foreign application or international application designating at least one country other than the United States; and (B) the benefit of an earlier filed BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more 37 C.F.R. 42.123: FILING OF SUPPLEMENTAL INFORMATION, NOV 37 CFR Section 42.123: Filing of supplemental information. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 MPEP 2173.05(K): AGGREGATION, JAN. 2018 (BITLAW) MPEP 2173.05(k) Aggregation This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018 MPEP Chapter Index Chapter 2100: Patentability 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention 2173.05: Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, SecondParagraph
MPEP 2106.03: ELIGIBILITY STEP 1: THE FOUR CATEGORIES OF M.P.E.P. Section 2106.03: Eligibility Step 1: The Four Categories of Statutory Subject Matter. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in TMEP 501.01(A): ASSIGNABILITY OF INTENT-TO-USE 501.01(a) Assignability of Intent-to-Use Applications In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or HOW TO DEAL WITH A CONFUSINGLY SIMILAR REJECTION (BITLAWSEE MORE ONBITLAW.COM
HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 818.03(C): MUST TRAVERSE TO PRESERVE RIGHT OF MPEP 818.03 (c)Must Traverse To Preserve Right of Petition. MPEP 818.03 (c) Must Traverse To Preserve Right of Petition. This is the Ninth Edition of the MPEP, published in March 2014. MPEP Chapter Index. Chapter 800: Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting. 818: Election and Reply. MPEP 821.03: CLAIMS FOR DIFFERENT INVENTION ADDED AFTER AN 821.03 Claims for Different Invention Added After an Office Action Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicatedin 37 CFR 1.145.
TMEP 1201.02(C): CORRECTING ERRORS IN HOW THE APPLICANT IS 1201.02(c) Correcting Errors in How the Applicant Is Identified If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be correctedby amendment.
BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more 37 C.F.R. 42.123: FILING OF SUPPLEMENTAL INFORMATION, NOV 37 CFR Section 42.123: Filing of supplemental information. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 MPEP 2173.05(K): AGGREGATION, JAN. 2018 (BITLAW) MPEP 2173.05(k) Aggregation This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018 MPEP Chapter Index Chapter 2100: Patentability 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention 2173.05: Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, SecondParagraph
MPEP 2106.03: ELIGIBILITY STEP 1: THE FOUR CATEGORIES OF M.P.E.P. Section 2106.03: Eligibility Step 1: The Four Categories of Statutory Subject Matter. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in TMEP 501.01(A): ASSIGNABILITY OF INTENT-TO-USE 501.01(a) Assignability of Intent-to-Use Applications In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or HOW TO DEAL WITH A CONFUSINGLY SIMILAR REJECTION (BITLAWSEE MORE ONBITLAW.COM
HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 818.03(C): MUST TRAVERSE TO PRESERVE RIGHT OF MPEP 818.03 (c)Must Traverse To Preserve Right of Petition. MPEP 818.03 (c) Must Traverse To Preserve Right of Petition. This is the Ninth Edition of the MPEP, published in March 2014. MPEP Chapter Index. Chapter 800: Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting. 818: Election and Reply. MPEP 821.03: CLAIMS FOR DIFFERENT INVENTION ADDED AFTER AN 821.03 Claims for Different Invention Added After an Office Action Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicatedin 37 CFR 1.145.
TMEP 1201.02(C): CORRECTING ERRORS IN HOW THE APPLICANT IS 1201.02(c) Correcting Errors in How the Applicant Is Identified If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be correctedby amendment.
