22
This is a great question, with no one right answer.
The strength of a patent comes from the ability to enforce it. If the patent owner cannot enforce it for whatever reason (such as a lack of funding), the patent is effectively toothless.
But your competitors will likely not know that. They may therefore be dissuaded from infringing simply by the existence ...
13
My answer is yes, and I agree with Maca. I'll add that your ability to enforce it might change in the future.
I'm not implying that your situation is the same as mine, but consider this:
In my industry at my company, we basically lack the ability to enforce the patent as well, but the more patents we have that our very large competitors infringe or might ...
9
I'll go ahead and address 1) whether you can use other media that describe your invention like a patent, and 2) whether you can use other media to invalidate someone else's patent.
Note that the law has changed to first-to-file effective March 16,
2013. Most of the below is a pre-F2F answer. However it is still a good answer for applications filed ...
7
Suppose you own a patent with claims that may be infringed through, at least in part, software. You think some company, call them Acme, infringes at least one of your patent claims.
In the US, you are required to perform a reasonable investigation into Acme's products and services to make the claim that Acme infringes your patent. Because source code MAY be ...
7
That's a good question. In general you can use Public PAIR to find out a lot of detailed information about issued patents and pending patent applications.
A good example is this is the touch screen patent by Steve Jobs: US7479949. The patent was subject to re-exam and all claims stand rejected in a non-final office action.
The '949 patent provides an ...
7
When filing a patent, the goal of the Independent Claim(s) is to define the invention as broadly as possible. Your goal is to obtain Freedom to Operate, with enough "white space" around your Preferred Embodiment that competitors cannot change minor details to avoid licensing your patent.
Dependent claims provide paths to multiple embodiments of your ...
6
What you are looking for is Freedom-to-Operate. There are quite a few articles written on this subject, and most of them deal with the inherent difficulty you describe. I've stitched together some excerpts from those articles, hopefully into a coherent meta-article:
Crouch, D. Facilitating Freedom-to-Operate Searches. Patently-O. September 17, 2010.
A ...
6
Yes.
The patent holder may sue for lost profits and/or reasonable royalties. Wikipedia sums it up well:
Under 35 U.S.C. ยง 284, a patent owner is entitled to "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty."[9] Lost profits that result from infringement of their patent are also compensable.
Which by ...
5
In short, yes. While the "corporate veil" protects an individual from personal liability in many instances, this isn't always the case when dealing with infringement of intellectual property. A few ways the director may be held personally responsible include:
(1) The court pierces the corporate veil. If the company is undercapitalized, is used to commit ...
5
Pre-emptive disclaimer: I'm not a lawyer, this is not legal advice.
In the US, before you can bring a lawsuit, there is something called "Rule 11" that must be overcome. Rule 11 sort of says that you need to have some evidence or reasonable belief to support your case before you can file a lawsuit. (This is a broad generalization and may not apply to all ...
5
You can disclose your ideas, designs and product plan details in various ways to try to make them readily findable by patent examiners doing searches. One defensive publication site is IP.com. It is fee based. But the best way to have a high probability of a patent examiner finding your defensive publications when examining someone else's application is to ...
5
Regarding the first question - will I be able to do anything about it since I filed for a patent in US and Canada first?
There is always scope for invalidating the patent granted in China. In order to invalidate the Chinese patent using your patent application, your application should have been published before the effective filing date of the Chinese patent....
5
You can't enforce a patent application. You can simply respond politely inviting him to bug off, or more usefully to let you know if a patent ever issues.
You can't file a patent application after someone else has published the invention in the US. So your website would count as prior art, as would the products you shipped, any documentation you published, ...
5
I concur with vallismortis's answer, but here are my views since I am a software / firmware developer too. What I have learnt over the years is not to go out looking for in your words "possible patent infringements" that "are buried in these hundred thousands lines of code." (search for "willful infringement" to understand my practice).
Here are three ...
5
If I understand your question, you had an invention and showed it to two different patent attorneys who each offered to patent it and take it to market and give you 15% percent or more of the profits. Patent attorney do not offer to take over peoples' inventions and pay them a royalty. It is against the code of ethics and, no matter how significant an ...
5
Lets say that someone creates an mobile app (Android/IOS) that is identical in function to a TI-85 calculator... in fact it is a perfect representation of it and identical in function and appearance of the interface (an "emulation") -- the only difference being that the user is interacting with a flat touch screen instead of physical buttons... and that the ...
