Patent

In its broadest terms, a patent opinion encompasses a comprehensive analysis of an inventor’s –or business entity’s– position, in terms of how their creative endeavor relates to the patent landscape. There are four main types of patent opinions commonly prepared by patent attorneys. These are based on subject matter [1] patentability, [2] freedom to operate, [3] patent validity, and the possibility of [4] infringement.

[1] Patentability opinions are carried out prior to filing a patent application. Before significant funds are expended on a patent application, these opinions can help determine the likelihood of whether the invention in question satisfies the conditions for patentability.

[2] A Freedom to Operate (FTO) opinion is a legal assessment to determine whether a product or process is likely to infringe the valid and enforceable rights of a third party. These opinions are particularly useful at the development stages of a project, before significant funds are invested, in order to identify risks associated with future commercialization of the project; i.e. possibly infringing iterations.

[3] Validity opinions assess the validity and enforceability of a patent. Such an opinion comes into play either when (1) a company is accused of patent infringement or when (2) a company seeks to acquire the rights to a patent from another. If an accusation were to come up down the road, obtaining an opinion as to the validity of a patent now may help provide a defense against willful infringement later on. On the other hand, failure to obtain an opinion of non-infringement may serve as evidence of intent to induce infringement.

[4] Infringement opinions assess whether a third party’s accused device, process, or design infringes upon a client’s patent. This can be helpful prior to engaging in the time consuming and costly process of litigation.

ELO’s patent practice has extensive experience with a wide array of patent prosecution services – contact the office directly for additional information or to schedule a consultation today!

Patent licensing involves the negotiating and granting of permission by a licensor –i.e. the owner of a patent– to a licensee –i.e. an interested party– to make, use, sell or offer for sale the subject matter over which the licensor has ownership rights –i.e. their invention.

In addition to general licensing concepts, such as specifying the license grant and the consideration provided in exchange for the grant –i.e. payment–, a patent license usually includes its own particular set of issues. Besides a term for the agreement, a patent license must also address the future sharing and development of technology and technical expertise during such a term. It is critical that it specify: whether the license includes access to related know-how and show-how; the procedures for the handling of proprietary information exchanged during the relationship; and the future ownership and licensing interests in the event further technology is developed by one or both of the parties during the course of the agreement.

A proper licensing agreement must also involve the proper marking of any product that will be utilizing the licensed invention –as per patent law–, as well as specify the party responsible for ensuring the proper marking. This is necessary, because distinctive marking puts potential infringers on notice that the licensed invention is protected, and the lack thereof could impact possible remedies available from an infringement action. Naturally, mismarking –i.e. the fraudulent marking of an invention, which is not protected under the patent laws, as being protected– is unlawful.

ELO’s patent practice has extensive experience with a wide array of patent prosecution services –contact the office directly for additional information or to schedule a consultation today!

Innovation breeds imitation – in the world of creative endeavors this is simply, and often, an inevitable reality.

A patent is an instrument through which, in exchange for disclosure to the public, the U.S. government grants a “limited monopoly” to an inventor –i.e. the exclusive right to exclude others from making, using, selling, offering for sale, or importing unlicensed iterations of the patented invention into the U.S. A party who wishes to commercialize another’s patented invention in any form must enter a licensing agreement with the patent owner in order to secure the right to do so, or risk liability for infringement. On the other hand, patent owners can sometimes overestimate the scope of protection granted by their patent and may allege infringement against a non-infringer.

It is generally more cost-effective to resolve these issues amiably, without going to court. However, in the event patent infringement litigation becomes necessary, ELO zealously represents the interests of the client to the fullest extent. ELO puts clients’ interests at the forefront in every aspect, aiming to achieve the best results for both the short and long term, at a reasonable expense.

There are several forms of available remedies to an aggrieved patent owner and/or licensee that may stem from litigation. These may include injunctive relief, compensation for past infringement, measures to address future infringement, certain litigation costs, and in some cases even attorney fees (35 U.S.C. § 285) and/or statutory damages.

The basic relief for past infringement is the award of damages. While the law does not provide for maximum damages, it does provide a minimum, commensurate to the infringer’s gain from using the invention. Compensatory damages are designed to replace what the inventor has lost, and may cover reasonable royalties, or awards of interest. The court may also increase damages up to three times the amount decided by a judge or jury (35 U.S.C. § 284) –i.e. statutory damages in tort— for the willful, wanton infringement of a patent.

