Patent Preparation and Prosecution

Patenting New Methods of Treatment Using Known Compositions

One question that comes up from time to time is whether you can get apatent on a new method of treatment (sometimes called a new “indication”) using an existing chemical composition.  The answer is “possibly.” If a chemical composition is known, you cannot obtain a patent to the chemical composition itself.  The US Court of…

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Why Do I Need All These Details to Get a Patent?

Lately we have been working some inventors who are newer to the patent process, and they are often concerned about providing details about the embodiments of their inventions. Their concern is that when we ask for this information, it means we are narrowing the scope of their invention.   However, that is not the case. We…

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It Takes a (Coordinated) Team Effort

Patentable inventions do not arise in a vacuum.  They usually arise in the context of a sales team trying to land an account, often with time constraints and the added pressure of trying to outflank a competitor.  The customer is telling the sales people what it wants, the technical team is trying to figure out…

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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 with patent…

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Employees Who Assign Patent Rights to Employers May Have Standing to Challenge Omission as Inventors

Employers do not automatically obtain legal ownership of the patent rights to their employees’ inventions simply because of the employer-employee relationship.  Thus, it is a standard practice to require employees to assign their patent rights to their employers in an employment agreement.  This practice raises the following question: Can an employee (or ex-employee) file an…

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Heading Off Obviousness Rejections

Sometimes the best defense is a good offense. Clients often assume that they are entitled to a patent because no single piece of prior art shows all of their invention.  In that case the invention may be novel. However, it does not mean that it is non-obvious.  To qualify for a U.S. patent, an invention…

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Patenting Improved Articles That Use Proprietary 3rd Party Materials

Under U.S. law, improved articles of manufacture may be patentable if they are novel and non-obvious. Sometimes, an inventor comes up with a new article that is faster, stronger, more flexible, more rigid, lighter, etc. by using new materials to make the article. If the article has never been made with those materials, and if…

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Have Your Cake and Eat It Too – Obtaining Broad Claims That Define a Device or Apparatus Based on How it Works

Pros and Cons of Apparatus and Method of Use Claims Devices or apparatuses can often be protected by using two kinds of patent claims: apparatus and method of use claims. Each approach has its benefits and drawbacks. In general, apparatus claims expand the class of direct infringers relative to method of use claims but are…

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Are You and Your Patent Attorney Challenging Each Other?

Since we have been living with managed medical care for some time, many people have become accustomed to the idea that they need to act as their own advocate when dealing with medical professionals.  Thus, we have become more comfortable with questioning our doctor’s opinions and the bases for them and with the idea that…

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Expediting Patent Examination

The U.S. Patent & Trademark Office (PTO) has had a variety of procedures to enable applicants to speed up the examination of their applications.  However, they’ve generally been limited in some fashion or had burdensome requirements.  That has changed with the introduction of “Track One Prioritized Examination.” With this program, applicants can get a final…

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