Provisional Patent Applications
Michael A. Mann of Nexsen Pruet
This article reviews provisional patent applications and how they compare to a regular patent application.
Make Money By Exposing Secrets: Learn How the Simple Act of Filing a Patent Application Can Make or Break Your Business
Justin D. Swindells of Jenkens & Gilchrist
A recent law allows businesses to create more value simply by filing a patent application. The 18-month rule deprives patent applications of their secrecy 18 months after they are filed, but in exchange, the patent applicant can recover damages from an infringer starting from the date of publication. The bargain is somewhat more complex, but you can improve your bottom line by maximizing the benefits of the 18-month rule and avoiding its pitfalls.
Strategies for Patent Protection
J. Michael Martinez de Andino of McGuireWoods LLP
This paper summarizes the importance of patent protection and several strategies to keep in mind when attempting to pursue patent protection.
Correct Inventorship Prevents Patent Application Headaches
Robert Hulse of Fenwick & West LLP
Although companies race to the U.S. Patent and Trademark
Office to build their patent portfolios, technically, a
company is not granted a patent. In the United States, only
the inventor or inventors may apply for a patent for their
invention.
GATT Significantly Alters U.S. Patent Laws
G. Lloyd Knight of Pillsbury Winthrop Shaw Pittman LLP
Any patent issued on an application filed on or after June 8, 1995 will have a term which begins on the date the patent issues and ends 20 years from the earliest U.S. filing date claimed by the patent. Therefore, any patent issuing on a divisional, continuation or continuation-in-part (CIP) application filed after June 7, 1995 will have its 20 year term measured from the U.S. filing date of the parent application or any earlier grandparent, etc. filing date.
Publishing: How Your Patent Rights Could Perish
Lana M. Knedlik
Traditionally, the old adage "publish or perish" has governed a person's success in academia. Nowadays, most colleges have a new mantra when scientific inventions are involved. As universities continue to partner with businesses to commercialize their discoveries by patenting them, the new academic motto is perhaps "publish and perish." Under the Patent Act, an invention described in a "printed publication" more than one year before the filing date of a patent application will bar a patent on the invention.
Business Method Patents and Pre-Grant Publication--The Increasing Complexity of Patent Strategies
Arter & Hadden LLP
Looks at changing regulations in business methods patents and pre-grant publication.
Patent Trends in Nanotechnology
M. Henry Heines of Townsend and Townsend and Crew LLP
The publication of patent applications by the U.S. Patent and Trademark Office (USPTO) provides a means of following new developments in a field of interest. One such field of interest is nanotechnology, and reviewing some of the published applications in this field gives some insight into opportunities for further exploration and future patent protection.
Standards Wars: Rights, Responsibilities, and Strategies
Steven J. Henry,Edward J. Russavage and Liza Vertinsky of Wolf, Greenfield & Sacks, P.C.
Participation in standard-setting organizations (SSOs) raises issues with grave implications for many companies. SSOs promote interoperability in technology systems through the adoption of technical standards. Conflicting demands for standardization, free dispersion of information, and the need to protect proprietary technologies, have left technology companies caught in the middle of industry standard "wars."
Cost-Effective Patenting
Robert D. Fish of Rutan & Tucker, LLP
Ever hear your patent attorney talk about cost-effectiveness? Not likely. Cost effectiveness is great for the clients, but not so good for the bottom line of a law office. The stakes are enormous. You probably noticed that the cost of protecting intellectual property has risen dramatically in the last several years.
Can a Patent be Pending for Too Long?
M. Henry Heines of Townsend and Townsend and Crew LLP
As the economic power of patents continues to grow, time-honored beliefs in the virtues of the patent system and the rights of patent holders have come under increasing scrutiny, and accusations of abuses of the patent system are increasingly prevalent. The latest example appears in a recent decision by the Court of Appeals for the Federal Circuit, the nation's leading patent court.
Provisional Application For Patent: What It Is and How to Use It
US Patent and Trademark Office
This guide provides an inventor with basic information about filing a provisional application for a patent.
