In general, a claim can be divided into different elements such as steps A, B and C for a method claim.  For example, a hypothetical method claim for a new way to drive a car may recite “A method for controlling a car comprising the steps of grasping a joystick (i.e., element A), moving the joystick (i.e., element B) and transmitting GPS position of the car (i.e., element C).  When one entity makes, uses, sells or imports a device that incorporates all of the steps A, B and C or performs all of the steps A, B and C then that entity is infringing on the patent.  However, when two different entities collectively practice all of the steps, but not individually then neither entity is infringing on the claimed invention.  For example, if the driver performs steps A and B but a third party does the transmitting step then the driver and the third party do not infringe the method claim.  Accordingly, the claims when drafted should be directed so that the claim can be infringed by one entity. The following case illustrates this issue.

SiRF (alleged infringers) manufactured and sold GPS units to end users.  Global Locate (patentee) held patents related to GPS technology.  The claims of the patents at issue required the step of transmitting data to the end user and processing the data at the GPS receiver.  SiRF contended that they did not perform all of the steps recited in the claims of the patent, namely, the processing step.  SiRF transmitted the data to the end user but the GPS receiver operated by the end user processed the data.  The end users performed the processing steps with the GPS receiver.  Accordingly, it appears that no single entity performed all of the steps of the claimed method.  Nonetheless, the court held that SiRF performed the processing step even though the GPS receivers were being used by the end users.  The reason is that the GPS receivers were built and sold by SiRF enabled and ready to process data.  SiRF’s device automatically performed the processing step.  Hence, the Court held that SiRF infringed the asserted claims.  SiRF Technology v. ITC 2009-1262 (Fed. Cir. April 12, 2010)

Problems arise when the company does not have an agreement by the independent contractor to assign inventions to the company.  In this situation, the independent contractor owns the invention even though the company hired the independent contractor.  The company may have a license or the right to use the invention due to the nature of the relationship between the independent contractor and the company.  However, the company cannot exploit the patent rights because the independent contractor owns the invention, not the company.  The company cannot license the patent rights to another, cannot file a patent application on the invention, etc.  As such, it is important to negotiate ownership terms with independent contractors before engagement.

In relation to employer-employee relationships, read Avoid Problems: Get an Invention Assignment Agreement.

You may also be interested in Conflicting Invention Assignment Clauses.

For more information, please feel FREE to contact me at (949) 433-0900 or James@OCPatentLawyer.com.

For example, one principle in drafting a patent application is that the claims must be commensurate in scope with the description of the invention made in the application.  If the claims are too broad in light of the description or the description is too narrow in light of the claims, then the courts will invalidate the patent for failing to satisfy the “written description” requirement.  This principle, among others, might be the subject of a section in a DIY patent drafting book but, in my opinion, are only assimilated into one’s writing style through many years of practice and mentoring by a more senior patent attorney.  Accordingly, one should seek the advice of a competent patent attorney when protecting an invention through patents.

The following case illustrates one way in which an alleged infringer attempted to argue that the patent failed to satisfy the written description requirement but failed.  You can appreciate the complexity of the written description requirement and how this and many other patent law principles may not be conducive to a short description in a DIY patent drafting self help book.

The patent at issue was directed to a sunglass lens that can be removeably attached to prescription glasses.  The sunglass lens is attached to the prescription glasses by magnets.  The prior art magnetically attached the sunglass lens by mounting corresponding magnets in the frame of the prescription glasses.  Unfortunately, this set up weakened the frame of the prescription glass.  Also, the sunglass lens tended to fall off of the prescription glasses.  The patented invention solved these two problems (i.e., decreased strength and stable support) by embedding the magnets into projections formed in the prescription glasses and top mounting the sunglass lens on top of the magnetic projections.

Revolution built a similar device but attached the sunglass lens to the bottom of the magnetized projection.  They attempted to argue that the claims were invalid for not being commensurate with the scope of the detail description.  The specification discussed both the decreased strength and stable support problems and asserted that the invention solved these two problems.  The claims were directed to only the decreased strength problem and not the stable support problem.  Since the claims were broad enough to cover both top and bottom mounted sunglass lens, Revolution contended that the claims were not commensurate with the detailed description.  The Court disagreed.  It held that inventors can frame their claims to address one problem or several, and the written description requirement is satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claims.  Revolution Eyewear, Inc. v. Aspex Eyewear, 90 USPQ 1733 (Fed. Cir. 2009).

