Basics of a Patent Claim

A patent application contains many parts. These include components such as a specification, claims, an abstract and drawings. While drawings are not required, all of the other components are.

Perhaps the most important required part of the patent application is the claims. When they are new to patent prosecution, most people don’t know what a patent claim is. That’s why working with a skilled intellectual property attorney is so vital. They can walk you through the process and craft a claims set that protects your invention from every angle.

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The Pharmaceutical Patent Cliff

The Basic Premise

Like all other business ventures, pharmaceutical companies exist to make a profit. Typically, they achieve this goal by creating a useful new drug that cures or alleviates the symptoms of certain diseases and conditions.

Companies ensure that they have the exclusive right to manufacture and sell these drugs by obtaining patent protection. However, that protection doesn’t last forever. The expiration of a patent means that makers of generic drugs are able to enter the market, and that can mean a huge loss of revenue for the innovating company.

This means that it is critical for these organizations to plan for long-term growth and stability while also continuing to innovate for the future.

Patents for Pharmaceuticals

When a company creates a formula that brings about a beneficial effect in the treatment of an illness or disorder, they file for patent protection with the U.S. Patent and Trademark Office. When such a patent is granted, it provides the owner with the exclusive right to make, use and sell that drug for a period not exceeding 20 years from the date on which the patent application was filed.

When a drug is incredibly successful, it can easily earn billions of dollars for the innovating company. Unfortunately, it can take years to develop a new drug, and it may take even more years of trials before the drug is approved for use by the general public. This means that pharmaceutical companies have only a limited amount of time to financially benefit from sales of the drug. Of course, all of that research and development also is incredibly expensive.

What Is a Patent Cliff?

In recent years, the patents on many blockbuster drugs have expired. These include Pfizer’s Lipitor for lowering cholesterol, the blood thinner Plavix from Bristol-Myers and the antipsychotic drug called Zyprexa from Eli Lilly.

Each of these drugs has earned billions of dollars for their respective creators. However, as the patents come to the end of their terms, each of these companies approaches a patent cliff.

That cliff is represented by a precipitous drop in revenue as generic drug makers begin producing their own, far cheaper, versions of these drugs.

What Does the Pharmaceuticals Patent Cliff Mean Now?

The patent cliff may be good news for consumers and for the employers that provide them with health insurance. This is because the generic versions of drugs typically cost between 20 and 80 percent less than the brand-name versions did. A prescription that once cost nearly $100 per month may cost around $10 once it is available as a generic.

What is good news for consumers and employers is potentially disastrous news for innovating drug makers. Not only will they see their massive profits dissolve but also they will have less money available for researching and developing new blockbuster drugs.

With less money for research, the introduction of new drugs will dramatically slow. This means that people who could benefit from a new prescription drug will have to wait for it, perhaps for years. That can translate to the serious deterioration of the individual’s health or even their death, situations which could be avoided through the swifter availability of effective new medications.

Pharmaceutical Companies Seek to Make Generics Work for Them

Drug manufacturing companies are looking for ways to enter the generic drug market. Sometimes this means manufacturing their own generic version of the medicine. At other times, this means entering a new market somewhere else with the generic drug.

Some companies, such as Pfizer, long ago recognized the upcoming patent cliff and took steps to prepare themselves. Accordingly, Pfizer will manufacture both brand-name Lipitor and the generic atorvastatin in order to maintain as much market share as possible.

Whether your industry is pharmaceuticals or something entirely different, your valuable inventions and innovations may need to be protected with a patent. Work with qualified intellectual property counsel from Williams IP Law to plan a common-sense strategy for tomorrow and beyond.

Patent Exhaustion Explained

Patent Exhaustion explained

Intellectual property law is rife with terms that appear ambiguous. “Patent exhaustion” is one of these.

In fact, most entrepreneurs have never heard of this term until their intellectual property attorney mentions it. Understanding what exhaustion is can help inventors and entrepreneurs protect the long-term profits that are associated with their invention.

What is Patent Exhaustion?

This term refers to the point at which the patent holder no longer has the right to dictate how their invention is used. Typically, this happens at the sale of the product. The patentee has the right to determine who, where and how their product is manufactured. They can even decide the materials that are used. However, once a consumer purchases that product from a store, it’s theirs to do with as they please.

This means that the consumer can modify, add to or subtract from the product. Consider a passenger car. The manufacturer holds numerous patents concerning the components in the vehicle. As the patentee, they may control manufacturing and distribution.

