Tag Archives | patent

What if someone else invented with me (Co-Inventor Disagreements)?

When more than one person contributes to the conception of an invention, each person contributing will be a co-inventor of that invention on the corresponding patent application. The combination of all of those that contributed to the conception of an idea claimed in a patent is known as the inventorship of the patent or patent application. This article explains steps that can be taken to handle future situations where a disagreement arises between the co-inventors.

Inventorship cannot be negotiated. In other words, you cannot agree that someone that did not contribute to the conception of the invention is an inventor. Likewise, you cannot agree that someone that did contribute to the conception of the invention is not an inventor. If a person contributed to the conception of the invention …

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Should I create a prototype before applying for a patent on my invention?

Prototyping_BreadboardYou are not legally required to create a prototype before filing a patent application. However, depending on your invention and the circumstances of your case, it may be beneficial to develop a prototype before filing a patent application, as explained below.

The U.S. patent laws do not require that you create or build your invention or otherwise create a prototype before filing a patent application. However, the law requires that your invention be described to the level of detail in your patent application where one skilled in the technical area of your invention (skilled in the art) can recreate your invention without undue experimentation by reading your patent application. It is best to to error on the side of more disclosure of details regarding the invention rather than less when …

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What is Prior Art?

In general, the US only rewards inventors that conceive of “new” ideas or inventions. To determine if an invention is “new” the US Patent Office (or a US Court) compares the invention to “prior art.”

In general, “prior art” consists of disclosures or events that occur before a person conceives of an invention, or in some cases before a person files a patent application. In the United States, this concept will change after March 16, 2013 under the new patent law (the Amercia Invents Act or “AIA”). Prior art is important because, if that prior art discloses or suggests the invention, then the invention is not considered new and the prior art disqualifies a patent from being granted on the invention.

For US patent applications filed before March 16, …

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What is a Patentability Search and Opinion?

PatentSearchThis article provides reasons why you should have a patentability search performed and addresses common questions regarding patentability searching and resulting patentability opinions. A patentability  search is designed to tell you the likelihood of obtaining a patent on your invention. The law does not require that you do a patentability search search (also known as a patent novelty search) before filing a patent application, however often a search is the right first step in the patent process.

When a U.S. non-provisional patent application is properly filed, an Examiner at the Patent Office will perform a patent search on the invention as set forth in the claims of the patent application to determine whether you should be granted a patent. So why should you have a patentability search performed if the Patent …

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Freedom to Operate and Patent Clearance Searching & Opinions

PatentSearchA freedom-to-operate opinions involve an analysis of the results of a clearance or non-infringement patent search to determine whether a particular product, service, or group of products or services, if commercialized, would infringe patents owned by others, or stated another way, whether the client has the freedom-to-operate regarding the product or service at issue. This is different from a patentability search, which seeks to determine whether or not an idea is new and could be protected applying for a patent.

What is involved in a Clearance or Non-infringement Search?
A non-infringement search begins by first considering in what jurisdiction the product or service will be sold. For the purposes of this article we will consider the scenario where the product is sold in the United States. When the product will …

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How do I find my competitor’s patents or patent applications?

Often we are asked to find out whether a specific competitor has a patent or patent application that would cover (1) the client’s product or (2) a known product of the competitor’s. There are several approaches that can uncover patent or patent application information about a competitor depending on the circumstance. Information about the patent activity of a competitor my provide you with with information about your competitor’s planned activity before it is seen in the marketplace.

The Public Disclosure Patent Bargain
The bargain of a patent is that you provide information about your invention to the public—by describing the invention in a patent to the level that one skilled in the art could practice the invention—and in exchange the government grants you a time-limited monopoly on your invention. This …

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Claims to Intermediated Financial Settlement Not Patent Eligible; Software Patents Still Alive

Alive_v_CLSBankThe U.S. Supreme Court issued its decision in Alice v. CLS Bank (June 19, 2014) touching on the patent-eligibility of software implemented inventions. The decision continues to allow patent protection for software innovation and technological solutions implemented with software. Therefore all software patents are not dead in the wake of this opinion, in fact, most survive under the USPTO’s interpretation.  However, this decision limits or eliminates, depending on the circumstances, the ability of one to obtain a patent covering a fundamental economic practice long prevalent in commerce that is merely implemented in a generic computer using generic functions without more.

The patents at issue in Alice were directed to using a computer to mitigate financial settlement risk, i.e., the risk that only one party to an agreed-upon financial exchange will satisfy …

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Start with a provisional or a non-provisional patent application?

Fork in the roadThis post is designed to explain the difference between a U.S. Provisional Patent Application and a U.S. Non-Provisional Patent Application. In addition this document will explain circumstances in which one might be preferred over the other.

You may think of the provisional or non-provisional patent application as two routes to obtaining a patent. The non-provisional route providing a one step start to the patent process and the provisional route providing a two step start to the patent process. Either route, when properly carried out, can result in a patent. The two-step provisional process will take about one year longer to receive a patent than the one step non-provisional route.

Non-Provisional Route
A U.S. non-provisional patent application is a patent application that when properly filed with the U.S. Patent and Trademark …

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Should I Write My Own Patent Application (DIY Patents)?

DIY_PatentsYou may wonder whether you should write and file your own patent application (e.g. a DIY (do-it-yourself) patent application) or whether you should have a patent attorney file directly a patent application that you wrote. This posted explains why we generally don’t just file the documents you give us as a provisional patent application without review. However, client written materials are usually a good place for us to start.

Since there are few requirements that must be met for the USPTO to accept a document as a provisional patent application, there are a large variety of disclosures in provisional patent applications. Since the USPTO will not examine a provisional patent application, they will not scrutinize the level of detail provided in any document that is filed as a provisional application. …

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What is Patent Pending?

When a patent application is filed with the United States Patent and Trademark Office (USPTO) covering a product, service, or portion of a product or service, the owner has patent pending status in the United States regarding that invention. Basically patent pending status means that a patent application has been filed in the United States. Patent pending status continues until the corresponding patent application is abandoned or until a patent is granted.

Patent pending status does not mean that the patent applicant will necessarily obtain a patent. It only means that a patent is requested through the filing of a patent application. It is possible that the USPTO will find that the subject matter of the patent application does not meet the requirements to be granted a patent. On the …

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