The Business of Patents

Some Key Reasons to Conduct a Patentability Search

When we first meet with a client who is interested in getting a patent, we ask whether they have conducted a patentability search and whether they wish to do so before incurring the expense of preparing a patent application. Many are reluctant to do so because they think they "know" the market for...

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Dangers of Discussing New Inventions at Industry Meetings or Conferences

Companies often want to discuss some of their latest innovations at industry conferences to establish their technical prominence and build their brand. Inventors who are academics often want to describe their work to their peers to develop their reputations in their chosen fields. While such activities are commonplace, they need to be coordinated...

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Pitfalls of Patent Cases Involving "Paradigm" or "Representative" Patents and Claims

Every patent claim in every patent is its own invention and stands on its own.  An accused infringer is liable for patent infringement if it infringes at least one patent claim in one asserted patent.  Some patent cases involve large numbers of patents and/or large numbers of asserted claims.  Patent holders are...

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Monetizing Your Patents – The Dangers of Declaratory Judgment Jurisdiction

Now you have your shiny, new issued patent, and you want to go forth and profit from it.  To do that, you need to let all of those “infringers” (okay, “potential licensees”) know that you have a patent and that they should pay up. Not so fast.  Are you prepared to be...

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The America Invents Act: This Isn't Your Father's On-Sale Bar

With the implementation of the America Invents Act (AIA), the United States went from a first to invent to a first inventor to file system of determining priority of patent rights. However, that was not all that changed with the implementation of the AIA. The AIA includes some significant changes to the on-sale...

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