7 Common Patent Myths

Debunking Intellectual Property Myths

When you are a Texas 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 Law Office of Jeff Williams today to schedule a free consultation.

Why Intellectual Property Should be Protected

Patent Protection

Holding a patent gives you the right to pursue legal remedies if you see that a competitor is using your invention on their products. That’s because a patent gives the owner the right to exclude everyone else from selling, using or making goods or services that contain the claimed invention. It is possible for the patent owner to license the technology that is covered by the patent to anyone that they choose, but sometimes people use protected technology without asking permission.

Patent owners are entitled to stop this use of their invention through a legal injunction obtained in federal court. Under the law, the owner can collect damages for this unlicensed use, and if it can be proven that the infringer used this technology willfully and knowingly, then the owner can recover up to three times the actual amount of damages suffered.

Patent Infringement

Unfortunately, patent infringement litigation can be complicated, time-consuming and expensive. This is why it is always sensible to consult with a patent attorney to explore the options for proceeding. Typically, an infringement lawsuit is a final step after all other efforts have failed. Even then, litigation is not always warranted if the economic harm is relatively small compared to the cost of a court battle.

All that may be required is a stern but friendly letter attaching a copy of the patent, explaining that the competitor is unlawfully using technology that’s protected by a patent. When the letter comes from an attorney, it usually carries more heft, and with a copy of the patent attached, the infringer is put on notice. Any further use of that technology will be knowing and willful.

If someone is trying to sell a knock-off product with a logo or brand name that is confusingly similar to yours, then a registered trademark affords you a variety of legal protections. Discovering that your trademark is being used by another, unauthorized person can be infuriating. While having a federally registered trademark does give you the right to sue in this situation, it generally is sensible to start with a cease-and-desist letter.

Much like patent infringement, it is always advisable to have such a letter sent by a qualified intellectual property attorney. This demand letter clearly states the issue and how it is having a detrimental effect on the owner of the trademark rights.

It is a possibility that the infringer genuinely did not know about the trademark owner’s rights. In this case, they may quickly respond with a promise to not use the mark any longer.

On the other hand, it’s possible that the infringer absolutely knows about your trademark rights and was seeking to benefit from the goodwill that you have worked hard to build with the public.

Whether the infringement was intentional or not, the letter will establish a short deadline by which the infringer must stop all use of the mark. Typically, the letter also will state consequences that will ensue if the infringement continues. This may be kept vague with language suggesting that the trademark owner will “explore all legal remedies.”

If the infringer does not immediately respond or promise to discontinue use, then it may be possible to enter into a series of letters or negotiations that seek to resolve the situation amicably. Should these efforts fail, then your trademark attorney can file a trademark infringement lawsuit.

Infringement Lawsuits

These lawsuits may be filed on the basis of a likelihood of confusion. Basically, trademark law is aimed at protecting consumers. Trademarks are meant to help members of the public readily and correctly identify the origin of the products they are purchasing. A confusingly similar mark muddies the water, perhaps leading consumers to purchase an item that they believe is the genuine article while it is actually a knock-off.

Trademark infringement lawsuits also may be filed on the basis of tarnishment or dilution of the mark. If you have a famous and well-respected mark, then use by a cut-rate competitor on inferior goods can have a negative effect on your reputation. The result is loss of profits, and this can be extremely harmful to your business. However, when you work with an intellectual property attorney, you can protect your trademark rights.

Copyright Protection

The same is true with copyrights. You can prevent other people from using your protected material when you have obtained an official copyright registration. Much like the remedies available for patent and trademark infringement, you do have the option to sue if your copyright is infringed. Once again, this usually is not the first step to take as litigation is always risky and expensive.

While you are not required to register your creation with the copyright office, doing so does give you the presumption of ownership, which can be powerful in any dispute. Moreover, registration of copyrighted materials entitles the plaintiff to collect statutory copyright damages. This means that if you do prevail in court, you could be awarded significant damages.

