Patentable Inventions A very common question that clients ask when calling a patent attorney is “whether my invention is patentable.” There are four main legal requirements, described below, that a patent attorney will evaluate to determine, based on the information available to the patent attorney, whether your invention is patentable. 1. Statutory Subject Matter. The patent attorney will evaluate whether the invention is directed towards at least one of […]
Patent Claim Construction Patent claims, found at the end of patent specification, provide the negative rights to prevent others from making, using, or selling the patented invention. More specifically, patent claims provide the subject matter that the inventor regards as the patentable invention. In litigation, patent attorneys from both sides regularly dispute the construction of the patent claims. One dispute centers around the alleged indefiniteness of the patent claim(s). The patent statutes require that the patentee describe the scope of the claims in sufficiently definite detail to inform the public of the bounds of the protection of the patentable invention. Courts will attempt to define the patent claims whenever the patent claims are amendable to patent claim construction. In other words, simply because it may be difficult to define the patent claims does not render the patent claims indefinite. The key is that […]
Federal Rule of Civil Procedure 26(b)(1) permits parties, through their patent attorney, to obtain discovery regarding any non-privileged matter that is relevant to any party’s claim or defense. However, this permission includes boundaries for which a patent attorney cannot cross. For instance, the Court can limit what the patent attorney may discover where the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties’ resources, the importance of the issues at stake in the lawsuit, and the importance of the discovery in resolving the issues. Federal Rules of Civil Procedure 30(b)(6) provides a mechanism by which a patent attorney can depose corporations. The corporation must designate a person or persons who consent to sit through a deposition to answer patent patent attorney questions. The deponent has a duty […]
Declaratory Judgment Act The Declaratory Judgment Act provides that in a case of actual controversy within its jurisdiction, any court of the United States may declare the rights of any interested party seeking such a declaration, regardless of whether or not further relief is or could be sought. A defendant’s patent attorney that files a motion to dismiss under Fed. R. Civ. P. 12(b)(1) tests the subject matter jurisdiction of the court to determine […]
When individuals start a new business, they try to save costs by filing their trademark applications themselves and without the assistance of trademark counsel. In 100% of the cases I have reviewed where the trademark applicant does not hire a trademark attorney, the trademark applicant makes a fatal flaw. I am contacted almost daily by individuals who […]
