Category: Uncategorized
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So you own the patent, but can you sue to enforce?
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. …
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Patenting Strategies for Small Businesses and Individual Inventors–patentability search
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…
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Transfer of “All Substantial Rights” in a Patent Licensing Agreement
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…
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Are you infringing on other’s patent: direct infringement of a patent
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…
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Patenting Strategies for Small Businesses and Individual Inventors—patentable subject matter
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…
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Composition and device inventions are “strict liability” for “public use” bar and infringement
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…
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Omitted inventor–the employee inventor can sue for reputational injury
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…
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What is a “public use” bar to patentability?
“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…
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Yes, you too are an inventor!
The title of “inventor” often carries with it a hallo of unreachability by common folks. When we think of an inventor, we often think of Thomas Edison, Alexander Graham Bell, Samuel Morse, or Henry Ford. We don’t usually think of the modern researchers in the labs, the professors in the universities, and the internet entrepreneurs. We certainly don’t…
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Inter Partes Review (IPR) in a nutshell
Inter partes review (“IPR”) is one of the several tools established under the AIA for an issued patent to be challenged through an administrative process administered by USPTO. The rationale for using an IPR process rather than a court proceeding is the perceived cost saving even though I personally do not think the process is as inexpensive…
EPIMED RESEARCH 