Patent Law: What is the Written Description Requirement?

A “written description” is one of the many requirements for obtaining a patent. The written description requirement is contained in the Patent Act which states that the “specification shall contain a written description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art . …. READ MORE

Responding to a Rejection Based on Double Patenting

Under US patent law, an inventor is entitled to only one patent for an invention. Thus, the US Patent Office can reject a patent application based on double-patenting. Note also that double-patenting can be used as a defense to a claim of patent infringement. Essentially, the defendant can argue that the patent allegedly infringed is… READ MORE

How Much Does a Patent Cost and Why Does My Invention Need One?

A patent is a legal protection that is provided under US law that gives the owner an exclusive right to make, market and sell an invention. Generally, the term of the patent “monopoly” is twenty years (but that varies somewhat with the type of patent). Under current US patent laws, there are three types of… READ MORE

What is a Patent Notice of Allowance and What are the Next Steps?

One of the steps in the process of successfully obtaining a US patent is the patent applicant’s receipt of a Notice of Allowance. A Notice of Allowance is sent by the US Patent & Trademark Office (“USPTO”) to a patent applicant toward the end of the process. The document is sent after a USPTO patent… READ MORE

Getting Started With the Online Patent Application Process and EFS-Web

Over the past 20 years or so, the US Patent & Trademark Office (“USPTO”) has “gone digital” almost completely. That is, where allowed, most patent applications are now filed electronically via the USPTO’s Electronic Filing System-Web (“EFS-Web”). EFS-Web is an internet portal/website that allows for the submission of patent applications and supporting documents.The EFS-Web service… READ MORE

What is Patent Assignor Estoppel and Why Does it Matter?

In patent law, there is a legal doctrine called “assignor estoppel.” In general non-legal terms, assignor estoppel prevents an inventor, who assigns their patent rights to another for value, from later arguing in litigation that the patent assigned is invalid. As a hypothetical, imagine that Inventor invents “The Machine” and obtains a patent. Then, the… READ MORE

Intellectual Property Basics: Trademarks, Patents, and Copyrights

Trademarks, patents and copyrights are three of the basic types of intellectual property (“IP”). In the US, each is legally protected by statutory and regulatory registration/application regimes. In addition, all three types of IP are explicitly protected by international law pursuant to many international treaties and agreements. A fourth major type of IP involves trade… READ MORE

The Official Small Business Guide to Working With a Patent Examiner

When an inventor files a patent application with the US Patent & Trademark Office (“USPTO”), one of the first steps in the patent process is the assignment of a patent examiner to the application. One can think of a patent examiner as a “case worker” for the patent application. The patent examiner is an attorney… READ MORE

Should I File a Provisional or Non-Provisional Patent?

Whether you should file a provisional patent application or a non-provisional patent application depends on a number of factors. One can think of a provisional patent application as both a “short-form” patent application and as a “placeholder” application. A provisional patent application is shorter and “less involved” than a full (non-provisional) patent application and is… READ MORE

Patent and Intellectual Property Law: Freedom to Operate (“FTO”) Analysis

Under US patent law, the owner of a patent has the exclusive right for the duration of the patent to manufacture, market, sell, and license the invention that is protected by the patent. This is similarly true for patents issued by patent offices in foreign countries. If you violate someone else’s patent, you can be… READ MORE