Should you protect your idea with a patent or trade secret?
Have you come up with a brilliant idea or invention that you want to protect? As an innovator, it’s crucial to understand the different options for securing your intellectual property. Two common types of intellectual property for protecting your idea our patents and trade secrets. But how do you decide which intellectual property is the […]
How to use patents to make money?
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 rights Market your invention as patent pending […]
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 […]
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, […]
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 […]
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 […]
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 […]
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 […]
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 […]
Abstract ideas require something more for patent protection
Under U.S. patent laws, Section 101 states 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 therefor, subject to the conditions and requirements of this title.” Judicially, the courts have limited the breadth of Section 101 by […]
Best uses for design patents
Design patents protect ornamental features. The scope of protection is defined by what is shown in the drawings. In contrast, utility patents protect functional features. The scope of protection is defined by the claims. This distinction is simple to state but the ramifications are significant and sometimes confusing. Inventors will sometimes suggest that we protect […]
Can a confidentiality agreement protect me like a patent application?
Good question. The bottom line is that a contract (i.e., confidentiality agreement or non-disclosure agreement) and a patent application protect your interests in different ways. Hence, the recommended course of action is to do both (1) file a patent application, and (2) have the investors and licensees execute a confidentiality agreement to protect yourself. If […]
What is a continuation patent application?
A continuation application is a refiling of a parent application that allows a patent applicant to pursue claims similar to the parent application. For example, the claims in the continuation application can: seek broader patent protection compared to the parent application; and reinforce any weakness in the claims of the parent application (i..e, go after […]
Misconceptions of Provisional Patent Applications
After an inventor conceives of an invention, an application seeking patent protection may be filed with the United States Patent and Trademark Office. The first or initial patent application may either be a provisional patent application or nonprovisional patent application. The provisional patent application is described as a lower-cost option compared to the non-provisional patent […]