Patent Examiner Rejections

Getting a rejection from an examiner can be frustrating.  It is important to understand that the examiner is not rejecting your invention.  The examiner is rejecting the wording of your claims in the invention.  Claims that are too broad could lead to rejection.  Also, this is not the end of the process but a starting point to figure out what the examiner wants the claim language to say for the claim to be allowed, which is the main focus of the examination process.  

The goal of the examination process is for the patent examiner to clearly articulate any and all claim rejections as early in the process as possible so that the applicant and/or attorney has the opportunity to provide evidence of patentability and reply completely at the earliest opportunity.  Then the examiner reviews all the evidence, amendments to the claims, and arguments responsive to any rejection before issuing the next Office action.

A claim can be rejected or objected.  What is the difference?  A “rejection” is the refusal to grant a claim because the subject matter of the claim is considered to be unpatentable. One of the most common forms of rejection is unpatentability in view of prior art.  An “objection” is made if the form of the claim, which is different from its substance, is improper. The difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board.  The objection may be reviewed only by way of petition to the Director of the United States Patent Office.  Therefore, an objection is more thought of as a “speed bump” in the patent application process wherein a rejection can be much more difficult. 

The second action you receive from a patent examiner is most likely going to be a final rejection. This is important because after you receive a final rejection you are limited to what you can do as a matter of right. Once a final rejection has been entered, there is no longer any right to unrestricted further prosecution but it does not mean that no further amendment or argument will be considered. So even after a final rejection is received, there is still opportunity to work with the patent examiner to some limited extent, and appealing is always an option too.

An attorney can help you  get your invention patented and advise you on what the next step may be.

Can I use a picture I found on the Internet?

How often are you browsing the Internet when you come across a picture of some scenery, or person, or news event, and you want to “re-post” that picture on our own website, Facebook page, download it onto your computer, etc.?

Just the other day, I was updating my law firm website and was thinking how nice it would be to have a picture of the Denver skyline with the mountains in the background. I ended up going with a more serene mountain image that came as part of the stock images included with the website development software I use to maintain the Trenner Law Firm website.

But first I did look around on the Internet to find out if I could find any pictures of the Denver skyline. And of course, the Denver city skyline with the snow-capped Rocky Mountains in the background is probably one of the most-photographed scenes in the Denver area. Now could I have just copied and pasted one of these onto my website?

Of course. You can copy/paste online images very easily from most web browsers.

But it would have been illegal to do so.

Illegal? More than likely. Simply copy/pasting images from the Internet is violating the copyright laws, unless the creator has explicitly granted the work (the photograph in this example) to the public domain or has otherwise licensed its use. (And if it is licensed, you must comply with the terms of the license or again, you are violating the copyright).

How do you find out if an image is copyrighted? Most images are copyrighted, unless the copyright has already expired (which in most cases can be 75 years or longer – so its unlikely that the copyright has already expired). So you ask, what if the photographer did not register their copyright? Doesn’t matter. Copyright is automatic as soon as the work is fixed in a tangible form of express (i.e., the photograph is taken and fixed in memory of a digital camera or on film).

So what can you do? First, don’t go around copy/pasting or even downloading images from the Internet, because you might be violating someone’s copyright. Recall those “FBI Warnings” that display at the beginning of DVDs? There are criminal and civil penalties (think “fines”) for violating a copyright.

Next, either make your own images, or find out how to legally use someone else’s image. For example, I could have easily driven down to Denver and taken my own picture of the Denver skyline to use on my website, and I wouldn’t be violating anyone’s copyright.

Instead, I ended up using a stock image that is licensed for use with the web development software product I legally purchased. In other words, I am allowed to use this image on my website without violating anyone’s copyright. You don’t necessarily have to buy any fancy software. There are tons of stock image websites on the Internet. Most allow you to browse photographs online for free, and if you find one you want to use, you can either do so with a link back to the source site crediting the photographer, or you can purchase the rights for a nominal sum. Just be sure to read the terms and conditions first so that you don’t end up inadvertently violating someone else’s copyright.

Copyright Basics

I am often asked “Do I need a copyright for my invention?”

Copyright protection may be available for original works of authorship that are fixed in a tangible medium of expression. Protection is not available for facts, ideas, systems, and methods, although protection may be available for the expression of those facts or ideas.

Some Advantages of a Federal Copyright Registration include . . .

1. Establishes a public record of your copyright claim.

2. Copyright registration is required before you can file a court action for infringement.

3. A copyright registration is prima facie evidence of validity of your copyright if the registration is made within 5 years of the first publication.

4. A timely filed application for copyright registration allows the owner to seek statutory damages and attorney’s fees in an infringement action without having to prove actual damages and profits.

5. A copyright registration allows the owner to file with U.S. Customs to prevent others from importing infringing foreign goods.

Some Common Pitfalls you should avoid . . .

1. Failing to have a written agreement requiring an independent contractor to assign all rights in the copyright to you.

2. Not including a copyright notice on your works.

3. Forgetting to register your copyright with the Library of Congress.

Hire an attorney to help you identify copyrightable materials and register your works with the Library of Congress. Visit www.trennerlaw.com for more information about costs to register a copyright.