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

The simplified definition for a continuation, divisional and CIP application involves what is disclosed and what is claimed.  The continuation application is the same disclosure as the parent application with claims similar to the parent application.  The divisional application is the same disclosure as the parent application but with claims directed to different subject matter compared to the parent application.  (e.g., receiver v. transmitter).  The CIP application adds new subject matter to the parent application with claims directed to the new subject matter.

There may be different reasons for filing the child application.  One important reason for filing the child application is to maintain pendency of your application with the Patent Office.  This allows you to broaden or shift focus of your claims as you see how the market and your competitors react to your product.  When your parent application matures into a patent, the claims can be broaden but only to a limited degree for a limited period of time.  Your competitors will look at your patent and attempt to “design around” the claims.  If your competitors are successful in designing around your patent, then the issued patent may be less valuable.

The claims that can be submitted in the pending child patent application can be much broader than the claims in the issued patent.  In this manner, the child application may be used to reintroduced claims so as to cover your competitor’s redesigned product at least to the extent that there is commonality between your patent disclosure and your competitor’s new product.  Without the child patent application, the claims of your issued patent may be broadened but only to a limited degree for a limited period of time which may not be sufficient to cover your competitor’s redesigned product.

Other reasons for filing the child patent application may include continuing prosecution of the claims in the parent application, seeking claims directed to other subject matter in your patent application and adding slight modifications to your invention, etc.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

The following case illustrates whether a particular printed document can be considered a “printed publication” and how to determine when the document became a “printed publication”.  In In re Hall, a protest was filed in relation to the patent application at issue.  The protest is a document submitted by a third party explaining reasons that the Patent office should reject a patent application.  The third party submitted a doctoral thesis found in a German library.  The doctoral thesis was on point with respect to the invention.  The patent applicant conceded that the doctoral thesis would prevent the patent application from maturing into a patent if the doctoral thesis is a “printed publication” with an effective date more than one year prior to the filing date of the patent application at issue.

The Court held that the doctoral thesis became a printed publication when the library indexed the doctoral thesis.  Based on correspondence with the librarian which stored the doctoral thesis, the doctoral thesis was indexed, cataloged and shelved (i.e., publicly accessible) more than one year prior to the filing of the patent application based on the routine business practice of the library.  The Court affirmed the Patent Office’s rejection of the claims.  In re Hall781 F.2d 897, 228 U.S.P.Q. 453 (Fed. Cir. 1986).

Based on the foregoing case, even a remote paper with little to no circulation may be considered a printed publication.  Accordingly, when consulting with your patent attorney, you should disclose all types of publicly available papers related to your invention to your patent attorney so that any issues can resolved earlier than later.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

In my experience, each person’s situation is different which may require the client to address other issues even before a patent application is filed.  For example, ownership issues may have to be addressed prior to filing a patent application.  Infringement may be another issue that the client may want to address before filing a patent application.  These are some of the issues that may require attention prior to expending the time and money in filing a patent application.  Online websites may provide legal information in the form of helpful tips.  Unfortunately, these online sites do not provide legal advice on these or any other issues.  They do not listen to your situation and cannot provide a recommended course of action based on your particular situation.

Additionally, these online websites do not provide legal advice on how to draft a patent application.  Your answers are merely placed in the format of a patent application without any modification or addition.  The online websites may provide helpful tips or you may even have a book on how to draft a patent application.  However, unless you learn under the guidance and instruction of a competent patent attorney, your patent drafting skills will not significantly improve the quality of your patent application.  Patent attorneys do not answer a series of questions in preparing a patent application.  Competent patent attorneys have a basic approach to drafting a patent application that they have developed over the course of many years with the help of a more seasoned patent attorney.

As such, seek the advice of a competent patent attorney to determine whether there are any issues that need to be addressed prior to filing a patent application. Also, retain competent patent attorney in preparing and filing your patent application.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.

You may also be interested in Adjusting Patent Term Due to Delays.

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com

The following case involved a copycat footwear that looked similar but not identical to Crocs.  The copycat footwear was being sold by quite a few companies.  Crocs had a design patent directed toward their footwear and sued these companies.  Design patents protect the ornamental look of a product.  Design patents do not prevent others from incorporating or copying a utilitarian function – that is the function of a utility patent.  Fortunately for Crocs, recent cases have broadened the scope of protection afforded by a design patent.  Crocs was ultimately successful in obtaining a judgement of infringement against at least some of the eleven companies.

