With four film plots submitted as ‘inventions’ by patent lawyer Andrew Knight now under the USPTO’s microscope, the subject matter has emerged as a necessary area of consideration. Aiming to define a clear path for processing such applications, the Office has outlined a series of points that applicants should address prior to filing:
- Whether a search of the prior art was made, and if so, what was searched
- A copy of any non-patent literature, published application, or patent (US or foreign), by any of the inventors, that relates to, or has a plot/storyline similar to, the claim invention
- A copy of any non-patent literature, published application, or patent (US or foreign) that was used to draft the application
- A copy of any non-patent literature, published application, or patent (US or foreign) that was used in the invention process
- Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use
- A copy of any publication of which the Applicant is aware concerning these applications
- Identification of any court case that Applicant contends provides legal precedent for a grant of patent rights to the application
The USPTO adds: ‘Examiner realises that it may prove difficult to provide some of the non-patent literature that might have been used to develop the plots in question. For instance, it might not be practical to submit an entire novel or a motion picture in response hereto. In those cases, Applicant should identify the non-patent literature and provide a synopsis of the plot or other pertinent information. If possible, Applicant should provide copies of any particularly relevant passages.’
It is not yet known when the USPTO will make a decision on Mr Knight’s applications.
