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Getting a New Patent - A New Hot Water Demand System Patent
We recently filed a provisional patent application for
our new hot water demand system. A year prior to that we had done what our
patent attorney called a “document dump”. As I understand it, that gave us a
year’s worth of protections in so far as establishing a date of invention.
Once the year expired we decided to pursue a provisional patent.
Provisional Patent
A provisional patent allows you to establish a filing
date for your patent, but you can still modify the patent later. However,
making later modifications does not extend the protection period… which
lasts 20 years.
We file the new patent application a couple of weeks
ago. I just received this letter from our patent attorneys…
Gentlemen,
We enclose for
your records a copy of the above-referenced patent application as filed with
the United States Patent and Trademark Office (USPTO), as well as a copy of
the Filing Receipt received from the USPTO. The application number has been
assigned U.S. Application No. 12/621,492 and has an official filing date of
November 18, 2009.
Also enclosed
is a copy of a Notice To File Missing Parts of Application received from the
USPTO. A response is due on February
4, 2009. After that date, up to five one-month extensions
are available for a progressively increasing fee making the final due date July
4, 2009. As you recall, we did not submit the Declaration at the time
of filing. Attached is the inventors' declaration, please sign the
declaration and fax or PDF it back to me.
We want to
remind you that there is a strict and continuing duty to disclose to the
USPTO prior art and other information that is material to the patentability
of your invention. There is no obligation to perform a prior art search, but
if you already know or become aware of any material information while the
application is pending, it must be submitted to the USPTO. We will file an
Information Disclosure Statement with the USPTO for the search that was done
prior to filing of this application.
If you or
anyone associated with the prosecution of this application knows or becomes
aware of any information that may be material to the patentability of the
invention, please contact me so that I may arrange to have the information
submitted to the USPTO. If I do not hear from you, I will assume that there
is no additional information to submit at this time.
The USPTO
typically publishes an application at about 18 months from the original
priority date.
The American
Inventors Protection Act of 1999 makes available to patent applicants
extensions of the patent term where the USPTO causes delays during
examination. The USPTO defines the types of delays giving rise to such
extensions of time. However, any potential term extensions caused by USPTO
delay are offset or reduced by any delays caused by an applicants' "failure
to engage in reasonable efforts to conclude prosecution." Consequently,
filing any papers (Information Disclosure Statements, Responses to USPTO
Office Actions, etc.) is best done promptly.
We will keep
you informed of further developments. If you have any questions or comments,
please call me.
Kindest Regards,
Name withheld by me.
I thought it was an interesting letter.
And here is what the inventor’s declaration looks like…
PTO/SB/01 (10-08)
Approved for use
through 06/30/2010. OMB 0651-0032
U.S. Patent and
Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act
of 1995. no persons are required to respond to a collection of
information unless it contains a valid OMB control number.
DECLARATION
FOR UTILITY OR
DESIGN
PATENT APPLICATION
(37 CFR 1.63) |
Attorney Docket Number |
FORMTEXT
40467-031-001 |
First
Named Inventor |
FORMTEXT
Lund, William J |
COMPLETE IF KNOWN
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Application Number |
FORMTEXT
12/621,492 |
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FORMCHECKBOX
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Declaration
Submitted OR
With
Initial
Filing
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FORMCHECKBOX
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Declaration
Submitted after Initial
Filing (surcharge
(37 CFR1.16 (f))
required) |
Filing
Date |
FORMTEXT
November 18, 2009 |
Art
Unit |
FORMTEXT
To Be Assigned |
Examiner Name |
FORMTEXT
To Be Assigned |
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I
hereby declare that:
(1) Each inventor’s residence, mailing address, and
citizenship are as stated below next to their name;
and (2) I believe the inventor(s) named below to be
the original and first inventor(s) of the subject
matter which is claimed and for which a patent is
sought on the invention entitled: |
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(Title of the Invention)
the
application of which
FORMCHECKBOX
is
attached hereto
OR
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FORMCHECKBOX
was
filed on (MM/DD/YYYY) |
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as
United States Application Number or PCT
International |
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Application Number |
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and
was amended on (MM/DD/YYYY) |
FORMTEXT |
(if
applicable). |
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I hereby state that I have reviewed and understand
the contents of the above identified application,
including the claims, as amended by any amendment
specifically referred to above.
I acknowledge the
duty to disclose information which is material to
patentability as defined in 37 CFR 1.56, including
for continuation-in-part applications, material
information which became available between the
filing date of the prior application
and the national or PCT international filing date of
the continuation-in-part application.
Authorization To Permit Access To Application by
Participating Offices
FORMCHECKBOX If
checked, the undersigned hereby grants the USPTO
authority to provide the European Patent Office (EPO),
the Japan Patent Office (JPO), the Korean
Intellectual Property Office (KIPO), and any other
intellectual property offices in which a foreign
application claiming priority to the
above-identified application is filed access to the
above-identified patent application. See 37 CFR
1.14(c) and (h). This box should not be checked if
the applicant does not wish the EPO, JPO, KIPO, or
other intellectual property office in which a
foreign application claming priority to the
above-identified application is filed to have access
to the application.
In accordance with 37
CFR 1.14(h)(3), access will be provided to a copy of
the application-as-filed with respect to: 1) the
above-identified application, 2) any foreign
application to which the above-identified
application claims priority under 35 USC 119(a)-(d)
if a copy of the foreign application that satisfies
the certified copy requirement of 37 CFR 1.55 has
been filed in the above-identified US application,
and 3) any U.S. application from which benefit is
sought in the above-identified application.
