Ramifications of a Cease and Desist Letter
After patent issuance, the patentee has enforceable rights in that he/she can sue another entity for damages and/or an injunction to stop that entity from making, using, selling, offering for sale or...
View ArticleClaiming Variations Limited to the Written Description
Once a patent application is filed, it receives a priority date for all that it discloses and nothing more. The inventor can claim anything within the disclosure as being a part his or her invention....
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Be explicit to satisfy the written description requirement
Written Description Requirement To get a patent, an inventor must satisfy the written description requirement. This is accomplished through the preparation of a patent application which describes the...
View ArticleShould I hire a patent agent instead of a patent attorney to save fees?
In an effort of full disclosure, I am a patent attorney. There are two significant deficiencies in working with a patent agent. No attorney client privilege. Patent agents cannot give and do not have...
View ArticlePatent marking shows whether product is covered under a patent
In the world of patents, the stakes can be very high where awards can reach into the hundreds of millions of dollars and sometimes billions of dollars. When a license is given, royalties are paid on...
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Check inventions with a patent attorney before discarding it as obvious
Check inventions with a patent attorney before discarding it as obvious In determining patentability of a claim which defines the scope of your invention, two major hurdles must be overcome,...
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Use of intrinsic record guides patent claim construction
Use of intrinsic record guides patent claim construction The scope of patent protection for a patent is defined by claims which are located at the end of the patent. One of the difficulties in...
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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...
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Patent royalties not due for activities after patent expiration
Bottom line: Patent royalties based on activities after a licensed patent has expired is per se unlawful. Kimble v. Marvel (S. Ct. 2015). This rule is effective even if the parties did not know about...
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Written description requirement for writing a patent application
A patent application is a well-crafted document which has many different requirements for it to be effective. One of the requirements is the written description requirement. The Manual of Patent...
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S.Ct. raises standard for definiteness in patent cases
The claims in a patent are supposed to inform others about the scope of patent protection afforded under the patent so people know what the can and cannot be marketed regarding the patent. In...
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Best vehicle for broadening patent protection
Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications. In a broadening reissue patent...
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S.Ct. raises standard to reverse court’s claim construction
Bottom line: The importance of winning at the district court level for patent litigation has significantly increased due to a recent U.S. Supreme Court case, specifically, Teva Pharamceuticals USA,...
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Fickleness of patent litigation turns on a single letter in claim
Bottom line: The Federal Circuit construed the meaning of a phrase (i.e., a contact hole) which typically is construed to mean “one or more” to mean “two or more.” This case illustrates the fickleness...
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Software patents need to drill down to the core algorithms
Bottom line: Software patent specifications require disclosure of an algorithm for all means-plus-function limitations. Otherwise, the claim may be invalid for being indefinite. The problem may not...
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Some diagnostic tests are not eligible for patent protection
Bottom line: Although the following patent case relating to eligibility of patent protection is set within the medical diagnostic realm, it may potentially be applicable to other technological areas....
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Claim drafting tip: Focus on direct, not indirect infringement
Bottom line: The claims of a patent should, if possible, be specifically and separately directed to each one of several entities within a distribution chain such as the end user, supplier, component...
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Drafting tip: software applications and responses to office actions
Bottom line: Patent applications directed to software inventions should be written to disclose the result and the effect of the software, but more importantly, the mechanism of the result or effect of...
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Claim Drafting Tip: Avoid means plus function claims
Bottom line: A claim with a means plus function limitation may invalidate the claim if the claim and the specification are not properly drafted. As such, it may be prudent to avoid language that...
View ArticleProper uses of a means plus function limitation
The following case illustrates my propensity for limiting my use of what patent attorneys call the means plus function claim limitation. There are particular uses for means plus function limitations...
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