Archive for the ‘Advanced Patent Issues’ Category
If you are an inventor interested in protecting your idea outside the United States or mitigating foreign imports from China that impact your market share & profit margins, then my number 1 suggestion is to ask yourself this question: How ambitious are your commercial expansion goals outside the United States? Once you pose this question, it helps formulate a strategy for foreign filings, since you could choose to target ONE country or multiple nations in the initial application. This of course causes some anxiety for inventors since it can be an overwhelming thought. However, there is a simple way to approach this dilemma: I suggest filing the initial patent in the United States since this automatically protects you from foreign imports, including those from China. The inventor then has a full 12 months to consider additional countries that he may wish to file patent protection for his idea or product. Your patent attorney can help you with this selection process [
Startups and entrepreneurs both chuckled and nodded gravely when John Oliver used his comedic hour on “Last Week Tonight” to satirize Intellectual Property and the growing threat of Patent Trolls, warning that “arriving on the set of Shark Tank without a patent is like turning up to America’s Next Top Model without knowing how to smize or booty tooch!” However, he reserved the bulk of his biting humor for the one issue that keeps Inventors up at night: Patent Trolls. These unsavory characters, said Oliver, typically don’t invent anything or sell anything of value. They simply exist to buy patents and make their money threatening lawsuits in what many call the ultimate “shakedown.” “Calling them trolls is a little misleading: At least trolls actually do something: They control bridge access for goats and ask people fun riddles.” Oliver recognized the massive problem this posed to entrepreneurs across America stating that at least 3000 out of 4,700 lawsuits
I got some fantastic news last night from the organizers of TEDx: They have finally published my recent TEDx Talk on YouTube that had one critical, important message: Launching Your Idea Full Throttle Is The Only Option. It was a deeply personal journey for me because it focused on key milestones in my life that changed my trajectory as a patent attorney forever and allowed me to meet some of America’s most prolific and innovative inventors. Many of them, just like myself, started out with humble beginnings before making their mark on this nation’s entrepreneurial landscape. I hope you enjoy the presentation and would sincerely appreciate it if you could share with friends, family, colleagues and any aspiring inventors. Sincerely,
Excitement is building for Prof. John Rizvi, Esq., TEDX talk at West Broward High School on Thursday, November 10th. This will be his first presentation to the independently operated group in Florida and will focus on valuable lessons for inventors learned during his 20 year journey through patent law. Prof. Rizvi will discuss inventor themes that also feature prominently in his upcoming book entitled, Escaping the Gray: When Launching Your Idea Full Throttle is the Only Option, which is fast nearing publication. If you would like to attend the event, please find attendance details on The Patent Professor site which outline scheduling and costs. We hope to see you there!
I Heard it from the Horses Mouth – Attorney Michael Jakes Speaks on the Bilski Case Regarding Patentability of Business Methods and Processes
Awaiting my red-eye flight back home to Fort Lauderdale, Florida, after attending a patenting symposium in San Francisco. I feel privileged to have had an opportunity to hear attorney Michael Jakes and his take on the Bilski case before the Supreme Court on the patentability of business methods. For the non-patent attorneys out there, the Supreme Court recently heard oral arguments on the patentability of business methods and processes and Michael Jakes is the attorney that filed the brief seeking certiori and argued before the Supreme Court on behalf of Bilski. A summary of the procedural history and background of the Bilski case is available on Wikipedia and you can link to it from here.
It is vitally important not to publicly disclose your idea--and in fact not to disclose it except under absolute necessity--before filing for a patent. The USPTO can, and certainly will, reject a patent application for an idea already in the public eye.
As of 01 November 2007, new rules are set to govern Florida patent applications, as well as applications from all U.S. states. Specifically, the USPTO calls for no more than two continuation applications plus one request for continued examination (RCE). Previously there were no limits. On the one hand, this limits inventors’ ability to argue its case with a U.S. patent examiner. On the other hand, such limitations mean applications have a foreseeable ending. This gives the inventor a patent faster if the application is approved or more quickly opens the door to other applicants if it is rejected. An additional change is that patent applications can have no more than 25 claims, with only five allowable as independent claims. If more than 25 claims are presented, applicants must file and examination support document (ESD). Originally, the USPTO wanted no more than 10 claims and every patent application to provide an ESD; this is their compromise. For more information [&helli
An important Patent Reform Bill (S.1145) is under consideration in the Senate, and it carries with it serious implications for independent entrepreneurs and small businesses. Topping my list of concerns: Those in the patent pending stage would be required to publish their patent applications, which could reveal trade secrets to others in various stages with their own applications. The bill calls for a reduction of damages against infringers, which makes infringement more alluring to the ethically challenged. It requires all applicants to submit a search and patentability analysis, which significantly increases costs. In an article at IBLS.com, fellow Attorney Gerry Elman of Elman Technology Law, P.C. reports that there is a very good chance the bill will not pass. However, for the sake of all entrepreneurial inventors and small businesses, a call to your senators would further ensure the bill’s rejection.
