Monthly Archives: August 2016

7 Techniques for Speeding Up Your Patent Filing Process

Jeffrey G. Sheldon’s How to Write a Patent Application (Third Edition) provides expert insight and guidance on the full patent application process. Here are Sheldon’s 7 tips to speeding up the patent filing process:

  1. File the inventor’s original disclosure document or draft scientific paper as a patent “application” by adding an abstract and a single claim. Although such an application would be nowhere near the quality of an application prepared using the procedures of this book, assuming that the disclosure by the inventor satisfies the basic requirements of 35 U.S.C. § 112, at least a filing date will be obtained. Moreover, even if the application does not satisfy the U.S. disclosure requirements of 35 U.S.C. § 112, it may be sufficient for many foreign countries. This basic application can then be converted into a quality application by filing a continuation-in-part application as promptly as possible. Clearly this approach gets an early filing date. However, one disadvantage is the increased cost of filing two applications. Another disadvantage is that the one-year priority date for filing in foreign countries begins to run on the date of filing of the first application, which means that the decision of whether to file a foreign application needs to be made earlier, and costs associated with filing foreign applications are incurred earlier.
  2. During the initial meeting with the inventor, draft at least the broadest claim, and preferably some of the dependent claims. As discussed below, preparation of the claims is the most critical and difficult part of an application. It is efficient and effective to prepare the claims when the inventor is readily available to provide instant feedback and while the patent practitioner’s mind is freshly acquainted with the merits and novelty of the invention.
  3. Forego a novelty search, or have the novelty search done in parallel with drafting the application. As discussed in chapter 5 of the book, novelty searches are often ordered before preparing a patent application. However, when time is of the essence, it may be necessary to forego the novelty search, or conduct it in parallel with preparation of the application. When the novelty search is conducted while the application is being prepared, once the search results are available, the application can be polished and the claims modified as required, based on the search results.
  4. Order the drawings as soon as possible. Preparation of the drawings can be the longest lead-time item due to the schedule of draftsmen. Get the drawings on order promptly.
  5. Do not wait for the drawings to prepare the application. Many practitioners wait until the drawings are available before beginning the application. An advantage of this procedure is that the reference numbers can be placed on the drawings as the specification is prepared. However, when it is important to file promptly, rough sketches of the invention can serve the same purpose for preparation of the application. Although some time is lost when the reference numbers are added to the draftsman’s drawings, that lost time can be sacrificed when filing early is important.
  6. Use the inventor’s drawings or drawings prepared by the patent practitioner for filing. The inventor may have some drawings of the invention, or the patent practitioner may be a sufficiently skilled draftsman to prepare rough sketches. If those sketches are sufficient for filing, they can be used for that purpose when it is important to file early. Formal drawings can be prepared later by a skilled draftsman.
  7. File the application without the formal papers, including the declaration. A week or more can be lost while the inventor reviews the application and signs the declaration and other papers. It is possible to file without the declaration and formal papers. A disadvantage is that the Patent Office charges a surcharge for filing the application piecemeal. Another possible disadvantage is that the inventor or inventors may have problems with the application and not like it. If the claims are not satisfactory, it may become necessary to file a preliminary amendment under 37 C.F.R. § 1.115, which adds to the expense of filing the application. If something is incomplete or inaccurate in the specification, then it may become necessary to file a continuation-in-part application. In the latter instance, the original filing date may be lost, and thus the fees incurred for filing the first application would have been for naught.



How to Write a Patent Application (Third Edition) Jeffrey G. Sheldon (Leech Tishman Fuscaldo & Lampl, LLC)

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New Treatise! Net Leases and Sale-Leasebacks: A Guide to Legal, Tax and Accounting Strategies

Net Leases and Sale-Leasebacks

Net Leases and Sale-Leasebacks: A Guide to Legal, Tax and Accounting Strategies covers of every aspect of the ownership, financing, documentation, taxation and accounting for net leases and sale-leasebacks. The book focuses on those areas where the treatment of net leases and sale-leasebacks differs from the treatment of other forms of real estate investment.

This new title authored by specialist Ken Miller (Gorman & Miller) provides a detailed discussion of the important concepts underlying transactions in this area, as well as a clause-by-clause explanation of the mandatory and optional provisions of a net lease investment agreement.

Net Leases and Sale-Leasebacks: A Guide to Legal, Tax and Accounting Strategies includes in-depth guidance on sophisticated and complex structuring issues involving real estate, regulatory, bankruptcy, tax and financial accounting concerns.

This essential new title is available on PLI Discover PLUS, our online research database. If you’d like to order a print copy, please email or call (877-900-5291) us.

Library Ledger, August 2016, Volume 4, Issue 3

08-2016 Library Ledger

The latest edition of the Library Ledger is now available!

