Patent Preparation and Prosecution

The Power of Continuation Practice

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…

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5 Strategies for Valuable Patents

Over the years, we’ve seen what works and does not work for companies who are trying to develop a valuable patent portfolio, meaning one that actually enhances their market share.  We recently published a list of 5 key strategies that we have seen successful companies use to do just that.  If you would like a…

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This is the Time to Get Creative

During times of crisis, innovation tends to rise because unique problems call for unique solutions. In addition, if you are currently not working, you have some additional time to engage in creative problem solving. If you think you have come up with something unique, you may want to consider filing a provisional patent application. A…

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Design Patents Versus Utility Patents

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…

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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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