Often Asked Questions About Patenting
M. H. Sears Law Firm, Chtd.
The information provided below is not legal advice. It is of a general nature and does not apply to sets of .
Offering to Sell Your "Sliced Bread": A Potential Bar to Patentability
Lana M. Knedlik
I've worked with a lot of inventors, ranging from sophisticated universities to guys who just like to tinker with stuff in their garage. In nearly every case, the inventor considers his or her invention to be the greatest thing since sliced bread. Naturally, before filing a patent application, the inventor will often try to generate commercial interest in the invention.
U.S. Patent Overview
Susan E. McHale of Coudert Brothers LLP
Overview Of Intellectual Property Protecting the product of one's mental labor can be in the form of patents, tra.
Use Care in Drafting Provisional Applications
M. Henry Heines of Townsend and Townsend and Crew LLP
Many inventors file provisional applications as a first stage in applying for a patent. Provisional applications can be filed without claims, so the inventor does not have to decide which features will distinguish the invention over the "prior art," and since provisionals are not examined, they can be filed without the usual formatting of a conventional patent application.
Put It in Writing: Records of Technological and Business Developments Can Come in Handy in A Patent Infringement Suit, Even If The Company Keeping The Records has No Intention of Filing for A Patent
Michael J. Sacksteder of Fenwick & West LLP
The otherwise unsupported word of even a large number of witnesses is usually insufficient to invalidate an issued patent based on prior sale, public use or invention of the product or method claimed in the patent. Something more tangible is needed, and this requirement can create frustrating scenarios for accused infringers.
Patent Problems? The Solution IsÃÂ
Peter J. Toren of Sidley Austin LLP
Patents for business methods and software are under attack by a variety of critics.
Inherency In The Prior Art; The Rules Are Becoming Clearer
Jeffrey B. Safran of Potter Anderson & Corroon LLP
When is your invention "known" from a prior art reference thus rendering your invention unpatentable? If a prior art reference teaches your invention but does not explicitly recite each and every element, must the presence of the unrecited element, the inherent element, be apparent from reading the reference?
Business Methods Patents and Electronic Commerce
Alan M. Gahtan of Lexpert
At one time, patents could not easily be obtained for software-related inventions. Clever practitioners quickly learned to draft the claims so as not to claim protection for a computer program as such. After a few years of this game, and some important court decisions, the objections to the registration of software-related patents in the U.S. eventually disappeared.
The Brothers Chudnovsky
Joseph Diamante of Pennie & Edmonds LLP
By all accounts, David and Gregory Chudnovsky are brilliant number theorists. Their quest to calculate pi to the greatest number of decimal places was warmly chronicled in a long New Yorker profile in 1992 titled "The Mountains of Pi." Three years later, New York Magazine ranked the Chudnovskys among the 100 smartest New Yorkers. And two years after that, Esquire included the brothers (as a unit) in a grouping of "The 100 Best People in the World." The brothers have all sorts of inventions worthy of both patent protection and commercialization. There is only one problem. They are not fans of the patent system and are reluctant capitalists.
Patent Invalidated
Dykema Gossett PLLC
The United States Court of Appeals for the Federal Circuit recently held in Great Northern v. Henry Molded Products.
The U.S. Supreme Court's On-Sale Bar Decision in Pfaff v. Wells Electronics, Inc.
Marc J. Pernick of Morrison & Foerster LLP
This article discusses the United States Supreme Court's decision in Pfaff v. Wells Electronics, Inc. relating to patent litigation and prosecution.
Grace Periods and the European and International Patent Law: Analysis of Key Legal and Socio-Economic Aspects by Joseph Straus
F. Scott Kieff
This monograph is one of the studies commissioned by the European Patent Organization pursuant to a mandate issued at the Intergovernmental Conference of the member states of the European Patent Organization held from June 24- 25, 1999, on the reform of the patent system in Europe to examine whether European patent law should provide a so-called "pre-filing grace period."
