Traversing the patent landscape can be treacherous without proper guidance. Caesar Rivise attorneys possess the expertise to guide clients around pitfalls and stake valuable claims in many technical fields. We perform prior art searches and provide freedom-to-operate and patentability opinions to define the patent landscape and identify where it is safe to tread. We work with our clients to develop strategies based on our survey of the landscape, and each year we obtain hundreds of patents worldwide for them.
Patent Law Primer
Federal law establishes protection for a new invention via a “Utility” patent and protection for a new ornamental design via a “Design” patent. Patentable inventions can fall into various categories, such as apparatus or devices for accomplishing some purpose, methods or processes for accomplishing some purpose, compositions or articles of matter. Ornamental designs can take various forms, e.g., the design for the tread of a tire, the design of the graphics on the upper of a running shoe, the pattern of sterling silver tableware, the shape of a detergent bottle, etc.
A utility patent has a fixed term. At present it is 20 years from the filing date of the patent application for applications filed after June 8, 1995 or the longer of either 20 years from the application filing date or 17 years from the patent’s issue date for applications filed before June 8, 1995. Design patents are granted for a period of 14 years. Once the patent on an invention or design has expired, anyone is free to make, use, or sell the invention or design. It is then said to be in the “public domain.”
Every patent is based on an application filed in the United States Patent and Trademark Office (PTO) on behalf of the inventor(s). The application includes a detailed description of the invention, the background and objects of the invention, drawings (if appropriate) showing the invention, a detailed specification of the best mode and embodiment of the invention, at least one “claim” and an abstract of the invention. The claim defines the boundaries of the monopoly provided by the patent, and is perhaps the most important part of the patent at least as far as the patent owner is concerned.
A utility patent requires that the invention as set forth in the claim(s) must be new, useful, and unobvious. To meet the novelty requirement, the claimed invention must not have been known or used by others in this country or patented or described in a printed publication anywhere before the applicant invented it. Moreover, if the invention was patented by another or described in a printed publication anywhere more than one year before the application date, or if the invention was in public use or on sale in the U.S. for more than one year before the application date, it cannot be patented. The non-obvious requirement is met if the claimed invention is sufficiently different from existing technology and knowledge so that, at the time that it was made it would not have been obvious to a person having ordinary skill in the particular art to which it pertains. The policy behind the novelty and unobviousness requirements is that a patent, being a legal monopoly, should only be granted for real advances in the art.
It is a common practice for patent applicants to have a search conducted prior to filing for a patent. This search can provide some indication as to whether the invention could be patented, and also whether someone else has a patent which would be infringed by making, selling or using the invention. Such “preexamination” searches have been traditionally performed by hand at the public search room of the PTO. However, there is growing confidence in computerized searches, particularly for certain types of high-tech inventions. Several commercial vendors, e.g., IBM, provide computerized searching through the World Wide Web or the Internet. The PTO has also made the abstracts of all U.S. utility patents from 1976 to date available for searching at its website “www.uspto.gov” and has made its APS search engine available for use at various libraries and other institutions around the country.
Every patent application is examined by a patent examiner, who reviews it for compliance with formalities, and then makes a search of prior knowledge or teachings (referred to as “prior art”), as evidenced by existing patents or other publications, to determine the patentability of the asserted invention. The examiner usually conducts the search by hand, and in some cases by a computerized database, referred to as the Automated Patent System (APS).
A U.S. patent gives its owner the right to exclude others from making, using, selling or importing the patented invention in the United States during the term of the patent. Anyone who does any of those proscribed acts without permission of the owner is an infringer — even if the infringer did not copy the patented invention or even know about it. Thus, copying is not required to find patent infringement. The determination of whether something infringes a utility patent is accomplished by reading the claims of the patent on the accused device or process. If at least one claim “reads on” the accused device or process, infringement exists. By “reading on” it is meant that every element found in at least one claim is found in the accused device or process. Even if an element called for in a claim is not found in the accused device, infringement may still exist if the accused device includes some element that is equivalent to the missing element.
Patent law provides various remedies for patent infringement such as an injunction to prevent the infringer from continuing to infringe, and monetary damages. In some cases these damages may be the profits that the patent owner would have made but for the infringement. In no case will damages be less than a reasonable royalty. If the infringement is deemed willful or deliberate, treble damages may be awarded. In special circumstances, the patent owner may also be able to recover his/her/its attorneys’ fees.
Related Representative Matters
- Procured family of patents on multiple inventions in eight countries for technology which client licensed in a multi-million dollar deal
- Salvaged valuable patent coverage from patent applications narrowly drafted and ineffectively prosecuted by prior counsel for medical device manufacturer
- Represented a leading manufacturer of security devices in building, consolidating and managing its worldwide patent portfolio of more than 1800 patents
- Represented a leading multinational life sciences company in freedom-to-operate clearance searches and licensing opportunity identification
- Represented a generic pharmaceutical company in an Inter Partes Reexamination proceeding which invalidated all the claims of the patent at issue
- Represented a generic pharmaceutical company in an Ex Parte Reexamination proceeding in which the claim at issue was found invalid by the Patent Office
- Provided leading animal health company with a second opinion based on a legal theory missed by prior counsel, thereby assuring the company that it had freedom to operate in the desired space
- Leveraged inventorship correction rules to recover rights in inventions misappropriated by our client’s overreaching customer while maintaining the business relationship intact
- Assisted a small business by sucessfully preparing and prosecuting hundreds of its medical device patents to the point where it has become a NASDQ company and its products are considered the standard of care in its field