However, the smart first step is to engage an intellectual property attorney to send a cease-and-desist letter to the infringer. When they are written on law firm stationery, such letters can be incredibly effective. Accordingly, this is the least stressful and most cost-effective way to deal with the situation.

Contact Williams IP Law to learn more about how you can protect your business by protecting your intellectual property. Obtaining protection via patents, trademarks and copyrights will help you to hold on to your ideas and grow your business.

Fair Use Vs. Intellectual Property

Fair Use

An individual or entity may accordingly use copyrighted material without first obtaining the permission of the owner of the copyright. This means that fair use is an affirmative defense that may be used if an owner makes a claim of infringement.

It also is possible to claim fair use if the new work is somehow transformative. Defining “transformative” in this sense is immensely difficult. In fact, many copyright owners and alleged infringers have gone to court over just what “transformative” use really means.

The answer is that hard-and-fast rules on this topic do not exist. Related court decisions over the years have been varied, and although it seems confusing, this actually demonstrates that the concept of transformative use actually works.

The various lawmakers and judges who took part in drafting the fair use exceptions were deliberately vague on this point because they didn’t want to place unnecessary limits on the definition. Effectively, they wanted it to be open to interpretation and to be defined expansively, much as free speech is.

Fair use doctrine frequently is relied upon to defend commentary and criticism. Whether you are the movie or book reviewer for your local newspaper or have a YouTube channel on which you critique the latest pop album releases, you generally have the right to reproduce some portion of the work that you are reviewing.

The same is true when a news anchor or a reporter provides quotes and a summary of a new medical study. This is considered fair use because the protected material is being used for commentary and criticism purposes.

What makes this type of use acceptable under the law is that the public could reap benefits from reading or listening to the critic’s or reporter’s insights. The review or report is enhanced through the inclusion of some of the copyrighted material.

Fair use also makes it permissible to create parodies. Of course, what actually qualifies as a parody may be up to the discretion of a judge if the creator of the copyrighted material doesn’t agree that the new work is merely a humorous expression of literary criticism or social commentary.

Case Examples

Consider some examples to see how differently things can be viewed by the courts. In one case, Leibovitz v. Paramount Pictures Corp., famed photographer Annie Leibovitz took exception to a parody of the photograph that she took of a naked, pregnant Demi Moore. Leibovitz’s work appeared on the cover of Vanity Fair and caused a sensation at the time. Later, Paramount Pictures published a send-up of the photo showing the head of actor Leslie Nielsen digitally grafted onto the body of a pregnant, naked woman. The pose and lighting were similar to those in Leibovitz’s photo.

In this case, the court decided that the picture by Paramount was clearly parodic in nature.

That was not the case when a court decided Dr. Seuss Enterprises, L.P. vs. Penguin Books USA, Inc. Penguin had published a Dr. Seuss-style book that they claimed was a parody of the O.J. Simpson murders. It was entitled, “The Cat NOT in the Hat!” and was purportedly authored by Dr. Juice. The judge found that this book was not a parody and made a judgment in favor of the plaintiff.

Clearly, not everyone agrees on what constitutes fair use.


Intellectual Property

When determining the purpose and character of the use of the copyrighted material, the court will look at whether the use was commercial or non-commercial. Use that is commercial is less likely to be deemed fair use, but if it is non-commercial, then there is a much better chance that the court may see it as fair use.

Courts also look at the nature of the copyrighted work. Specifically, the judge will examine whether the underlying work can be considered as more factual or more creative. When the copyrighted work is more imaginative or creative, then it is less likely that someone else’s use will be considered fair use. Another critical consideration is whether or not the copyrighted work has been published. It would be very difficult to claim fair use that is based on an unpublished work.

The court will look at how much of the copyrighted material is used in the new work as well. Suppose that the new work uses only small amounts of the copyrighted work, like a quote from a novel or a still image from a film. Such relatively limited use of the copyrighted material is unlikely to be considered infringing. On the other hand, if the new work uses a significant amount of the original work, then the court may decide in favor of infringement.

