Doctrine of repair and reconstruction, or repair doctrine, in U.S. patent law allows a person who is authorized to produce, use, or distribute a patented item to repair and replace unpatented components.  Essentially, the owner of a patented property has a lawful right to repair or replace his/her property.   The repair and reconstruction doctrine was established…

Many technology-centric start-ups are based on the technologies generated from universities or from government funded projects (in places such as national labs, projects in non-profit institutes, or even small companies).   As an entrepreneur, if you want to start a technology based company, one place to look for the opportunities is the technology portfolios managed by the…

The usual rule in a patent infringement/enforcement case is that all owners of the patent being asserted must join in the lawsuit.   However, it is well established by the case law that, if a plaintiff as an exclusive licensee holds all substantial rights in a patent, the title-owner of the patent need not be joined. …

So, you are an inventor.  You have a great idea.  What’s next? Two things you need to research into before you spend more money on your idea are: market research and patentability search. Do you market research first.  I am assuming that your idea is a solution to a real world problem.  If that is the case, there could…

Transfer of “all substantial rights” in a patent from a patentee/licensor to a licensee is essential for the licensee’s standing to sue an infringer (i.e., right to enforce the patent) in courts.  Despite parties’ intent to transfer “all substantial rights” in a patent license agreement, the actual terms in a licensing agreement are more dispositive on…

For start up companies, one of the most common questions asked is: we are considering developing a product, are we infringing upon other’s IP?  To understand whether your planned product infringes upon other’s patents, the first step is always to do a patent search.  And the second step is to analyze where your planned product stands in…

There are three types of patents under US patent law: utility patent, design patent, and plant patent.  In this blog, I will be mostly talking about utility patent.  Now, let’s look at the first question you need to answer before you invest more into your invention: is your invention a patentable subject matter? To qualify for a…

Recently, a colleague asked that her competitor has a patent on a composition for treating an inflammatory condition.  The claim of the composition is recited as:  “A composition for treating an inflammatory condition X, wherein the composition comprises A, B and C.” The colleague’s conclusion is that she can sell the composition as long as…

As an inventor myself, I imagine that I would be unhappy if being omitted as an inventor to an invention and its resulting patent knowing that I’ve made important inventive contribution to the invention.  I am sure that any reasonable inventor would feel the same.  However, have you ever wondered if there are any recourses for you…

“Public use” and “on sale” are often the first bars applied to the patentability of a claimed invention.  According to the America Invents Act (AIA) 35 U.S.C. § 102(a)(1),“A person shall be entitled to a patent unless…the claimed invention was … in public use, on sale, or otherwise available to the public before the effective…