4
The Examiner Corps is a big group, and while some of them are very thorough, others may be happy to do one quick text search of their patent document databases.
It is difficult to do much before a competitor's application publishes. Did you file your own patent application? This can be a good strategy for this type of situation (assuming no prior art bar)....
4
George White nails all of the important points as usual.
US20120185456 is a Patent Application not a granted patent. Until and unless it is issued it does not prohibit you from doing anything. In some sense anyone can file a patent application which says anything. The patent which is allowed may be much narrower than what is described in the ...
4
Using PAIR, as Micah's detailed answer shows, is definitive and by far the best way to look things like this up.
Not definitive but easy, if it has what you are looking for, is Google patents. It keeps getting better and as of a few months ago has a "Legal Events" section at the end of some patent documents. In the case of the infamous:
Method of swinging ...
4
I think you've hit on a good point for those considering pursuing patents. Before investing large sums of money on patenting, it is important to figure out how you will identify infringement.
Often, product data sheets, technical specifications, user guides, administrator guides, white papers, case studies and/or other technical and marketing literature are ...
4
Patents are jurisdiction specific. Hence any patent filed in the U.S will protect your invention only in the U.S. Different countries follow their respective law set forth to be taken into consideration for granting a patent.
If you wish to seek patent protection for your invention in multiple countries then you can adopt the PCT (Patent Cooperation Treaty) ...
4
Perhaps it would be clearer by going back to first principles for patents.
The purpose of a claim is to set out certain things that others cannot do. Once a patent is granted, nobody else can do anything that is claimed. This is true regardless of the category of the claim (whether method, apparatus or whatever else).
It is therefore not correct to say ...
4
The typical approach is to perform a "freedom-to-operate" analysis. You can take a crack at this yourself using patent searching tools like Google Patents or my preference The Lens. Patent searching is a skill so I would advise starting with a broad search and when you find patents that are relevant (not necessarily the same idea, but with some similarities) ...
3
Yes. The owner can file a disclaimer with the USPTO. See this page at the patent office.
It says:
37 C.F.R. 1.321 Statutory disclaimers, including terminal disclaimers.37 C.F.R. 1.321 Statutory disclaimers, including terminal disclaimers.(a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in ...
3
Granted, enforceable patents are territorial limited. So a U.S. patent allows its owner to control the making, selling, using and importing into the U.S. In this case you are referencing an application that may or may not have resulted in one or more U.S. patents (looks like it hasn't as of March 2013). The inventor could have filed counterpart applications ...
3
This article is worth looking at.
"The PTAB found that (i) the claimed method is directed to a set of rules for conducting a wagering game, which is a patent-ineligible abstract idea, and (ii) the manipulations of the deck of cards (e.g., shuffling, dealing) are conventional steps in playing a wagering game that do not add enough to the claims to transform ...
3
Up until Bilski methods for playing a game, both board games and card games were getting through. Post Bilski the art unit that handles that area is taking the position that they will reject all methods of playing as abstract. This is from personal experience. Also including a pointer to a case I am not involved in where the board found a method for playing ...
3
It is possible that a patent covers a data structure, but it has to be tied to a computer-readable medium and structurally and functionally interrelated to that medium.
The USPTO makes a distinction between "functional descriptive material" and "nonfunctional descriptive material." a data structure is a type of functional descriptive material, provided ...
3
It is a good practice to include multiple independent claims of varying type (system, method, means etc) in a patent application. One should not restrict the invention by claiming it in only one form. It is advisable to claim an invention in multiple forms in order to ensure the broadest possible protection.
To determine infringement of a patent by a ...
3
First i want to answer your question related to publishing as a technical paper before applying for a patent.
In USPTO, prior art exception are made by the US Patent Law under the AIA 35 U.S.C. 102(b)(1)(A) for novelty AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor's own work as prior art, when the inventor's own work has been ...
Only top voted, non community-wiki answers of a minimum length are eligible
Related Tags
patent-infringement × 412patentability × 75
software × 44
patent-applications × 32
prior-art × 27
claims × 26
design-patent × 26
international × 20
law × 18
infringement × 15
licensing × 14
freedom-to-operate × 13
usa × 12
patent-services × 11
provisional-application × 10
copyright × 8
patent-lifetime × 7
novelty × 7
ownership × 6
design × 6
prior-art-request × 5 patent-pending × 5
litigation × 5
uspto × 4
application × 4
