The Supreme Court’s opinion on Alice v. CLS Bank may be arguably one of the most anticipated patent cases in recent years.  Many have anticipated this case to be a stake for the Supreme Court to put a final say on software patentability once and for all.   Well, it did not happen.  Categorically, the software is…

In my last post, I talked about how to do the patentability search in the USPTO database.  For a relatively simple patentability search, besides the USPTO database, you should always do a general internet search.  Try your search on multiple search engines and always try different combination of the keywords.  You can use common words search.   That often generates…

If you’ve ever licensed a technology out of a university, you would know “Bayh-Dole Act.”  The Bayh–Dole Act, 35 U.S.C. §§200-212, titled “Patent Rights in Inventions Made Under Federal Funding Agreements, codified the rules in dealing with intellectual property rights on inventions funded by federal government grants.  The act is implemented by 37 C.F.R. 401 titled “Standard…

Companies often ask what language to use in their employment contracts to make sure that the titles of the inventions by their employees are transferred to the company.  My answer has always been “hereby assigned,” at least for now. The rule that the “hereby assign” language in an employment contract immediately transfers the title of an…

In Europe, patents will be grated for all inventions, in all fields of technology, as long as the invention is new, involve an invention step and is susceptible of industrial application (Article 52(1) EPC).  However, this broad claim of patent eligible subject matter is subject to various exceptions and exclusions.  Article 53 EPC provides several general…

Patent law is a contract between government and inventor.  A patent is a grant of legal monopoly, and its resulting commercial benefit, by government under which the inventor/patentee can exclude others from making and using his invention.  The quid pro quo of this monopoly is the inventor/patentee’s disclosure of the invention to the public in the patent…

When an inventor comes up with an invention/idea, the first task is to decide if the invention/idea is a patent eligible subject matter.  Passing the “patent eligible subject matter” bar is the first requirement in the path to a patent.  If you are an entrepreneur inventor, before you invest money and time to further develop and commercially…

Startup companies often live on a shoe string budget in the first few months, if you are lucky, and, more likely, in the first few years. Because of the budget constrain, these companies tend to ignore IP strategy in foreign countries, especially in Asian countries.  Language hurdles and culture barrier often compound the problem.  When the startup company…

Trademark right is a common law right that is obtained by use of a mark in commerce.  The U.S. Patent and Trademark Office (“USPTO”) generally requires evidence of such use before a mark can be federally registered.  This blog post aims to help you to understand what constitutes a “use in commerce” of a mark for obtaining…

Here is a story and let me know if it sounds familiar: once upon a time, a man invented a fabulous gadget and obtained a patent on the gadget.  He subsequently started a company making and selling the gadget.  Starting a company was hard—the man worked night and day and traveled extensively to sell his gadgets while…