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If you create or distribute a new product, there are a few essential things to know about patent infringement.

First, when you’re creating a product, it will be helpful to make sure that you’re not infringing on someone else’s patent. Specifically, you should ensure that you’re not infringing upon an independent claim of an issued patent. It is easier than you might think to find yourself infringing an issued patent accidentally. To prevent accidental infringement, you may do a Freedom to Operate search based on the product or method you wish to manufacture and sell.

If it turns out that there’s a patent out there that you might be infringing on with your product, there are a few things you can do. One option is to reach out to the patent-holder directly to ask for a license. Another option is to try to design around the independent claims recited in the patent. The design around process seeks to find a way to build a new version of the product with the same relevant functionality but without an element necessary to infringe the patent. For example, if the independent claim of the patent recited elements A, B, C, and D, we can attempt to redesign the product such that it no longer includes any one of the elements A, B, C, or D.

Can The Ownership Of A Patent Be Assigned Or Transferred From One Person To Another?

Absolutely. The ownership of a patent may be transferred to another person or a corporate entity. For example, let’s say an inventor files a patent application for a product, and then a company buys that product and all the intellectual property associated with that product. In this case, we would file an assignment that transfers ownership of the application from the inventor to the new company. That assignment is recorded on the Unites States Patent and Trademark Office’s EPAS site, which provides notice to the world as to the chain of title of the patent application.

What Conditions Must Be Met To Obtain Patent Protection?

For an invention to be patentable, it must be statutory, novel, useful, and non-obvious.

For an invention to be statutory, it must involve subject matter that can be patented. Patentable subject matter includes processes, machines, manufactured articles, and compositions of matter. However, an effective way to address this requirement is to define what is not patentable subject matter. Subject matter that is not patentable includes data structures, software per se, nonfunctional informative materials such as books or music, electromagnetic signals, laws of nature, and other abstract ideas. The abstract idea label is generally used to preclude the patenting of inventions that lack a requisite amount of specificity. It is important to remember that ideas cannot be protected as abstract ideas are not patentable subject matter. Instead, a specific implementation of that idea may qualify as a patentable subject matter.

For the invention to be novel, it must be new and have not been disclosed to the public more than a year before the filing date of the utility patent application. The invention is not novel if it was known to the general public before you invented it, it was described in a publication more than one year before the filing date, or it was used or sold publicly more than one year before the filing date.
This provides for a one-year grace period in the United States after the invention’s first public disclosure or sale. However, there is no grace period in many territories outside the United States, and public disclosure or sale would function as an absolute bar to novelty.

For an invention to be useful, the invention must have a practical utility, operability, and beneficial utility. In broad terms, a process, machine, or composition that is the subject of the invention must operate to perform an intended purpose in the real world.

Lastly, for the invention to be nonobvious, it cannot be an obvious combination of elements found in one or more prior art references. In making an obviousness-based rejection of a claim in a patent application, the Examiner may argue that it would have been obvious to a person of ordinary skill in the art to combine multiple prior art references. Each of the references disclosing one or more of the elements recited in the rejected claim.

What Happens After I’ve Submitted My Patent Application? How Long Until I Have An Approval?

After filing a non-provisional patent application with the USPTO, the patent process goes roughly as follows.

  • Your patent application is assigned to a technology center and art unit.

The Examiners at the USPTO are grouped into technology centers that allow them to develop and utilize their expertise in specific technological fields. The technology centers include biotechnology and organic fields; chemical and materials engineering fields; computer architecture software and information security; computer networks, multiplex, cable, and cryptography/security; communications; semiconductors, electrical and optical systems, and components; designs; transportation, electronic commerce, construction, agriculture, licensing and review; and mechanical engineering, manufacturing, and products.

The technology centers are further divided into art units that handle specific types of inventions as defined by the USPTO’s classification system.

  • An official filing receipt is issued.

The official filing receipt is issued once it is determined that the requisite information has been provided and proper fees have been paid. The official filing receipt includes the following information:

  • the application number,
  • filing date,
  • group art unit,
  • filing fee received,
  • attorney docket,
  • total claims/independent claims,
  • confirmation number,
  • date mailed,
  • applicant(s),
  • inventor(s),
  • assignment for the published patent application,
  • power of attorney,
  • domestic application for which priority is claimed,
  • foreign application for which priority is claimed,
  • permission to access,
  • foreign filing license,
  • projected publication date,
  • non-publication/early publication,
  • small entity status,
  • title, and
  • preliminary class determination.
  • The Patent Application is Published

By default, the patent application is published after eighteen months from the earliest filing date for which the application seeks priority. The publication of the patent application may provide for provisional patent rights based on the application. Moreover, the published patent application may now be cited as a prior art reference to the claims of other patent applications.

If the applicant would prefer to keep the invention secret, he can request that the application not be published at the time of filing. Alternatively, the applicant can request publication at a time earlier than eighteen months.

  • The Examiner issues a Notice of Allowance or an Office Action.

The Examiner will perform a search based on the limitations recited in the claims of the application. As a result of the search, the Examiner may issue a Notice of Allowance or an Office Action rejecting the application’s claims.

If a Notice of Allowance is issued, the patent will issue once the requisite issue fee is paid to the USPTO.

If an Office Action is issued, then it is likely that the Examiner has rejected one or more of the application’s claims. In making a rejection, the Examiner may argue that all the limitations recited in a rejected claim are disclosed in the specification of a single reference, in which case the reference anticipates the rejected claim.

In addition, the claims may be rejected as obvious over one or more prior art references. In an obvious type of rejection, the Examiner argues that the elements recited in the rejected claim are disclosed in one or more references and that it would have been obvious to a person of ordinary skill in the art to combine or modify the one or more references.

Once an Office Action has been issued, the applicant must file a response that addresses each of the rejections within that Office Action. While a rejection of a claim may be addressed in multiple ways, the applicant will generally argue that the rejection is not proper or amend the claim. In arguing that the rejection is not proper, the applicant argues that the limitations recited in the rejected claim are not disclosed as proposed by the Examiner in the references cited in the Office Action. In amending the rejected claim, the applicant adds a limitation to the rejected claim not disclosed in the references cited in the Office Action. The limitation added to the claim must have been included in the specification as filed since new matter cannot be added to the application once it has been filed.

Once a response has been filed, the Examiner will review the arguments and amendments included in the response and either issue a Notice of Allowance or another Office Action that upholds the original rejection or issues new rejections based on additional references cited in the Office Action.

Can An Issued Patent Be Challenged?

Yes, the USPTO’s Patent Trial and Appeal Board (PTAB) can review issued patents. Challengers to an issued patent may file a request for a post-grant review with the PTAB, so long as they can provide statutorily valid reasons why an issued patent should be reviewed. The PTAB has discretion on whether or not to accept a request for a post-grant review of an issued patent.

For more information on Patent Law In New York, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (347) 943-1449 today.

 John C. Laurence, Esq.

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