How to Find a Good Patent Attorney

Inventors come to patent attorneys with big dreams. However, not all patent attorneys share those dreams.

The inventor is certain that his creation will become an in-demand product. It might even revolutionize its industry.

The patent attorney may have a different view. Perhaps he sees that the market for the invention will be extremely limited or, based on his experience, he may believe that only a very limited scope of patent protection may be available for the invention.

A reputable patent attorney will lay it all out for the inventor. If the lawyer thinks that it will be incredibly difficult to obtain any patent protection or that the protection will be so narrow in scope as to not have value, he will provide his professional opinion to the inventor. The inventor then has the option to decide to proceed with a patent application or not.

Less-reputable patent lawyers may be less forthright with their professional opinions. After all, they need to keep the lights on, so they might tell every inventor they meet that their idea is fantastic and clearly patentable.

Unfortunately, inventors usually don’t have enough experience to tell if their attorney is being honest or not. Broadly speaking, a good patent attorney will describe in detail how demanding and difficult patent prosecution is. Even if a patent is obtained, it can be difficult to commercialize it.

Of course, it also is critical to have a patent attorney working with you throughout the process, but how can you tell if your lawyer is only lining his pockets or has your best interests in mind?

A Few Signs of What Not to Look for in a Patent Attorney

1. They Overlook Your Invention’s Marketability

Did you know that the U.S. Patent and Trademark Office is part of the Department of Commerce? This suggests an expectation that patented technology will become a marketable product.

Accordingly, most experienced and reputable patent attorneys will ask an inventor questions about how they plan to manufacture and market their products. The question may be as simple as: “What do you want to get out of this?”

The inventor may answer that they want a patent, but it’s worth remembering that a patent and a business plan are two different things. A good intellectual property lawyer will encourage the inventor to look for manufacturing and marketing opportunities throughout patent prosecution.

By contrast, a practitioner who isn’t interested in the end result probably won’t mention any steps beyond getting a patent.

2. They Skip the Patent Search

Ultimately, it’s the inventor who decides whether or not a search for prior art is conducted before a patent application is filed. However, it’s the responsibility of a good lawyer to encourage the client to have a patent search performed.

Prior art is any patent or other publication that may disclose the same, or a similar, technology as is presented in the inventor’s disclosure. If the technology has already been patented, then there is no incentive for the inventor to proceed with trying to obtain a patent.

If a search is performed, the attorney is required to report any prior art they found to the U.S. Patent and Trademark Office. The patent office examiner who reviews the application may use this prior art against the inventor’s disclosure, arguing that their invention is not new.

However, this is simply a part of the patent prosecution process. With the prior art references uncovered in the search in mind, the attorney can craft a patent application that does not infringe on the prior art. The examiner may argue otherwise, but the lawyer can make clarifying amendments and present arguments against the examiner’s opinions.

3. They Hide the Total Cost

Obtaining a patent is expensive. Not only are there attorney’s fees to pay for drafting the application but also there are official filing fees that are charged by the U.S. Patent and Trademark Office.

However, there’s still more. The patent examiner will almost certainly object to the application, sometimes more than once. The attorney must respond to each objection, and this adds expenses to the cost of obtaining a patent. Next, an issue fee must be paid, and an issued patent is subject to the payment of maintenance fees about every four years.

A non-provisional patent application may cost anywhere between $20,000 to $30,000, and the price may vary depending upon the length and complexity of the invention disclosure.

4. They Don’t Talk About How Broad the Patent’s Coverage May Be

The claims of the patent are the specific embodiment that is protected. Will the inventor be able to get claims that are broad enough to offer any real coverage? Or, will the protection be so narrow as to be worthless? A good attorney will be up front about how broad or narrow the available protection might be.

5. They Avoid Provisional Patent Applications

Provisional patent applications are not examined, and they never issue as patents. These applications are pending for one year. In this time, the inventor can make refinements to their invention and look for manufacturing and marketing opportunities. If things go well and look promising, then it’s time to file a non-provisional patent application that will be examined and may issue as a patent. Trustworthy patent attorneys frequently recommend starting with a provisional patent application as a sensible stepping stone to obtaining a patent.

Contact Williams IP Law

If you have an invention that you believe in, then you need to work with an intellectual property attorney who you can trust. Avoid lawyers who only seem to tell you what you want to hear. Instead, go with an attorney who isn’t afraid to tell you the truth, even if it means that he may not get to draft a patent application for you. That is the practitioner who genuinely has your best interests in mind.

Dozens of inventors have put their trust in Jeff Williams to help them pursue patent protection. Schedule a free consultation to discuss your invention today.

