Inventions eligible for patent protection
Mayo v. Prometheus is a seminal case which defines the ideas or invention eligible for patent protection. For a few years now, the patent bar has been debating the scope of inventions that might be eligible for patent protection. The Bilski case decided a few years ago pushed the realm of patent-eligible subject matter into [...]
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- Posted in: Patent Eligible Subject Matter
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Request for non-publication of a patent application
Non Publication Requests A non publication request is a request by the patent applicant to not publish a non provisional patent application. By default, every non provisional patent application is published 18 months after the filing date of the patent application. The non publication request prevents the publication. Benefit of publication The benefit of publication [...]
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Proper uses of a means plus function limitation
The following case illustrates my propensity for limiting my use of what patent attorneys call the means plus function claim limitation. There are particular uses for means plus function limitations but more often than not, they seem to be more trouble than they are worth. I will go over some instances where I think that [...]
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Only express claim amendments give rise to intervening rights
Background on intervening rights Since the 1940’s, the courts recognized the inherent unfairness of changing the claim scope of an issued patent through post issuance procedures and then suing another who had relied on the issued claims in the original patent in preparing to compete. For example, if a patent was directed to an automobile [...]
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Patent search websites
The two online patent search resources that I utilize the most to retrieve patent documents and to research patents are freepatentsonline.com and the uspto.gov website. The uspto.gov website provides two different databases. One for issued patents and one for published patent applications. Some published patents applications mature into a patent but some do not. Hence, [...]
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- Posted in: patent search
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Predicting litigation is difficult and patent drafting tips
The following case illustrates the difficulty in being able to predict the outcome of patent litigation. It also provides hints at improving ones patent drafting technique. During patent litigation, the claim terms are construed in light of (1) the plain meaning of the terms, (2) the specification and (3) the prosecution history among other things. [...]
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Interview with Joe Platnick of the Pasadena Angels
This past holiday season, I had the opportunity to ask Joe Platnick of the Pasadena Angels a few questions about his group. I want to thank Joe for taking time out of his busy schedule to answer a few questions and to help educate our community about the benefits that the Pasadena Angels has been [...]
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- Posted in: Funding Sources, investors
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IP Monthly Roundup January 2012
Prioritized Examination The Patent Office and Congress has responded to the patent user community. Many people were complaining that the examination process took too long. It currently takes about 2 to 3 years before your patent application is examined by the Patent Office. In years past, the Patent Office has given preferential treatment in special [...]
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- Posted in: Monthly Roundup
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Be explicit about things implicit in your patent application to avoid written description issues
Written Description Requirement To get a patent, an inventor must satisfy the written description requirement. This is accomplished through the preparation of a patent application which describes the invention and shows any drawings if necessary for the understanding of the invention. To satisfy the written description requirement, the discussion of the invention must correspond to the claims. [...]
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What is the fuss about patent trolls?
The broadest definition of a patent troll is a patent holding company that does not make products but asserts its patents against companies that make products. In legalese, a non practicing entity that sues a practicing entity. History of the term The term patent troll was used as early as 1993 and popularized by Peter [...]
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- Posted in: Non practicing entity
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