37 C.F.R. 11.205: RESERVED, JUNE 2020 (BITLAW) 37 CFR Section 11.205: Reserved. Taken from the 9th Edition of the MPEP, Revision 10.2019, (Last Revised June 2020). Updated in BitLaw inNovember 2020
MPEP 300: OWNERSHIP AND ASSIGNMENT, JUNE 2020 (BITLAW) M.P.E.P. 300: Ownership and Assignment. Taken from the 9th Edition of the MPEP, Revision 10.2019, (Last Revised June 2020). Updated in BitLaw in November 2020 HOW TO CORRECTLY IDENTIFY GOODS AND SERVICES IN A How to correctly identify goods and services in a trademark application A federal trademark registration provides valuable protection to a trademark in the United States, but that protection only extends as far as the goods and services that were originally set forth in the trademark application. 37 C.F.R. 1.98: CONTENT OF INFORMATION DISCLOSURE 37 CFR Section 1.98: Content of information disclosure statement. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 35 U.S.C. 102 (PRE‑AIA): CONDITIONS FOR PATENTABILITY 35 U.S.C. 102 (pre‑AIA): Conditions for patentability; novelty and loss of right to patent. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw inFebruary 2018
MPEP 713.04: SUBSTANCE OF INTERVIEW MUST BE MADE OF RECORD 713.04 Substance of Interview Must Be Made of Record A complete written statement as to the substance of any in-person, video conference, electronic mail, telephone interview, or electronic message system discussion with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. 37 C.F.R. 2.146: PETITIONS TO THE DIRECTOR, JAN The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of 37 C.F.R. 42.71: DECISION ON PETITIONS OR MOTIONS, NOV 42.71 Decision on petitions or motions. (a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. MPEP 707.07(A): COMPLETE ACTION ON FORMAL MATTERS, JAN MPEP 707.07 (a)Complete Action on Formal Matters. MPEP 707.07 (a) Complete Action on Formal Matters. This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018. MPEP Chapter Index. Chapter 700: Examination of Applications. 707: Examiner’s Letter or Action. 707.07: Completeness and Clarity of Examiner’sAction.
AFFINITY LABS OF TEXAS, LLC V. DIRECTV, LLC (BITLAW) Affinity Labs of Texas, LLC, is the owner of U.S. Patent No. 7,970,379 ("the '379 patent"). The patent contains two independent claims, one a system claim and the other a method claim. The claims are directed to streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster. BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more 37 C.F.R. 42.123: FILING OF SUPPLEMENTAL INFORMATION, NOV 37 CFR Section 42.123: Filing of supplemental information. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 MPEP 2173.05(K): AGGREGATION, JAN. 2018 (BITLAW) MPEP 2173.05(k) Aggregation This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018 MPEP Chapter Index Chapter 2100: Patentability 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention 2173.05: Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, SecondParagraph
MPEP 2106.03: ELIGIBILITY STEP 1: THE FOUR CATEGORIES OFMPEP SUBJECT MATTER ELIGIBILITYMPEP 2106 04 BMPEP PRINTED MATTERUSPTO SUBJECT MATTER ELIGIBILITYMPEP 101 GUIDELINESUSPTO ELIGIBILITY M.P.E.P. Section 2106.03: Eligibility Step 1: The Four Categories of Statutory Subject Matter. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in TMEP 501.01(A): ASSIGNABILITY OF INTENT-TO-USEFILE TRADEMARK INTENT TO USEINTENT TO USE TRADEMARK FILINGUSPTO INTENT TO USE APPLICATIONTRADEMARK STATEMENT OF USE EXTENSION 501.01(a) Assignability of Intent-to-Use Applications In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or HOW TO DEAL WITH A CONFUSINGLY SIMILAR REJECTION (BITLAWSEE MORE ONBITLAW.COM
HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 818.03(C): MUST TRAVERSE TO PRESERVE RIGHT OF MPEP 818.03 (c)Must Traverse To Preserve Right of Petition. MPEP 818.03 (c) Must Traverse To Preserve Right of Petition. This is the Ninth Edition of the MPEP, published in March 2014. MPEP Chapter Index. Chapter 800: Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting. 818: Election and Reply. MPEP 821.03: CLAIMS FOR DIFFERENT INVENTION ADDED AFTER AN 821.03 Claims for Different Invention Added After an Office Action Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicatedin 37 CFR 1.145.
TMEP 1201.02(C): CORRECTING ERRORS IN HOW THE APPLICANT IS 1201.02(c) Correcting Errors in How the Applicant Is Identified If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be correctedby amendment.