A Guide to the Patent Law Process

So, you’ve got a brilliant invention – congratulations! Now, you want to ensure others can’t steal your idea and reap the rewards. That’s where patent law comes in. But the process of securing a patent can feel complex. Don’t worry, this guide will break down the key steps involved in the patent law process.

Understanding Patentability

Before diving in, let’s address a crucial question: what can be patented? Patent law grants exclusive rights for a limited time to new and useful inventions that are non-obvious.

  • New and Useful: Your invention must be demonstrably different from anything that already exists (novelty) and offer a practical benefit (utility).
  • Non-Obvious: This means your invention wouldn’t be an obvious solution to someone skilled in the relevant field.

Preparing for the Patent Application

Once you’ve confirmed your invention’s patentability, it’s time to prepare your application. This is a crucial step, and while you can file it yourself, consulting a patent attorney is highly recommended. Here’s what you’ll need:

  • Disclosure Document: This document provides a detailed description of your invention, including its components, functionality, and how it works. Think of it as a blueprint for others to understand your invention.
  • Claims: These are precise legal statements outlining the specific aspects of your invention you seek protection for. Drafting clear and concise claims is essential to ensure your patent’s scope and enforceability.
  • Drawings (if applicable): Visual aids like diagrams or schematics can significantly enhance the understanding of your invention, particularly for complex designs.

Filing and Examination by the Patent Office

With your application complete, it’s time to file it with the relevant patent office (typically the United States Patent and Trademark Office (USPTO) in the US). Fees are associated with filing, and an experienced patent attorney can guide you through this process.

Once filed, your application undergoes examination by a patent examiner with expertise in your invention’s field. The examiner will review your application to ensure it meets all legal requirements and assess its patentability based on novelty, utility, and non-obviousness.

Communication and Potential Rejections

The examiner may issue “office actions” raising concerns or requiring modifications to your application. This is a normal part of the process. You’ll have the opportunity to respond to the examiner’s concerns by amending your application, filing arguments, or providing additional information. This back-and-forth communication may continue for several rounds until the examiner is satisfied.

Granting of the Patent

If the examiner is ultimately convinced of your invention’s patentability, your patent application will be approved, and you’ll be issued a patent. This grants you exclusive rights to prevent others from making, using, selling, or importing your invention for a set period (usually 20 years for utility patents).

Maintaining Your Patent

Congratulations, you’re a patent holder! However, your work isn’t quite finished. To maintain your patent rights, you’ll need to pay maintenance fees at specific intervals throughout the patent’s term. Failure to do so can result in the forfeiture of your patent.

Beyond the Basics

The patent law process can involve additional complexities, including:

  • Patent Infringement: If someone violates your patent rights, you may need legal action to enforce them.
  • International Patents: Protecting your invention globally requires filing patent applications in each country you desire coverage in.
  • Patent Litigation: Disputes regarding patent ownership or validity can lead to court battles.

The Importance of Patent Attorneys

While this guide provides a general overview, the patent law process is nuanced and requires a deep understanding of intellectual property law. A qualified patent attorney can be an invaluable asset throughout the process. They can help you:

  • Assess Patentability: Evaluate your invention’s potential for patent protection.
  • Prepare a Strong Application: Craft a comprehensive and legally sound application that maximizes your chances of success.
  • Navigate the Patent Office: Communicate effectively with the examiner and address any concerns raised.
  • Enforce Your Patent Rights: If necessary, take legal action against infringers.

By partnering with a patent attorney, you increase your chances of securing a strong patent that effectively safeguards your invention and its future market potential.

Remember, this blog is for informational purposes only and should not be considered legal advice. For specific questions regarding your invention and the patent process, consulting with a qualified patent attorney is essential.

Unveiling Innovation: A Guide to Utility Patents

Unveiling Innovation: A Guide to Utility Patents

Congratulations! You’ve poured your heart and mind into creating something new and ingenious. Perhaps it’s a revolutionary product design, a groundbreaking machine, or a novel chemical compound. Now, you want to ensure others can’t simply copy your creation. This is where the power of a utility patent comes in.

What is a Utility Patent?

Issued by the United States Patent and Trademark Office (USPTO), a utility patent grants you exclusive rights for a specific invention for a set period (usually 20 years). It essentially prevents others from making, using, selling, or importing your invention without your permission.