However, once the consumer buys the car, they have the right to modify the vehicle. They can add a sunroof or a remote start system, and the patentee has no power to prevent them. This is because the reach of the patent has been exhausted.

Exhaustion also may occur when a patentee gives away or sells the rights granted by the patent. They now have no legal recourse to control the invention as those rights have passed to the new owner of the patent.

When Patent Exhaustion Applies and When It Doesn’t

This facet of IP law applies when you maintain your patents rights and have control over manufacturing and distribution. It similarly applies when you rely on a robust licensing agreement that allows someone else to handle these processes for you.

Exhaustion does not apply if you sell your products internationally, and then someone else imports them back into the U.S. where you hold a patent. If this importation is done without your permission, as the patent holder you have the right to sue.

Frequently, it’s wise for the inventor of a product to obtain multiple patents for the various components of their invention. This may include not only innovative parts within the larger device but also patents related to how the product is used. Inventors also may want patent protection on replacement parts or accessories.

Well-Known Legal Cases

Many inventors rely upon license agreements to protect their interests. These agreements must be detailed so that the inventor retains his rights with regard to how the product is manufactured, which materials are used and how the product is ultimately used. The more detailed and precise these agreements are, the better the protections are for the inventor if the other party violates the contract.

An example of this occurred in Helferich vs. The New York Times. Helferich owned numerous patents related to the manufacture of mobile devices and how content could be provided to these devices. With a license agreement, they made it possible for various companies to make these devices while precluding the ability to make software or apps for the devices.

Helferich sued when content providers violated this agreement. The courts decided for Helferich because the agreement applied only to the manufacture of the devices and not to providing content to them.

Another example occurred in Lexmark vs. Impression Products. Lexmark owns patents for and makes toner cartridges. The company stipulates that these cartridges cannot be reused and must be returned to them when empty. Impression began buying empty cartridges, refilling and reselling them.

Lexmark sued over patent infringement, but Impression argued that patent holders cannot add restrictions to how a buyer uses a product and that because Lexmark sold their products overseas, the exhaustion doctrine applied.

The case will go before the Supreme Court as the lower courts can’t seem to agree on these issues. The impact on IP law of this case and others like it is to underline the need for stringent licensing agreements and for innovators to consider pursuing multiple patents for their invention. These methods are reliable when it comes to protecting profits and ensuring that the inventor takes full advantage of their hard work.

Recent Smart phone patents

Innovation in Technology

Recent SmartPhone PatentsSmartphone technology moves at the speed of light. This means that manufacturers are continually pursuing patent protection for their new tech in jurisdictions around the world. While many of these technological innovations won’t show up on smartphones for years, others may be available the next time you are ready for an upgrade.

Here’s a look at some of the latest tech patents that are being pursued around the world by smartphone manufacturers.

The Reverse Notch Display

Notched smartphone displays were introduced a couple of years ago, primarily being seen on the Apple iPhone X and the iPhone XS. A smartphone that has a notched display doesn’t have a regularly shaped rectangular screen. Instead, there is a cutout somewhere in the design.

That cutout may house any number of different components such a front-facing camera, speakers or sensors. Manufacturers may choose to include a notched display on a smartphone to achieve a more attractive screen-to-body ratio, to make the overall phone smaller or to provide more screen space.

Currently, Samsung is pursuing a design patent application in Korea for a smartphone display with a reverse notch. The disclosure says that Samsung is seeking to maximize the screen size, which means that the notch is placed above a full-size display. Accordingly, “a display panel [is] attached to the back of the cover window used in a smartphone. The cover window includes a protruding portion at the top center …”.

This doesn’t sound like a particularly practical solution, so we’ll see if it ever hits the marketplace.

Masking the Punch-Hole Camera

When Samsung innovated the punch-hole, front-facing camera on their Galaxy S10 series, it was ground-breaking technology. Today, it’s old news. Samsung plans to drop the feature on its new phones, and ZTE is seeking patent protection for a means of masking the black dot on the home screen so that users can have maximum screen space.

The new tech moves the camera to a high corner of the screen so that it aligns with notification icons. It looks like it’s just part of that row, placed next to the battery icon. The ultimate goal is to eliminate as much of the smartphone bezel as possible. This is just one more way to get the job done.

Dual In-Display Cameras

In an effort to do away with the need for a pop-up mechanism or a display cutout to be used with a front-facing camera, a new patent has been obtained in China by Xiaomi. In the patent’s disclosure, the invention would involve a pair of cameras placed under the display.