In this edition, we provide highlights from the 2016 AALL Annual Meeting & Conference in Chicago. We also feature the latest video tutorial, which demonstrates how to use PLI Discover PLUS to find timely information on the Panama Papers leak. Finally, we cover the recently-enhanced date filters on Discover PLUS.

Looking for an older edition? The complete archive of The Library Ledger is available here.

What’s New on Discover PLUS for August

08-2016 What's New

We add content to PLI Discover PLUS every month to ensure our subscribers have access to the most up-to-date and relevant secondary source legal documents. Renowned legal experts regularly update our acclaimed Treatises, Course Handbooks, Answer Books, Transcripts and Forms to reflect recent changes and developments in the law.

Click here to see what we added in August.

Meet Our AALL 2016 Orbitz Gift Certificate Raffle Winner: Dennis Sears

Our AALL 2016 Orbitz gift card winner, Dennis Sears of the J. Reuben Clark Law School at BYU.

Dennis Sears of the J. Reuben Clark Law School at BYU.

At the AALL Annual Meeting & Conference in Chicago this year, PLI celebrated the global reach of Discover PLUS–which is now being accessed from all 50 states and more than 65 countries–by raffling off a $1,000 Orbitz gift card at our booth. Dennis Sears of the J. Reuben Clark Law School at Brigham Young University won the raffle. Check out our interview with Dennis below!

Tell  me a little about yourself.  Why did you become a librarian?

I worked in the law library during my time as a student in law school.  After graduating, I clerked for a judge and then as a hearing officer for the the Salt Lake County Tax Administration.  A position came open and I was approached about joining the law library faculty.  Evidently, they liked the work I did for them while I was in law school.

What do you like most about your job at BYU Law?

Working with the students and teaching legal research.  Having clerked for a judge, I became acutely aware of how important effective, efficient, and accurate legal research is and to be effective and efficient, you have to be familiar with the secondary sources out there so that you don’t reinvent the wheel every time you get another research project.

What is the most common research question of law students?

Probably, where do I go to begin my research?  Usually, by this time, students have thrashed about on their own looking for cases and statutes (maybe successfully, but maybe unsuccessfully) but they don’t know where to go from there.

Have you used PLI publications for your own research? Which ones?

Yes, I used the trial practice materials, such as jury instructions, depositions, etc. as well as appellant materials dealing with brief writing and oral argument.  Now, I search for whatever will help students in the trial and appellant practice courses and even help professors find materials for the courses and their research.

 What did you think of AALL 2016? Did you do any sightseeing in Chicago?

I thought the annual meeting was a good experience.  The workshop I attended was outstanding.  There was good programming and a lot to learn in the exhibit hall.  I did visit the Chicago Institute of Art the afternoon that I arrived for a couple of hours.

Tell me about your best vacation ever.

My best vacation was after the annual meeting in Boston (which was also great for sightseeing historical sights) to Plymouth, Massachusetts.  I had never traveled in the northeast, but visiting Plymouth,  Plimoth Plantation, and Mayflower II and drinking in the ambiance of that area was a real treat for me and my wife.

 Where do you plan on traveling with your Orbitz gift card?

To be honest with you, I was so caught off guard by winning this gift card that my mind has been in a whirl.

Thank you, Dennis. And bon, voyage!

6 Temporary Detention Tips for Defense Attorneys

John L. Weinberg’s Federal Bail and Detention Handbook 2016 offers insightful advice on temporary detention. Below, find Judge Weinberg’s six temporary detention tips for Defense Attorneys:

  1. Prior to the initial appearance, gather as much information as possible as to whether the case is appropriate for entry of an order of temporary detention. Be prepared to argue these issues at the initial appearance. Determine also, if possible, whether the other court or INS intends to place a detainer or has already done so.
  2. If the U.S. Attorney moves for temporary detention at the initial appearance, be prepared to present any available challenge to its eligibility, under either half of Sec. 3142(d).
  3. Be prepared to propose and defend a specific duration of temporary detention. Whatever duration is set, ask the court to schedule a further hearing on release or detention for the day the temporary detention order expires.
  4. Decide whether you will move for pretrial detention, which extends beyond any period of temporary detention. If so, make this motion as well at the initial appearance. The court should set the hearing for the last day of the period of temporary detention.
  5. If at the initial appearance the court has ordered temporary detention, contact the other court or agency promptly thereafter. Attempt to persuade the other authority to decline to seek custody of defendant.
  6. If a detainer is lodged or if the other authority declines to proceed before the order of temporary detention expires, contact the court and attempt to reschedule the bail status hearing for an earlier date.



Federal Bail and Detention Handbook 2016 John L. Weinberg (U.S. Magistrate Judge for the Western District of Washington at Seattle)

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