Think of it like a force field protecting your intellectual property. A well-crafted utility patent discourages competitors from replicating your ideas and allows you to:

  • Control the Market: You have the authority to decide how your invention is used and who can use it. This empowers you to license your technology, enter into exclusive partnerships, or even prevent others from entering the market altogether.
  • Attract Investment: A strong patent portfolio demonstrates the value and exclusivity of your innovation. This can be a major advantage when seeking funding from investors or venture capitalists.
  • Forge Strategic Alliances: Partnerships with established companies become more attractive when you have a patent in hand. They recognize the value you bring and are more likely to collaborate on mutually beneficial ventures.
  • Deter Infringement: A patent serves as a legal deterrent against copycats. If someone infringes on your rights, you can take legal action to stop them and potentially recover damages.

What Does a Utility Patent Protect?

Utility patents encompass a wide range of inventions, including:

  • Machines: From household appliances to complex industrial machinery, anything with a functional purpose can be patentable.
  • Compositions of Matter: New chemical formulas, drugs, and materials can all be protected by utility patents.
  • Processes: Unique methods of manufacturing, treatment, or software algorithms can qualify for patent protection.
  • Manufactured Articles: The unique design or functionality of a manufactured product can be patentable.

Is a Utility Patent Right for You?

While utility patents offer significant benefits, they aren’t a one-size-fits-all solution. Here are some key factors to consider:

  • Novelty and Non-Obviousness: Your invention must be demonstrably new (not previously known or used) and non-obvious (not something an ordinary person in your field would have readily come up with). Conducting a thorough patent search is crucial to determine patentability.
  • Invention Type: Utility patents are best suited for functional inventions. For purely decorative designs, design patents offer a more appropriate form of protection.
  • Commercial Viability: The potential market size for your invention and the resources required for enforcement should be factored in.
  • Cost Considerations: The process of obtaining and maintaining a patent can be expensive. Weigh the costs against the potential returns on investment.

Working with an Intellectual Property Attorney

The patent application process can be intricate and demands a deep understanding of intellectual property law. An experienced intellectual property attorney can guide you through every step, including:

  • Evaluating Patentability: They can conduct a thorough patent search to assess the novelty and non-obviousness of your invention.
  • Drafting a Strong Application: A well-crafted application with clear claims and detailed descriptions is essential for securing a patent.
  • Navigating the USPTO Process: The patent application process involves responding to inquiries and overcoming potential rejections from the USPTO. Your attorney can represent you effectively throughout this process.
  • Enforcing Your Patent: If someone infringes on your patent, your attorney can help you take legal action to protect your rights.

A utility patent is a powerful tool for inventors and entrepreneurs. By securing exclusive rights to your invention, you unlock a world of possibilities for commercialization, investment, and market leadership. If you have a novel and inventive idea, consulting with an intellectual property attorney can help you determine if a utility patent is the right path to safeguard your creation and propel your innovation to success.

Disclaimer: This blog post is for informational purposes only and should not be considered legal advice. Please consult with an intellectual property attorney to discuss the specific details of your invention and determine the best course of action for protecting your intellectual property.

How to Start a Patent?

When they are new to the patent process, most people don’t realize that it can take years to get from the application to an issued patent. Many pitfalls are lurking along the way, but some of these can be avoided by ensuring that the invention is ready to enter this arduous process.

The journey that begins with an idea and that eventually is transformed into a marketable product is likewise long and difficult. At what point is it prudent to seek patent protection? Should it be done when the invention is more of a concept than a material thing?

It’s also vital to consider that not every innovation is eligible for the protection of a patent. When in doubt, it’s always wise to consult with knowledgeable intellectual property lawyers who can help with making well-informed decisions. It’s also sensible to understand the basic ground rules that underpin the process of obtaining a patent.

Starting a patent journey can be an exciting but complex process.

Here’s a step-by-step guide to help you get started with a patent:

1. Determine if you have a patentable invention:

  • Novelty: Your invention must be new and not already disclosed to the public. Conduct a patent search using resources like the United States Patent and Trademark Office (USPTO) patent database or professional patent search services.
  • Non-obviousness: Your invention shouldn’t be an obvious next step for someone skilled in the field. Consider the problem your invention solves and how it stands apart from existing solutions.
  • Utility: Your invention must have a practical use beyond just being an abstract idea.

2. Understand your invention:

  • Clearly define the problem your invention solves and its benefits.
  • Sketch or create detailed technical drawings to illustrate the invention’s structure and function.
  • Document the invention’s development process, including prototypes, experiments, and design iterations.

3. Choose the type of patent application:

  • Utility patent: Protects the functionality of a machine, process, or manufactured article.
  • Design patent: Protects the unique and ornamental appearance of an article.
  • Plant patent: Protects new and distinct varieties of asexually reproduced plants.