ELO recommends clients seek counsel immediately whenever they become aware of possible infringement. Certain considerations are important whether or not clients originally intend to go the litigation route, as no recovery may be had for any infringement that has occurred more than six (6) years prior to the filing of a complaint or counterclaim (35 U.S.C. § 286).

Alternative relief may also be available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States, and therefore beyond the reach of U.S. courts. Although compensation is not available through the Comisssion, the ITC may ban from import any products that infringe a valid patent.

ELO strives to help clients enforce their IP rights while still remaining mindful of their overall business objectives –contact the office directly for additional information or to schedule a consultation today!

The reissue and reexamination procedures at the USPTO are valuable tools for businesses who want to either strengthen their patent portfolio or weaken that of their competitors.

Reissue allows patent owners to correct errors in their valid patents, while reexamination allows anyone to test the validity of a patent. Neither procedure affects the original patent until either a reissue patent is granted or a reexamination certificate is issued. These proceedings have gained in popularity in recent years for a number of reasons, including a U.S. Supreme Court opinion (see KSR International Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007)) redefining the guidelines as to the obviousness criterion (35 U.S.C. § 103(a)).

Patent owners may apply for a reissue patent when a patent is defective in certain aspects, although the nature of the changes that can be made are limited. Ex parte reexamination (EPRx) allows anyone –i.e. patent owners or third parties– to inform the USPTO about newly discovered prior art issues that might affect a patent’s validity (35 U.S.C. § 302). Inter partes reexamination (IPRx) is also available for patents filed after a specific date.

Both ex parte and inter partes reexaminations begin with a request for reexamination to the USPTO. The reexamination process can be a useful way for third parties to limit infringement risks. They may also benefit from the potential advantages that an administrative forum may bring, over the federal courts. These proceedings also reduce the cost and time usually required for procedures/litigation in the federal courts.

These proceedings can be important aides to a client’s litigation strategy, or even alternatives to litigation altogether – sometimes even serving to better position a client’s patent portfolio.

ELO strives to best advise clients on the advantages of post-grant strategies and to prosecute such actions, whether as enforcement efforts or defensively – contact the office directly for additional information or to schedule a consultation today!

The America Invents Act (AIA) created three new proceedings for reviewing a patent after issuance before the USPTO’s Patent Trial and Appeal Board (PTAB). These are the inter parties review (IPR), the covered business method (CBM), and the post grant review (PGR).

It is not an uncommon litigation strategy, in many infringement cases pending in federal court, for such concurrent proceedings to be filed before the PTAB in order to challenge the validity of the patent in question. This can often serve to clear up issues of patent validity before a case even gets to court. Only third-party individuals (and not patent owners themselves) may file a petition for the USPTO to institute post-grant review of a patent, as a request to cancel as unpatentable one (1) or more claims of the patent in question (35 U.S.C. § 321).

Conversely, filing an IPR or CBM is often a cost-effective way to avoid patent infringement litigation in federal court.

ELO strives to best advise clients on the advantages of post-grant strategies and to prosecute such actions, whether as enforcement efforts or defensively – contact the office directly for additional information or to schedule a consultation today!

Design patents are intended to protect any “new, original, and ornamental design for an article of manufacture” (35 U.S.C. § 171), i.e. protecting the non-functional ornamental design of a product. The USPTO defines the design of an object to be the visual characteristics or aspects displayed by said object.

The USPTO publishes a thorough and informative Design Patent application guide, found at the following link: https://www.uspto.gov/patents/basics/apply/design-patent

A design patent may be directed to ornamental configuration, surface decoration, or both. To qualify for a design patent, the ornamental shape must be new in the sense that no identical design exists, and the device must satisfy certain ornamental standards. Said design must also be unobvious on the basis of any previously existing design or combination of designs, when viewed through the eyes of a hypothetical designer skilled in the art. A key aspect is that design patents cannot be obtained for ornamental features that are not visible when the product is in use.

An invention may sometimes be eligible for both, a design patent and a utility patent, if the different standards for each patent category can be satisfied.

An industrial design patent can also be obtained in other countries. For instance, in Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In Europe, one needs to only pay an official fee and meet some formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain). For the member states of WIPO, registration is afforded by application to WIPO and examination by designated member states in accordance with the Geneva Act of the Hague Agreement.

ELO strives to best counsel clients as to the prosecution and protection of design patents while still remaining mindful of their overall business objectives –contact the office directly for additional information or to schedule a consultation today!