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Defenses to a Claim of Patent Infringement (part 3)
Defenses to a Claim of Patent Infringement (part 2)
Equitable Defenses to a Claim of Patent Infringement
Effect of the Bilski Decision on Software, Business-Methods Patents
Recent Developments in False Marking Cases
| My July 10, 2009, blog entry addressed the issue of marking, which is one way in which a patentee may provide the public with notice of its patent rights.
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by Thomas Joseph | June 22, 2010 | Comments (0)
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Further Information on Trade Secrets
| A recent law review article purports to be the first statistical analysis of trade-secret litigation in federal court.
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by Thomas Joseph | June 1, 2010 | Comments (0)
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Creative IP Claims
Patent Statutory Requirement – Written Description
| In my March 13, 2009, blog entry, I discussed three of the statutory requirements for obtaining a patent that are described in the first paragraph of 35 U.S.C. § 112.
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by Thomas Joseph | April 20, 2010 | Comments (0)
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Copyright Exceptions
Patent Prosecution in Regional/National Patent Offices
| Now I will review some basic differences between U.S. patent prosecution procedures and international procedures.
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by Thomas Joseph | February 16, 2010 | Comments (0)
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PCT Patent Applications (Part 2)
| The structure of a PCT patent application specification includes seven parts, excluding the abstract and the claims.
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by Thomas Joseph | February 9, 2010 | Comments (0)
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PCT Patent Applications (Part 1)
| PCT patent applications are administered by WIPO.
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by Thomas Joseph | February 2, 2010 | Comments (0)
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Organizations for International Patent Protection
| The levels of organizations that you will likely encounter in international patent prosecution are the World Intellectual Property Organization (WIPO) and the regional patent offices.
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by Thomas Joseph | January 26, 2010 | Comments (0)
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Treaties for International Patent Protection
| Next, we will briefly discuss some of the relevant treaties and organizations that you may encounter in your efforts to obtain patent rights through international patent prosecution.
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by Thomas Joseph | January 19, 2010 | Comments (0)
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Unfair Competition Law
| The definition of “unfair competition” or “unfair competition law” varies from country to country.
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by Thomas Joseph | January 15, 2010 | Comments (0)
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More on International Trademarks
| Generally, there are seven categories of marks that cannot be protected.
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by Thomas Joseph | January 12, 2010 | Comments (0)
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Trademarks and Unfair Competition in an International Context
| Now we will address five aspects of international trademark law.
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by Thomas Joseph | January 5, 2010 | Comments (0)
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More on International Copyrights
| Most countries also recognize several limitations on copyright protection.
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by Thomas Joseph | December 22, 2009 | Comments (0)
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Copyrights in an International Context
| Next, we will address four aspects of copyright protection in the international context.
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by Thomas Joseph | December 18, 2009 | Comments (0)
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Foreign Patents
| Foreign patents share many characteristics with U.S. patents.
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by Thomas Joseph | December 15, 2009 | Comments (0)
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International Intellectual Property Rights
| This blog begins a new discussion involving international IP topics.
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by Thomas Joseph | December 11, 2009 | Comments (0)
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Copyright and Trademark Licensing
| Generally, the licensing of copyrights and trademarks is similar to the licensing of patents.
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by Thomas Joseph | December 8, 2009 | Comments (0)
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Copyright Infringement
| To establish that copyright infringement has occurred, you need to establish ownership, validity and copying.
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by Thomas Joseph | December 4, 2009 | Comments (0)
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What is a Copyright?
| Under U.S. law, copyright protection extends to literary works, musical works, dramatic works, performances, graphical works, motion pictures and sound recordings.
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by Thomas Joseph | December 1, 2009 | Comments (0)
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Trademark Infringement
| To determine trademark infringement, a party must show that it owns its trademark, its trademark is valid and there is a likelihood of confusion or dilution.
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by Thomas Joseph | November 24, 2009 | Comments (0)
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Trademark Administrative Proceedings
| A trademark applicant or registrant may also become involved in different types of administrative proceedings before or after his or her trademark is registered.
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by Thomas Joseph | November 17, 2009 | Comments (0)
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Registering a Trademark
| Trademark registration – unlike copyright registration – is substantive, which means the examining attorney will determine whether your mark meets the substantive statutory requirements.
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by Thomas Joseph | November 10, 2009 | Comments (0)
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Trademark Pre-Adoption Investigation and Rules of Use
| Now we will discuss the pre-adoption investigation.
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by Thomas Joseph | November 6, 2009 | Comments (0)
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What is a Trademark?
| Under U.S. law, the types of marks that can be registered are relatively broad.
