Difference Between Patentability Search Opinion and a Non-Infringement Opinion

I.  What Is The Difference Between Patentability Search, Opinion, And A Non-Infringement Opinion?

In a Patentability Opinion, a patent attorney provides his professional opinion as to whether your invention is Patentable. He will commission a search of patents and publications disclosed throughout the world and determine whether, in view of the existing public disclosures, your invention is patentable.

In a Non-Infringement Opinion, your patent attorney will provide his professional opinion as to whether your invention (even if patentable) may infringe on the patent rights of others. It is important to understand that these are too different assessments.  Here is why.

Even if your idea is patentable, you may still be prohibited from making/using/selling your patented invention!  How is this possible?  This can be understood with the following example:

  1. Inventor 1 invents and patents a chair. For the sake of this example, let’s assume the patent is valid and has not expired.

Later on, Inventor 2 invents an armrest for the chair.  Inventor would like to know if his armrest is patentable, so he commissions a patent search.  The patent search did not reveal any chairs with an armrest, so Inventor 2 properly concluded that his idea is patentable.  Inventor 2 files a patent application and the United States Patent and Trademark Offices grants him a patent!

Now, let’s update the facts in our example:

  1. Inventor 1 invents and patents a chair.
  2. Inventor 2 invents and patents a chair with an armrest.

Having a patent, Inventor 2 is finally ready to bring his invention to market! In the process of manufacturing the chairs with an armrest, Inventor 2 gets a Cease and Desist letter from Inventor 1, stating that, stating that Inventor 2’s chair with an armrest infringes on Inventor 1’s patent!  How is this possible?  After all… inventor 2 received a patent for his chair with an armrest!

To answer this question, it is important to understand that a patent right is only a right to exclude others from making/using/selling your patented invention. It is not an affirmative right to engage in the making/using/selling of your patented invention.  Why?  Well, going back to our example, in order for Inventor 2 to make his chair with an armrest, he must inherently first make a chair.. and the chair is patented by Inventor 1!

To resolve this issue, Inventor 1 and 2 may engage in a licensing deal wherein Inventor 1 licenses, for a fee, the rights for Inventor 2 to make a chair.  However, the licensing deal is completely voluntary, and Inventor 1 can simply refuse to allow inventor 2 to make a chair, thereby preventing inventor 2 from making a chair with an arm-rest!  Inventor 2 would then be forced to design a chair that does not infringe Inventor 1’s patent… which may be very difficult!

II.  Making Sure Your Invention Is Both Patentable And Does Not Infringe Any Third Party Patent Rights

STEP 1: THE PATENTABILITY OPINION

  1. First, conduct a patent search to see if your invention is patentable,
  2. You patent attorney will review the search results to determine if your invention is different from other patented inventions, and
  3. Based on the results, your patent attorney will determine if your invention is patentable.

STEP 2: PRELIMINARY NON-INFRINGEMENT ASSESSMENT

  1. The Patent Search will reveal prior patents that are similar to your invention.
  2. These prior patents may not disclose your invention completely, but contain portions of your invention.
  3. During your patent attorney’s review of the search results, he will ‘flag’ such patents.
  4. Upon your request, the patent attorney may then assess whether the portions of your invention that are covered in the patent present a potential infringement issue.
  5. If a potential infringement is detected, the patent attorney must then engage in an in-depth review.

STEP 3: IN-DEPTH NON-INFRINGEMENT OPINION

  1. The patent attorney will order the full-file history of the patent at issue.
  2. The patent attorney will spend time to review the full-file history, to see what representation and characterizations were made by the inventor during the examination process.
  3. The patent attorney will assess case-law to determine how these representations and characterizations may be interpreted by the Federal Courts in charge of determining patent infringement.
  4. The patent attorney will then apply the interpretation in assessing the scope of patent protection that may be available for the patent at issue.
  5. The patent attorney will then compare the scope of the patent protection with your invention and provide a non-infringement opinion.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Do I Need a Patent Search?

Most of us like to feel that we were the first to have conceived of our great idea.  Before investing the time and resources into applying for a patent, it is good to know if there are any other patents or publications disclosing something similar to your idea. Ultimately, this information will help you and your Patent Attorney decide if pursuing a patent is a good decision, or if designing around may be needed.  Please note – a patent search is not the same as a clearance search (see My Article about the differences).

Typically, the importance of filing a Provisional Patent outweighs the costs of conducting a professional Patent Search.  This is due to both relatively low costs of Provisional Patent filings and the time sensitive nature of Provisional Patent protection.

Think of it this way – if you only had, for example, $600 to spend, what would you prefer to get with that $600?

