Tag Archives: invention

Patent Claim Construction: SCOTUS says – Do Not Disturb!

Do Not DisturbSociety at large is becoming very familiar with patents from shows like The Shark Tank.  Investors repeatedly want to know if your new company has a product that is protected.  Meaning, can you stop someone else in the marketplace from making and selling a product like yours?  A patent does not give you the right to make your product, it gives you the right to stop others from making, using, or selling the invention claimed in your patent.  Did you notice the distinction between your product and what is claimed in the patent?

It is a bedrock principle of patent law that the claims of a patent define the invention.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  This is difficult to understand since you are claiming the boundaries of an intangible object, intellectual property.  Try this comparison.  When you purchase a piece of real property (land), the boundaries are defined by the metes and bounds of that property.  Want to know where to put a fence?  Is this your property or the city’s?  Check the survey and the metes and bounds.  That is exactly what the claims of a patent do.  They define the outer boundaries of your invention.  It is not merely a picture of your product, it is the boundary of what your invention covers.

As part of any patent litigation, the judge will construct claims that are in dispute by both parties.  Parties will often have differing interpretations of what a word or phrase in a patent claim means, which has far reaching implications to the liability of the alleged infringer.  The judge will decide at a Markman hearing what the word/phrase in the claim means and that will be the definition used by the court and potentially the jury in determining whether the other party infringed the claims of your patent.

In a recent decision, the Supreme Court of the United States held in Teva Pharmaceuticals USA, Inc., et al. v. Sandoz, Inc., et al., No. 13-854 (January 20, 2015) that when the district court uses extrinsic evidence during claim construction (information outside of the patent specification itself), the appellate court must use a “clear error” standard of review.  Extrinsic evidence could be dictionaries, experts in the industry.   If the district court only looks at the intrinsic evidence, information disclosed in the patent itself, the appellate court should continue to use a de novo standard of review.

The rationale is based on the premise that when the district court looks at evidence outside evidence for claim construction, the court is making a factual finding regarding the dispute.  Based on this factual finding, the judge is interpreting the claim term.  As a result, the appellate court must look at the factual finding under a clear error standard of review.  The Supreme Court stated that when only the information contained in the patent itself is used to determine the meaning of a patent claim term, it is a legal determination and should be reviewed under a de novo standard.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

LinkedIn  ||  Twitter

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

Leave a comment

Filed under Business Litigation, Intellectual Property, Patent Prosecution

Want to File a Patent? Here are your options.

Patent Trademark Copyright IP InventionSo you want to file a patent.  There are few things you should consider in developing your strategy for protecting your Intellectual Property.

As an inventor, you should consider the benefits of a patent search and the preparation of a patentability opinion to determine what inventions and publications are publicly available.  This helps to prepare your patent application and also lets the inventor know about other patents they could be infringing with their own invention.  This is critical information to determine during the infancy of a new business.  Although a patent search and opinion is not required under patent law, it is often helpful pre-filing.  It is important to emphasize that any patent references, publications, or materials relating to the applicant’s invention must be disclosed to the United States Patent and Trademark Office (USPTO), or any patent rights could be forfeited during prosecution, or later invalidated through the courts.

Utility Patents:  Provisional & Non-Provisional

As it relates to a utility patent, which is any invention of a new and useful process, machine, manufacture, or composition of matter, there a few options when filing for patent protection in the United States.  There are two primary mechanisms to apply for a patent, either a provisional patent application or a non-provisional patent application.  A provisional application does not have as stringent filing requirements, but it must include and properly describe the invention and what it covers.  Once submitted to the USPTO, the provisional patent application will establish your filing date (which is key for the new “First to File” system, now in place since the passage of the America Invents Act) but cannot on it’s own mature into a patent.

A provisional patent application is used as a placeholder to establish your filing date but literally sits in the Patent office and will not be examined by the USPTO for patentability.  However, a provisional patent application stays pending at the USPTO for only one year.  The applicant must file a non-provisional patent application (with a separate filing fee) claiming priority to the provisional patent application in order to establish the earlier priority date within that one year.   This is a hard deadline (referred to as a statutory bar deadline) with the USPTO that cannot be extended, for any reason.

