This blog post has been updated due to the America Invents Act enacted September 16, 2011. See Virtual patent marking and false patent marking post. Upon filing a patent application or issuance of a patent, a product disclosed by the patent application or covered by the claims of the issued patent may be marked either “Patent [...]
-
Penalty for False Patent Marking
-
Misconceptions of Provisional Patent Applications
After an inventor conceives of an invention, an application seeking patent protection may be filed with the United States Patent and Trademark Office. The first or initial patent application may either be a provisional or non provisional patent application. The provisional patent application is described as a lower cost option compared to the non-provisional patent [...]
-
What Types of Inventions are Obvious?
Inventors frequently ask whether the Patent Office will grant them a patent on their invention. The general answer is that the Patent Office will grant a patent on inventions that are novel (i.e., new) and non-obvious in light of technology existing at the time the patent application was filed. The government does not have an [...]
Be clear in drafting claims
Clear claim language is generally the primary goal of claim drafting. In the following case, the claim recited a means plus function limitation. These types of limitations appear to be broad but are limited to the specific structure disclosed in the patent application and linked to the function stated in the means plus function limitation. The means plus function limitation in the patent at issue recited “a release means for retaining” which is confusing because it is unclear whether the function is the release function or the retain function. The Court held that the claim is limited to structure related to both the release and the retain function. Court held: no infringement based on this claim construction. The point of this case is to follow the simple means plus function format of “means” followed by a function, preferably only one function.
(No Ratings Yet)
Loading ...
Print This Post
Duty to disclose owned by everyone substantively involved
A company president who is intimately involved with the prosecution of a patent application even if the company president is not an inventor has the duty to disclose relevant information to the invention to the Patent Office. In the present case, the company president failed to disclose a sales demonstration that occurred more than one year prior to the filing of the patent application. The court held the patent unenforceable due to inequitable conduct.
(No Ratings Yet) Loading ... Print This Post
Patents are now Stronger
The evidence needed to invalidate a patent needs to be clear and convincing regardless of whether the information was before the Patent Office. This is a higher standard than the preponderance of the evidence standard. Hence, this case strengthens patents because it eliminates arguments that might have been used to invalidate patents.
(No Ratings Yet) Loading ... Print This Post
At the Patent Office, what happens?
Once a patent application is filed, you can expect to wait. The Patent Office typically takes about fourteen (14) months or more to examine your patent application on the merits. If the patent application is filed as a provisional patent application, your provisional patent application is not never examined. It is also abandoned after 12 months by operation of law. You must file …
(No Ratings Yet) Loading ... Print This Post
- Posted in: FAQs, patent process
- Continue Reading →
Active Inducement, Willful Blindness Sufficient
The Court held that liability for active inducement of patent infringement requires knowledge that the induced acts constitute patent infringement. In the present case, the defendant did not have actual knowledge that the acts that defendant was encouraging amounted to patent infringement. Nonetheless, the Court held that the defendant was “willfully blind” to such fact and that the defendant was just as culpable as one having actual knowledge. To find willful blindness, “(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.”
(No Ratings Yet) Loading ... Print This Post
Federal Circuit Resets the Rules for Inequitable Conduct
The Federal Circuit essentially reset the rules for winning on a charge of inequitable conduct. Over a period of time, the courts were reducing the standards to win on a charge of inequitable. The reward was that the asserted patent would now be unenforceable despite infringement. As a result, charges of inequitable conduct started to take over the case and have a life of its own. Now, the court made it very difficult to win on inequitable conduct. Now, to win on inequitable conduct, the alleged infringer must show both intent and materiality. However, the showing for intent requires a specific intent to deceive the Patent Office. For example, if there are two reasonable inferences for the patentees acts, one of which is innocent, then there is no specific intent. For materiality, there needs to be a ‘but for’ causation between the act and the issuance of the patent. But for the “act”, the Patent Office would not have granted the patent.
(No Ratings Yet) Loading ... Print This Post
Willful infringement, track related litigation
No willful infringement found when Maersk’s sales contract included option to modify product based on litigation and did modify the product when it learned that a court ordered a competitor to modify a product to stop infringement. Maersk implemented the same changes. The clause in the sales contract and Maersk’s subsequent actions point to Maersk’s intention not to willfully infringe.
(No Ratings Yet) Loading ... Print This Post
- Posted in: Opinion of counsel, willful infringement
- Continue Reading →
Offers for sale: foreign sales for US use infringes patent
A sale of a product in foreign countries can still infringe a United States Patents if the contract provided for an operating region within the territory of the United States.
(No Ratings Yet) Loading ... Print This Post
- Posted in: offers for sale, on sale bar
- Continue Reading →
Offloading A Step In A Method Claim Avoids Patent Infringement
The scope of patent protection afforded under a patent is defined by the claims. As a general rule, a claim can only be infringed by a single party that practices all of the limitations of the claim. However, what happens if one party outsources a particular step of a method invention or claim to a third party? What if the party provides instructions to the a customer to perform one or more of the steps? Does this party avoid infringement because this party has not performed all of the required steps of the method? This was the issue in Akamai Tech. v. Limelight Networks, Inc. (Fed. Cir. Dec. 20, 2010).
(No Ratings Yet) Loading ... Print This Post
- Posted in: joint infringement, method claims
- Continue Reading →
Claiming Variations Limited to the Written Description
Once a patent application is filed, it receives a priority date for all that it discloses and nothing more. The inventor can claim anything within the disclosure as being a part his or her invention. If the inventor wants to claim an invention that varies from the disclosure, then the claim language must be generalized so as to encompass the variation but cannot be shifted unless the original disclosure provides “written description” of the claimed variation. Otherwise, the claim will be invalid for lack of “written description” in the specification.
(No Ratings Yet) Loading ... Print This Post
