The Business of Patents
The Trademark Office has required foreign-domiciled applicants to be represented by a U.S.-licensed attorney since 2019. As of this summer, the patent side has caught up. The USPTO published a final rule on March 20, 2026, requiring foreign-domiciled applicants and patent owners to be represented by a practitioner registered and in good standing with the […]
Read more →Patenting inventions that involve web-based interactions between a business and customers or other third parties can be particularly challenging because of a problem called “divided infringement.” The problem is that in order to distinguish the prior art, you often have to identify system components or method steps in your claims which are the responsibility of multiple […]
Read more →Inventors typically come to us with an idea of what they think is new about their invention. Usually, they have not done a prior art search, and as a result, are sometimes overly optimistic about the breadth of a patent they might ultimately obtain. Once we do a search, the scope of what is “new” – and […]
Read more →Lately, we have had several inquiries about whether it is possible to patent a new way of using an existing product. The answer is “yes”. This type of patent is typically called a “method of use” patent.” A method of use patent has claims that recite a sequence of steps, and in some cases, the […]
Read more →I want to talk to you today about how to get technical help for your business without losing your patent rights. I want to start out with a quiz. Let’s say you have an employee and that employee does some technical work and ends up developing a patentable invention. Who owns the rights that patentable […]
Read more →One very powerful aspect of US patent law is its continuation practice. The patent statute allows applicants to file an additional patent application based on an earlier still-pending application and pursue different claims as long as those claims are supported by the first application. The key is that in order to file a continuation there […]
Read more →Clients often ask about the differences between design and utility patents. The phrase “design patent” confuses some people because in everyday usage, the term “design” frequently connotes the structure, function, and properties of a product. Not so with design patents. Design patents protect the “ornamental appearance” of an article of manufacture. Utility patents protect the […]
Read more →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 […]
Read more →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 […]
Read more →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 […]
Read more →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 […]
Read more →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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