1. You can spend that money on filing for a provisional application for patent and gain legal priority to any potential patent rights for your innovation, as well as “Patent Pending” status on your innovation; or

2. You can spend that money to determine if your idea will be patentable in the long run.

For provisional patent applications, we recommend approach (A).  Firstly, provisional applications are never examined for patentability.  Rather, they are reviewed by the patent office for formalities, and then stamped with a priority date.  The longer you delay filing for provisional patent protection, the less likely you are to be the first one to file for patent protection on your innovation – and if you’re not the first inventor to file, you may lose your chances of getting your innovation patented.  As such, a patent search may only further delay and increase the expenses associated with filing provisional patent applications.  It’s not a bad idea to perform a quick ‘knock-out’ search on Google’s Patent Search tool – this will give you a good idea if anything similar to your idea has been patented or patent pending.

Formal, non-provisional patent applications, however, are more costly and resource intensive than provisional patent applications.  For that reason alone, it is usually wise to invest in a professionally conducted patent search prior to undertaking the expenses of non-provisional patent filing.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

When Should I Submit Patent Drawings?

The standard for submitting drawings in a provisional patent application is rather simple. Ask yourself, are these drawings necessary for “one of ordinary skill in the field of my invention” to understand what it is that I am trying to patent. If the answer is NO, then you don’t need drawings in a provisional at all. If the answer is YES, then you could submit ANY type of drawings – whether they are non-formal sketches, or expertly drafted figures.  What about when drawings ARE required for a formal patent application?

For the regular patent application that follows the provisional patent, there is a requirement for formal drawings. There are a number of requirements to which these drawings must adhere. You can look through the MPEP (manual of patent examining procedure) Section 608.02 for some of those requirements.

Lastly, if the drawings you submit with your regular (non-provisional) patent application don’t conform to the formal drawing requirements, you will NOT loose your priority date (so long as they were initially filed within a year). The patent office will give you a chance to correct your informal drawings. Here is the catch: If those drawings that you resubmit show some concept that was not understood from your provisional patent application, you may likely loose your priority date to those new concepts.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Patent on Newly Discovered Material

How would an entrepreneur go about patenting a newly discovered material? Say if they were to discover a room temperature superconductor, a discovery that would affect life as we know it.

The first question you must ask is whether this superconductor exists in nature, or whether you had to create a special environment to foster its existence. If you simply dug a hole into the earth and found a new superconductive material, that may not be patentable. However, if you combined known elements x, y, and z to create this superconductor, then nearly everything may be patentable.

For example, there may be some process that you went through to make this discovery – that process may be patentable. There may be some process you went through to have isolated this superconductor from other naturally occurring elements that naturally accompany this semiconductor – that process may be patentable. There may be some environment you have created to foster the discovery of this superconductor – that environment may be patentable.  Essentially, any man-made procedure, device, or system that led up to this discovery may be patentable – and any procedure, device, or system that results from this discovery may be patentable. If by combining elements x, y, and z, you discovered this superconductor, it may even been that you are entitled to a patent on the superconductor itself!

When dealing with matters so interesting, its always best to consult a patent attorney.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Intangible Assets

Worldwide, the total asset value of patents (just one type of intellectual asset) is estimated at $1 trillion. Intellectual asset licensing revenues in the United States alone increased from $15 billion in 1990 to $110 billion in 2000, and is expected to be $500 billion by 2015. Intuitively, intellectual asset protection is big business, but is it reserved for big business?

What’s the one word that comes to mind when you read Apple and Samsung in the same sentence? That word is more likely than not directly associated with another word: Patents. And although we’ve all had our share of speculative hearsay on the latest battle of the infamous “patent wars,” there are at least two undisputed facts that anyone can understand:: the expenses of patent protection can be in the millions of dollars, while the rewards from patent protection can be the billions.

Media’s portrayal of corporate giants and their astonishing successes (or failures) often lead the small business CEO to believe that the world of intellectual property (IP) is uncertain, unattainable, unnecessary, or, worse, reserved for big business – misconceptions this article hopes to dispel.

Big or small, nearly every business has a nucleus of intangible assets on which it relies to prosper in the face of capitalistic competition. In today’s economy, intangible assets, including IP, constitute nearly 80 percent of corporate value (up from 68% in 1995, 32% in 1985, and just 17% in 1975).

What can a early-stage or small business CEO learn from this statistic?  Don’t undervalue your company’s IP – start identifying, protecting, and leveraging your company’s IP portfolio now.  At an early stage, your intangible assets (for instance, the business model or prototype you’ve spent months developing) is one of the very few factors in determining your company’s value.

