Comments on: Q) Spanish Phone (MPEP 1500, Design Patent) http://mypatentbar.com/2007/11/14/q27-spanish-phone/ Patent Bar Review and Study Guide Wed, 08 Sep 2010 20:43:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Irish http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-2594 Irish Wed, 09 Jun 2010 20:57:38 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-2594 Had this on 6/7. CIP is the enemy of 102(d) - you don't get the design patent. Had this on 6/7. CIP is the enemy of 102(d) – you don’t get the design patent.

]]> By: S http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-2537 S Sat, 05 Jun 2010 10:35:34 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-2537 I got the same version with a similar choice. I also chose the spanish app being to a prior art against the new CIP. It is important to remember that CIP is the enemy of 102(d). I got the same version with a similar choice. I also chose the spanish app being to a prior art against the new CIP.

It is important to remember that CIP is the enemy of 102(d).

]]> By: Emily M. http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1135 Emily M. Sun, 14 Feb 2010 01:05:45 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1135 I got a version of this today. I think it was filed utility in Spain, then filed US design app within 6 months. New design was later filed as a CIP of the US design app. The answer I chose was something about the Spanish app being available as a prior art reference against the new design b/c the new design isn't entitled to the first design app's filing date. I got a version of this today. I think it was filed utility in Spain, then filed US design app within 6 months. New design was later filed as a CIP of the US design app. The answer I chose was something about the Spanish app being available as a prior art reference against the new design b/c the new design isn’t entitled to the first design app’s filing date.

]]> By: don http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1134 don Mon, 19 Oct 2009 21:15:55 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1134 as john white says for the PLI study course. 102(d) is the enemy of the CIP. CIP WILL BE REJECTED 102(d) if there is a prior foreign filing outside the 12 or 6 month window. as john white says for the PLI study course. 102(d) is the enemy of the CIP. CIP WILL BE REJECTED 102(d) if there is a prior foreign filing outside the 12 or 6 month window.

]]> By: sambo http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1133 sambo Sat, 12 Sep 2009 14:28:01 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1133 Got spanish phone Q, with revised dialing pad. Utility and Design patents filed.The ornamental design subsequently affects the utility applications function. What to do? CIP was definately and answer choice. I cant remember what I put Got spanish phone Q, with revised dialing pad. Utility and Design patents filed.The ornamental design subsequently affects the utility applications function. What to do? CIP was definately and answer choice. I cant remember what I put

]]> By: luis http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1132 luis Thu, 19 Mar 2009 22:01:20 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1132 For double patenting utility-design see: Carman Industries, Inc. v. Wahl, 220 USPQ 481 (Fed. Cir. 1983). basically they should not be claiming the same invention and could be overcome by terminal disclaimer. let's say the utility discloses the design (in a picture) but is not claiming it, then you should be able to get a design patent and a utility patent. For double patenting utility-design see:
Carman Industries, Inc. v. Wahl, 220 USPQ 481 (Fed. Cir. 1983).
basically they should not be claiming the same invention and could be overcome by terminal disclaimer. let’s say the utility discloses the design (in a picture) but is not claiming it, then you should be able to get a design patent and a utility patent.

]]> By: patentbar http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1131 patentbar Wed, 20 Aug 2008 00:30:47 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1131 Variant reported on PatentBarQuestions - Spanish Phone, but with a twist: Wants to modify in US utility CIP with new dialing pad. Definitely after 6 months design application, 102(d); but wants it in utility CIP application. Variant reported on PatentBarQuestions – Spanish Phone, but with a twist: Wants to modify in US utility CIP with new dialing pad. Definitely after 6 months design application, 102(d); but wants it in utility CIP application.

]]> By: nospam http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1130 nospam Fri, 22 Feb 2008 03:18:59 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1130 This question would also require a review of the dates involved. As pointed out in the answer, the applicant has six months to file. The question as posed does not address whether the time frame has expired. This question would also require a review of the dates involved. As pointed out in the answer, the applicant has six months to file. The question as posed does not address whether the time frame has expired.

]]> By: Noone http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1129 Noone Thu, 24 Jan 2008 20:37:54 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1129 You can certainly get a design patent and a utility patent on the same invention. However, you can get a double patenting rejection on the design application if the claims from the utility application are sufficient to recreate the design (NOTE: you cannot rely on the drawings from the utility app) You can certainly get a design patent and a utility patent on the same invention. However, you can get a double patenting rejection on the design application if the claims from the utility application are sufficient to recreate the design (NOTE: you cannot rely on the drawings from the utility app)

]]> By: patentbar http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1128 patentbar Tue, 11 Dec 2007 21:43:14 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-1128 For the design patent variant of the question - An old exam question discussed double patenting rejection of a design and a utility application for the same object. Chap 1500 specifically says that both a utility patent and a design patent may be issued for the same object. But then it goes on to say that there can be a double patenting rejection between a utility and a design patent. Can there be a double patenting rejection? For the design patent variant of the question – An old exam question discussed double patenting rejection of a design and a utility application for the same object. Chap 1500 specifically says that both a utility patent and a design patent may be issued for the same object. But then it goes on to say that there can be a double patenting rejection between a utility and a design patent. Can there be a double patenting rejection?

]]>