Mary: Hi Bob, it's Mary from Ben Franklin IP - you called?
Bob: Hey Mary, thanks for calling back. As I said in my message I'm taking over managing all of our patent work from Rachelle - it was a big surprise that she left. I need to get up to speed as quickly as possible. And to be honest I don't know very much about patents - I was one of Rachelle's peers but I didn't understand all that much about what she did.
Mary: Okay Bob, there are a few semi-urgent issues outstanding. Let me run through the list that I emailed you at the 50,000 meter level and then we can dive into the details. As the email mentioned, these are cases where we should make decisions in the next one to three months - although some of those decisions can be postponed.
Bob: Let's postpone anything we can.
Mary: We can do that, but the consequence of postponing will usually involve paying late fees.
Bob: Ah, okay - we'll discuss those in the deep dive then?
Mary: Will do. These are all listed in my email. Top of the list the '567 case in Europe. This patent has been granted by the EPO and it has been quite a struggle to get to where we are - it has taken nearly nine years. We must decide in the next few weeks which European countries we want this patent to cover. This is a bit complicated and expensive.
Next on the list is the '221 application in the US - we have to decide which claim set we want to proceed with to start off, the PTO calls this a restriction requirement. We are already paying late fees on this decision and we should just get on with it.
Next we should decide if we want to file a divisional application in the '875 case - this has been allowed by the PTO and before we pay the issue fee we should make the decision on the continuation.
Next is PCT for the US '449 patent - that one we fast-tracked in the US and has already been granted - but we are five weeks out from the 30 month point where nationalize the application in the specific countries we where we want to prosecute - a few we care about, like Canada have a 30 month drop dead date, most of the rest are 31 months, for instance the EPO.
Next on the list is the '878 application in the US - it has a final rejection, but the good news is we seem to be past the unpatentable subject matter rejection and are on to and obviousness fight - Rachelle and I had been discussing tactics on where to take the claim amendments that we will need to discuss.
Bob: Sorry to interrupt, but why would we talk about something that has a final rejection?
Mary: Oh, final doesn't mean FINAL, it just means we need to pay them more.
Bob: My head hurts.
Mary: Only one more thing on the priorty list and then we can get down to the details. There is a disclosure from Dr. Church that we are drafting an application for. My understanding is that this is really high priority because we think one of the competitors is working in this space and we want to get something on file. Rachelle and I had discussed doing a provisional that looks a lot like the final utility app, so we need to get the draft reviewed and talk a little bit about strategy.
So, Bob - all pretty straight-forward stuff. Where would you like to start?