4. Prepare your patent application:

  • While you can file yourself, consider consulting a patent attorney or agent for professional guidance.
  • The application usually includes:
    • Title and background of the invention
    • Detailed description of the invention, including drawings and claims
    • Summary of the invention
    • Oath or declaration by the inventor(s)

5. File your application:

  • You can file electronically through the USPTO’s Electronic Filing System (EFS) or by paper form.
  • Pay the required filing fees.

6. Prosecution and examination:

  • The USPTO examiner will review your application and may issue office actions with questions or rejections.
  • Respond to the examiner’s communications by providing clarifications, amendments, or evidence to support your claims.
  • This back-and-forth process can take several months or even years.

7. Grant or denial:

  • If the examiner finds your application acceptable, you will receive a Notice of Allowance. Pay the issuance fee to receive your patent grant.
  • If the application is denied, you can appeal the decision or file a continuation application with modifications.

Additional Tips:

  • Maintain confidentiality while your patent application is pending. Public disclosure can jeopardize your patent rights.
  • Consider partnering with a patent attorney or agent, especially for complex inventions or if you are unfamiliar with the patent process.
  • Research funding opportunities and grants for supporting the patent filing and prosecution process.

Remember, this is a general overview, and the specific steps may vary depending on your invention and jurisdiction. Consider consulting with a patent professional for tailored guidance throughout the process.

Does the Product Meet Patentability Legal Requirements?

U.S. patent law mandates that to be eligible for a patent, the subject matter must relate to a “process, machine, manufacture or composition of matter.” Additionally, the invention must be novel, that is, there must not already be a patent that covers the same disclosure.

The law also stipulates that the invention be useful and non-obvious. Essentially, this means that the product performs some function from which the public may derive benefit and that the innovation would not have been obvious to someone with skill in the art.

Does the Invention Have Commercial Value?

Obtaining a patent not only requires considerable time but also is expensive. Thousands of dollars may be spent from the point of drafting an application to patent issuance. However, inventors are willing to bear the expense because they believe that their innovation has commercial potential.

Essentially, there’s little reason to pursue a patent unless the invention has genuine potential to earn the inventor quite a bit of money. Ideally, the prospective revenues from sales of the product greatly outweigh the expense of obtaining a patent.

The patents that tend to generate the most revenue are the ones that pertain to first-of-its-kind inventions. These are the ground-breaking inventions that revolutionize the world, or at least a particular industry. Understandably, such technology is rare. Most patents are directed toward incremental improvements in existing technologies.

Not all of these improvements will warrant the pursuit of patent protection. Careful consideration must be given to deciding whether or not an improvement merits the time and expense of obtaining a patent.

Has the Invention Been Publically Disclosed?

The development of most new products involves the input and advice of numerous individuals, including potential customers and investors. Early-stage disclosures to these parties can be protected by various confidentiality agreements. When the invention is going to be revealed to a larger group or the public, then patent rights must be considered.

Ideally, a patent application would already be pending before any public disclosure of the invention takes place. This ensures that the inventor is protected should any member of the public decide to replicate the invention. The U.S. follows a first-to-file standard in which the first party to file for a patent application for a particular invention has priority over all other parties. Filing for a patent before public disclosure of a commercially viable product simply makes sense.

Also, keep in mind that patent protection in some foreign countries may not be available if the patent is publically disclosed before an application is filed.

It is rarely easy for the inventor or entrepreneur to independently know when it is the right time to pursue a patent. Consulting with a patent attorney is one of the most reliable methods for determining whether or not the time is right.

U.S. patent law contains the capacity for pursuing a provisional patent application. This placeholder filing provides a period of one year during which the invention may be further refined before a non-provisional patent application must be filed. Provisional applications provide an earlier priority date, a critical consideration in a first-to-file country.

The time and expense of pursuing patents make it worthwhile to work with a knowledgeable legal professional who can provide guidance when it is needed most.

Why patents are useless

Most patents are useless. Does that sound like a nonsensical thing for a patent attorney to say?

It might at first glance, but the unfortunate reality is that many patents are so poorly drafted that they do not do an adequate job of actually protecting the subject invention. Other patents are worthless because they are aimed at inventions that are not marketable or products that are just too expensive to manufacture.

This means that an inventor could spend tens of thousands of dollars obtaining a patent that isn’t worth the paper it’s printed on.

That runs contrary to the hopes and dreams of most inventors who visualize being able to make back the money they spent on research, development and pursuing patent protection once they have a patent that they can monetize.

Patent attorneys have a rare perspective on this phenomenon. On an almost daily basis, we get to speak to inventors at all stages of the process. Many of them are hopeful and filled with dreams. These usually are the individuals who have not been through the process of obtaining a patent before. Maybe they don’t know much about the process. Perhaps they think that it will be quick and easy, and that they will soon recoup their expenses once they have a marketable product.

