The filing of a continuing patent application (i.e., continuation, divisional or continuation in part application) may have significant benefits for the patent owner. For example, these continuing applications may be used to secure patent protection for previously unexamined subject matter (i.e., non-elected inventions) or seek broader patent protection for what has already … [Read more...]
How to invalidate a patent based on a restriction requirement
I. Basics of a restriction requirement In a restriction requirement, an examiner on your case is (1) indicating that the claim set has claims that are directed to different inventions and (2) requiring you to choose one of the inventions for examination. The choice is generally simple in that you select the commercial embodiment of the invention or the most likely … [Read more...]
Combine Claim Elements to Avoid Infringement
Claim drafting is one of the harder aspects of preparing a patent application. The reason is that the patent attorney must balance broad claim langauge and avoiding the prior art. A broad claim is desireable because competitors will have difficulty designing around your patent, should one issue. However, broader claims are also subject to rejection as being so … [Read more...]
Can I Copy My Competitor’s Product? (Design Patent)
Basis for new product line Companies may base their existing and future product lines on new products produced by their competitors. However, businesses must be careful not to infringe upon rights of others when doing so. For example, your competitor may have rights in the utilitarian features (e.g., runs faster, stays cooler, etc.) through a utility patent or the ornamental … [Read more...]
Penalty 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. 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 Pending" or "Patented" together with the patent … [Read more...]
Reducing Scope of Doctrine of Equivalents Via Ensnarement Defense
As previously discussed in “Avoiding Patent Infringement,” the claims define the metes and bounds of patent protection afforded under a patent. The claims can be infringed either literally which means that the alleged infringer practiced the claimed invention without any deviation. If the alleged infringer practiced a variation of the claimed invention, then liability for … [Read more...]