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by Thomas Joseph | November 3, 2009 | Comments (0)
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Trademarks and Copyrights
| The next group of blog entries will cover trademarks and copyrights.
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by Thomas Joseph | October 30, 2009 | Comments (0)
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Patent or Trade-Secret Protection?
| One of the first decisions that the owner of a prospective trade secret must address is whether to seek patent protection or trade-secret protection.
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by Thomas Joseph | October 27, 2009 | Comments (0)
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Trade-Secret Misappropriation
| Trade-secret misappropriation occurs when a trade secret is acquired by improper means or by an unauthorized disclosure of the trade secret.
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by Thomas Joseph | October 23, 2009 | Comments (0)
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Trade Secrets
| The next three blog entries will address trade secrets.
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by Thomas Joseph | October 20, 2009 | Comments (0)
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Alternative Dispute Resolution (ADR)
| Alternative dispute resolution is a term that refers to methods of resolving disputes other than traditional litigation.
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by Thomas Joseph | October 16, 2009 | Comments (0)
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The Role of Experts
| Experts are witnesses who are allowed to give “opinion” testimony.
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by Thomas Joseph | October 13, 2009 | Comments (0)
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Special Issues for Defendants: Counterclaims
Special Issues for Defendants: Substantive and Equitable Defenses
Special Issues for Defendants: Procedural Defenses
Special Issues for Defendants: Non-Infringement Opinions
| It can be very advantageous for a potential defendant to obtain an opinion of non-infringement or invalidity before the plaintiff files a lawsuit.
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by Thomas Joseph | September 29, 2009 | Comments (0)
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Special Issues for Defendants
Appeals
| A party that is dissatisfied by the result of a trial usually has the right to file an appeal.
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by Thomas Joseph | September 22, 2009 | Comments (0)
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Trial
| Once claim construction has been completed and the parties finish their pre-trial preparation, the Court may hold a trial.
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by Thomas Joseph | September 18, 2009 | Comments (0)
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Damages and Other Remedies
| Generally, a patent owner may be entitled to two types of remedies upon a finding of infringement.
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by Thomas Joseph | September 15, 2009 | Comments (0)
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Claim Construction
| A relatively recent Supreme Court decision, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), has resulted in the development of specialized claim construction procedures in federal district courts.
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by Thomas Joseph | September 11, 2009 | Comments (0)
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Litigation: Preliminary and Dispositive Motions
| At some point, one of the parties is likely to file a motion.
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by Thomas Joseph | September 8, 2009 | Comments (0)
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Electronic Discovery - Document Preservation/Production in Patent Litigation
| Certain federal district courts have specific local rules that require parties to produce additional documents and ESI prior to the opening of the discovery period in patent cases.
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by Thomas Joseph | September 1, 2009 | Comments (0)
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Electronic Discovery - Document Preservation/Production in Litigation
| A party has a duty to provide four different categories of information before the beginning of the discovery period in litigation in federal court.
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by Thomas Joseph | August 28, 2009 | Comments (0)
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Electronic Discovery
| The scope of discovery has expanded recently to include electronically stored information (ESI).
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by Thomas Joseph | August 25, 2009 | Comments (0)
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Discovery
| After the complaint is filed and the pleadings close, the parties will usually begin conducting discovery.
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by Thomas Joseph | August 21, 2009 | Comments (0)
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Preparing and Serving the Complaint
| Once the pre-suit investigation is complete, a patentee will have to decide whether to file a lawsuit. A lawsuit is initiated by filing a complaint.
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by Thomas Joseph | August 18, 2009 | Comments (0)
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Pre-Litigation Tools (Part 2)
| Court records may also include information about a particular process or product.
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by Thomas Joseph | August 14, 2009 | Comments (0)
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Pre-Litigation Tools – Pre-Suit Investigation
Litigation
| In the event that the parties do not reach an agreement, one of the parties may decide to file a lawsuit to resolve the dispute.
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by Thomas Joseph | August 7, 2009 | Comments (0)
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Licensing Agreements
| Assuming that the demand letter successfully gets the parties to negotiate a license, the parties will have to discuss terms of a license and possibly draft a license agreement.
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by Thomas Joseph | August 4, 2009 | Comments (0)
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Ambiguous Letter
A Cease-and-Desist Letter
| This letter is an example of a “cease-and-desist letter.”
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by Thomas Joseph | July 21, 2009 | Comments (0)
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Invitation to Take a License Letter
| The following is an actual letter that was taken from a landmark case in the Court of Appeals for the Federal Circuit.
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by Thomas Joseph | July 17, 2009 | Comments (0)
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Patent Licensing and More
| The next part of this course will cover patent licensing, litigation and alternate dispute resolution.
