Archive | Patent

The Wright Brothers on Taking Risks

“The man who wishes to keep at the problem long enough to really learn anything positively must not take dangerous risks. Carelessness and overconfidence are usually more dangerous than deliberately accepted risks,” said Wilbur Wright.

WrightBrothersThe process of inventing the airplane and testing it carried risks. However, as David McCullough writes in his book The Wright Brothers, “caution and close attention to all advanced preparations were to be the rule for the brothers.”

He continued, “They would take risks when necessary, but they were not daredevils out to perform stunts and they never would be.” In addition to the brothers’ study of flight attempts of others and the manner that birds fly, the bothers took many cautious steps in preparation for their first flight experiences.

The brothers realized that …

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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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Selling or Transferring Ownership a Patent Application or Patent

Selling or transferring ownership of a U.S. patent or patent application must be carried out by a written document called an assignment. See 35 USC 261. Below I review four common provisions of a patent/patent application assignment and then I explain the benefits of having an assignment notarized and recorded at the USPTO.

1. Transfer of Ownership

The ownership transfer clause effects the transfer of the invention and the patent application. One example ownership transfer clause is: “In consideration of good and valuable consideration, the receipt of which is hereby acknowledge, the entire right, title, and interest in the invention by [Inventor(s) Name] (“Assignor”) of the [Title of Invention] (“Invention”) and in the application for Letters Patent of the United States therefor, identified by serial number ________ and filing date …

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I Searched and There is Nothing Like My Invention at the Patent Office

Occasionally, I will hear someone say that he/she searched for their invention at the patent office, but there is nothing like it. But, more searching is likely needed. It is almost never the case that there is nothing similar to a new invention. New inventions are built on the backs of prior products, inventions, and/or knowledge.

Usually the problem is either that the person (a) has not searched in the right place or (b) is too narrowly viewing what is similar. When someone hires a patent search to be performed, the search almost always finds something related to the invention.

If a search is coming up with no results, then the patent search must be broadened. The search can be broadened by looking in different classifications or by searching …

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Forgot to Pay the Patent Maintenance Fee: Options to Revive a Patent

After a US utility patent is granted, maintenance fees must be paid at certain intervals. This post will discuss some of the rule that currently apply to maintenance fees.

Patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. The fees can be paid in the 6 month window before the deadline, that is between 3 years and 3 1/2 years, between 7 years and 7 1/2 years, and between 11 years and 11 1/2 years, respectively. See MPEP 2506.

If you don’t pay the maintenance fee by the deadline, you can pay it in the 6 month period (“the surcharge period”) after the deadline by paying an additional surcharge fee. Therefore, the surcharge periods are between 3 1/2 years and …

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What is a Divisional Patent Application?

A U.S. divisional patent application application can be thought of as a “child” application of an earlier filed “parent” application. The filing of a divisional application often occurs when the parent application contains more than one invention.

If the parent application claims more than one invention, the USPTO may issue a restriction requirement. The restriction requirement requires the applicant to elect among the designated inventions in the application. The election of one of the designated inventions may mean the others will not be considered. Therefore the applicant has the option to file one or more divisional patent applications directed at those other un-elected inventions. The patent office wants to make sure that patent applicants are not trying to claim multiple inventions in one application because they generate fees, at least …

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The US Patent Application Process Flow Chart



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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Burnt Dough and the Difficulties in Patent Drafting

“[E]ven if, as plaintiff argues, construing the patent to require the dough be heated to 400 degrees to 850 degrees Farenheit [sic] produces a nonsensical result, the court cannot rewrite the claims. Plaintiff’s patent could have easily been written to reflect the construction plaintiff attempts to give it today. It is the job of the patentee, and not the court, to write patents carefully and consistently.” – Colorado United States District Court

Patent claim drafting requires careful attention. The difference between the use of “to” and “at” in a claim directed to a method of producing dough, resulted in the difference between a worthless patent claim and a patent claim that might have had value. This is why going the DIY route with a non provisional utility patent application is

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How to Control Inventions and Patents Resulting from Joint Development

“…each coowner [of a patent] is ‘at the mercy’ of its other co-owners.” – Federal Circuit Court of Appeals.

STC.UNM (the licensing arm of University of New Mexico) was at the mercy of Sandia Corp. regarding STC’s patent.

STC sued Intel Corporation for infringement of U.S. Patent No. 6,042,998 (the ‘998 patent) in the case of STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. 2014). STC and Sandia co-owned the ‘998 patent.

But, Sandia refused to join the lawsuit against Intel, “prefer[ring] to take a neutral position with respect to this matter.” This led the court to dismiss the infringement suit against Intel.

STC was at the mercy of Sandia’s refusal to join the lawsuit. Maybe this lawsuit against Intel could have resulted a large money judgement for STC. But, …

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Design Patent Drawings: Surface Shading

DesignPatentCokeBottleDesign patents seek to protect the appearance of an article of manufacture, such as a product or a portion of a product. Therefore, design patents consist mostly of drawings of the invention with a small amount of text. The drawings mostly define the scope of protection that will be provided under the design patent. Therefore, the details of the drawings for design patents are very important.

Surface shading in the drawings may be important to determining whether the patent design covers a particular third party product (e.g. an alleged infringer). The patent rules provide regarding design patent drawings, “Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented.” MPEP 1503.02. The rules further provide, “Lack of appropriate surface shading in the drawing …

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