Once again, this helps to maximize the screen-to-body ratio. The camera operates through the transparent display, with the only real downside being that the display can interfere with image quality. In other words, this technology is definitely still under development. While it may appear on some of the latest mid- and low-range smartphone models, it’s unlikely to appear on the higher-end phones until some of the kinks have been worked out.

A Better Battery-Life Meter

Anxious to get back into the smartphone game, Microsoft is pursuing patent protection for an improved battery-life meter. According to the disclosure, the improvements are directed toward providing users with more comprehensive data concerning how much battery life is remaining. This means that the smartphone could not only measure the battery level but also provide usage times based on a variety of scenarios so that people can maximize the remaining battery life.

If you’re interested in pursuing patent protection for any type of technology, then contact Williams IP Law to schedule a free consultation.

Differences Between Patent Engineers, Patent Agents and Patent Attorneys

The Inventors Expertise

Inventors frequently are experts in their particular field. They understand the pertinent technology, and they have developed an innovation that may revolutionize the field.

It’s only natural for this individual to want to obtain a patent on their invention. Occasionally, inventors are tempted to draft a patent application and to try to prosecute it without assistance. This generally ends up being a costly error.

Although the inventor possesses incredibly detailed knowledge of their invention, they do not have any training or experience when it comes to writing a proper patent specification. Moreover, they likely do not have the legal knowledge that is necessary to complete prosecution. This lack of experience and knowledge may cause them to make a fatal error that precludes them from obtaining any patent protection.

Working with a professional in the intellectual property field can help to prevent this situation. It also ensures that you don’t end up with a patent that is so broad that it is essentially meaningless or with one that is so narrow in scope that it doesn’t provide any protection.

Most of these professionals work in intellectual property law firms. Patent engineers, patent agents and patent attorneys all may work together to ensure that your invention gets the legal protection that it deserves. What are the differences between these patent professionals?

Patent Engineers

A person who works as a patent engineer must have considerable specialized knowledge in a scientific or technical field. While they have not passed the patent bar and are not a lawyer, they still are able to perform numerous essential functions.

Patent engineers may perform searches in various databases to discover prior art for a particular invention. This may help with a decision regarding whether or not patent protection may be available for a certain innovation. The engineer may write reports or even provide much of the detail for the specification of the patent application.

Occasionally, the patent engineer works closely with the inventor to better understand the new product or process so that it can be adequately described in the specification.

Patent Agents

Like patent engineers, patent agents have a great deal of knowledge in scientific or technical areas. It’s not unusual for these professionals to hold a graduate degree or a Ph.D. Moreover, they have passed the Patent Bar Exam before the U.S. Patent and Trademark Office. This qualifies them to file patent applications, advise clients as to the patentability of their inventions and to assess prior art.

While patent agents are qualified to handle almost any patent prosecution matter before the USPTO, they are expressly prohibited from providing legal advice. Accordingly, clients who need legal counsel for any business-related matter that is connected to their pursuit of a patent will need to work with a patent attorney.

One of the main advantages of working with a patent agent as opposed to a patent attorney is the cost. Their hourly rates tend to be more affordable.

Patent Attorneys

A patent attorney is essentially a patent agent who also holds a legal degree. Like engineers and agents, these attorneys must have formal education in a scientific or technical area. This may include a Bachelor of Science, Master of Science or a Ph.D. These professionals then attend law school, and they must pass the bar exam in the state where they intend to practice.

Next, they must pass the Patent Bar Exam to practice before the USPTO. With their education and background, patent attorneys are prepared to handle all facets of patent prosecution. This may include litigation if a patent is being infringed.

While it may cost more to hire a patent attorney than a patent agent, it is typically worth the expense. Working with a patent attorney provides you with all of the knowledge and skill that you’ll need to negotiate the process of pursuing patent protection.

As all of these patent professionals typically are employed by an intellectual property law firm, it is likely that an inventor may encounter at least two and perhaps all three of these professionals. Each one is working toward the same goal of obtaining the broadest, most meaningful and enforceable protection that is available for your invention.
Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.

Patent vs copyright vs trademark

People who are unfamiliar with the various forms of intellectual property protection often use terms like “patent,” “trademark” and “copyright” almost interchangeably. In reality, these are three distinct forms of protection, each of which is designed to defend your rights to a specific type of intellectual property.