To demonstrate just how subjective this determination is, it is worth noting that the judge additionally considers whether or not the portion of the copyrighted material that was used was the “heart” of the original work. If the judge feels that the borrowed portion was the heart of the original piece, then using even a small amount of it may be considered infringing.

Determining fair use also may depend upon the effect of the new work on the market. Essentially, the court must decide whether or not the activities of the defendant may cause harm to the market as well as whether or not the new use may harm potential markets that the owner of the copyrighted material might exploit. If the court determines that the use may harm the owner’s current and potential markets, then the judge is likely to conclude that the use was infringing.

Copyright Basics

Many business owners have become astute about the critical need to protect their intellectual property with patents and trademark registrations. However, copyrights tend to get overlooked.

Copyrights are a fundamental aspect of intellectual property protection. Relatively speaking, registrations are easy and inexpensive to obtain, yet they provide strong protections. Working with an intellectual property attorney may be the best way to ensure that your company is taking full advantage of the protections that are afforded by copyrights.

What Is a Copyright?

Basically, a copyright protects an original work by an author. A person who holds a copyright has the sole authority to distribute, display, modify, copy or perform the work. Most people know that a book can be copyrighted, but so can articles in online formats and in magazines. The same is true for photographs, paintings, sculptures, plays, movies, music videos, ballets, songs, architectural drawings, computer software source code and many other materials.

Several of the items that are created and used within the course of business may be protected by copyright. This can include flyers, promotional materials, blogs, product packaging, content on the company website, jingles used in advertising and more.

The owner of the copyright is the only individual or entity that has the right to use, modify and distribute the protected materials. Anyone else who wishes to use the material in whole or in part must seek and obtain permission to do so from the copyright holder. If they fail to do this, then they may be prosecuted for copyright infringement.

What is Protected By a Copyright

A copyright protects “original works of authorship”. Copyrightable works fall into the following categories:

  • Poetry
  • Novels
  • Movies
  • Songs
  • Computer Software
  • Architecture
  • Graphic design works
  • Sculptural works
  • Choreographical works

What is Not PROTECTED BY COPYRIGHT?

Not everything is protected by copyright law. To be protected by copyright, a work must contain at least a minimum amount of authorship in the form of original expression. The following are categories of things generally not protected by a copyright:

  • Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices.
  • Titles, names, short phrases, and slogans; mere listings of ingredients or contents.
  • Works that are not fixed in a tangible form of expression, such as an improvised speech or performance that is not written down or otherwise recorded.
  • Works consisting entirely of information that is commonly available and contains no originality.
  • Works by the US government.

How Do You Get a Copyright?

As soon as a work is recorded in some tangible form, it enjoys immediate copyright protection in the U.S. The moment your website is ready to be published or your marketing materials are ready for distribution, they are protected.

Registration is not required, but it is recommended. Registration provides enhanced protection. It’s possible for authors to apply for copyright protection through the website of the U.S. Copyright Office. Fees of between $35 and $55 are due at the time of application. The office will request that a copy of the work to be registered be submitted for review and for them to keep on file.

Registrations generally are issued within a few weeks or months. On some occasions, the office will have additional questions about the work or about whether or not the work is suitable for copyright registration. An intellectual property attorney can handle this process for you.

How Long Does a Copyright Last?

If your work is new and was published on or after January 1, 1978, then the work is protected by U.S. copyright law for the author’s lifetime plus 70 years. If the work was not authored by an individual, but by a corporation or other entity, then it is entitled to 120 years of protection from the date of creation or 95 years of protection from the date of publication. In this case, the earlier date would prevail.

Works that are older than these time limits are said to be in the “public domain.” As an example, Mark Twain’s novel The Adventures of Tom Sawyer was published in 1876. This means that it is subject to earlier U.S. copyright law. Anything published prior to January 1, 1923 is officially in the public domain. This means that if you want to record Tom Sawyer as an audiobook or adapt it as a play, you are free to do so.

Are There International Copyrights?

