Patent Attorney Pitfalls

Whether attacking patent claims as part of building defenses to allegations of infringement, or trying to procure patent protection for technology, our patent attorneys are on the outlook for pitfalls in patent claim language.

Litigating Patents Post In Re Bilski

The Federal Circuit opinion, In re Bilski, provides new territory for attacking process claims in patent litigation.

Since the Federal Circuit proclaimed in State State Bank that business methods are not per se unpatentable, patentability under 35 U.S.C. §101 has been a hot topic.  Financial sector business method applications, such as the application at issue in In re Bilski, as well as applications concerning Internet business methods, computer software, electric signals, and other new technologies have pressed the Section 101 boundaries at the Unites States Patent and Trademark Office (USPTO) and the Federal Circuit.

Patent Attorneys as Specialists

Patent law is one of the few areas of law recognized as a specialty.  Though attorneys in other areas of law may limit their practices to a particular field (such as real estate law, family law, etc.), those practice areas are generally not recognized as specialties.  Under ethical rules governing attorney conduct in most states, patent attorneys may hold themselves out to the public as specialists.  Patent attorneys usually are registered to practice before the United States Patent and Trademark Office (USPTO).  This registration allows the attorney to file and prosecute patent applications before the USPTO on behalf of clients.  Patent attorneys may also litigate patent infringement, patent validity and/or patent enforceability disputes in court.  Patent litigations are generally federal court cases.  Patent attorneys may also typically prepare and negotiate patent licenses or other contracts involving patent rights, perform patent due diligence investigations, analyze patent portfolios, give advice for developing patenting programs, and/or prepare patent infringement and/or patent validity analyzes and opinions.

Patent and Trade Secret Attorneys: Patent v. Trade Secret

Patents grant a limited monopoly for a term of generally 20 years from the filing date, giving the patent holder the right to exclude others from making, using, offering for sale or selling the invention in the United States, or importing the invention into the United States.  In exchange for this limited monopoly, the patent applicant must describe the details of the invention in the patent, which becomes a public document.  Thus, after the 20 year term expires, the public is free to practice what was formerly protected by the patent without incurring liability for infringing that patent.  (Note: it is possible that practicing what the patent describes could still infringe another non-expired patent, so one is not necessarily free from patent infringement by virtue of one patent expiring.)  One of the requirements of patentability is that the applicant must disclose the “best mode” known for carrying out the invention.  I.e. – she cannot leave the secret sauce out of the patent.  Failure to comply with this statutory requirement renders the patent invalid.

Patent Prosecution and Litigation Attorneys: Patent Due Diligence in a Corporate Acquisition

When valuating corporate assets during corporate acquisition, the patent intellectual property assets should not be ignored.  A patent portfolio may prove to be a revenue source by generating licensing fees, or become money-making if patent infringement is proven for monetary damages.  Similarly, a patent may be a stand alone asset that another entity seeks to purchase for freedom to practice or other reasons.

Patent Attorney Questions: What Is Patent Due Diligence?

Patent due diligence is an investigation about a patent.  Due diligence is often done prior to patent acquisition, so that the potential purchaser knows more about the asset that she is acquiring.  Due diligence investigations may reveal patent validity problems, patent enforceability problems, or patent prosecution events that impact patent claim scope, which in turn may impact patent infringement.  Generally, in a due diligence investigation, a patent professional will review the patent and patent file wrapper documenting prosecution of the patent application before the United States Patent and Trademark Office (USPTO).  Due diligence investigations may include analysis of information concerning the patent owner, named inventors, technical field or market.  Because every patent is unique, patent due diligence should be handled with an individualized approach on a patent-by-patent or portfolio-by-portfolio basis.  Rather than purchasing a patent and finding out later on that the patent claims are worthless, due diligence is a tool that may be used to learn about a patent upfront.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Patent Enforcement Attorneys: How Does a Patent Owner Enforce a Patent?

A patent owner may enforce his patent rights in a federal court proceeding.  Patent infringement disputes are not handled by the United States Patent and Trademark Office (USPTO).  Generally, a patent owner may initiate a law suit in federal court seeking monetary damages and injunctive relief to prevent an accused infringer from infringing his patent.  Because patent disputes arising under the Patent Laws are questions of federal law, federal courts and not state courts are the appropriate forum for resolving patent disputes.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Patent Attorney Discussion: What Rights Does a U.S. Patent Give to a Patent Holder?

Under United States law, a patent gives the patent owner the right to exclude others from making, using, offering for sale or selling the invention in the United States, or importing the invention into the United States.  Generally, a patent holder may seek monetary damages and sometimes injunctive relief in a federal court proceeding for patent infringement.  However, a patent does not give the patent holder the right to make, use, offer for sale, sell or import what his patent claims.  This may seem counter-intuitive – the patent holder does not necessarily have freedom to practice what his patent claims.  It is possible that practicing what the patent claims could infringe a different patent, such as a blocking patent.  Thus, the patent laws grant prevention rights but not proactive rights– to exclude others from practicing what the patent claims.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Patent Attorneys: Inequitable Conduct Renders a Patent Unenforceable

During prosecution of a patent application, the patent applicant has a Duty of Candor to the United States Patent and Trademark Office (USPTO), requiring the applicant to formally inform the USPTO of information known by the applicant that is material to patentability of the claimed subject matter in her application.  The Duty of Candor extends to those involved in the filing and prosecution of the patent application, including the named inventors, patent assignee and the attorneys or agents representing the applicant.  Failure to include material prior art in an Information Disclosure Statement to the USPTO may constitute inequitable conduct and render a patent unenforceable.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Patent Attorney Discusses the Difference Between Patent Validity and Patent enforceability?

Patent validity and patent enforceability are often confused.  Patent validity refers to whether the patent meets the statutory requirements for patentability, enumerated in the Patent Laws, 35 U.S.C. § 101 et seq.  The Patent Laws specify the subject matter for which a patent may be obtained and the conditions for patentability.  For example, to be patentable, a claimed invention must be useful, novel and not obvious.  If claimed subject matter fails to meet any of the requirements for patentability, the patent is not valid.