For over two hundred years, technological innovation and the patent system have walked hand in hand. By giving inventors the ability to protect their inventions, the patent system incentivizes innovative activity, the fruits of which improve our material conditions and way of life.
At the Law Offices of Howard Eichenblatt, we provide exceptional patent consultation and prosecution services to our clients. Contact us today to discuss your patent needs.
Searches
There are two types of searches that all businesses should consider before commercializing their technology.
Freedom to Operate Search
A Freedom to Operate Search is an investigation and examination of active patents to determine whether the prospective technology would infringe active patent claims, and if so, how to modify the technology in order to avoid infringement.
Prior Art Search
A Prior Art Search is a search and examination of existing references or “prior art”. If the novel features of a technology are not found in the prior art, it would be prudent to protect the novel features by claiming them in a patent application.
Patents
There are two types of patents, and each protects a separate type of innovation.
Utility Patents
Utility patents protect the functional aspects of an invention, such as the arrangement and interaction of its components, the method by which it is used or manufactured, or the system in which it operates.
Design Patents
While aesthetic properties may assist in the demand for a given product, aesthetic properties are not considered “functional” but rather “ornamental”, and are better served by Design patents.
Applications
There are four types of Utility Patents Applications, each with its own use in patent prosecution.
Provisional Applications
Provisional applications will never mature into patents, nor are they examined; they simply provide a filing date for the application. They are less expensive than a non-provisional application, and provide the application a year to gauge market interest and further develop the technology before filing the non-provisional application.
Non-provisional Applications
Non-provisional applications must include a specification describing the invention, a set of drawings illustrating it, and a set of claims identifying the scope of protection. When the claims are examined by a USPTO Examiner, they are compared to the prior art. Only novel, non-obvious claims are allowable.
Continuation Applications
Continuation Applications, including Continuation-in-Part Applications, preserve the filing date of the non-provisional application, but provide an opportunity to expand the claim scope.
Office Actions
There are numerous notices, objections, and rejections that can occur during patent prosecution.
Subject Matter Based Rejections
Subject matter based rejections can be overcome by arguing that the Examiner failed to apply one of the Alice steps, that the claims are more substantial than merely gathering, analyzing, and outputting data, or the that claims recite a particular solution rather than a mere outcome using computers.
Novelty Based Rejections
Novelty based rejections can be overcome by identifying claim elements not found in the prior art.
Obviousness Based Rejections
Obviousness based rejections can be overcome by arguing that the Examiner ignored a claim limitation, the prior art did not provide a reasonable motivation to combine or modify the prior art references, or the prior art taught away from the solution.
Notice of Allowance
If a Notice of Allowance is sent then the Examiner has no objections or rejections and has decided to issue the patent application.
Infringement
The two types of infringement are direct infringement, in which the accused infringer practices each element of a patent claim, and indirect infringement, in which a party does not directly infringe but contributes or induces another party to directly infringe.
Generally, patent infringement requires each element of the infringed claim to be present in the accused work. But the Doctrine of Equivalents holds that infringement may still occur if there are elements substantially the same in function and means as the missing elements.
Even if infringement occurs, it is possible to invalidate the patent by finding prior art that would have anticipated or rendered obvious the infringed claims. Patent claims might also be invalid if they on subject-matter grounds.
Remedies for infringement may include monetary damages and/or injunctive relief. Monetary damages may include compensatory damages based on lost profits or “reasonable royalties”, enhanced damages based on willful infringement, and attorney’s fees.