Continued vague guidance on patentability of software

Continued vague guidance on patentability of software

Bottom line: In Ultramercial v. Hulu (Fed. Cir. 2014), the Federal Circuit continued to provide vague guidance as to the patentability of software, specifically, whether a claimed invention is an unpatentable abstract idea.  The Federal Circuit provided little guidance as to when a novel characteristic of a claimed invention would be sufficient to move the […]

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Best vehicle for broadening patent protection

Best vehicle for broadening patent protection

Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications.  In a broadening reissue patent application, the patent’s claims cannot be amended or broadened so as to exclude the primary invention described in the patent application under the ‘original patent’ requirement.  In contrast, […]

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Extend patent protection and receive more royalties

Extend patent protection and receive more royalties

Bottom line: By filing a string of continuing patent applications and not claiming priority for the continuing patent applications back to a common parent application, the patent owner may be able to extend patent protection for its product. Under U.S. patent laws, an inventor can file a series of successive child patent applications.  This is […]

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Restriction requirement and potential responses to them

Restriction requirement and potential responses to them

A restriction requirement is an assertion by the examiner that the claims of a patent application are directed to two or more independent and distinct inventions. See MPEP Section 803 for more information. A common restriction requirement is between claims for an apparatus and those claiming a method of using the apparatus.   The examiner will […]

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Be wary of marketing invention before filing a patent application

Be wary of marketing invention before filing a patent application

Entrepreneurs typically undertake a number of efforts in order to sell a product.  They demonstrate their products to the public and one-on-one to buyers.  They may engage in cold calls to set up customer meetings, place informational content on a website to provide more information about the product and attach files to e-mails.  These efforts […]

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Broad patents spread a wide net but more likely to be invalid

Broad patents spread a wide net but more likely to be invalid

In Abbvie v. Janssen (Fed. Cir. 2014), the claims of the patents at issue defined the claimed invention by its function, rather than by its structure. To put it in layman’s terms, it claimed a sports car going 0 to 60 mph within X seconds instead of claiming a V-12 engine having certain technical features […]

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Court struggles to define abstract ideas for patent eligibility purposes

Court struggles to define abstract ideas for patent eligibility purposes

Under U.S. patent laws, an invention must be directed to a statutory category that is eligible for patent protection. These categories include a process, a machine, a manufacture or a composition of matter. (35 USC § 101). If the invention does not fall within one of these four enumerated categories, that is, if an application […]

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Dangers of 1 yr grace period under first-inventor-to-file system

Dangers of 1 yr grace period under first-inventor-to-file system

In 2013, the United States transitioned from a first-to-invent system to a first-inventor-to-file system under the America Invents Act. A basic difference in the two systems is that the first-to-invent system focuses on the inventor’s date of conception, whereas the first-inventor-to-file system primarily relies on the filing date of the patent application to determine who […]

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Patent unenforceable for failure to disclose info to Patent Office

Patent unenforceable for failure to disclose info to Patent Office

In 2011, the Federal Circuit significantly raised the bar to successfully win on a defense of inequitable conduct. Therasense (Fed. Cir. 2011). One of the reasons for raising the bar was that such claims were frequently alleged but rarely successful, causing the Court to expend a disporportinate amount of time to sort out the few […]

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Inequitable conduct defense successful despite high standard

Inequitable conduct defense successful despite high standard

Inequitable conduct is a defense to patent infringement to avoid liability for patent infringement.  However, inequitable conduct also offers a way to introduce unfavorable facts about the patent owner, inventors, etc. to paint the plaintiff as a bad actor and not as someone that has helped society in bringing forth the invention protected by the […]

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