What’s more valuable than protecting your IP portfolio with perceived, intangible, value? The tangible protection from competition, misappropriation, or, more importantly, that big corporation waiting to put you out of business.  (With a patent, they’ll just buy you out.)  Moreover, the passage of the America-Invents-Act makes it critical to protect your IP as soon as you can afford it.  Thanks to companies like SmartUp, you can afford it now.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

How to Reduce Patent Fees by 75%

The newly enacted Patent Laws make patents more important to obtain and more enforceable to carry. Best of all, in the midst of big corporate world’s patent cold war, the new Patent Laws open a door to let startups and early-stage companies join the battlefield on even ground.  Here’s how.

The America-Invents-Act (AIA) created a first-to-file standard for awarding patent priority. In one sentence, this standard awards priority to an inventor who is first to file for patent on an invention (Inventor A) over any other inventor (Inventor B), even if Inventor B could prove that he came up with the invention before Inventor A filed for the patent.

What does this mean for you? You’re in a race to the patent office to protect your intellectual property.

The pros: A cleaner administrative process makes for a more enforceable patent system.

The cons: The inventor with the most money is most likely to be the one to file for patent first, thereby winning the priority to any patent rights the invention may have.

The equalizer:  In anticipation of this pitfall, the AIA reduces patent filing fees by 75% for inventors who qualify for Micro-Entity.

Do you qualify for micro-entity status? Well, if you have to ask…. you probably qualify!  Here are the requirements:

  1. You are an individual or small business (a small entity),
  2. Less than 4 filed patent applications (provisional don’t count),
  3. Your income is less than $150k a year (that’s three times the median household income for last year), and
  4. You don’t assign your patent rights to a non-micro entity.

Watch out for requirement #4.  If you end up licensing or assigning your patent application to a larger business, you may no longer qualify for this entity status. That may not mean that you’ll have to account for the difference on the fees you’ve already paid, but it may mean that any subsequent fees continue your patent examination will go up.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Defensive Patent Filings

As of March 2013, both in the United States and the EU, the first inventors to make their public disclosure to the patent office will win priority to the patent rights associated therewith.  This “first-to-file” patent system is designed to encourage companies in opening up their technology before a competitor does the same… the first company to the patent office with their technology get’s the upper-hand. Unfortunately, the system also awards those who can more readily allocate the funds to engage in the patent process.

In view of the new laws, the most secure approach, from the legal perspective, is to start engaging in the patent process before a competitor forces you into the process at much more substantial cost.  Take for example the following scenario:  A competitor files for patent on a technology. However, you’ve developed and have been using this technology long before the competitor’s patent filing… but how will the Patent Examiner ever discover your technology?

In fact, there is little to no chance that the Patent Examiner will be able to site your technology in rejecting your competitor’s patent filing if your technology hasn’t received much PR. In turn, the Examiner may grant your competitor a patent on the same technology you’ve been using for a while… and, all of a sudden, you’ve been dragged into a legal situation.

At this point, you have a few options – but none of them come cheap. For example, you can oppose the grant of the competitor’s patent or you can assert prior usage rights. Take the following pointer to avoid this scenario:

From a defensive standpoint, it’s good to file for patents for at least the reason of putting the patent office on notice of your technology. First, this serves to prioritize your spot in line for the patent rights. Second, since the patent office will now have your technology in their databases, you won’t have to rely as much on policing your own intellectual property by constantly monitoring and opposing competitor patent filings. In turn, this will save you substantial costs down the road.. and.. you may even add a few patents to your own portfolio.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

4 Important Crowdfunding Facts about Your Patent Rights on Kickstarter

 Here’s 4 Things to know about your Patent Rights on Crowdfunding Platforms such as Kickstarter.

#4 is what most people DON’T know, #3 is the most important to know.

1.  First Come, First Serve:  The US patent system will only reward a Patent on an idea or invention to the first inventor who files a patent application.  If you aren’t the first to file, you risk losing your patent rights!

2.  The Clock is Ticking: If you don’t file a U.S. Patent Application within 12 months of the date you first disclose or offer your invention for sale to the public, you lose your patent rights!  Even if you wait just a single month, you risk losing your patent rights to someone who files a patent application before you do!

3. File a Provisional Patent: It’s affordable and it’s the most essential piece of information you can take away from this letter.  A provisional application secures your priority date (your spot in line) to the patent rights while you raise funding through your crowdfunding campaign!  This helps ensure that no one will beat you the patent office.  Our platform (SmartUp) has made the provisional patenting process quick and easy for 100’s of crowdfunders across the nation

 4. Put the Public on Notice: If you don’t put the public on notice of your patent (or pending) rights, then you can’t collect any monetary reward from competitors who have infringed your patent rights under your radar!  To bring things to the digital era, recent changes to our patent laws allow for a Virtual Patent Marking.  Use the Patent Seal™ to meet the new virtual marking requirements for your crowd funding project.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

7 Facts about Patent Rights

Here’s 7 Things to know about Patent Rights – #4 is what most people DON’T know, #1 is the most important to know, and #7 reflects a recent change to our patent laws.

