Patent

A patent opinion is a comprehensive analysis of an inventor or business entity’s position with respect to the patent landscape. These are prepared by counsel utilizing their experience in intellectual property law. There are four types of opinions commonly prepared by patent attorneys: freedom to operate opinions, infringement opinions, patentability opinions, and validity opinions. Freedom to Operate opinions determine whether a product or process would likely infringe the valid and enforceable rights of a third party. These opinions are helpful at the beginning of technology development, prior to investing significant funds, in identifying the risks associated with development of a particular project. Infringement opinions determine whether an accused device, process, or design of another infringes upon a client’s patent. Such an opinion is helpful prior to engaging in the time consuming and costly process of litigation.

Patentability opinions occur prior to filing a patent application and help determine whether the invention in question satisfies the conditions for patentability. Validity opinions determine the validity and enforceability of a patent. Such opinions arise either when a company is accused of patent infringement or when a company seeks to acquire the rights to a patent. Obtaining an opinion as to the invalidity of a patent may help provide a defense against willful infringement. On the other hand, failure to obtain a non-infringement opinion may serve as evidence of intent to induce infringement. ELO’s patent attorneys and agents have extensive experience preparing a wide array of patent opinions. Contact us for additional information or to schedule a consultation.

Patent and Technology licensing involves the granting of permission by a licensor –i.e. the patent owner– to a licensee –i.e. an interested party– to make, use, sell or offer for sale their patented invention.

In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a patent license has its own special set of issues. For example, a patent license must address the sharing and development of technology and technical expertise during the term of the license agreement. It is critical for the licensing agreement to specify whether the license includes access to related know-how and show-how; the procedures for the handling of proprietary information exchanged during the relationship; and the ownership of and future licensing interests in the event further technology is developed by one or both of the parties during the course of the relationship.

A patent license must also address the proper marking of the product utilizing the licensed invention –as per patent law–, as well as identify the party responsible for such proper marking. Distinctive marking puts potential infringers on notice that the licensed invention is protected. Conversely, mismarking – i.e. the marking of an invention that is not protected under the patent laws – is unlawful.

ELO’s patent practice has extensive experience with a wide array of patent licensing services. Contact us for additional information or to schedule a consultation today.

As is the case with most creative endeavors, innovation often sires imitation. A patent grants their owner what is known as a “limited monopoly” by the government –i.e., the exclusive right to exclude others from making, using, selling, offering for sale or importing the patented invention. Typically, a party wishing to practice a patented invention must enter a licensing or purchase agreement with the patent owner in order to secure the right to do so; otherwise, they risk liability for infringement.

On the other hand, a patent owner may sometimes overestimate the scope of protection granted by their patent and allege infringement against a non-infringer.

Although it is good practice to resolve these issues without going to court in either instance, in the event patent infringement litigation becomes necessary, ELO zealously represents the interests of the client, to the fullest extent. ELO puts clients’ interests at the forefront in every aspect, aiming to achieve the best results for both the short and long term, at a reasonable expense.

There are several forms of remedies available to a patent owner who has successfully proven patent infringement. Such relief can include an injunction, protection from future infringement, compensation for past infringement, certain costs of litigation, and –in exceptional cases– attorney’s fees and treble damages.

The basic remedy for past infringement is the award of damages (35 U.S.C. § 284). While the law provides no maximum damages, it does provide a minimum, commensurate to the infringer’s gain from using the invention. Compensatory damages are designed to replace what the inventor has lost, and may cover reasonable royalties, or interest awards. The court may also increase damages up to three times –i.e

Alternative relief is available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States. The ITC may exclude from import any products that infringe a valid U.S. patent and cause injury to a domestic business. However, no compensation for past infringement or attorney’s fees is available in an ITC proceeding.

ELO strives to help our clients enforce their IP rights, while still remaining mindful of their overall business objectives. Contact us for additional information or to schedule a consultation.

Reissue and reexamination proceedings are an indispensable tool to correct and confirm the patentability of claims. These proceedings have gained in popularity in recent years for a number of reasons, including a U.S. Supreme Court opinion establishing a new obviousness criterion –see KSR v. Teleflex, 550 U.S. 398 (U.S. 2007).

A patentee may apply for a reissue patent when a patent is defective in certain aspects, although the nature of the changes that can be made by reissue are rather limited. Ex parte reexamination allows anyone –i.e. patent owners or third parties– to inform the USPTO about newly discovered prior art issues that might affect a patent’s validity. Inter partes reexamination is also available for patents filed after a specific date. Both ex parte and inter partes reexamination begin with a request for reexamination. The reexamination process can be a useful way for third parties to limit infringement risks. They may also benefit from the potential advantages that an administrative forum may bring, over the federal courts. These proceedings also reduce the cost and time usually required for procedures in the federal courts.

These proceedings are important aides, or even alternatives to litigation, and may better position a client’s patent portfolio.

ELO has the expertise to advise our clients on the advantages of post-grant strategies and to prosecute such actions, whether as enforcement efforts or defensively. Contact us for additional information or to schedule a consultation.

The America Invents Act (AIA) created three new proceedings for reviewing a patent after issuance before the USPTO’s Patent Trial and Appeal Board (PTAB); namely, these are the inter parties review (IPR), the covered business method (CBM), and the post grant review (PGR).

In many infringement cases in federal court, a strategy of filing a concurrent proceeding before the PTAB to challenge the validity of a patent may be employed. Alternatively, filing an IPR or CBM is often a cost-effective way to avoid patent infringement litigation in federal court. Contact us for additional information or to schedule a consultation.

Design patents are useful in protecting the non-functional ornamental” design” of a product. The USPTO defines the design of an object to be the visual characteristics or aspects displayed by said object.

A design patent may be directed to ornamental configuration, surface decoration, or both. To qualify for a design patent, the ornamental shape must be new in the sense that no identical design exists, and the device must satisfy certain ornamental standards. It must also be unobvious on the basis of any previously existing design or combination of designs, when viewed through the eyes of a hypothetical designer skilled in the art. Design patents cannot be obtained for ornamental features that are not visible when the product is in use.

In many circumstances, an inventor may obtain a design patent in addition to a utility patent for the same invention if the standards for each patent category are satisfied.

A design patent gives the owner the right to prevent others from making, using, or selling a product that so resembles the patented product that an ordinary observer might purchase the infringing article, thinking it was the patented product.

Comparison of a patented design against a design accused of infringement involves satisfying the “Ordinary Observer” test. This test was first discussed by the U.S. Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871), in a case involving an ornamental design for silverware handles, holding:

If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

In the case of Egyptian Goddess Inc. vs. Swisa, Inc. 543 F. 3d 665 (Fed. Cir. 2008) (en banc) the court rejected earlier case law which had increased the burden for establishing design patent infringement. As a result, the Federal Circuit has put real teeth back into the enforcement of design patents

An industrial design patent can also be obtained in other countries. For instance, in Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In Europe, one needs to only pay an official fee and meet some formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain). For the member states of WIPO, registration is afforded by application to WIPO and examination by designated member states in accordance with the Geneva Act of the Hague Agreement.

ELO strives to best counsel our clients as to the prosecution and protection of design patents. Contact us for additional information or to schedule a consultation.