Posts Tagged ‘malek’

Does My Patent Infringe On Another Patent?

Friday, 06 April, 2012 05:45 Written by Mark Malek 2 Comments
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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

What It Takes To Infringe a Patent

Friday, 23 March, 2012 05:00 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the permissibility of designing around a patent. To summarize, in order to design around a patent, also known as reverse engineering a patent, the product/device/method, etc., in question must not include all of the elements of just one of the claims of the patent in question.  If your product includes three of the four elements that can be found in the claims, then you should be in the clear.

Naturally, the next question comes from the perspective of the patent holder.  At this point, the patent holder may have discovered your invention that has purportedly designed around the patent.  The only issue is that the patent holder does not necessarily believe that your invention does design around the patent.  More particularly, the patent holder thinks that your invention reads on at least one of the claims in the patent.  Time to conduct an investigation.

The investigation for the patent holder is very similar to the investigation that I discussed in my previous article about designing around a patent.  In other words, the patent holder’s first step should be to create a claims chart and analyze every element of each claim to make sure that the allegedly infringing device meets all the claim limitations.   Please don’t begin to think that I am insisting that the patent holder much go through the chore of doing a claims chart – it is just that I cannot think of a better way to ensure that the patent holder is sure that the device in question actually infringes.  When analyzing the limitations of the claim, the patent holder may try to broadly interpret certain portions of the claims, i.e., the patent holder may try to give some elements of the claims a broader interpretation than would be normally provided just by looking at the English language.  This could be possible depending on the way that these terms are defined in the specification.  For example, suppose that one of the elements of the claim is that a portion of the device must have a rounded shape, but in the specification, there is a specific note that although the device is depicted as having a rounded shape, the term “rounded shape” is intended to include shapes that have rounded corners.

Prosecution history estoppel, however, is something that could prevent broader interpretations of claims, but that is a topic for another article – actually, it is a topic that can fill up several articles.  For more information on prosecution history estoppel, check out this article by Gene Quinn on IPWatchdog, which includes a discussion on the doctrine of equivalents.  A more updated article on the doctrine of equivalents can be found here.

As you can see, the analysis for the patent holder is similar.  In short, if the allegedly infringing device does not include all of the elements of at least one of the claims, then the patent holder should not go running down the path of patent infringement yet.  In another article, I will start to discuss the various options available for the patent holder once it is determined that the device in question does infringe.  In that article, I will also discuss some strategies (all opinion) for patent holders that find a device that is pretty darn close to the claims of the patent.

 

Patent Maintenance Fees – The Patent Prosecution Process Continues

Friday, 02 March, 2012 23:21 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Great news – you have just received your Notice of Allowance for your patent application.  In the Notice of Allowance, there is a requirement for you to pay an issue fee (unless it has already been paid pursuant to a request for early publication – see Section 1129 of the Manual of Patent Examining Procedures (MPEP)  for more information) as well as an issue fee.  As it currently stands, the combination of the issue fee and the publication fee is about $1100.

The good new is that after you pay the publication fee and the issue fee, you will receive an issued patent.  As you can tell from the picture to the right, this is one of the prettiest looking documents the government has ever produced. Way better than anything I have ever received from the IRS. After you receive your issued patent in the mail, you will notice that the patent process has not exactly ended.  In order to keep your patent valid, you will need to pay maintenance fees.

Information on patent maintenance fees can be found in Chapter 2500 of the MPEP.  In short, in order to keep it alive, you need to pay maintenance fees on your issued patent.  These are due at the 3.5 year mark, the 7.5 year mark, and the 11.5 year mark.  To be specific, the window to pay the first maintenance fee opens at the three year mark and closes at the four year mark.  If the maintenance fee is paid within the first six months of the window being opened, then no surcharge applies which, of course, means that there is a surcharge that applies if the maintenance fee is paid in the last six months of the window.  The same goes for the next two maintenance fees.

If a patent maintenance fee is not paid, the patent will go abandoned, and the invention, as recited in the claims of the patent, will be dedicated to the public.  The current maintenance fees are outlined on the PTO Fee Chart.  As you can imagine, these fees change from time to time, so it is advisable to check the amount of the fee prior to attempting to pay it.    You can pay your maintenance fees on your patent by accessing the maintenance fee page on the PTO website.

Mark R. Malek is a Trademark and Patent Attorney with Zies, Widerman, & Malek in Melbourne Florida

Advancing Examination of a Patent Application Out of Turn

Sunday, 26 February, 2012 15:36 Written by Mark Malek 0 Comments
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By: Mark R. Malek

As many of our readers know, there is a somewhat significant backlog in patent examination right now. For example, the average time to get a patent allowed now is about 33 months.  You can reference the patent dashboard for more information.  I know that this sounds terrible, but it is a huge improvement, and things are going the right way.  For example, the patent backlog is down to 657,000 now – which is significantly lower than the 900,000 that I remember.

