Archive | Patent

What is a Continuation Patent Application?

A continuation patent application can be thought of as a “child” application of an earlier filed “parent” application, in a way similar to a divisional application. The continuation application must be filed while the parent application is pending.

A continuation application is often filed to introduce into the application a new set of claims and to establish a right to further examination. Continuation application does what it’s name says, it “continues” the examination and prosecution of the application. It is one way to keep negotiating with the patent office (another way is to file a request for continued examination (RCE)).

Unlike a divisional, the new or amended claims in a continuation application are not necessarily directed an independent or distinct invention.

The Manual of Patent Examining Procedure provides that …

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Patent Drafting: The Written Description Requirement

US6906700_fig12Anascape sued Nintendo alleging that Nintendo’s game controller infringed U.S. Patent 6,906,700 (the ‘700 patent). Nintendo challenged the ‘700 patent asserting that it did not comply with the written description requirement of 35 USC 112.

The written description requirement provides the “that specification [of the patent/patent application] shall contain a written description of the invention, and of the manner and process of making and using it…”

The claims of the ‘700 patent were directed to a controller that received multiple inputs that were together operable in six degrees of freedom. But, the ‘700 patent was issued from a continuation application that claimed priority to a prior parent application (that became U.S. Patent 6,222,525 (the ’525 patent)). The ‘525 patent only disclosed a single input member (controller) capable of movement in six …

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Divided Infringement: When Acts of More Than One Party Are Necessary to Meet All Elements of the Claim

US7021537Divided infringement occurs when no one party actually performs all of the steps of a patent claim. For example, one party performs some of the steps and another party performs the remaining steps. One way to solve this problem is to draft patent claims such that one party will likely perform all of the claimed steps.

However sometimes its not easy to do so given the prior art. Take David Tropp’s patent no. 7,021,537 for example. That patent is directed to a method of improving airline luggage inspection through he use of dual access locks.  Claim 1 of the ‘537 patent provides the following general steps (a) providing locks to customers that have two means of opening: a combination lock portion and a master key lock portion, and (b) using …

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Patent Drafting: Enabling Skilled Person to Make and Use the Invention

USPatent5231253_Fig3Automotive Technologies International (ATI) sued numerous vehicle and parts manufacturers including BMW and Delphi Automotive Systems for infringing US patent 5,231,253 on side impact crash sensors for deploying an air bag. The court of appeals determined that the patent was invalid for failing to enable the claimed invention in Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007).

The law requires that your patent application describe your invention to such a level of detail so as to enable one who’s skilled in the art to  make and use the invention, without undue experimentation. This is known as the enablement requirement. The relevant statute states that every patent must describe “the manner and process of making and using [the invention], in such full, …

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LEGO Patent Demonstrates Why Your Patent Application Should Describe Alternative Versions of the Invention


To protect an invention broadly, a patent application should describe alternative versions of the invention. When developing an invention it may be that several variations of the invention or a component of the invention are considered before a final version is settled on for production.

You often have a better chance of obtaining broad patent protection if those unused variations of the invention are included in the application along with the final version.

The LEGO Patent and Alternatives

The patent on the LEGO building block toy (U.S. Patent No. 3,005,282) provides a good example. The patent includes not only the iconic block that many recognize, shown at the top of this post. But it also includes six other versions that I have not seen on the market and may …

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Four Finger Glove Design Patent NonInfringement Suit

Contraband Sports LLC sells workout products, including its gloves for use in weight lifting. Fit Four LLC sent a notice of intellectual property rights violation to Amazon alleging the Contraband’s gloves infringed Fit Four’s Design patent D652,607 (the ‘607 patent). This resulted in Amazon taking down Contraband’s gloves from Amazon, “during the busy holiday season and less than one week before Christmas.”

Contraband filed suit for declaratory judgement that its gloves do not infringe the ‘607 patent. The complaint asserted the following differences, among others, between its glove and the ‘607 patent:


The ‘607 patent provides mostly plain surfaces on the front and back of the glove. Contraband’s gloves includes a number of design features that are absent from the ‘607 patent.

The ordinary observer test is applied in design …

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How to Find a Competitor’s Patents or Patent Applications – Part 2

Each patent application generally must name the inventor(s) of the subject matter of the patent application. Therefore, one way to find your competitor’s patents or patent applications is to know the inventor name(s) on the patent or patent application.

But, unlike inventors, patent owners do not necessarily have to be identified on or in a patent application. So searching for patents or patent applications by inventor name may give you a better chance of finding relevant results than does searching for a patent owner or assignee.

The challenge is to identify the name or names of the possible inventor(s) at a competitor, assuming that the competitor is a business entity, such as a corporation or LLC. Below are a few places to look.

Secretary of State Corporate Records

It is …

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Convinced by Patent Pending or Will They Search Before Licensing Your Invention?

When you approach a potential purchaser or licensee of your invention, the potential purchaser or licensee might do their own research to determine whether they think you are likely to obtain a patent. They can do that in the same way that you can do it, by performing a novelty search on your invention.

Consider again the case of Penalty Kick Management v. Coca-Cola Company, 318 F.3d 1284 (11th Cir. 2003), which I discussed yesterday. Penalty Kick Management (PKM) wanted to license its Magic Windows invention to Coca-Cola. And Coca-Cola was interested to the point of proposing to pay PKM $1 million plus a per label royalty for an exclusive global license. Not bad.

The Magic Windows invention consisted of “a scrambled message on the inside of a beverage container …

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Why They Won’t Sign Your Nondisclosure Agreement

You want to pitch your invention to a company. Sure, its possible they won’t sign your Nondisclosure Agreement (NDA) because they want to steal your invention. But, how could they want to steal your invention if they know little or nothing about it?

Even if they know a little about the general subject area and are interested in learning more, there may be a less nefarious reason they won’t sign the NDA. And that reason arises from the old saying “the left hand doesn’t know what the right hand is doing.”

If you approach a larger company, the person or department you are talking to might not know what another person or department in the company is doing or has done in a particular technology space.

The left-hand-right-hand-saying above is generally …

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The Case for Excluding Solely Oral Disclosures from Nondisclosure Agreement Coverage

“If the orally disclosed confidential information is important, then the disclosing party probably should confirm it in writing to protect itself from the hell of trying to prove a solely oral disclosure.”

Nondisclosure Agreements (NDAs) sometimes specify that the confidentiality obligations cover disclosures in any form, whether that be oral or written. On one level this make some sense. Why should it matter how I disclose it to you? If its confidential, you need to keep it secret.

However, practically, enforcing or defending an alleged breach of an NDA in connection with a solely oral disclosure can be difficult and expensive. Therefore, solely oral disclosures may be completely excluded from NDA coverage. However, it is more common to allow coverage of oral disclosures, but only if they are confirmed in writing to …

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