patents

Patents protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” 35 U.S.C. § 101, or in the case of a design patent, “any new, original, and ornamental design embodied in or applied to an article of manufacture,” 35 U.S.C. § 171.

To be patentable, an invention must be new, novel, and non-obvious. This search and analysis considers whether the USPTO will find that your invention meets the threshold. Prior art used to generate this opinion may include U.S. Patents and Published Applications, worldwide Patents and Patent Publications, and Non-Patent Literature.
There are more than a million active enforceable patents in the U.S. In order to avoid infringing one or more of them, it is necessary to consider their claims. Find out whether you can practice your invention with a clearance search and opinion. Even if someone later accuses your invention of infringing their patent, having obtained a clearance opinion may provide certain advantages.
You have your patent and someone else is practicing your invention, or you have been accused of infringing someone else’s patent. Whether or not the patent is infringed may depend on several things, including the claims of the patent, how the invention is described in the patent, and things said by the patentee during examination of the patent. An infringement or non-infringement opinion attempts to ascertain whether a court would likely find that the patent was infringed.
Just because a patent has issued, does not mean that it will ultimately be found to be valid. If a competitor’s patent stands between you and your objectives, it may be worth analyzing whether the patent should have issued in view of prior art that the USPTO may not have considered, or may not have considered properly.
Often, a small change is all that is required to avoid infringing a competitor’s patent. Determining whether the change is enough to do so requires the assistance of a patent attorney. With my extensive product design experience, I may be able to provide suggestions that avoid competitors’ patents while preserving design integrity and manufacturability.
Preparing a patent application is a process of coming to a thorough understanding of the invention and the context in which it exists. Although there is no duty to perform a patentability search, it is often advantageous, as the patent application may be written in such a way as to distinguish over these references. Either way, an experienced patent attorney crafts the patent application with a view toward facilitating its prosecution before the USPTO and toward maximizing its breadth and enforceability.
For better or worse, prosecuting a patent application before the USPTO is an adversarial proceeding. It is the patent attorney’s job to convince the patent examiner that the invention is patentable, while it is the patent examiner’s job to ensure that an invention that is not new, novel, or non-obvious does not receive a patent. An experienced Patent Attorney strives to obtain a favorable outcome using persuasion and the law.
A continuation application is an application that claims priority (i.e. – is considered to have the same filing date as) to a parent application, contains no new matter, but claims the same invention in a different way. A divisional application claims priority to a parent application when the parent application contained more than one distinct invention, so that the divisional claims an invention not encompassed by the claims of the parent. A continuation-in-part application contains some new matter and some old matter, so that the old matter is entitled to the filing date of the parent.
The Patent Cooperation Treaty allows an Applicant to establish a priority date by filing a PCT application in a Receiving Office. This priority date is effective in any country the Applicant designates, which may include nearly every country in the world. In order to make use of the PCT priority date, the Applicant must file a national or continuation application within two and a half years of the earliest priority date of the PCT application.
Appeals from adverse examiner decisions are conducted before the Patent Trial and Appeal Board. Appeals are often taken when the examiner’s conclusion that an invention is anticipated or obvious, or otherwise unpatentable, is based on faulty reasoning.
Reissue applications are filed to correct errors in patents. Typical errors that may be the subject of reissues include claims that are too narrow or too broad, disclosure that contains inaccuracies, failure or incorrect claim to foreign priority or reference to prior copending application, or Inventorship error.
Ex Parte Reexaminations are filed when there is a “substantial new question of patentability.” Inter Partes Reviews are conducted before the Patent Trial and Appeal Board (PTAB) based on prior patents or printed publications that may render one or more claims in a patent anticipated or obvious. Post Grant Reviews are also conducted before the PTAB, based on various grounds of invalidity of the patent.
A patent license agreement is an agreement in which the entity holding the patent (the licensor) gives another entity that desires to make, use, or sell the invention (the licensee) permission to do so in exchange for a payment or other compensation, called a royalty. The royalty may be one-time or ongoing, or a combination thereof. The license may be exclusive, so that the licensee is the only other entity allowed to practice the invention, or non-exclusive, so that the licensor can license the patent to more than one licensee.
An assignment transfers the right to exclude others from making, using, or selling from one entity (the assignor) to another (the assignee). Assignments are often done as the result of an obligation, such as that of an employee to an employer. However, assignments can also be done for equitable remuneration or other reasons.

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