International copyrights do not exist at this time. It may be useful to know that the Universal Copyright Convention and the Berne Convention do help to honor copyrighted works on an international level, and that the U.S. is a member of both conventions.

Copyright Violation Penalties

Depending on the nature of the offense, penalties for copyright infringement can vary in severity.

  • Not including attorney and court fees, violators can be fined of up to $150,000 in the U.S. and $1 million in Canada.
  • Any items that violate the copyright can be impounded.
  • The violator can receive jail time.

To avoid the consequences of copyright infringement, it’s important to know how copyright laws work. This will help you understand how to protect your own rights and avoid infringing on those of others.

If you have more questions about copyrights or about how to obtain a copyright registration on one of your original works, then contact Jeff Williams, an experienced intellectual property attorney.

What Is a Provisional Patent Application?

A great deal of intellectual property terminology is carelessly tossed around these days with the result that there’s confusion in the public about these terms. Consequently, people wonder about what a trademark is and how it’s different from a copyright. Or, they have serious questions about “provisional patents.”

This last question is especially troubling to legal professionals who work in the realm of intellectual property because there’s no such thing as a “provisional patent.”

However, there is a “provisional patent application,” and it can be a powerful tool for inventors in the U.S. Unlike a regular, non-provisional patent application, a provisional patent application is never examined by the U.S. Patent and Trademark Office. It is never published, and it will never mature into an actual patent.

This may make it sound as if filing a provisional patent application in the U.S. is a waste of time, but that is absolutely untrue. Some inventors have exceptionally good reasons for filing this type of application, and your patent practitioner may recommend that you do so based on the status of your invention.

Benefits of a Provisional Patent

  • A provisional patent costs significantly less than an actual patent.
  • It’s easier for someone to file a provisional patent on their own than an actual patent.
  • Inventor can use the “patent pending” on their idea for 12 months.
  • Gives the inventor time to build and test their patent and refine it.

First to File

In the U.S. and other countries, it doesn’t matter so much who is the first to invent a new product or process. Instead, the real race is to be the first person to file a patent application for the idea. This is because the law states that whoever is the first to file a patent application is the rightful owner of the invention.

If another individual files a patent application for the same invention, then they have virtually no chance of obtaining patent protection because someone else got there first. Accordingly, a provisional patent application is one tool that may be used to ensure that the applicant is the first to file the paperwork.

What Is Contained in a Provisional Patent Application?

A provisional patent application typically is shorter and less formal than a non-provisional patent application. This is because the disclosure will never be reviewed by the U.S. Patent and Trademark Office. Nonetheless, the provisional patent application must contain a clear and concise disclosure that adequately describes the subject matter of the invention.

Unlike a non-provisional patent application, a provisional patent application does not need to have claims. It may include drawings to further illustrate the subject matter of the application.

How much does a provisional patent cost?

There are some things that can change the cost but in general filing a provisional patent application with the USPTO can cost anywhere between $70-$280.

Once the provisional patent application is received and approved, the inventor is now entitled to describe the invention as patent pending throughout the 12 month allotted period.

Why File a Provisional Patent Application?

One of the main reasons to file a provisional patent application is to meet the first-to-file requirement in accordance with U.S. intellectual property law. The first person who files is far more likely to receive any available patent protection than an applicant with a later filing date.

The provisional application lasts for precisely 12 months. During this time, the applicant may make improvements or refinements to their invention. They also may work on formalizing their patent application, such as completing claims that more specifically point out the subject matter that they seek to protect.

Filing a provisional patent application also allows the inventor to say that their creation is patent pending. This can be enormously attractive when seeking funding or partners for the endeavor. Moreover, the filing of a provisional application provides an earlier effective filing date for any non-provisional or foreign application that is filed later.

Is a Provisional Application Right for You?

The best way to find out is by consulting with a qualified patent attorney. They can suggest the best method for seeking patent protection for your invention, and they may recommend performing a search to ensure that patent protection likely is available for your idea. In the long run, this saves you time and money.

