Identifying, Securing, and Defending Intellectual Property Rights

Patents

cflightbulb.jpgDo you have an idea for a device, product, machine, computer program, or process? Do you have a patent or application application that you would like to license or sell to to another company? Do you have a product or process that you want to ensure does not infringe another’s patent? Have you identified a potentially problematic patent for which you would like to know your options for avoiding the patent (designing around the patent) or invalidating the patent? Have you identified someone that is infringing your patent or have you received a letter or a summons from a patent holder alleging patent infringement? The Erickson Law Group can assist in each of these situations.  The Erickson Law Group can analyze the circumstances of your particular situation, advise and carry out the chosen course of action.

We provide the following patent services

  • Patent Procurement in the U.S. and Abroad. The Erickson Law Group provides patent strategy, application drafting, and prosecution. We assess the patentability of inventions, prepare and prosecute patent applications through the United States Patent & Trademark Office. We also advise on foreign filing strategies and facilitate foreign protectionthroughout the world through our network of foreign associates.
  • Product Clearance Opinions. It is important to identify, assess and avoid competitor’s intellectual property rights when working through the product development cycle. The Erickson Law Group offers product clearance analysis services by attorneys with the appropriate background to understand the relevant technical features of the product, and the possible alternatives. We uncover a comprehensive collection of potentially relevant patents and other prior art. Our analysis of the prior art provides an assessment of the potential scope of third party rights and the risks associated with each proposed design.
  • Reissue and Reexamination Proceedings in the U.S. Patent Office. Reissue and reexamination procedures at the United States Patent & Trademark Office provide effective mechanisms for correcting unforeseen defects in issued patents, and for administratively challenging the validity of patents outside of infringement litigation. We prosecute reissue and reexamination proceedings and advise clients when these procedures may be preferred over litigation.
  • Litigation on Intellectual Property Issues. The Erickson Law Group litigates selected cases involving intellectual property. We can assist in bringing claims of patent infringement as well as defending such claims. We also support and assist other litigation attorneys on specialized intellectual property issues including patent, trademark, and copyright law.

 

Background Information on Patents

A patent is a grant from the United States giving the inventor the right to exclude others from making, using, offering for sale or selling the patented invention in the United States. There are three types of patents:

  • Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof
  • Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture
  • Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant

Utility Patent

The “patented invention” of a utility patent is defined by numbered claims in the patent. To be patentable, the claims must describe in words an invention which is useful, new and non-obvious. Please note that these terms, especially “non-obvious” are legal terms which have a different connotation and context than everyday usage.

To obtain a utility patent, a non-provisional utility patent application is filed with the United States Patent Office. The utility patent application includes a complete description of your invention, including informal drawings, and a set of numbered claims which set forth in words the breadth of your invention.

The U.S. Patent Office will examine the non-provisional utility patent application, search for similar prior patents or publications in Patent Office files, and issue an office action (written decision) deciding whether the patent claims are allowed or rejected (usually for being too broad). Such rejections are typical and require a written response from your patent attorney, typically amending the words of the claims and including arguments for patentability.

The written correspondence between the U.S. patent examiner and your patent attorney will continue until allowable claims are agreed upon, or will cease if you decide to abandon the application. This patent pending period is referred to as “patent prosecution.” It usually has a duration of 18 months to 30 months, depending on the examiner and his or her cooperation and agreement with the allowability of the claims. Once a utility patent application is filed, the applicant can mark his or her product or literature with “Patent Pending.”

Any foreign utility applications must be filed within one year of the filing date of the non-provisional application to benefit from the filing date of the non-provisional application.

As an alternative to a non-provisional utility application, a provisional utility application can be filed. The provisional utility application must be followed within one year by the filing of a non-provisional utility application and the filing of any foreign utility applications, to benefit from the filing date of the provisional utility application. The provisional utility application is somewhat less costly. The Patent Office does not examine provisional utility applications.

Design Patent

The “patented invention” of a design patent is defined by the drawings. To be patentable the invention must be ornamental, new and nonobvious. Please note that these terms, especially “nonobvious” are legal terms which have a different connotation and context than everyday usage.

To obtain a design patent, a design patent application is filed in the United States Patent Office. The design patent application includes an identification of your article, and includes drawings showing multiple views of the article.

The U.S. Patent Office will examine the design patent application, search for similar prior patents or publications in Patent Office files, and issue an office action (written decision) deciding whether the design patent is allowed or rejected. Such rejections require a written response from your patent attorney, typically amending the words or drawings of the application for formal reasons. This patent pending period is referred to as “patent prosecution.” Once a design patent application is filed, the applicant can mark his or her product or literature with “Patent Pending.”

Any foreign design applications must be filed within six months of the filing date of the U. S. design application to benefit from the filing date of the U. S. design application.

Patent Search

Although not required, it may be advisable to have a patent search done before proceeding with a utility patent application. A patent search may reveal prior art which would suggest that a patent application would not be worthwhile.

Statutory Novelty Requirements

Using your invention commercially or publicly, publishing your invention, offering your invention for sale, or publicly disclosing your invention, before a U.S. patent application is filed, can jeopardize your right to file a valid patent application in the U.S. and in foreign countries. In some countries, “publicly disclosing” can be as little as telling one person who is not under an express or implied agreement of confidentiality. There are some exceptions and grace periods depending on the country and the circumstances. The circumstances should be discussed with us before any disclosure is made to others. For example, the United States has a one year grace period under some circumstances. However, it is recommended to file a patent application before any disclosures.  Most foreign countries have no such grace period; a U.S. patent application must be filed at the United States patent office before any public (non-confidential) divulgation of the invention. If you then want to file foreign patent applications, once a U.S. application is on file, most foreign countries recognize the U.S. filing date if a corresponding foreign application is filed within one year (for utility application) or 6 months (for design application) of the U.S. filing date. If you have disclosed your invention already, check with a patent attorney as you still may have an option to file a patent application in the U.S.

See our Frequently Asked Patent Questions section for additional information on patents and answers to common patent questions.