Understanding the difference is critical when you want to ensure that you have the right to fully defend your intellectual property. An intellectual property attorney can provide customized guidance and advice in your unique situation. Nonetheless, it is possible to describe here the three major forms of intellectual property protection.

What Is a Patent?

A patent protects a new invention, which may be a machine, a product, a process or a chemical composition. It is possible to obtain a patent on the design or appearance of an item just as it is possible to patent a new plant species.

A patent does not grant the holder the right to manufacture or sell their invention. Instead, it gives them the right to exclude others from using their proprietary innovation. Thus, if a patent holder notices that a competitor is selling a product that infringes on their patent rights, the patent holder may sue the alleged infringer.

Patents are only valid for a finite period of time. An invention is protected by a utility patent, which is valid for 20 years from the filing date of the patent application. A design patent is valid for only 14 years from its filing date.

While the patent is in force, it is possible for the owner to license it to others who may manufacture, sell or otherwise use the patented subject matter. Patent owners also may sell their rights to another party.

What Is a Trademark?

Trademarks may take many forms, including a single word or an entire phrase. A trademark registration also may cover a design, symbol or a combination of text and a design.

The strongest trademarks are unique and distinctive. Their primary purpose is to identify the source of the goods or services on which they are used. For example, when people see the famous Nike “swoosh” on a pair of shoes, they are immediately able to identify the footwear as coming from Nike.

In the U.S., trademarks are registered for particular goods and services that the owner must identify in their application for registration. Use of the mark in connection with the goods or services must begin in U.S. commerce before a registration can be obtained.

Accordingly, a company or individual may apply for a trademark registration that covers a wide variety of goods and services such as restaurant services, t-shirts and music performances. Before a registration can be obtained, the owner must demonstrate that the mark is actually being used on all of these goods and services. If they decide not to use their trademark on t-shirts, then these goods must be deleted from the application before the mark can proceed to registration.

U.S. trademarks are renewable in perpetuity for 10-year periods. Every 10 years, the owner must submit fees and proof that the mark is still being used in commerce.

What Is a Copyright?

A copyright is used to protect any work of original authorship. While most people understand that a book is copyrighted, they may be more surprised to learn that a painting, sculpture, choreographic work, photograph, movie or software code also may be protected with a copyright.

Copyright protection is automatic in the U.S. As soon as a creative expression is captured in some tangible form, it is copyrighted. However, it is further possible to register the material with the U.S. Copyright Office. Doing so provides the owner with additional means of protecting their original work.

This means that the author has control over reproductions of their work as well as any derivative works. Any public performance or display of their work may only be pursued with the author’s permission. Failure to obtain such permission may lead to litigation.

Typically, the term of a registered copyright is the lifetime of the work’s author plus an additional 70 years.

Which Type of IP Protection Should You Pursue?

If you are an inventor, innovator or entrepreneur, then you may need to pursue one or more forms of IP protection. A software developer could copyright the code on a new program, obtain a trademark registration for the software’s name and get a patent on a process within the program.

Working with a qualified intellectual property attorney is the best way to ensure that your rights are sufficiently protected by patents, trademarks and copyrights.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.

Apple’s New iPhone Patents

Two New Camera-Related Patents Granted to Apple

Consumers look to Apple for innovative technology that enables them to do more with their smartphones, tablets, computers and more. To meet this demand, Apple has built a reputation as an aggressive seeker of patent protection.

It is not unusual for Apple to file dozens of patent applications at a time. Additionally, they have a habit of acquiring patents from smaller innovators, which further helps to support their reputation as a leader in technology innovations.

That reputation is bolstered by two of the new U.S. patents that were recently granted to Apple. Both are related to camera technology. While one of these inventions may one day end up in the hands of consumers, the other may be used by Apple as part of the manufacturing process.

The Standalone Depth Camera

U.S. Patent No. 10,298,913 is directed to Apple’s family of TrueDepth camera innovations. This patent, in particular, requires a table-mounted device that is able to quickly and comprehensively scan an entire room and its contents.

According to the disclosure in the patent, the device relies upon a scanner and a light-emitting transmitter to generate time-of-flight data. This data then produces a depth map that is akin to the capabilities of a smartphone camera that is enabled to capture images in three dimensions.

In the case of the current patent, the device includes a gimbal that rotates so that the device may capture the entire room. As it turns, light pulses are projected all around with the assistance of a mirror mechanism. Some embodiments of the invention include the projection of images onto objects in the room using the calculated depth data for reference.