Other inventors are quite different. Feeling frustrated and cynical, they’ve been through the process before. What began as a hopeful venture eventually became an exercise in consternation. They got a patent, but it was expensive and painful to do so. Even with an issued patent, they haven’t been able to get their product off the ground.

Rare individuals have obtained patent protection and were able to successfully bring a product to market. They may have made their fortune through licensing deals, and they technically don’t have to work for a living anymore. What makes their patents different?

Reasons Why Patents Can Be Worthless

Why did the inventor who is feeling frustrated end up in this situation? Frequently, it’s because the invention just isn’t marketable.

Imagine you’re an inventor with a great idea. You feel a rush of exhilaration, and you want to be certain that no one steals your idea. Patent protection is essential, right? So the inventor rushes through the process, filing a patent application as quickly as possible.

However, it’s wise for the inventor to press the pause button instead of rushing forward. The most critical question to answer is: “Is this idea marketable?”

In general, this is not a question that a patent attorney can answer for you. An inventor probably knows more about the particular industry and customer base to which this product might appeal.

Or do they?

Too many inventors don’t take the time to research the market. In other words, it is essential to test the market before rushing into things like expensive prototypes and equally expensive patenting.

While the inventor may believe that they have solved a problem, it is critical to determine if others are looking for a similar solution. If the inventor skips this, then they won’t be able to license their invention, and crowdfunding efforts are likely to be for naught.

Another reason why a patent may be worthless is that the inventor lacks manufacturing knowledge. It’s imperative for inventors to possess manufacturing know-how or to work with someone who has this knowledge. This is because it is crucial to determine whether or not the invented product can be manufactured at a price point that people realistically will pay.

Many inventions are the victims of over designing. In fact, it’s not unusual for a patent to give little or no thought to manufacturing. Does a machine exist that can make that product? Can an existing machine be retooled to manufacture the invention? If so, how expensive will that be? Prohibitive costs may mean that no company wants to try to make the product, leaving the inventor to perhaps go it alone. Becoming a manufacturer is no small feat in itself. Most inventors just don’t have the budget for it.

When people apply for patents for products that no one wants or are too expensive to make, the only entity that makes money is the United States Patent and Trademark Office.

Is Your Invention Patent Ready?

Before you pay filing fees to the patent office, do your homework. A simple Google image search may be enough to tell you that your invention already exists. In order for any idea to be patentable it must be new and distinctive when compared to existing products.

You’ll also want to take steps to find out how much it might cost to manufacture your invention. Begin by looking for any similar or related products online. Amazon and Google can be helpful in this. How much are other products in this category selling for?

Then, try to contact U.S. manufacturers to obtain a quote, taking care to obtain a signed work-for-hire agreement first. You can learn more about manufacturing by viewing videos on YouTube or visiting factories in person.

For this next step, you’ll want to work with a qualified patent attorney. A prior art search in the records of at least the U.S. Patent and Trademark Office will uncover earlier patents and applications that may be the same as or similar to your invention. A patent attorney can help to put these prior art references into perspective. Does your invention infringe the subject matter of any of these patents? Having a legal opinion can help you determine whether or not it’s worth moving forward.

Take the Next Steps

Contact Williams IP Law today at using the button below to schedule a free initial consultation with an experienced patent attorney.

7 Common Patent Myths

Debunking Intellectual Property Myths

When you are a patent attorney, certain questions seem to come up in your practice again and again. Many of these relate to popular misconceptions about the world of patents and what they actually do and don’t do.

Below are some of the most common patent myths. This is in no way a comprehensive list, as many other misunderstandings are out there. That’s just one of the reasons why it is sensible for inventors to work with an experienced patent attorney when they are ready to protect their invention. An intellectual property lawyer is there to help you sort through the myths so that you can obtain the broadest and most meaningful patent protection that is available.

Myth No. 1: The patent office will monitor to see if anyone is infringing my patent.

Unfortunately, this just isn’t the case. The function of a department of the government like the U.S. Patent and Trademark Office is to decide whether or not a patent should be granted for a particular technology. Once a patent is issued, it is the responsibility of the owner to enforce their rights. This may mean having to bring an infringement action against an allegedly infringing party.

Myth No. 2: Obtaining a U.S. patent gives me patent rights around the world.

If an inventor obtains a U.S. patent, then that patent is only enforceable in the U.S. If the inventor wants to have enforceable patent rights in another jurisdiction, then they must apply for a patent in each of those countries. Inventors who discover that an overseas competitor is making a knock-off version of their product can take legal action to prevent those products from being imported into the U.S., but they may not be able to stop their manufacture in the foreign country unless they have a patent there.

