Vincent LoTempio

My mission as an IP Attorney is to help people recognize, protect and profit from their good ideas. As a Registered Patent Attorney based in Buffalo, New York, I focus on all types of Intellectual Property law. As an IP attorney, I file patent and trademark applications in the United States and abroad. I manage large corporate patent and trademark portfolios, and have established associations with hundreds of Intellectual Property law firms around the world. I have extensive experience in patent and trademark prosecution, patent and trademark infringement litigation, trademark registration and copyright registration. Call me TOLL FREE: 1-800-866-0039 to protect your ideal today. LoTempio Law Website File A Patent File A Trademark File A Copyright YouTube Twitter

9 Comments

  1. David Bradin
    August 31, 2010 @ 6:37 pm

    I would also have advised her to consider offering a license – a nicely worded letter can put the competitor on notice, but may not rise to the threat level needed to give standing to file a Declaratory Judgment (“DJ”) action.
    I might also have advised her to consider filing a petition to make special, on the grounds that there is an actual infringer. That would theoretically speed up the process.
    I might even have advised her to consider the new accelerated prosecution program, where she could file a continuation application, with claims specifically (i.e., narrowly) focused on the competitor’s product, so that the patent might issue within around 7 months.
    Finally, I might caution her that if a competitor has a product on the market so soon after her patent was filed, it may be that the competitor had thought of the idea before she filed her patent application, and may have a patent pending of their own. Thus, your client might look at potential freedom to operate issues of her own, as well as potential patentability concerns.
    But yes, everything you pointed out is also true, and should likely be pointed out to the client as well.

  2. Vincent LoTempio
    September 1, 2010 @ 11:44 am

    Thank you and nicely put. I have advised my client as to sending a letter of notice with an offer of license and the freedom to operate issue. And I think it’s probably good advice to let her know about the ability to have the application sped up through petition to make special or the new accelerated prosecution program.
    You bring up some good points that can probably be considered for new blog posts, i.e. petitions to make special and the reason why a cease-and-desist letter should be worded such that it does not give rise to a declaratory judgment.
    What do you think is the reason why a protest has to be filed before the patent application is published? Doesn’t that make it nearly impossible to file a protest?

  3. American Cowboy
    September 4, 2010 @ 3:01 pm

    I have both sent and received letters about pending published applications and my experience is that it does little besides make the applicant feel good that at least something was tried. Once you study the prosecution history as the alleged infringer, you can consider what you need to do to design around whatever is being claimed. Also, most applications get amended enough so that even if the issued patent is infringed, the “patent issues from the application with a substantially identical claim” prong is not met.
    Like Harry Truman called the vice presidency; a warm bucket of spit.
    Also, I don’t see much risk of a DJ. The alleged infringer can’t be sued, so he has no fear of being sued, at least not until the patent issues, by which time his safety, as described above, is likely to have come to pass.

  4. patent litigation
    September 6, 2010 @ 4:10 pm

    Provisional rights seem fair. I think it’s only right that an applicant who has traded secrecy for IP rights should be able to bring a patent enforcement action. Otherwise we would have to expect a scourge of a new form of patent infringer that could deliberately steal the inventions of patent applicants, with impunity. Such a situation could undermine the entire patent law system.

  5. Michaela
    September 17, 2010 @ 9:54 pm

    Hello, I am the editor at http://freelegalaid.com/, and I frequently comb the Internet for informative resources pertaining to legal self-help. This article clarifies some misapprehensions about the patent application process and is a useful tool for inventors and patentees. As such, I have attached a teaser of your article along with a link back to your blog on Free Legal Aid in the hopes that this will help spread the usefulness of your article. Thanks!

  6. anonymous
    December 22, 2010 @ 7:02 am

    Patentability of biotech inventions in USA
    To be patentable subject matter in USA, an invention should be a process, machine, manufacture or composition of matter or any improvement thereof. There are three judicially created exclusions to patentable subject matter in USA. They are Laws of nature, physical phenomena, and abstract ideas. Biotechnology (Biotech) inventions are considered to be eligible subjects as Compositions of matter or manufactures.

  7. Jo Ann
    April 14, 2011 @ 2:55 pm

    I have a question. Does a provisional patent application provide an individual the benefit of claim of “proprietary rights” the same as a patent does?

  8. Lynn Hefele
    May 5, 2011 @ 5:45 pm

    I have a similar problem. I filed a patent pending and then sent my idea to a company. I did not go forward on the actual patent though within the year. Shortly after the company sent me notice that someone else had sent them the same idea with no patent 2 years earlier and they have been working with them to develop the product. They sent me the other persons submission. It is very much similar. Do I have any rights to compensation?

  9. Jay
    August 11, 2017 @ 9:02 pm

    Please explain:
    “MPEP 1901.04 When Should the Protest Be Submitted [R-08.2012]
    Except where a protest is accompanied by the written consent of the applicant as provided in 37 CFR1.291(b)(1) ( I read the following then to mean a protest NOT requiring “written consent of the applicant”) , a protest under 37 CFR 1.291(a) must be submitted prior to the date the application was published under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first, and the application must be pending when the protest and application file are brought before the examiner in order to be ensured of consideration. As a practical matter, any protest should be submitted as soon as possible after the protestor becomes aware of the existence of the application to which the protest is to be directed. By submitting a protest early in the examination process ,i.e., before the Office acts on the application if possible, the protestor ensures that the protest will receive maximum consideration and will be of the most benefit to the Office in its examination of the application. A protest submitted after the mailing of the notice of allowance … (I read this as a unique protest which as noted above does NOT require (see: “except”) an applicant’s written consent AND as prima facie evidence that this peculiar protest does NOT need to fulfill the requirements of any protest which is submitted BEFORE the Notice of Allowance) …will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.”