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 their invention….
Read MorePatentability
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 MoreWith 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 bar which…
Read MoreThis has not been a good year for software patents in the United States. Since the Supreme Court issued its decision in June in Alice Corp. v. CLS Bank, 134 S.Ct. 2347 (2014), the Patent Office has been aggressively rejecting software patent applications and the courts have been invalidating issued software patents for lack of…
Read MoreUnder 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…
Read MorePros 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…
Read MoreIn a long-awaited decision in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., the U.S. Supreme Court held on June 13, 2013 that naturally-occurring, isolated genes are not patentable because they do not constitute patentable subject matter under the Patent Statute. With this decision, another chapter has been written in the…
Read MoreWell, we thought so, but now we are not so sure. It seems that the much more is required than the business method itself in order to obtain a patent. The cases suggest that, at a minimum, novel computing features are required. The Federal Circuit’s most recent pronouncement on the issue seems to change little…
Read MoreIn one of our earlier posts we discussed how to determine whether a given patent application or patent is subject to the First Inventor to File Provisions of the America Invents Act (AIA). In particular, we discussed the complexities involved in determining whether an application filed after March 16, 2013 was subject to the First…
Read MoreAs we discussed last month, the “first inventor to file” provisions of the America Invents Act (AIA) go into effect next month on March 16. The USPTO issued its final rules for implementing the AIA last week, and a copy of the rules can be found here. Figuring out whether the AIA or pre-AIA law governs…
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