Additional Things to Know

  • A provisional patent is valid for one year.
  • After the 12 month period a provisional patent application cannot be extended or renewed.
  • USPTO only reviews the provisional patent applications to make sure the meet the minimum filing requirements.
  • USPTO does not examine provisional patent applications.
  • A provisional patent cannot be file for a design.
  • Provisional patent applications are not generally published by the USPTO or publicly visible.

Closing

At the Law Office of Jeff Williams we help clients navigate through all the intricacies of intellectual property including provisional patent applications.

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.

What is a patent broker?

When a large company obtains a patent, they frequently have the resources that are required to put it to use. That is, they have a manufacturing division that will be building the new product. Or, perhaps the patent covers a small refinement to an existing product. In this case as well, the company will simply incorporate the new component into their assembly process.

However, it is not only multi-national conglomerates that obtain patents. Some patents are owned by individuals or a very small new business that is just getting started. What can you do with a patent when you don’t also own a factory and a warehouse?

Many options are available, such as licensing your patent rights to a company that wants to make your product or incorporate it into their existing product.

Another option is to sell your patent rights through a patent broker.

What Is a Patent Broker?

Imagine that you own a home that you would like to sell. In order to save yourself some money on Realtor commissions, you decide to list the home yourself.

The problem with this approach is that it’s quite a bit of work. Despite staging the home and holding several “open house” events, several weeks or even months go by without anyone making an offer on the property.

You start to get worried. A great deal of time and money has been spent trying to get this house sold, but nothing is happening.

Would it have been better to engage a Realtor in the first place?

A patent broker is kind of a like a Realtor for a patent. They use their business connections to try to sell your patent. Sometimes, this happens in an auction.

This sounds like the ideal set up, and in some cases, it can work. However, working with a patent broker usually isn’t the best option for a number of reasons.

Potential Problems with Patent Brokers

As in any profession, some patent brokers are more trustworthy than others. This is problematic because it can be difficult to know which broker can be relied upon and which one is really just looking after his own interests.

Consider that a patent broker is allowed to represent both the buyer and the seller in any transaction. This means that the broker isn’t wholly vested in making certain that you, the seller, gets the best possible deal. Obviously, this can be bad news for the patent owner.

Another problem is that patent brokers sometimes offer to buy a patent at one price, but then sell the patent to someone else at a much higher dollar amount. This represents a nice profit for the broker, though it hardly seems fair to the original patent owner.

Moreover, patent brokers may collect a finder’s fee from the buyer of the patent, which may again cause them to put their interests above those of the seller.

It’s also possible that patent brokers may share privileged or confidential information with a potential buyer. If you have data that you prefer to keep confidential, then you may not want to work with a broker.

Working with a Patent Attorney Is Different

When you engage a patent attorney, they are legally and ethically bound to solely protect your interests. Your attorney may represent you in a transaction, but he most certainly will not also be representing the other side, which would be a clear conflict of interest. The result is that you are much more likely to close a fair deal.

You attorney will always keep your confidential information private, even while negotiating a purchase contract, which means that you don’t have to worry about proprietary data getting into the wrong hands.

Just as critically, a patent attorney can provide you with valuable legal advice regarding the scope of your invention so that it can be implemented without infringing someone else’s patent.

Intellectual property lawyers even can assist you to explore patent monetization strategies that can help you put your patent to work while cutting out the expense and potential pitfalls of working with broker.

Work with Williams IP Law

If you have obtained a patent, then it’s vital to realize that this is a valuable asset to you or your business. Getting a patent is costly and time-consuming, which means that you are probably excited about the opportunity to actually start making a profit from all of your hard work.

Is engaging a patent broker the right step? It might be, but in most cases it is wiser to work with an experienced patent attorney like Jeff Williams who can provide the sensible guidance that you need.

If you are looking for a way to monetize your patent, contact the Law Office of Jeff Williams today.