Can getting a single letter of the alphabet wrong in an issued patent spell disaster when it comes to litigating against infringers? Unless the mistake is seen as being a minor typographical error that can be corrected by filing a certificate of correction, the answer is a resounding yes. Hats off to Peter Zura of The 271 Patent Blog for his post on Central Admixure Pharmacy Services v. Advanced Cardiac Solutions (06-13-07). In this case, Central Admixture Pharmacy Services sued Advanced Cardiac Solutions for patent infringment relating to a chemical solution used duriing heart surgery. A certificate of correction was sought on the patent and was issued by the patent office to replace all instances of the word "osmolarity" with the word "osmolality". You might be thinking that all the certificate does is change the "R" in osmolaRity with a "L" so that it reads osmolaLity. Well, yes, BUT…. Whether
Hats off to Mark Reichel of The Daily Dose of IP Blog for his post regarding the U.S. Patent Office discontinuing its annual top ten patent holder list. In the Patent Office press release, the PTO announced that it will no longer be publishing its annual ranking of the top 10 organizations obtaining the most U.S. patents in the preceeding year.According to the press release, it is abandoning the list of top ten patent holders and "emphasizing quality over qualtity by discouraging any perception that we believe more is better." About time. I always wondered why the patent office focused so much attention on their "top ten list" as all it really did was provide those few "repeat customers" lucky enough to be in the "top ten" with bragging rights on their level of innovation. I wonder if the patent office’s departure from this "strictly by the numbers" approach is the beginning of a new trend in the intellect
The United States Patent and Trademark Office has launched a community review project according to an article in the Washington Post. The peer review project will post patent applications to the internet and invite comments on prior art submissions from the internet community. The complete article can be found here and is reproduced below for your convenience: By Alan Sipres Washington Post Staff Writer Monday, March 5, 2007; 3:34 PM The government is about to start opening up the process of reviewing patents to the modern font of wisdom: the Internet. The Patent and Trademark Office is starting a pilot project that will not only post patent applications on the Web and invite comments but also use a community rating system designed to push the most respected comments to the top of the file, for serious consideration by the agency’s examiners. A first for the federal government, the system resembles the one used by Wikipedia, the popular user-created online encyclo
Todd Mayover, in-house intellectual property counsel for a medical device company in Florida, has an interesting post at the IPCounsel Blog entitled Intellectual Property Mediation: “Regardless of the situation, without suggesting mediation, it will never happen. The obvious risk is that other party(s) may say no, but this would have no effect on the actual case at hand. At least the parties would know where they stand.” That being said, it is important to note that the risks of not mediating vary greatly depending upon which milestones have already passed in the litigation. For example, if the bulk of expert deposition costs happen to rest on your client’s shoulders and these depositions have not yet occurred, it makes sense to consider mediation as an option prior to these costs accruing. It is my experience that when cases do settle via mediation, one or more parties will invariably lament that they “should have mediated soonerR
In Breckenridge Pharmaceutical, Inc. v. Metabolite Laboratories, Inc. et al. (Fed. Cir. 2006), the Federal Circuit held that a patent owner’s dealings with a Florida licensee was sufficient to give the court jurisdiction over the patent owner. Beckenridge filed suit against Metabolite and PamLab in the United Stated District Court for the Southern District of Florida for a declaratory judgment of non-infringement of the patent and alleging state law claims of tortious interference with contract and unfair competition. The Federal Circuit held that Florida’s long-arm statute authorized personal jurisdiction over Metabolite and that such jurisdiction would comport with due process: In sum, our case law has held as follows: where a defendant has sent cease and desist letters into a forum state that primarily involve a legal dispute unrelated to the patent at issue, such as an injunction obtained for misappropriation of trade secrets, the exercise of person
On January 3, 2006, the United States Patent & Trademark Office said it may limit the ability of a company to file continuing applications that allow it to revise or modify its existing patent claims, according to an article at MSNBC.com. The reasoning behind this new rule concerns the growing backlog of patent applications that are waiting to be reviewed by patent examiner’s at the United States Patent & Trademark Office. Those opposed to these new limitations warn that biotechnology companies in particular rely on continuing applications for products than can take more than a decade to reach the market, and limiting these would curtail competition and the number of claims that could be made, resulting in overbroad and insufficiently protected patents. This would have a direct impact here, as Florida’s booming biotechnology industry, which includes such corporations as the Scripps Institute, would be forced to limit how they prepare patent ap