This is not Apple’s first patent that is related to the TrueDepth camera technology. Other patents are directed toward the company’s face ID system, which is sometimes called a “vision system.” This system measures the depth of the subject’s facial features to create a map. This data is then transformed into a mathematical representation that makes determining a particular subject’s identity with unquestionable certainty.

It is unknown at this time what Apple plans to do with the subject matter of the most recent patent.

Body Including Surface Having Concentric Annular Portions

The other patent that was recently granted to Apple appears to be directed to technology that may be used in the manufacturing process. Referred to as a “confocal inspection system,” the invention is capable of analyzing light at narrow, specific depths within a chosen scene or object. To obtain the most accurate data, information that may be obtained from other depths is ignored.

In general practice, similar devices may be used to create a three-dimensional image one thin slice at a time. The optical properties of a selected sample also may be measured by such a device.

Commonly, these devices would use a Fresnel lens to capture the necessary data. This new invention from Apple uses ring-shaped, or annular, components to accomplish this instead. These annular portions reflect light in order to capture the desired data. Such devices may be used in conjunction with materials science or the inspection of semiconductors, suggesting that this technology may not be intended for use by consumers.

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Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.

How Do Patents Encourage Innovation

The Basic Argument

Imagine a world where ideas weren’t protected. You’d find a host of problems that came from it such as people never getting to profit from their ideas. The problem with that? No one would feel the drive to innovate if there were no reward from doing it. Patents were invented as a way of protecting intellectual property. If you spent decades working on a project, you’d want some rightful compensation for it.

Protecting Ideas

The concept of protecting ideas goes back to July 31, 1790, when Samuel Hopkins was granted a patent for a unique method of producing potash, but some people believe that the idea of protecting ideas could actually hinder innovation—whether that’s true or not depends on opinion. While it makes sense in theory that patents protect innovation and innovation is good for society, the inventor often gets rights over a broad subject matter, which can stifle innovation. The person who has the patent rights will normally have control over it for a 20-year period where they basically have a monopoly on the idea. For example, let’s say that someone was given the rights for a steam-powered train. Only the individual who had the rights to the steam-powered train could innovate with it, or they could face lawsuits in the court. At the end of the patent period, anyone can innovate with the idea.

Difficult to Prove

Almost any CEO working in a business will tell people that his patents are crucial to protecting his business. Economists, on the other hand, have questioned this idea for years. Another problem comes from how the lack of a patent can take the steam out of someone’s engine. For example, a patent gives an individual a reason to develop his ideas further. However, if the patent application gets rejected for whatever reason, the chance of the invention going to the market decrease by as much as 13 percent. The individual could have a great idea, but they give up if they fail to get the idea through the patent process, they sometimes give up earlier than what they should have.

Does This Question Matter?

Asking whether patents are harmful is a kind of idle question because almost every country in the world uses the patent system. In addition, no one has any plans of dismantling the system because it has been highly useful and protected the rights of business owners. However, it is a useful question to wonder what the world might be like without patents. Would it encourage innovation or hinder it?

The Concern in Technology

One of the chief concerns of it coming from the technology sector is the fact that it could block off entire areas for development and research. Let’s say that you have a breast cancer gene patent. It could stop further research from other people developing it. As the saying goes, two heads are better than one. People negotiating to be allowed to further develop the idea could hinder the innovation in the field under the wrong circumstances.

Some of the strategies that you will find that people have used as a workaround in the field of biomedicine include:

  • Ignore a broad patent too broad to challenge.
  • Combine the technologies.
  • Redirecting the efforts towards research.
  • Get engaged with licensing.

The one thing that we have to understand is how these ideas aren’t without their share of difficulties.

Adjusting the System

We shouldn’t throw out the baby with the bathwater because the patent system does a great job at protecting people and rewarding those who come up with innovative ideas. However, in the future, we should look at figuring out ways that could help with enhancing innovation through patents.

The patent has become an effective tool for sharing knowledge. In fact, many places like the US, Europe and Japan depend on patent information because it allows them to understand how far technology has come. The idea is that hopefully, it will assist with sparking more valuable ideas. Thomas Edison gives us one historic example of a figure who would visit the patent office as a way of giving him ideas for his own inventions. This could, fact, be a good thing because otherwise, inventors would rightfully guard their inventions secretively, and this could harm innovation.\

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Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.