The United States Patent and Trademark Office classifies all inventions into one or more of about 450 different classes.  Each class is further divided into numerous subclasses.  There may be up to a 1000 subclasses per class.  The classes describe a generic category.  The subclasses describe specific features of each of the categories. Benefit of [...]

In this stage of the patent search, brainstorm as many keywords related to your invention.  The brainstorming session should be inclusive.  There will be additional time later during the search process to eliminate keywords that are not particularly useful. Heteronyms Heteronyms are words that have the same spelling but different meanings.  The patent search is [...]

A patent search is a review of the prior art (i.e., exiting technology) to determine the likelihood that the United States Patent and Trademark Office would grant a patent on your invention. Benefits There are numerous benefits to a patent search.  Inventors and business may rely on the opinion to decide whether to invest additional [...]

The Unites States Patent and Trademark Office publishes their own guide to conducting a patent search on the USPTO’s website.  I’ve broken down the steps suggested by the USPTO into three different stages to make things easier to remember. Step 1: Brainstorming Keywords The first stage of the patent search is the keyword discovery stage. [...]

7 Core Concepts: Patent Fundamentals Watch the seminar Web based patent seminar on the 7 core concepts, fundamental to your understanding of how to protect an idea with a patent. I will expand on the basics of protecting your idea with a patent.  For more information on each topic, click on the links below.  The [...]

Basics on Patent Eligible Subject Matter Section 101 of the Patent Act defines patentable subject matter, stating that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore. These are broad categories and encompass most if not all [...]

Background on inequitable conduct Charges of inequitable conduct used to be favored by accused patent infringers even though these types of charges had a very low success rate because charges of inequitable conduct allowed the accused infringer to portray the patent owner as bad and undeserving of a favorable judgement.  The Federal Circuit disfavored claims [...]

Law on enablement requirement A patent specification must enable one of ordinary skill in the art to make and use the full scope of the claimed invention without undue experimentation under 35 USC 112, first paragraph.  Otherwise, such claim is invalid for failing to satisfy the enablement requirement.  The enablement doctrine prevents both inadequate disclosure [...]

Introduction The AMP v. Myriad opinion discusses eligibility of patent protection for genes. Although the opinion is directed to eligibility of patent protection for genes, this opinion is also applicable in understanding how the Federal Circuit will apply Prometheus. This opinion was decided by a fractured three member panel. Although a majority was formed as [...]

Method claims have just become more valuable. The reason is that the Federal Circuit has broadened their scope of protection. Background information Under prior patent law, infringement of a method claim could be found through either direct infringement or indirect infringement. Direct infringement of a method claim occurs when a single actor (i.e., person or [...]