Effective Patent Asset Management
Edward J. Kelly of Ropes & Gray LLP
Edward J. Kelly, a partner at Ropes & Gray, led an informative discussion focusing on both patent asset management and the relationship between inside and outside counsel. Together with Marc Foodman, Chief Patent Counsel at Sun Microsystems, Inc., they focused the lively discussion on the following topics: IP Department infrastructure, patent asset management, settlement strategies and coordinating litigation.
An Introduction to Patents
James D. Jacobs of Baker & McKenzie LLP
This article concerns protecting intellectual property, particularly as it applies to the information technology and the communications industry.
Ignore U.S. Research Record Keeping Principles at the Peril of Your U.S. Patent Portfolio
Carl G. Love of Pillsbury Winthrop Shaw Pittman LLP
After January 1, 1996, the non-U.S. WTO applicant for U.S. patent protection will have the advantage of being able.
Destroying Patent Rights by Making an "Offer for Sale"
M. Henry Heines of Townsend and Townsend and Crew LLP
Patent infringement lawsuits are generally brought against parties that manufacture, use or sell, the patented invention without the patent owner's permission. Patent infringement can also occur when someone other has simply offered the invention for sale without the patent owner's permission. Sometimes in fact it takes very little to show that an offer has been made.
Watch Out for Statutory Bars - Don't Lose Your Patent Rights Before You Even File the Application
Brian M. Hoffman of Fenwick & West LLP
Many people are aware of the need to keep patentable inventions secret. However, few people other than patent lawyers understand the reasons for the secrecy or are familiar with all of the actions that can cause an inventor to unintentionally lose the right to obtain a patent. As a result, some inventors unknowingly engage in behaviors that impair their patent rights.
Supreme Court Rules on the On-Sale Bar
Kevin M. Hinman of Dykema Gossett PLLC
Watch out when you or your company offers a new or improved product for sale -you may lose the chance to protect th.
Blocking Competitors by PCT Continuation Applications
G. Lloyd Knight of Pillsbury Winthrop Shaw Pittman LLP
Thank you for the considerable interest generated by the article "Usurping Competitor's Patent Position By Little.
A Powerful Patent StrategyÂ
Provisionally
John T. McNelis of Fenwick & West LLP
A provisional application is part of a powerful patent strategy, but only if the provisional application is prepared properly. if it does not completely describe the invention, it will do more harm than good.
GATT, WIPO Herald Changes to U.S. Patent Law
Craig P. Opperman of Cooley Godward Kronish LLP
This article summarizes the most important patent-related provisions of GATT implementation legislation, as well as those of the recent U.S.-Japan agreement, and then explores the practical implications of the impending changes to the U.S. patent system.
Inter Partes Reexamination Starting In 2003--A Potentially Useful Approach To Challenging Invalid Biotechnology Patents
John W. Behringer of Fitzpatrick, Cella, Harper & Scinto
Patents form the foundation of most biotechnology companies and are crucial for their economic growth and advancement. However, an up-and-coming company may well come across competitors' patents that could block its future progress. Such blocking patents can cover the exact technology sought to be marketed by the company, or merely block an important subset of its activities. Either way, such patents can cause tremendous problems for a young biotech company at a time when it does not have much money, and additional financing is hard to come by.
One-Click or Two? The War Over Business Method Patents
Kenneth A. Liebman of Faegre & Benson LLP
This article addresses the issue of business method patents and its effect on the e-commerce industry.
Understanding "Prior Art"
M. Henry Heines of Townsend and Townsend and Crew LLP
"Prior art" is the mass of pre-existing knowledge that an invention must distinguish over to qualify for a patent. Distinguishing over "prior art" often leads to creative ways to express or define an invention, but the threshold question is: What actually constitutes prior art?
The Patenting Process
Karen Dana Oster of Chernoff, Vilhauer, McClung & Stenzel, LLP
Anticipated Chronology of Patent Procurement Definitions, Explanations, and Descriptions of Each Event Client Act.
Attorney Diligence in Patent Application Preparation Will Require Special Attention After January 1, 1996
Carl G. Love of Pillsbury Winthrop Shaw Pittman LLP
The GATT amendments to the U.S. Patent Code will permit evidence of overseas inventive activities after January 1,.