Myth No. 3: A positive patentability search means that I’ll definitely get a patent.

Patent attorneys frequently encourage their clients to have a patentability search performed before they proceed with filing an application. Such a search can be an informative way to find out whether or not patent protection may be available for the invention and the probable scope of that protection.

However, patentability searches are never perfect. It’s impossible to uncover every existing prior art reference that might affect the patentability of a certain invention. That’s especially true in the case of newly filed patent applications that have not been published at the time of the search. These references won’t appear in the search because they are not publicly available. Nonetheless, by the time your invention is being reviewed by an examiner at the USPTO, he may cite that application as prior art if it has been published in the interim.

Accordingly, a patentability search can help you decide whether or not it is business reasonable to proceed with filing a patent application, but it cannot ultimately determine whether or not you will get a patent or the scope of protection that you will receive.

Myth No. 4: I have no competitors, so I don’t need a patent.

When you have invented technology that you believe is totally novel, then it’s natural to assume that no one else is doing exactly the same thing that you are. However, what happens when your product or service hits the marketplace and becomes a huge success? How long will it be before competitors start coming out of the woodwork?

If you obtain patent protection for an item that is genuinely novel and inventive, then you have the right to prevent others from copying and profiting from your ingenuity. Without a patent, you’ll be facing an impossible battle.

Myth No. 5: The patent’s drawings show what’s really protected by the patent.

Many people have this misconception, but unless you are aiming for a design patent, which is used to protect the overall look of a product, then it is the written claims rather than the drawings that really express what’s protected by the patent.

Drawings provide visual representations of examples of the invention. However, it is the claims that particularly point out or specify the subject matter that is covered by the patent. Writing and interpreting patent claims are two incredibly difficult tasks that are best left to a patent attorney.

Myth No. 6: Ideas are patentable.

A great idea is just that: An idea. It is not possible to obtain patent protection for an idea or a concept. Instead, patent law requires inventors to reduce their inventions to practice or constructive reduction to practice.

Essentially, to be patentable, the technology must be built or readily could be built by someone familiar with the technology.

Myth No. 7: I don’t copy anyone else’s products, so I can’t infringe their patents.

The claims of a patent can be incredibly subtle and nuanced. Interpreting their exact meaning is rarely straightforward. Even if you believe that your product doesn’t infringe on anyone’s patent rights, that might not necessarily be the case.

In fact, you don’t have to be aware of a patent or a patented product in order to infringe those patent rights. A cease-and-desist letter from the patent owner’s attorney may be the first inkling you have that there is an issue.

Explore Patent Rights with Williams IP Law

Are you ready to find out more about patents and how they can protect your innovations? Contact the Williams IP Law today to schedule a free consultation.

Patent Litigation

Patent attorneys spend most of their time working to obtain patent protection for their clients. However, their careers involve a second critical facet, that of pursuing patent litigation.

If you are concerned that someone is infringing your patent, or if someone has accused you of infringing their patent rights, contact Williams IP Law today. Otherwise, keep reading to learn more about patent litigation and why it’s important.

Defining Patent Litigation

When one party believes that another party is using their patented technology without permission, then the patent holder may choose to file a civil lawsuit against the allegedly infringing party. Typically, these legal actions are filed in a federal district court, and the plaintiff may ask for relief such as monetary damages and an injunction that prevents the infringer from using the protected technology.

The law requires that patent holders take action against an alleged infringer no more than six years after the infringing date.

The Importance of Patent Litigation

People obtain patents because they want to have the exclusive right to benefit from their hard work. Nonetheless, it is not unusual for another person or entity to infringe those rights. Thanks to patent litigation, it is possible for the wronged party to take the infringer to court.

Before beginning a lawsuit, it is critical to know that patent litigation is costly and that it can take years to settle a case. In many situations, the plaintiff is an individual or a small company while the defendant is a huge corporation with deep pockets.

Accordingly, it can be highly challenging for the plaintiff to prevail.

Penalties in Patent Litigation

When a plaintiff does win their case, then the court may impose one or more penalties on the defendant. These penalties may include actual damages, which are the profits that the patent holder lost due to the infringement, and royalties for the unauthorized use of the technology. Royalties usually are calculated based on other royalty agreements already in existence, the remaining term of the patent and the type of product that is covered by the patent.

The defendant also may be required to pay the legal costs incurred by the plaintiff. These may include attorney’s fees, litigation expenses and court filing fees.

Other possible penalties include an exclusion order through the International Trade Commission or a negotiated settlement. A negotiated settlement effectively ends the lawsuit without having to go to trial. However, negotiated settlements also may occur during the trial, giving the parties a chance to decide on a settlement that is not dictated by the judge.