Our Patent laws have seen some fundamental changes with the recently enacted America Invents Act.  Whether you have a large patent portfolio already, or just an idea you want to protect, here are 7 basic things you should know:

1.       First Come, First Serve:  The US patent system will only award a Patent on an idea or invention to the first inventor who files a patent application.  If you aren’t the first to file, you risk losing your patent rights.

2.      The Clock is Ticking: If you don’t file a U.S. Patent Application within 12 months of public disclosure (such as sharing your idea with others) or within 12 months of offering your invention for sale to the public, you lose your patent rights.  Even still, the longer you wait, the greater the risk of someone else filing a patent application for the idea you came up with first. Important Note: Although the US gives you a 12 month “grace” period to file a patent application after your first public disclosure, most other countries in the world do not.  This means, in those countries, you will have lost your patent rights if you’ve made a public disclosure before filing the U.S. patent application.

3. Filing a Provisional Patent Is a Great Place To Start: It’s affordable and it’s an essential take away from these 7 facts.  A provisional application secures your priority date (your spot in line) to the patent rights while you develop your idea, market it, and raise funding.  This helps to ensure that no one will beat you the patent office.  Our platform has made the provisional patenting process quick, easy, and affordable for thousands of entrepreneurs and businesses across the nation.

4. Put the Public on Notice: Simply put, once you have a patent or patent pending status, tell everyone about it.  The traditional way to do this was to write your patent number on your product.  However, now this can be done virtually (See Fact 5).  Notice is crucial, because if you don’t provide notice of your patent (or pending) rights, then you aren’t entitled to monetary compensation from competitors who have been infringing your patent rights under your radar. 

5. Virtual Patent Marking Makes Things Easy: Recent updates to our patent laws allow for a “Virtual Patent Marking”.  This simply means that you can now put the public ‘on notice’ of your patent rights over the internet.  If done correctly, you satisfy your notice requirement, and you no longer have the burden of constantly monitoring and notifying your competitors one-by-one. 

6. Use the Patent Seal™:  It’s effective, inexpensive, and easy to use.  The Patent Seal™ is a Virtual Patent Marking certificate issued by licensed patent attorneys that you can use to meet the Legal Notice Requirements under 35 U.S.C. § 287.  Just place the Patent Seal™ Virtual Patent Mark on your website. When your website visitors click on your Patent Seal™, they will be directed to a certificate detailing your intellectual property rights.

7. The more you wait, the more you lose: It could take months, if not years, to discover and locate people who infringed on your patent.  By the time you find these infringers and put them on notice of your patent rights, they may have made substantial profits from your idea.  Moreover, you won’t be entitled to any of those profits unless you can prove that the infringers had notice of your patent rights.  The Virtual Patent Mark is a legally recognized form of ‘public notice’ that will entitle you to a portion of the infringers’ revenue, even if you didn’t provide them with notice directly.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

How Do Patents Grow Company Value?

What do writers who reference Samsung and Apple in the same article have in common? They’re likely recycling speculative hearsay on the latest battle of the infamous “patent wars”. But through the midst of a journalist’s poor understanding of a highly technical area of our laws, there are at least two undisputed facts that don’t require a J.D. and two bar exams to understand: the expenses of patent litigation can be in the millions of dollars, while the rewards of patent litigation can be the billions. Media’s portrayal of corporate giants and their astonishing successes (or failures) often lead the small business CEO to believe that the world of intellectual property (IP) is uncertain, unattainable, unnecessary, or, worse, reserved for big business – misconceptions this article hopes to dispel.

Big or small, nearly every business has a nucleus of intangible assets on which it relies to prosper in the face of capitalistic competition. In today’s economy, intangible assets, including IP, constitute nearly 80 percent of corporate value (up from 68% in 1995, 32% in 1985, and just 17% in 1975). The other 20 percent includes physical and financial assets found on a typical business’s balance sheet. What can a small business CEO looking to add to the valuation of their company learn from this statistic? Don’t undervalue your company’s IP – start identifying, protecting, and leveraging your company’s IP portfolio now.

 

For those entrepreneurs who have not yet attained any physical or financial assets, your intangible assets (for instance, the business model or prototype you’ve spent months developing) may be the sole factor in determining your company’s value. At this stage, any partners or investors you intend to work with will look to see if you have sought to protect your only asset. In turn, this protection provides a sense of security for your investor and shows them, from the first impression, that you understand how to run your company in proper order. Don’t believe me, take a look at the statistics: a simple ‘patent pending’, that costs your $65 to file.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal