Patents can help businesses make money through four different strategies. However, the pitfalls of each strategy should be understood so that you don't waste your money.So, how do you use patents to make money? The four main strategies for making money with patents are:Commercialize your patent rightsMarket your invention as patent pending or patentedSell your patent … [Read more...]
Pros and cons of filing a continuation-in-part application
Bottom line The pro for filing a continuation-in-part application is lower downstream costs. The cons are a shortened patent term and also your prior arguments and statements made in the parent application/patent can and will be used against you to narrowly interpret the claim language in a patent maturing from the subsequent continuation-in-part application. To discuss … [Read more...]
Risks and benefits of securing software patent protection
In the past few years software patent protection has come under intense scrutiny by the courts and the United States Patent and Trademark Office (USPTO). In that short time, it has become commonplace to see software inventions characterized as an abstract idea and thus not eligible for patent protection under 35 U.S.C. 101. As such, for software patent protection, one must … [Read more...]
Strategy to overcome patentable subject matter rejection
A brief history of patentable subject matter rejections Ever since Alice/Mayo, a number of decisions have been rendered regarding patentable subject matter or 35 USC 101. In other words, whether a claim in a patent or patent application is eligible for patent protection under Section 101. Each new case adds to the body of patentable subject matter case law to help the … [Read more...]
File a patent application before telling others about the invention
Inventors often ask if they can tell others about the invention before filing a patent application. They want to get feedback from others (i.e., friends, investors, licensees, customers) to see if their is good enough to warrant the high cost to hire a patent attorney. After all, if no one willing buy the product, then why waste money on legal fees. I would feel the same way … [Read more...]
Broad patents spread a wide net but more likely to be invalid
In Abbvie v. Janssen (Fed. Cir. 2014), the claims of the patents at issue defined the claimed invention by its function, rather than by its structure. To put it in layman’s terms, it claimed a sports car going 0 to 60 mph within X seconds instead of claiming a V-12 engine having certain technical features that enabled the car to reach 0-60 in so many seconds. Functional … [Read more...]
Abstract idea hard to define for patent eligibility purposes
Under U.S. patent laws, an invention must be directed to a statutory category that is eligible for patent protection. These categories include a process, a machine, a manufacture or a composition of matter. (35 USC § 101). If the invention does not fall within one of these four enumerated categories, that is, if an application claims an abstract idea, a natural phenomenon, or a … [Read more...]
Dangers of 1 yr grace period under first-inventor-to-file system
In 2013, the United States transitioned from a first-to-invent system to a first-inventor-to-file system under the America Invents Act. A basic difference between the two systems is that the first-to-invent system focuses on the inventor’s date of conception, whereas the first-inventor-to-file system primarily relies on the filing date of the patent application to determine who … [Read more...]