In a negotiated settlement, the attorneys decide upon the appropriate monetary award for the plaintiff. This is the route that approximately 70 percent of all patent infringement lawsuits take, and these settlements are most frequently achieved within about one year of litigation. By contrast, only four percent of such lawsuits go to a judge’s decision at the end of trial.

The parties involved in a patent lawsuit alternatively may decide to settle their differences via mediation or arbitration rather than going to trial. Mediation can be an excellent means for avoiding the costs of a trial, and the process frequently leads to a settlement.

While defendants who lose a patent lawsuit frequently are ordered to pay penalties and costs, this may not be the end of the consequences. The court may decide to place a preliminary or permanent injunction on the infringer. A preliminary injunction may be issued at the start of the lawsuit if the plaintiff can demonstrate that they have a high probability of winning the case. The patent holder further must prove that they will suffer financial hardship if manufacturing and selling of the infringing product continues, and the preliminary injunction may be granted if there is no harm to the public’s interest or opinion.

Preliminary injunctions are rare because the standards for obtaining them are high.

At the end of the case, the court may grant a permanent injunction that prevents the infringer from manufacturing products with the infringing technology.

Patent Litigation Basics

Both federal and state laws cover patent litigation. Most lawsuits are concerned only with the federal patent laws. State patent laws are mainly focused on questions of patent ownership and contractual law.

Federal district courts handle patent litigation matters. Their responsibilities include interpreting the Constitution and the federal statutes, creating new laws, applying the federal rules of evidence to cases and applying the federal rules of civil procedure.

Another party that is critical to the patent process is the U.S. Patent and Trademark Office, or USPTO. This is the government department that is responsible for examining patent applications and issuing patents. Many patent litigation cases begin in an office of the USPTO known as the Patent Trial and Appeal Board. When issues cannot be resolved at this level, then the parties may decide to file a lawsuit in federal court.

Who Has the Right to Sue?

In general, the co-owners of a patent, the patent holder or an exclusive licensee of the patent have standing to sue an alleged infringer. It is not possible for non-exclusive licensees or distributors to sue for patent infringement.

Who does the patent holder sue? Usually, it is the person or entity that produces, sells, imports or uses the product that infringes the patent. The plaintiff also may choose to sue any person or entity that contributes to these activities.

Employees of a company may be personally liable for the infringement, but the company’s directors are not necessarily liable as well. A person is only considered liable if they had either indirect or direct knowledge of the patent infringement and they had willful blindness. Willful blindness refers to steps taken to avoid learning about the patent itself.

The courts have the discretion to add or remove parties that are suing or parties that are being sued.

The Types of Patent Infringement

Assessing patent infringement involves comparing the patent claims and the allegedly infringing product.

It may be discovered that literal infringement has occurred, in which case a direct relationship is established between the product and the words included in the claims of the patent.

Contributory infringement may occur when a third-party is responsible for giving the infringing party a component that has no utility beyond creating an infringing product.

When the infringer intentionally disregards someone else’s patent, then willful infringement may have taken place.

Infringement may be either direct or indirect. Direct infringement involves a competitor manufacturing a copy of another company’s product without the permission of the patent holder while indirect infringement occurs when a person or entity assists a third party to make a product that infringes a patent.

Even if the court determines that no actual infringement is occurring, it is possible that the doctrine of equivalents will come into play. This doctrine broadly states that a product may infringe a patent if it produces similar results in the same way. While the doctrine of equivalents does have limitations, it can be a powerful tool in patent litigation.

Defenses for Patent Infringement

What if you find yourself in the unenviable position of being sued for patent infringement? The best course of action is to engage the services of a skilled patent litigation attorney. This legal professional will have numerous defenses that can be used to fight the allegations.

These defenses may include proving that the patent at issue is not novel and that its claims are obvious to someone who is skilled in the art. Your attorney may uncover false information provided by the patent holder to the USPTO when they applied for the patent.

Arguments against the patent’s usefulness, a lack of description or the definiteness of the claims similarly may be available. Other defenses also may prove useful.

Get Legal Counsel First

Whether you believe that your patent is being infringed or you are being sued for patent infringement, it is critical that you do nothing before speaking with a qualified patent litigation lawyer.

At the outset of such a complicated legal matter, it is impossible to know how things might turn out in the end. The things that you say and do in the beginning of the case may make things more complicated for you down the road.

If you receive a letter from a person or company claiming that your products are infringing their patent, call an attorney before making any kind of reply.

Similarly, if you stumble across a product that you believe infringes your patent, it is always wisest to contact an intellectual property lawyer before taking any steps.

