Risks and benefits of securing software patent protection
In the past few years software patent protection have 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
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 […]
Beware of marketing an invention before filing a patent application
If you want you want to seek patent protection for your invention, the invention should NEVER be marketed before filing a patent application. Why do I use such strong language? I will lay out my reasons below. Technically, under U.S. patent laws, inventors can publicly market their ideas and inventions for up to one year […]
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 in 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 […]
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 […]
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 […]
Continuation patent application and related divisional and continuation in part
Continuation, divisional and continuation-in-part (CIP) applications are related to the filing of the prior filed patent application by a claim of priority. The prior filed patent application may be referred to as the parent or base application. The continuation, divisional and CIP application may be referred to as the child application. The simplified definition for […]
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 or non provisional patent application. The provisional patent application is described as a lower cost option compared to the non-provisional patent […]