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Published by: James Yang

After Acquired Companies Fall Under Existing License

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  • Posted on: February 1st, 2011 by

A patent provides the right to exclude others from practicing the patented invention. In other words, a patentee can demand that competitors stop selling a device that infringes on the patent. This is the traditional offensive aspect of a patent. However, patents have other purposes. For example, when a company is accused of infringement, the [...]

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Comparable Licenses Used to Establish Reasonable Royalty Rate

A patentee can seek money damages and/or an injunction against companies that infringe their patent.  Damages are calculated as the dollar value that the patentee suffered due to the infringement.  However, in certain situations, the patentee may not have suffered any damage or the damage suffered by the patentee was de minimus.  For example, the [...]

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Submit New Evidence in Appeal from USPTO

You file a patent application. You go through a couple of rounds with the examiner but are unsuccesful in obtaining a patent grant. You appeal to the Board of Patent Appeals and Interferences (“BPAI”) arguing that the examiner is incorrect. At this point, you’ve gone through a lot but there is still more you can [...]

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Liability From Third Party False Marking

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. . Patent false marking has become an increasingly important issue for patentees.  The typical false marking situation begins with a product manufacturer falsely marking its “own” product with an expired patent [...]

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Patent Ownership Issues Involving Your Ex-Spouse

Problems may arise when a patent is invented by two or more parties without addressing the issues of control or ownership of the patent.  The issue is that each of the inventors can exploit the patent without sharing any profits with the other inventors.  Also, any one of the inventors can dedicate the patent to [...]

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Trade Secret Exception to Section 16600

California has a strong public policy that allows employees to change jobs, seek employment, or otherwise practice their trade or skill.  This policy is embodied in Business and Professions Code Section 16600 (“Section 16600”).  Under Section 16600, all contracts that restrain an employee’s ability to work are void unless the contract is based on a [...]

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Dangers of Strategic Partnerships

To be liable for patent infringement, a “single” entity must sell a product or perform all of the steps of a claim in a patent. If “two” different parties provide different components or different steps of the patented product or method, then there is no liability unless one party control or directs the other party. [...]

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Solution for Dealing with “Unrelated” Prior Art

During examination of a patent, an examiner searches a number of databases in search of “analogous” prior art references which either disclose the same or is sufficiently close to the invention so that the examiner can make a determination of patentability of the invention.  At times, a reference cited by the USPTO may appear to [...]

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Liability for False Patent Marking

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. The benefit of marking a product with a patent number is that damages accrue upon infringement and not upon actual notice of the patent.  However, if the product is incorrectly marked [...]

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Assignments of Inventions by Former Employees

Departing employees pose a problem for former employers.  These employees may have been on the verge of discovering a new patentable product, formula, etc. during employment with the former employer.  When they depart, the information acquired during research and development by the employee belongs to the former employer and should not benefit competitors or others.  [...]

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