The short versions of these three formal questions are, whether the claimed subject matter in the patent application is (1) qualified subject matter, (2) novel subject matter, and (3) non-obvious subject matter? So the big three non-intuitive concepts in those three questions can be boiled down to these three words: (1) qualified?, (2) novel?, and (3) non-obvious?
I introduce clients to these three questions in an alternate way. A way which reflects what can be more naturally observed with what is going on.
(1) The first question a U.S. patent examiner asks might be re-cast this way. ‘What ???, does the U.S. Patent Office patent golf swings?’ And the answer is, yes. I have obtained a patent on a golf swing. U.S. Patent No. 6,068,562 – entitled “Long-Shafted Golf Club and Method.” Back earlier in my career, in Philadelphia, I obtained a patent on a method of playing with a doll. U.S. Patent No. 5,480,337 – entitled “Combination Diverse Doll and Educational Activity Playset Method.” Those patents were not joke inventions to my clients, they did not pay joke money, and they did not have joke intentions with the popularization of their ideas.
(2) The second question is, whether the claimed subject matter is novel or not? This question is answered by researching whether the claimed invention is disclosed by a single prior disclosure:– again, a single prior disclosure, not two or more. (These prior disclosures are referred to as “prior art.”)
(3) The third question is, whether the claimed subject matter is non-obvious or not? This question is answered by, after research produces a basic prior disclosure close to the claimed subject matter but missing minor other information, whether the missing minor other information is supplied by reference to one or more other prior disclosures:- in “analogous” prior art (analogous field of science or endeavor).
The U.S. rules for patent cases permit up to twenty claims in a patent application without having to pay surcharges for an excess number. Thus patent applications typically start off with twenty claims. The benefit of so many claims in a patent application includes that, it gives the U.S. patent examiner a menu of options of which claims to allow and which claims to reject. If one claim is indicated as allowable, a patent is obtainable. If all the claims are rejected (or a key claim is rejected), do not fret, because applicant is afforded innumerable opportunities to respond with amendment and/or argument to overcome rejections.
Thus a rejection of a patent claim is unlike a jury verdict in the United States, because jury verdicts are hard to upset. A typical patent project will result in one or more rounds of communications with the patent examiner. Live interviews with patent examiners are not only possible but indeed common. Back in Philadelphia, I used to travel down regularly to the old patent office in Arlington, and pre-arrange to meet several examiners in a day. For some years now, I typically have only done phone conferences. Examiners are far more likely to call me than the other way around. Depending on the time of the year, I get called about once every other week. In 2019, I was called by two different patent examiners between Christmas and New Years!
Given certain circumstances, I do not hesitate to initiate the interview. I’ve always been graciously granted my request. I do not know if examiners can refuse an interview, but in my experience, they seem welcoming and open to interviews. I think they enjoy interviews. Examiners are trained to be fair and objective. If there is subject matter in an application that deserves patenting, the examiners are there to work with applicant and/or applicant’s representative, and provide allowance for that subject matter.
The patent process often extends over a couple of years, even several years. This length of time does not trouble most of my clients at all. This length of time is effectively insurance that, several years down the road, after a client learns what are the relatively more valuable aspects of the project, we can draft valuable claims at that later date. For older clients, I let them know about the opportunity to petition to make special because of age. But I like to limit that petition to design patents. Please feel welcome to call for more information.
Let’s go back to the examination process. The examining attorney not only examines for potential conflicts, the examining further makes an evaluation of where the mark falls on a “spectrum of distinctiveness.” We need only be concerned with the lowest two rungs: “generic” and “merely descriptive.” Everything else is higher on the spectrum of distinctiveness, and all is good for those marks.
Generic terms (eg., “BICYCLE” for bicycles) are unregistrable because the policy is, there is a greater need for competitors and the public to have unimpeded use of generic terms in contrast to any one party’s attempt to make private property out of the term.
If the examining attorney determines that a mark is “merely descriptive” (e.g. “CREAMY” for yogurt) then the mark is not registrable on the “Principal Register” unless it acquires distinctiveness, generally through extensive use in commerce over a five-year period or longer. So the U.S. Patent & Trademark Office provides the following accommodation. It maintains not only a “Principal Register” for those Registrations permitted to go there, but also a “Supplemental Register” for where registrations of merely descriptive marks can go to wait out the five-year period. We calendar that too, and notify clients when it is time to consider filing for a registration on the “Principal Register.”
I’ve owned three registrations myself (including that balance board one mentioned above), and two were on the Supplemental Register. So if it’s good enough for me, it’s good enough for … but wait. Registrations on the Supplemental Register have a major drawback when it comes to online brand registries. These online brand registries typically require proof of U.S. Registration for certain benefits (which a lot of my online clients want). But the online brand registries will only accept registrations on the Principal Register.
However, for the time being, online brand registries are accepting registrations on the Principal Register which both contain the “merely descriptive” terminology that is also disclaimed “apart from the mark as shown.” The difference between (1) an application with “merely descriptive” terminology that has to go to the Supplemental Register and (2) one that is permitted to go to the Principal Register, is in the phrase “mark as shown.” We combine the “merely descriptive” terminology with artwork. So in essence, the registration covers the artwork only. Nevertheless, the online brand registries accept these registrations.
Relative to patent applications, trade/service mark applications sail through the U.S. Patent & Trademark Office at a breezy clip. Total elapsed time between application and issuance of registration can be within six months. Nine to fifteen months is more typical. Much longer times are possible too but rarer, and that usually occurs when clients have me file several successive extensions of time before filing the ultimate (and required) allegation of use. Please feel welcome to call for more information.