The present case clarifies the new standard of design patent infringement which is the ordinary observer” test.  Under this test, infringement exist if the ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.  The Court emphasized that the test looks to the overall design and does not place undue emphasis on details. In comparing the accused product and the patented design, the Court conducted a side by side comparison and looked to the overall effects of the patented design.  For example, in the present case, one of the overall effects of the of the patented design that helped the Court to decide that the copycat footwear infringed the design patent is that the patented design created a focal point through the convergence of multiple major design lines and curves which was incorporated into the copycat footwear.  The Court held that despite minor differences between the accused product and the patented design, the accused copycat footwear still infringed Crocs’ design patent.  Crocs, Inc. v. ITC, 2008-1596 (Fed. Cir. Feb. 24, 2010).

Should you have any questions, please feel free to contact me.

The following case illustrates how one company violated a competitor’s patent rights by copying their product.  SEB v. Pentalfa, 2009-1099 (Fed. Cir. Feb. 5, 2010). SEB held a patent directed to a deep fryer.  The patent claimed a way of manufacturing the exterior skirt of the deep fryer with an inexpensive ordinary grade plastic thereby reducing the cost of the deep fryer.  A ring of heat insulating and heat resistive material is mounted to the top of the skirt and an inner hot pan.  The skirt and hot pan is separated by an air space of sufficient width to insulate the skirt from the hot pan.

Pentalfa copied SEB’s deep fryer.  However, before manufacturing and selling the copy-cat product, Pentalfa obtained a “right-to-use study” from a patent attorney.  The patent attorney conducted a search but did not find SEB’s deep fryer patent.   The patent attorney provided a positive right-to-use opinion.  Despite the positive right to use opinion, the jury held that Pentalfa actively induced others to infringe SEB’s patent.  To be held liable for active inducement of infringement, the alleged infringer must have the specific intent to encourage another’s infringement.  Pentalfa contends that they did  not have the “specific intent” to encourage another’s infringement because they did not have actual knowledge of SEB’s deep fryer patent.

However, the Court held that the requisite specific intent does not require actual knowledge of the patent but may also include a deliberate indifference of a known risk that SEB held a patent.  In the present dispute, Pentalfa copied SEB’s deep fryer.  Pentalfa hired an attorney to conduct a right to use study but did not tell the patent attorney that it based its product on SEB’s deep fryer.  The Court indicated that the failure to inform one’s counsel of copying would be highly suggestive of deliberate indifference.  Also, the parties were sophisticated with respect to the patent system.  Hence, the Court held that Pentalfa actively induced others to infringe SEB’s patent.

Based on this case, if you copy another company’s product then you should inform your patent attorney of this fact.  Also, you should inform your patent attorney of the process by which the product was invented.  The purpose is to address the issue of patent infringement early during the process so that design around options can be implemented if possible.  Design arounds are alternative designs that avoid the patent yet retain the functional feature of the patented product.  Typically, it is less expensive to redesign at the manufacturing stage compared to the cost to recall, litigation and a pay out of damages to the patentee.

Should you have any questions, please feel free to contact me.

The following case illustrates the problems associated with companies that do not have invention assignment agreements or with relying upon a sub-contractor that does not have the proper invention assignment procedures in place.  General Electric (“GE”) manufactures jet engines.  GE attempted to manufacture the blades with composite material.  However, the blades were subject to failure.  As a result, GE outsourced engineering and manufacturing of the composite blade to a division of Chromalloy Gas Turbine Corporation (“Chromalloy”).  Chromalloy appointed Teets as the chief engineer for the project.  Unfortunately, Chromalloy did not have an Invention Assignment Agreement in place with Teets.  Eventually, Teets invented a new process for fabricating a durable composite blade which GE purchased for its engines.  A patent application was filed.  Later, Teets asserted that he, not Chromalloy owned the invention rights in the process for fabricating the composite blade.  The lower Court held that Chromalloy at least had “shop rights” in the invention.  As such, at the least, Chromalloy could continue to sell the new composite blades to GE.  Upon appeal, the Federal Circuit held that Chromalloy had more than just “shop rights” but also owned the patent rights.  Although the Teets did not expressly assign the invention to Chromalloy, the Court construed an implied-in-fact contract to assign the invention to Chromalloy based on the particulars of the employment relationship.  Teets v. Chromalloy Gas Turbine Corporation, 83 F.3d 403 (Fed. Cir. 1996).

Based on this case, it is important to set up proper procedures and documentation to clarify ownership of intellectual property rights cases not only in the employment context but also when hiring a sub-contractor.  Employers should implement procedures to obtain invention assignment agreements from employees.  It may also be important to ensure that your sub contractors have proper invention assignments from its employees to prevent any delays in production if one of the sub-contractor’s employees objects to intellectual property ownership issues.

Should you have any questions, please feel free to contact me.