These legal professionals are adept at interpreting the claims of patents and comparing products to those claims. With their assistance, you can begin to either enforce your patent rights or refute the allegations of infringement made by a patent holder.

The critical thing is to remain calm. Then, ask for legal advice. Many of these situations can be resolved with a couple of letters and perhaps a few telephone conferences. Most of them never turn into lawsuits. Going to trial is even rarer.

When you work with competent legal counsel, you stand a much better chance of achieving the outcome you are hoping for.

Contact Williams IP Law

Jeff Williams and the staff at Williams IP Law have helped many clients deal with patent litigation. These situations can be complex and immensely challenging, but with the right experience and legal knowledge, it frequently is possible to resolve them well before a lawsuit or a trial is necessary.

Contact Jeff Williams today to schedule a consultation about any potential patent litigation matters.

Patent Trolls: Two Cases Against Apple

Patent Troll Claim #1

The news broke that Thomas Ross from Florida is requesting $10 Billion from Apple due to infringement on a patent application he made in 1992. Ross would also like a 1.5% royalty on all future sales of iOS devices.

The basis of the lawsuit is based on drawings Ross made in 1992 for an “electronic reading device” or ERD.

  • So what do you think?
  • Does it resemble an iPhone in any way?
  • Does it possibly resemble any early eBook readers or smartphones?

The Issues With The Claim

There are several problems with Ross’ claim though. There are the basic drawings that don’t appear Apple device like. And there is the elephant in the room – his patent application was actually abandoned after he failed to pay the patent registration fees.

The lawsuit claims Ross was “the first to file a device so designed and aggregated as to have created a novel combination of media and communication tools… whose identity was, since then, hijacked and exploited by Apple’s iPhones, iPods, iPads and others”.

The lawsuit further claims that Apple’s devices “are substantially the same as his technical drawings of the ERD, and that Apple’s three-dimensional derivative devices (iPhone, iPod, iPad), embody the non-functional aesthetic look and feel”.

This isn’t the first time Apple has been attacked by patent trolls. Judging by the results, it most likely will not be the last time either.

The Case

In June 2019 the Beijing Intellectual Property Office heard a case originally filed in 2014. Baili Marketing Services Inc. of Shenzhen China claimed that Apple had copied its design of their 100C smartphone for the iPhone 6/6 Plus.

The Beijing Intellectual Property Office sided with Baili and issued an injunction. Apple was ordered to remove iPhone 6 and 6 Plus phones from the shelves. Apple of course appealed the ruling and the product is still on the shelves in Beijing stores, for now.

Apple is anxious to continue penetration of the Chinese market and this is a definite setback that Apple may have to settle.

It also appears that this is just another case of a patent trolling group. The Wall Street Journal investigated and discovered that Baili Marketing is a company that “barely exists” and is owned by Digione. Digione products have been off the market for over a year because their devices are considered “buggy”.

Unfortunately for Apple, this does not matter as the issue is patent infringement, not device quality. This move could be big for Digione however.

Patent Troll Claim #2

Apple is also facing legal woes over FaceTime. Several companies have sued Apple over its voice-over-IP (VoIP) technology due to patent infringements. Straight Path Group claims Apple has violated five different patents dating back to 9/25/1995.

These patents were owned and used in the WebPhone product by NetSpeak. The patents were examined again and validated by PTAB (Patent Trial and Appeals Board). Straight Path patent details using a database and device IP addresses to determine if a device is available or offline. Their claim is that Apple is tracking user IP addresses through Push Network and SIP (Session Initiation Protocol, a VoIP protocol). It also claims that Apple has infringed on technology the WebPhone used to use.

Since WebPhone has not been around for over a decade, this also seems to be a case of patent trolling.

The Case

Apple has also been sued by others over FaceTime, including VoIP-Pal and VirtnetX. These companies can also be considered “trolls” since they own patents but show little desire to commercially develop them or create products. In 2012 they were awarded $368 million and a 1% running royalty off all iPhone and iPad revenues. Apple requested a retrial and VirtnetX demanded Apple shut down FaceTime.

In the retrial which ended in February 2016, the $368 million verdict and 1% royalty were overturned; however, the East Texas jury awarded VirnetX a whopping $625.6 million (but no running royalty).

Expect Apple to appeal again, but VirnetX may seek to add a “running royalty” on their products.

Apple’s success will make it a perpetual target for those who seek to gain off their fortune. Though Apple may win most contests, in many more it may have to settle just to keep their products on shelves. There will also be some losses. Due to their size and success, when they lose, they will lose big.

So what are your thoughts? Are patent trolls stifling innovation and progress?