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by Thomas Joseph | July 14, 2009 | Comments (0)
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Marking Requirements
Correcting a Patent
| Once a patent is issued, a patentee may correct a patent through any one of five methods...
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by Thomas Joseph | July 7, 2009 | Comments (0)
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Issuance of a Patent
| Once the USPTO decides that an applicant is entitled to a patent, the USPTO will send the patentee a notice of allowance.
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by Thomas Joseph | June 30, 2009 | Comments (0)
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Interferences
| Occasionally, two or more applications are filed by different inventors claiming substantially the same patentable invention.
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by Thomas Joseph | June 26, 2009 | Comments (0)
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Patent Interview and Appeals
Overcoming Obviousness Rejection
| There are at least six strategies for overcoming rejections for obviousness.
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by Thomas Joseph | June 19, 2009 | Comments (0)
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Overcoming Lack of Novelty Rejection
| There are at least three strategies for trying to overcome a rejection for lack of novelty.
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by Thomas Joseph | June 16, 2009 | Comments (0)
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Response to Patent Office Actions: Amendments
| Amendments are very common during patent prosecution.
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by Thomas Joseph | June 12, 2009 | Comments (0)
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USPTO Office Action
| Sooner or later, the USPTO will issue an office action.
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by Thomas Joseph | June 9, 2009 | Comments (0)
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Patent Examination Begins
| Now that we have covered the most important pre-filing considerations, we will discuss the events that occur after the filing of the application.
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by Thomas Joseph | June 5, 2009 | Comments (0)
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Pre-Filing Issues: Information Disclosure Statements
| The final pre-filing consideration that we will address relates to the timing of the filing of an information disclosure statement (IDS).
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by Thomas Joseph | June 2, 2009 | Comments (0)
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Pre-Filing Issues: Provisional Applications
| Another pre-filing consideration is whether to file a provisional application or a non-provisional application.
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by Thomas Joseph | May 29, 2009 | Comments (0)
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Pre-Filing Issues: Priority Claims
| Another pre-filing issue relates to priority claims.
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by Thomas Joseph | May 26, 2009 | Comments (0)
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Pre-Filing Issues: Non-Publication or Publication
| Prior to Nov. 29, 2000, all U.S. patents were kept in confidence by the USPTO.
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by Thomas Joseph | May 22, 2009 | Comments (0)
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To Pay or Not to Pay
Pre-Filing Issues: Petitions to Make Special
| Certain applications are entitled to be treated specially during the examination process.
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by Thomas Joseph | May 15, 2009 | Comments (0)
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Patent Prosecution
| The next set of blog entries are directed to the patent prosecution process.
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by Thomas Joseph | May 12, 2009 | Comments (0)
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Other Claims Forms: Functional Claims and Omnibus Claims
| Another special claim form is a functional claim. Functional claims include a clause that defines one or more elements by function, rather than structure.
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by Thomas Joseph | May 8, 2009 | Comments (0)
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Claims That Include Markush Groups
| Another special claim form is a claim that includes a Markush group.
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by Thomas Joseph | May 5, 2009 | Comments (0)
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Jepson Claim
| Another special form of a claim is a Jepson claim.
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by Thomas Joseph | May 1, 2009 | Comments (0)
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Special Claims Forms
| Special claim forms include: product-by-process claims, Jepson claims, claims that include Markush groups, claims that include means-plus-function clauses and step-plus-function clauses, and omnibus claims.
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by Thomas Joseph | April 28, 2009 | Comments (0)
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Claiming (Part 2)
| The transition phrase has a substantial effect on the scope of a claim.
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by Thomas Joseph | April 24, 2009 | Comments (0)
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Claiming
| The next set of blog entries will cover claims, which are the most important part of a patent specification.
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by Thomas Joseph | April 21, 2009 | Comments (0)
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Structure of a Patent Application (Part 2)
| The next section of the specification is the brief summary of the invention.
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by Thomas Joseph | April 17, 2009 | Comments (0)
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Structure of a Patent Application
| A patent application has three primary components: a specification, drawings and claims.
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by Thomas Joseph | April 14, 2009 | Comments (0)
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Disclosure
| An applicant should keep in mind the duty of disclosure.
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by Thomas Joseph | April 10, 2009 | Comments (0)
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Patent Databases
Patent Searching
| An inventor or assignee of an invention should understand the role of patent searching in deciding whether to seek patent protection.
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by Thomas Joseph | April 3, 2009 | Comments (0)
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Preparing Invention Disclosures (Part 2)
| Once an invention has been properly recorded, an inventor will want to prepare an invention disclosure for submission to a patent attorney.
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by Thomas Joseph | March 31, 2009 | Comments (0)
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Preparing Invention Disclosures (Part 1)
| Proving inventorship, conception and/or reduction to practice requires reliable and detailed evidence.