There are ways to try to shortcut the long wait associated with with the patent examination process, provided that the Applicant meets certain criteria.  I will be writing about many of these options over the next several posts, but the one that I wanted to discuss first is based on the age of the inventor.  Inventors over the age of 65 can advance examination of their patent application out of turn.  This is outlined in the Manual of Patent Examination Procedures (MPEP) Section 708.02.  Maybe it is because I am getting older, but I just don’t think that 65 is that old, but if the Patent Office sees fit to provide a benefit to inventors over the age of 65 – take it!

So what exactly does it mean to file a petition to make special?  In short, the Patent Office is offering to grant “special status” to an application that has a named inventor that is over the age of 65. Imagine that a patent Examiner’s desk might have a stack of papers on it that is about 3 feet high.  That stack of papers represents patent applications that still need to be examined.  Now imagine that the application you just submitted is on the bottom of that stack.  After the Patent Examiner receives the approved petition to make special based on the age of the inventor, your application is taken from the bottom of the stack and put right on top.  This is a very simplistic explanation, but this type of petition will likely provide an examination that lasts only about a year.

The biggest advantage to this type of petition is that it is completely free.  Once you receive a filing receipt, simply fill in the form and file it.  Another huge advantage is that this type of petition is automatically processed.  In other words, there is no need to wait for the petitions branch at the Patent Office to make a decision on the petition (sometimes taking upwards of three weeks or so).  A really good write-up on the procedure is available from the Patent Office here.

This petition can be submitted even if just one of the inventors on a patent application is over the age of 65.  It is imperative, however, not to try to trick the system.  Please do not just name someone who is over the age of 65 as an inventor for the sake of filing the petition.  This will likely lead to all sorts of headaches down the road when trying to enforce the patent.  For example, you do not want to run into an accusation that you have committed fraud on the patent office by naming someone over the age of 65 as an inventor when they truly are not an inventor. This could lead to invalidation of your patent.  In order to be named an inventor, one has to have had something to do with at least one of the claims that are allowed in a patent application (more on this in a future post).

As I will discuss in later posts, there are several other ways to accelerate examination of a patent application, but none as convenient, fast, and hassle free as a petition to make special based on age.

Supplementing A Patent Application Disclosure With Prior Art Uncovered During Prosecution of A Related Patent Application

Sunday, 19 February, 2012 10:13 Written by Mark Malek 0 Comments
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By: Mark R. Malek

I recently posted a couple of articles directed to the duty to disclose prior art to the Patent Office during the prosecution process of your patent application.  The articles can be found here and here.  As we know from these past two articles, the duty of disclosure is vital in the patent application process, and the duty to supplement that disclosure is even more vital.  Simply because new prior art has come to light after the Applicant has already made an initial disclosure to the PTO does not relieve the Applicant from supplementing the disclosure with the newly discovered prior art.

There is a particular case that arises when an Applicant may have more than one patent application pending.  Sometimes, different Examiners may examine multiple related applications.  Of course, each Examiner may have a different search strategy and may uncover different prior art.  The examination of a patent application must be kept completely confidential.  Confidentiality of patent applications is generally outlined in 35 U.S.C. 122.  It is not as though an Examiner on one case will seek out the Examiner of a related case to go over the prior art that they have uncovered and compare notes.

The scenario that we are dealing with here can be laid out with an example.  Suppose Application #1 being examined by Examiner #1 has claims directed to elements A, B, C, D & E, and that Application #2 being examined by Examiner #2 has claims directed to elements A, B, C, F & G.  Now suppose that Examiner #1 issues a notice of allowance and indicates that no prior art reference was found that disclosed element C.  Now also suppose that around the same time, Examiner #2 issues a rejection of Application #2 and provides a prior art references that discloses element C.

Anyone see the issue yet?  The Applicant now knows of prior art that would cause Examiner #1 to issue a rejection of the invention set forth in Application #1.  If the Applicant does not disclose the prior art that Examiner #2 cited, then Application #1 will likely proceed to issue.  Is it valid?  Well – until someone else challenges it, then it probably is.  This scenario wouldn’t be tested, however, until the Applicant tried to enforce Application #1 against a potential infringer.  You can guarantee that the potential infringer, when faced with an accusation of patent infringement, will do every bit of investigation possible into the prosecution history of the application to ensure that the prosecution was proper.  Upon figuring out that the Applicant failed to disclose prior art from one application in the prosecution of another application, the door to invalidity has been opened.

To summarize, the duty of disclosure of relevant prior art cannot be overstated.  No matter how the prior art was discovered, and no matter when the prior art was discovered, the Applicant MUST fully disclose it to the PTO during prosecution of the application.

 

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