If you decide not to file a non-provisional patent within a year of the date you filed you provisional patent application, you can still file a non-provisional patent application.  You may still be able to obtain a patent, but you will not be entitled to the benefit of the earlier date that of the previously filed provisional patent application.  As a result, if someone else invents something similar to your invention, or someone discloses the invention publicly, you may be forever precluded from securing patent rights in the United States, and possibly internationally.  Therefore, establishing the earliest filing date is key and should be highly guarded!

Alternatively, you can always bypass the provisional patent application all together and file a non-provisional patent application.  It really depends on the business needs and the development of the invention.

There is also the cost issue.  The government filing fees vary depending on the size of the applicant but assuming the applicant has a business with 500 or fewer employees and has not assigned the rights to a company with over 500 employees (small entity), a provisional filing fee is only $130, whereas the non-provisional filing fee is $730.

In addition to the cost that is paid to the USPTO, there is also a legal fee for preparing the patent, whether a provisional or non-provisional application.  Without knowing the specifics about the invention and its complexity, it is often difficult to estimate the legal fees for preparing a patent application.  Typically, a provisional patent application will run $3,500-$4,500 and a non-provisional will be $5,500 and up.  It really depends on the complexity of the invention and the amount of disclosure required in the application.  Also, formal drawings, if required, are usually $100 per figure.  The legal fees are for the preparation and filing of the patent application.  Any assignments, responses to Office actions, and other post filing work would be a separate legal fee and may require a corresponding government filing fee.

Design Patents

Design patents protect the visual ornamental aspects in or applied to an article of manufacture.  Unlike a utility application, a design patent protects the appearance of the invention.  The design may focus on the shape, pattern or the article, or the combination of both.  However, a design patent does not focus on the function of the invention like a utility patent, only the ornamental design.  The government filing fee for a small entity is $380 for a design patent application; the legal fee to prepare and file the design patent application is, on average, $1500.  Given the visual importance of the ornamental features of the invention, design applications typically include at least six drawings.

Myth:  The Poor Man’s Patent

It is important to dispel a common belief of inventors referred to as the Poor Man’s Patent.  Some inventors think they can sit down, write about what their invention is and how it works, put it in a self-addressed stamped envelope, and mail it to themselves through the U.S. Postal Service.  The hope is that in the future, the inventor can show when they first conceived of the invention by using the unopened envelope date stamped by the Postal Service.  The Poor Man’s Patent, as it’s commonly called, is a farce.  This in no way will help you establish an invention conception date.  Moreover, given the current First to File system, the first inventor to file their application with the USPTO gets the earliest filing date.  If you have an innovative and novel invention, contact a patent attorney to properly protect your rights.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

LinkedIn  ||  Twitter

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

1 Comment

Filed under Business Litigation, Corporate Law, Intellectual Property, IP Litigation, Patent Prosecution

Buckle Up for the Patent Prosecution Highway!

I-95An inventor filing a patent in a participating country may be eligible to take part of the Patent Prosecution Highway (PPH).  The United States Patent & Trademark Office (USPTO) implemented the PPH in 2006 with a number of other patent offices in an effort to reduce duplication efforts and to accelerate the examination process.  As part of the PPH, the USPTO uses the search and examination results from other intellectual property offices in their own examination.  Notably, in 2010 the USPTO eliminated the fee to participate in the PPH program.

If an applicant files a patent application in a participating country (first filing office), they may be able to accelerate their United States application (second filing office) once a claim is allowed by the first filing office.  To request entry in the PPH, the claims in both offices must be substantially similar, the applicant must provide copies of allowable claims, submit copies of all actions from first filing office with allowable claims, submit an information disclosure sheet and copies of documents, and file a request for PPH participation with the USPTO and any English translations, if necessary.

Once a PPH request is granted, examination typically occurs within two to three months.  This provides for accelerated examination by the USPTO, which is constantly trying to reduce their backlog of patent applications.  The USPTO is currently utilizing the PPH in all technical areas.  Historically, the PPH has resulted in double the allowance rate of non-PPH users.

The PPH provides lower examination costs to applicants and allows businesses to quickly build an intellectual property portfolio.  For a detailed explanation of the PPH, visit the PPH website.  If you have additional questions about the PPH and participating countries, contact the patent attorneys at Assouline & Berlowe, P.A.

Greg M. Popowitz

Registered Patent Attorney

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

LinkedIn  ||  Twitter

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

Leave a comment

Filed under Business Litigation, Intellectual Property, Patent Prosecution