PATENT ATTORNEY TAKEAWAY: If claimed limitations are taught by a combination of the cited art, it is very hard to overcome the obviousness standard of “obvious to combine.” Instead of formulating an obvious to combine argument, it may be easier to amend the claims. I do not agree with the courts analysis that if each [...]
PATENT ATTORNEY TAKE-A-WAYS: 1) When drafting appeals to the USPTO board, it is very important to take the time to address each and every limitation that could possibly be argued at a later point. Therefore, patent attorneys should not view appeals or pre-appeal briefs as extensions of office actions that are going to be reviewed [...]
An information disclosure statement (IDS) refers to a submission of known references that are considered material/relevant to an inventor’s patent application to the patent office. During the process of obtaining a patent, there is a duty for attorneys, inventors, assignees to disclose references such as other patents or articles that may be material or relevant [...]
Office Actions are formal documents prepared and communicated from a patent examiner at the United States Patent and Trademark Office. Office Actions are common in patent prosecution to obtain a patent, and typically during patent prosecution at least 2-3 Office Actions will be issued before a patent application is granted as a patent. These linked [...]
In United States patent law under the patent act, a granted patent gives the patent owner the right to exclude others from making, using, selling, importing and exporting what is “distinctly claimed” in the patent. Although there is typically uncertainty regarding the proper interpretation of claimed limitations in a patent, the claims provide for public [...]
The main difference between the two is that in a license the person granting permission (Licensor) retains an interest in the property being licensed, whereas in an assignment the assignor transfers his rights in the property being assigned. In intellectual property, a license may grant a licensee to use a patent, trademark, software, etc. without [...]
1) Monetary Reasons – Many people file patents to monetarily capitalize one their innovations. By filing and being granted a patent, inventors can gain a monopoly over a technology for twenty years. Therefore, if your technology is revolutionary than any other inventions that build of your claimed invention will require use of a license of [...]
AUSTIN PATENT ATTORNEY OVERVIEW: This is an interesting case that holds that a claimed “range” limitation may not be met even if cited art discloses a wider range. The full opinion can be found here. http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1091.pdf OSRAM SYLVANIA appealed the district courts grant of summary judgment of invalidity of the independent claims in U.S. Patent [...]
A question I frequently get from prospective clients and inventors is “Why should I patent my invention?” Essentially a patent gives a patent owner the right to exclude others from making, using, selling, offering to sell, import or export there patented product throughout the United States. If you disclose your invention and it becomes in [...]
AUSTIN PATENT ATTORNEY OVERVIEW: This case discusses issues with terminal disclaimers. Specifically, this case discusses whether a terminal disclaimer can be withdrawn during reissue proceedings under 35 USC § 251 that were in effect upon issuance of a patent. The full opinion may be found here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1086.pdf For procedural history, Yamazaki filed a terminal disclaimer [...]