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by Thomas Joseph | March 27, 2009 | Comments (0)
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Patent Conception and Reduction to Practice
| In our earlier blog entries, we mentioned three concepts: inventorship, conception and reduction to practice. Inventorship was discussed last time, and we will cover the other two in this blog entry.
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by Thomas Joseph | March 24, 2009 | Comments (0)
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Patent Inventorship
| Under U.S. patent law, a patentee must be a natural person.
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by Thomas Joseph | March 20, 2009 | Comments (0)
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Preparing a Patent Application
| The next group of blog entries will cover the preparation of a patent application.
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by Thomas Joseph | March 17, 2009 | Comments (0)
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Other Statutory Requirements
| Three additional statutory requirements are set forth in 35 U.S.C. § 112. These requirements include the written-description requirement, the enablement requirement and the best-mode requirement.
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by Thomas Joseph | March 13, 2009 | Comments (0)
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Nonobviousness: Part 2
Nonobviousness: Part 1
| The nonobviousness requirement is set forth in 35 U.S.C. § 103. A single reference or a combination of references can render an invention obvious when those references teach or suggest the claimed invention.
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by Thomas Joseph | March 6, 2009 | Comments (0)
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The Statutory Requirements: Part 2
| The novelty requirement set forth in 35 U.S.C. § 102. 35 U.S.C. § 102 includes seven provisions that can be used to determine whether an invention has been disclosed prior to a critical date.
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by Thomas Joseph | March 3, 2009 | Comments (0)
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The Statutory Requirements: Part 1
| The seven most important statutory considerations or requirements are as follows...
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by Thomas Joseph | February 27, 2009 | Comments (0)
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The Status of Software and Business Methods
| Software and business data processing has followed an unbroken evolutionary path from mechanical technology up to today's software-controlled microprocessors.
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by Thomas Joseph | February 24, 2009 | Comments (0)
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Examples of What to Patent
| Traditionally, sports-related patents have focused on objects or methods of making those objects. Examples include hockey sticks, putters or methods of drilling holes in bowling balls.
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by Thomas Joseph | February 20, 2009 | Comments (0)
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The Limits of Patentability
| The Supreme Court’s decision in Chakrabarty also paved the way for a series of decisions in which the scope of materials eligible for patent protection was greatly expanded into nontraditional areas.
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by Thomas Joseph | February 17, 2009 | Comments (0)
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Is Patent Protection Desirable? (part 2)
| What does it mean to manufacture? The term manufacture is also quite broad.
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by Thomas Joseph | February 13, 2009 | Comments (0)
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Is Patent Protection Desirable? (Part 1)
| The next series of blog postings will address the requirements for obtaining patent protection for an invention and whether such protection is desirable.
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by Thomas Joseph | February 10, 2009 | Comments (0)
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Example of How to Use the Major Types of IP to Protect a Product
| The same product may have aspects that may be covered by all four types of intellectual property.
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by Thomas Joseph | February 6, 2009 | Comments (0)
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What are Trade Secrets?
| Trade secrets are information that companies keep secret to give them an advantage over their competitors.
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by Thomas Joseph | February 3, 2009 | Comments (0)
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What are Copyrights?
| Copyrights protect the expression of an idea in a fixed medium. A copyright provides the copyright owner with the right to prevent others from copying the copyrighted work.
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by Thomas Joseph | January 30, 2009 | Comments (0)
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Other Forms of Unfair Competition
| Trademark law is related to unfair-competition law. Other types of unfair competition include trade dress infringement, false advertising or the appropriation of a person’s right of publicity.
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by Thomas Joseph | January 27, 2009 | Comments (0)
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What are Trademarks (Part 2)?
| Trademarks may be registered with the USPTO or in individual states. Registration is not mandatory because protection begins as soon as a person begins using a mark in association with a good or service.
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by Thomas Joseph | January 23, 2009 | Comments (0)
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What are Trademarks (Part 1)?
| As we discussed earlier, the term “trademarks” is being used describe a class of unfair-competition-related forms of IP that includes service marks, certification marks, collective marks, trade dress and trade names.
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by Thomas Joseph | January 20, 2009 | Comments (0)
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Intellectual Property Defined – Patents Discussed
| There are four major types of intellectual property: patents, trademarks, copyrights and trade secrets.
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by Thomas Joseph | January 16, 2009 | Comments (0)
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All About Intellectual Property (IP) for Scientists and Engineers
| Often when business is booming, we don’t have the time to consider protecting our intellectual property. The year ahead may offer us the opportunity to do this.
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by Thomas Joseph | January 13, 2009 | Comments (0)
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