A patent practitioner represents an inventor Atsushi Ishihara filed the patent application on a display control apparatus for image forming apparatus.  On July 21, 2003 the patent application was published by the U.S. Patent & Trademark Office.  Everything seems fine, right?  Not exactly.

Apparently, there was a bogus claim (claim 9) included in the patent application.  Claim 9 recited:

The method of providing user interface displays in an image forming apparatus which is really a bogus claim included amongst real claims, and which should be removed before filing; wherein the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim.

On November 7, 2006, the law firm filed a preliminary amendment, canceled claim 9, and explained in the preliminary amendment why claim 9 was canceled:

“Before the application was filed and before the inventor signed the declaration, the undersigned (“SoCal IP Law Group”) was instructed to delete claim 9.  Through an oversight, claim 9 remained when the application was filed. Shortly thereafter, the undersigned was reminded to cancel claim 9.  A preliminary amendment was prepared one week after the application was filed, but filing of the preliminary amendment was deferred until the application number was known.  This preliminary amendment belatedly addresses the oversight.”

USPTO received the amendment, reviewed the claims, and accepted the amendment.  After few rounds of communications between the practitioner and the USPTO, the patent is issued.

What have you learned so far?

LESSON 1: Next time when you look for a patent practitioner to assist you with the patent application, hire a patent practitioner who is awake and sober.  Certainly you do not want to hire a patent practitioner as failure to make a reasonable inquiry prior to submitting any papers to the U.S. Patent & Trademark Office (USPTO).  “Practitioners submitting papers must read each paper submitted to the U.S. Patent & Trademark Office (USPTO) before it is submitted.  Each submitted paper must be read in its entirety… regardless of the source of the paper.”  The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. §11.18(b).

LESSON 2: Do not execute the declaration until the final changes to the patent application have been made and you have read the final draft of the patent application.


The Claims and Continuations Final Rule (“Final Rule”) has finally come to an end.

In October 8, 2009, GlaxoSmithKline (“GSK”) has reached agreement with the United States Patent and Trademark Office (“USPTO”) to join the USPTO’s motion to dismiss its litigation over the Final Rule.  The USPTO is withdrawing all Final Rule regulations under dispute.  The withdrawal of the Final Regulations means that the patent system that had been in place before this litigation will remain in place.  The USPTO is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

[For those readers who are interested in the background of the suit and the definition of the Final Rules (obviously the rules are HISTORY), please click the following link.  Otherwise, you can skip the link and proceed to the next post.]

continue reading “Final Rule.”