Patent It Yourself

Patent Steps

Obtaining patent protection for your invention is complicated. With an understanding of the steps involved in pursuing a patent, inventors will have a better grasp of how convoluted it is. An intellectual property lawyer’s familiarity with this intricate procedure helps entrepreneurs to receive the suitably broad protection that their invention deserves.

Use this overview to familiarize yourself with the patent application system, then reach out to a qualified attorney for money- and time-saving guidance.

1. Understand Your Invention

The better you know your invention, the better your chances are of pursuing patent protection. It’s critical to identify the aspects that make your invention novel. Whether your invention has one novel aspect or is groundbreaking from top to bottom, you’ll want to know each of these aspects intimately so that they can be described and claimed in your patent application.

Scope is another crucial consideration. Examine whether or not there are other methods of building your invention. Brainstorm all of the possible methods of making your invention even if they’re not as effective as your preferred method.

Further, take some time to consider whether or not your invention could have a broader application. If the invention could be used for a purpose beyond the intended one, would it need to be modified?

Spending time on each of these aspects helps you to understand your invention, which means that you may be able to claim broader protection.

2. Research Your Invention

The USPTO won’t grant a patent unless some aspect of your invention is new and novel. Accordingly, it’s sensible to be aware of the technology that came before. This means conducting an electronic search through the records of the USPTO for any issued patents or published applications that may be similar. You also may want to use a search engine to find any white papers, brochures or presentations that may disclose similar technology.

This helps you decide whether or not your invention is novel enough to receive a patent. However, patent searching is difficult. Whether or not a reference will interfere with your ability to obtain patent protection may turn on an obscure factor. It’s always sensible to ask a patent attorney to conduct a patent search and provide their legal opinion with regard to whether or not it’s reasonable to pursue a patent.

3. Choose the Type of Patent Protection

By now, you’ve spent time thinking about and researching your invention. If you believe more tinkering is warranted, then you may want to file a provisional patent application. Such an application affords you an earlier filing date, effectively putting on record with the USPTO that you were the inventor of this item on this date. Then, you have one year within which to file your real patent application.

Your provisional patent application will never be examined, and it won’t become a patent unless you follow it up with a non-provisional patent application. This is the filing that the USPTO will review in detail.

4. Draft Your Patent Application

This is one of the most complex parts of the process. Get it wrong, and you risk being unable to obtain any kind of patent protection or detrimentally limiting the scope of any protection that you do get.

If you do plan to file by yourself, then it’s critical that you review the Manual of Patent Examining Procedure at the USPTO website. It’s heavy on the legalese, but it does lay out all of the required parts of a patent application. Follow it with great care, and you may have some success. We have also have another blog specifically on patent drafting.

Benefits of Self-Drafting

Below are some of the benefits of preparing and filing your own patent application:

  • You can potentially save thousands in patent attorney costs.
  • You are more flexible on when you file and do not have to wait on anyone else’s schedule.

Risks of Self-Drafting

Below are some of the risks of preparing and filing your own patent application:

  • Costly mistakes in preparing the patent application could result in the loss of some or all of your patent rights.
  • A significant amount of time will need to be spend learning how to prepare and file a patent application.
  • You may not be ready to file for patent protection in foreign countries within one-year of your patent application.

Patent lawyers spend years understanding how to draft a patent application and honing their skills. This experience enables them to obtain the broadest and most meaningful protection for your invention. Remember, the better written your application is, the more likely it is that it will be allowed.

5. Wait for a Response from the USPTO

Months or a year or two later, you may receive a response, called an Office action, from the USPTO. Examiners at the USPTO are lawyers who possess specialized technological knowledge. Accordingly, they may reject the claims of a patent application using legal terms and citations that are unfamiliar to most inventors.

It is nearly always advisable to ask a patent attorney to respond to an Office action as they can do so in a manner that is acceptable to the USPTO and also may be persuasive.

Pursuing patent protection is difficult. It helps to have a qualified legal professional at your side to take the mystery out of the process. If you do need help let us know!

We have also written a more in depth step by step patent process to assist.