In accordance with 37
CFR 1.14(c), access may be provided to information
concerning the date of filing the Authorization to
Permit Access to Application by Participating
Offices. |
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[Page 1 of 3]
This collection of information is
required by 35 U.S.C. 115 and 37 CFR 1.63. The information is
required to obtain or retain a benefit by the public which is to
file (and by the USPTO to process) an application.
Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and
1.14. This collection is estimated to take 21 minutes to
complete, including gathering, preparing, and submitting the
completed application form to the USPTO. Time will vary
depending upon the individual case. Any comments on the amount
of time you require to complete this form and/or suggestions for
reducing this burden, should be sent to the Chief Information
Officer, U.S. Patent and Trademark Office, U.S. Department of
Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND
FEES OR COMPLETED FORMS TO THIS ADDRESS.
SEND
TO:
Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450.
If you need assistance
completing the form, call 1-800-PTO-9199 and select option 2
PTO/SB/01 (10-08)
Approved for use
through 06/30/2010. OMB 0651-0032
U.S. Patent and
Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act
of 1995. no persons are required to respond to a collection of
information unless it contains a valid OMB control number.
|
DECLARATION — Utility or
Design Patent Application |
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Claim of Foreign Priority
Benefits
I hereby
claim foreign priority benefits under 35 U.S.C.
119(a)-(d) or (f), or 365(b) of any foreign
application(s) for patent, inventor’s or plant breeder’s
rights certificate(s), or 365(a) of any PCT
international application which designated at least one
country other than the United States of America, listed
below and have also identified below, by checking the
box, any foreign application for patent, inventor’s or
plant breeder’s rights certificate(s), or any PCT
international application having a filing date before
that of the application on which priority is claimed. |
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Prior
Foreign Application Number(s) |
Country |
Foreign
Filing Date (MM/DD/YYYY) |
Priority
Not
Claimed |
Certified Copy Attached?
YES NO
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FORMTEXT |
FORMTEXT |
FORMTEXT |
FORMCHECKBOX |
FORMCHECKBOX
FORMCHECKBOX
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FORMCHECKBOX |
FORMCHECKBOX
FORMCHECKBOX
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FORMCHECKBOX |
FORMCHECKBOX
FORMCHECKBOX
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FORMCHECKBOX |
FORMCHECKBOX
FORMCHECKBOX
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FORMCHECKBOX
Additional
foreign application numbers are listed on a supplemental
priority data sheet PTO/SB/02B attached hereto. |
[Page 2 of 3]
PTO/SB/01 (10-08)
Approved for use
through 06/30/2010. OMB 0651-0032
U.S. Patent and
Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of
1995. no persons are required to respond to a collection of
information unless it contains a valid OMB control number.
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DECLARATION
— Utility or Design Patent Application |
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Direct
all
FORMCHECKBOX
The address
correspondence to: associated with
Customer Number: |
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OR
FORMCHECKBOX
Correspondence
address
below |
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Name
FORMTEXT |
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Address
FORMTEXT
FORMTEXT |
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City
FORMTEXT |
State
FORMTEXT |
ZIP
FORMTEXT |
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Country
FORMTEXT |
Telephone
FORMTEXT |
Email
FORMTEXT |
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WARNING:
Petitioner/applicant is
cautioned to avoid submitting personal information in
documents filed in a patent application that may
contribute to identity theft. Personal information such
as social security numbers, bank account numbers, or
credit card numbers (other than a check or credit card
authorization form PTO-2038 submitted for payment
purposes) is never required by the USPTO to support a
petition or an application. If this type of personal
information is included in documents submitted to the
USPTO, petitioners/applicants should consider redacting
such personal information from the documents before
submitting them to the USPTO. Petitioner/applicant is
advised that the record of a patent application is
available to the public after publication of the
application (unless a non-publication request in
compliance with 37 CFR 1.213(a) is made in the
application) or issuance of a patent. Furthermore, the
record from an abandoned application may also be
available to the public if the application is referenced
in a published application or an issued patent (see 37
CFR 1.14). Checks and credit card authorization forms
PTO-2038 submitted for payment purposes are not retained
in the application file and therefore are not publicly
available. Petitioner/applicant is advised that
documents which form the record of a patent application
(such as the PTO/SB/01) are placed into the Privacy Act
system of records DEPARTMENT OF COMMERCE,
COMMERCE-PAT-7, System name: Patent Application Files.
Documents not retained in an application file (such as
the PTO-2038) are placed into the Privacy Act system of
COMMERCE/PAT-TM-10, System name: Deposit Accounts and
Electronic Funds Transfer Profiles.
I hereby declare that all
statements made herein of my own knowledge are true and
that all statements made on information and belief are
believed to be true; and further that these statements
were made with the knowledge that willful false
statements and the like so made are punishable by fine
or imprisonment, or both, under 18 U.S.C. 1001 and that
such willful false statements may jeopardize the
validity of the application or any patent issued
thereon. |
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NAME OF
SOLE OR FIRST INVENTOR: |
FORMCHECKBOX A
petition has been filed for this unsigned inventor |
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Given Name (first and middle [if any])
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Family Name
or Surname
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Inventor's
Signature
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Date
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Residence:
City
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State
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Country
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Citizenship
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Mailing
Address
FORMTEXT
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City
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State
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Zip
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Country
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FORMCHECKBOX
Additional
inventors or a legal representative are being named on
the FORMTEXT 1
supplemental sheet(s) PTO/SB/02A or 02LR attached
hereto. |
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[Page 3 of 3]
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The next step, if memory serves me well, is we will get
something from the patent examiner telling us that our patent has problems.
I’ve never had a patent application that was just simply accepted by the patent
examiner. It’s like they have to put up some kind of objection. So I expect
that to happen this time as well.
We will argue and usually we will loose a claim or two but
keep most of the claims intact, or only slightly modified. At least that is my
hope.
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