A provisional utility patent application is one of the most misunderstood tools of the patent system—at least by non-patent practitioners. From the layperson’s perspective, the provisional patent application is usually viewed as a cheap patent application. However, as discussed below, the provisional patent application is not cheap compared to the cost to prepare a … [Read more...]
Before filing a patent application
Before filing a patent application, among other activities, you must make sure that you own the patent rights, it is eligible for patent protection and also new and non-obvious. Browse related articles below.
Plager calls to overturn current patent eligibility analysis
The holding of Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2018) is similar to Electric Power Group, LLC v. Alstom (Fed. Cir. 2016). In these cases, the courts invalidated the patent as being directed to an abstract idea for claiming an end result and not the how to achieving it. In Interval Licensing LLC, the dissent’s opinion is much more interesting.He explains … [Read more...]
Patent application must enable FULL scope of claimed invention
Boston University's patent claim invalidated for failing to enable its full scope In Boston University v. Everlight Electronics (Fed. Cir. 2018), the Federal Circuit invalidated a patent claim for failing to enable the full scope of the claimed invention. In particular, the claim contemplated six (6) combinations based on two factors. The first factor had two options. The … [Read more...]
Components described as important can narrow scope of patent claims
Components, parts and aspects of a device (i.e., invention) which are described as important or necessary to the invention can be used to limit the scope of the patent. When preparing a patent application, the goal is to describe an invention so that the important or necessary parts are highlighted but not necessarily described as important or necessary. In this way, aspects … [Read more...]
Experimental use of invention jeopardizes validity of patent
By experimental use, I mean testing an invention. Conducting a test in public can jeopardize the resulting patent if a patent application was not filed before public testing started. The patent can be invalidated in at least two ways. First, the patent can be invalidated if an alleged infringer successfully argues that the public testing qualifies as a public use under 35 … [Read more...]
Berkheimer and its ramifications on the future of software patents
The Berkheimer holding has the potential to swing the pendulum favorably back for software patents. In particular, the patent allowance rates for software inventions could rise significantly from the low levels they are at now. The Berkheimer holding sounds innocuous but the ramifications are significant. In particular, Berkheimer stands for the proposition that patent … [Read more...]
Method of treatment is eligible for patent protection versus a diagnostic method
Although Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals (Fed. Cir. April 13, 2018) is in the field of medicine, it could be applicable to other fields as well because in a broad sense Vanda is dealing with a distinction between diagnosing a condition (ineligible) versus a method of treatment (eligible). For example, is a method of detecting an underground leak … [Read more...]
Implicit structure satisfies written description requirement
The written description requirement is stated in 35 U.S.C. 112 which recites that the “specification shall contain a written description of the invention.” The standard for the written description requirement is whether the disclosure or application reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter. A body of case law … [Read more...]