Tag Archives | patent

US Supreme Court Restricts where Patent Suits Can be Filed

The U.S. Supreme Court interpreted the patent venue statute, 28 USC 1400(b), narrowly to restrict the places were patent suits may be filed in the case of TC Heartland LLC v. Kraft Foods Group Brands, LLC, No. 16-341 (May 22, 2017).

Previously, the Federal Circuitdetermined that section 1400(b) incorporated the broader definition of “residence” contained in 28 USC 1391(c). That broader definition provided that a defendant corporation resides in any judicial district in which the defendant is subject to the court’s personal jurisdiction. The Supreme Court determined that the resident definition section does not apply to section 1400(b) and that a defendant resides, for the purposes of section 1400(b), only in the state where it is incorporated.

Since many corporations are incorporated in Delaware, this ruling is expected to …

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The US Patent Application Process Flow Chart

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Seeking a patent is not a file it and forget it endeavor. Instead, it involves a process where work is likely required in multiple phases. The process of obtaining a utility patent in the US generally involves novelty searching, application drafting, waiting for the patent office to review the application, and negotiating with the patent office about the scope of patent protection. Each of those phases is shown in the U.S. Patent Application Process flow chart above, which I will describe in more detail below.

Patent Novelty Search

The first question is whether or not to have a patent novelty search performed. A patent novelty search is designed to tell you the likelihood of obtaining a patent on your invention. You are not required to have a search performed …

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Patent Drawings: System Diagrams

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When drafting an patent application that has components communicating or connected to each other or to a network, one or more figures showing system level interactions between the components should usually be included. Such figures are common in patents directed to software, methods, computers, or other electronics. As the Manual of Patent Examining Procedure provides, “In a typical computer [patent] application, system components are often represented in a ‘block diagram’ format, i.e., a group of hollow rectangles representing the elements of the system, functionally labeled, and interconnected by lines.” MPEP 2164.06(c).

One requirement in writing a patent application is to enable one skilled in the art area of the particular invention to be able to make and use the invention without undue experimentation from reading the patent application (which later …

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Do I Need a Patent to Sell My Product or Service?

No. You are not required to obtain a patent in order to sell a product or service embodying your invention. Many products and services are sold that are not patented.

A U.S. patent provides the right to stop others from making marketing, selling, or importing your invention in the United States. Therefore a patent may provide you a competitive edge against your competitors in the marketplace. But, a patent is not a grant of permission to make your product or provide your service. A patent will not protect you from claims of infringement by others.

For example, assume that your product is A+B and you obtain a patent on A+B. Then John who owned a prior patent on invention “A” sends you a letter alleging that your product A+B infringes …

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My Competitor Has a Patent, Will My Product Infringe?

PatentPending“Its patented.” “They have a patent on it.” “It’s patent pending.” “You cannot sell that because I have a patent on it.”

Many statements get thrown around in the marketplace about patent rights.

But what do these statements mean? Are these statements being used correctly? What rights does the competitor actually have?

If you are faced with claims that a competitor has a patent or has patent pending, you want to know the impact to your business and your ability to compete.

Does my competitor have a patent or just a pending application?

Often times you hear “I have a patent” or “It’s patented”, when the competitor merely has a patent application filed. Also, “I have a provisional patent” is often used. But there’s no such thing as a provisional …

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How to Obtain Broad Patent Protection: Describe Alternate Versions of the Invention

US4743262_WrittenDescriptionClients often wonder why a patent application on a relatively simple invention is relatively long. The answer is that even the most simple inventions are not simple to describe properly in a patent application.

To write a strong patent application, the invention needs to be described to a level of detail that many clients would not have thought necessary.

Its not unusual that a client brings a 3 to 5 page provisional patent application that the client wrote themselves, and the non-provisional application I write is at least three to four times as long, or 15 to 20 pages or more.

This is why DIY patent applications are difficult to write well (but there are options and trade-offs when money is tight).

The details and length are necessary because that …

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Product Licensing Performance Guarantee: Make Sure Your License Has One

GuaranteeYou develop a useful product. Let’s say its a needle for performing biopsies. You file a patent application on your invention.

Then you approach a medical device company and enter into a license agreement where the company receives exclusive rights in the invention in exchange for a royalty on each product sold.

Years pass and the company still has not fully developed and marketed the invention. You sue the company for not doing enough to get your product to market. But you lose because the license agreement contained no performance guarantees requiring the company to meet minimum sales or use best efforts to make, market, and sell the product.

This is similar to what happened in the case of Beraha v. Baxter Health Care Corporation, 956 F. 2d 1436 …

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What is a NDA (NonDisclosure Agreement)?

NondisclosureAgreement2A NonDisclosure Agreement (NDA) or Confidentiality Agreement is a written agreement where one or more parties agree to keep information that is disclosed confidential. Generally a NDA will be used when one party wants to disclose confidential information to a second party. Occasionally, a mutual NDA will be needed if both parties intend to disclose confidential information to each other.

Patent Law and Disclosures
Prior to the enactment of the America Invents Act (AIA), the United States provided a one year grace period which requires that within one year after certain activities, such as a public disclosure of the invention, a patent application must be filed or the inventor is prohibited from filing a patent application. The AIA made changes to the law which raised doubts about how and under …

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Licensing an Invention: Lessons from Nikola Tesla

TeslaNikola Tesla was reduced to taking work as a day laborer digging ditches after previously working as an engineer with the Edison Company and then being forced out of a company he started with two other investors. He was down on his luck, unable to find work as an inventor or engineer.¬† He was broke and despondent describing this time as “a year of terrible heartaches and bitter tears.” He lamented that all of his high education in science and mechanics was “a mockery.”

But in the midst of this hardship he did not give up on inventing. He continued his work and filed a patent on a hydromagnetic motor. Opportunity would come through an unexpected place–through a network connection prompted by the mere discussion of his hydromagnetic motor invention …

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Do I need a utility patent or a design patent?

Design patents protect the visual ornamentation embodied in an article of manufacture (e.g. a product). In other words, a design patent protects the way a product looks. This is in contrast to a utility patent that protects a process or the way a product functions or operates.

The Ordinary Observer
The protection afforded by a design patent is quite narrow as compared to that provided by a utility patent. Design patents are effective at preventing direct knockoffs. Courts have set out an ordinary observer test for determining whether a design patent covered a product, e.g. whether the product infringed the design patent. The court will consider whether the product and the design shown in the drawings of the design patent are substantially the same in the view of the ordinary …

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