BITLAWGUIDANCELAWSPATENTSTRADEMARKSCOPYRIGHTSINTERNET BitLaw: A free legal resource focusing on intellectual property and the protection of computers, software, and bits. Learn more 37 C.F.R. 42.123: FILING OF SUPPLEMENTAL INFORMATION, NOV 37 CFR Section 42.123: Filing of supplemental information. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 MPEP 2173.05(K): AGGREGATION, JAN. 2018 (BITLAW) MPEP 2173.05(k) Aggregation This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018 MPEP Chapter Index Chapter 2100: Patentability 2173: Claims Must Particularly Point Out and Distinctly Claim the Invention 2173.05: Specific Topics Related to Issues Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, SecondParagraph
MPEP 2106.03: ELIGIBILITY STEP 1: THE FOUR CATEGORIES OFMPEP SUBJECT MATTER ELIGIBILITYMPEP 2106 04 BMPEP PRINTED MATTERUSPTO SUBJECT MATTER ELIGIBILITYMPEP 101 GUIDELINESUSPTO ELIGIBILITY M.P.E.P. Section 2106.03: Eligibility Step 1: The Four Categories of Statutory Subject Matter. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in TMEP 501.01(A): ASSIGNABILITY OF INTENT-TO-USEFILE TRADEMARK INTENT TO USEINTENT TO USE TRADEMARK FILINGUSPTO INTENT TO USE APPLICATIONTRADEMARK STATEMENT OF USE EXTENSION 501.01(a) Assignability of Intent-to-Use Applications In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or HOW TO DEAL WITH A CONFUSINGLY SIMILAR REJECTION (BITLAWSEE MORE ONBITLAW.COM
HOW TO RESPOND TO AND OVERCOME A SECTION 101 REJECTION Overcoming a Section 101 Rejection For both abstract ideas and natural phenomenon Need Help? Contact Dan Tysver for a free consultation Free Consultation at Forsgren Fisher McCalmont DeMarea Tysver. Section 101 rejections were described in the Guidance section on What is a Section 101 Rejection?.As explained in that page, the proper test for analyzing inventions under Section 101 is the MPEP 818.03(C): MUST TRAVERSE TO PRESERVE RIGHT OF MPEP 818.03 (c)Must Traverse To Preserve Right of Petition. MPEP 818.03 (c) Must Traverse To Preserve Right of Petition. This is the Ninth Edition of the MPEP, published in March 2014. MPEP Chapter Index. Chapter 800: Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting. 818: Election and Reply. MPEP 821.03: CLAIMS FOR DIFFERENT INVENTION ADDED AFTER AN 821.03 Claims for Different Invention Added After an Office Action Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicatedin 37 CFR 1.145.
TMEP 1201.02(C): CORRECTING ERRORS IN HOW THE APPLICANT IS 1201.02(c) Correcting Errors in How the Applicant Is Identified If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be correctedby amendment.
37 C.F.R. 11.205: RESERVED, JUNE 2020 (BITLAW) 37 CFR Section 11.205: Reserved. Taken from the 9th Edition of the MPEP, Revision 10.2019, (Last Revised June 2020). Updated in BitLaw inNovember 2020
MPEP 300: OWNERSHIP AND ASSIGNMENT, JUNE 2020 (BITLAW) M.P.E.P. 300: Ownership and Assignment. Taken from the 9th Edition of the MPEP, Revision 10.2019, (Last Revised June 2020). Updated in BitLaw in November 2020 HOW TO CORRECTLY IDENTIFY GOODS AND SERVICES IN A How to correctly identify goods and services in a trademark application A federal trademark registration provides valuable protection to a trademark in the United States, but that protection only extends as far as the goods and services that were originally set forth in the trademark application. 37 C.F.R. 1.98: CONTENT OF INFORMATION DISCLOSURE 37 CFR Section 1.98: Content of information disclosure statement. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw in February 2018 35 U.S.C. 102 (PRE‑AIA): CONDITIONS FOR PATENTABILITY 35 U.S.C. 102 (pre‑AIA): Conditions for patentability; novelty and loss of right to patent. Taken from the 9th Edition of the MPEP, Revision 08.2017, (Last Revised Jan. 2018). Updated in BitLaw inFebruary 2018
37 C.F.R. 2.146: PETITIONS TO THE DIRECTOR, JAN The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of MPEP 713.04: SUBSTANCE OF INTERVIEW MUST BE MADE OF RECORD 713.04 Substance of Interview Must Be Made of Record A complete written statement as to the substance of any in-person, video conference, electronic mail, telephone interview, or electronic message system discussion with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. 37 C.F.R. 42.71: DECISION ON PETITIONS OR MOTIONS, NOV 42.71 Decision on petitions or motions. (a) Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b) Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. MPEP 707.07(A): COMPLETE ACTION ON FORMAL MATTERS, JAN MPEP 707.07 (a)Complete Action on Formal Matters. MPEP 707.07 (a) Complete Action on Formal Matters. This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018. MPEP Chapter Index. Chapter 700: Examination of Applications. 707: Examiner’s Letter or Action. 707.07: Completeness and Clarity of Examiner’sAction.
AFFINITY LABS OF TEXAS, LLC V. DIRECTV, LLC (BITLAW) Affinity Labs of Texas, LLC, is the owner of U.S. Patent No. 7,970,379 ("the '379 patent"). The patent contains two independent claims, one a system claim and the other a method claim. The claims are directed to streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster.back
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