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Bottom line: Software patent specifications require disclosure of an algorithm for all means-plus-function limitations.  Otherwise, the claim may be invalid for being indefinite.  The problem may not be related solely to means limitations since a non-means limitation could be impliedly construed as a means-plus-function limitation even without using the trigger word “means.” In Eon Corp, IP Holdings LLC v. AT&T Mobility LLC (Fed. Cir. 2015), the patent involved software used in a local subscriber…
A provisional patent application (PPA) is not a cheap option but it is a lower cost alternative to a non provisional patent application.  The reason is that although the provisional patent application has lower minimum requirements than the nonprovisional patent application, the PPA has to disclose all of the details that the NPA must disclose. The provisional patent application is not a cheap option or a poor man’s patent as some internet sightings may lead…
Licensing Termination Provisions for Under-performing License Agreements After securing a patent on an invention and you are making money, another company may want to use the patented technology in their product or service. To give a business the right to use the patented technology, the patent holder and the business enter into a contract for the right to use the intellectual property of the patent holder.  The relationship might start off well but over a…
Failure to properly mark a product with its patent number limits an infringer’s liability for damages. Infringers have the burden of production to initially identify products which the patentee failed to mark. The patentee then has the burden of proof to show that the unmarked products are not covered by the patent. In Arctic Cat Inc. v. Bombardier Recreational Products Inc. (BRP) (Fed. Cir. 2017), the Federal Circuit sorted the respective burdens of the…
This past holiday season, I had the opportunity to ask Joe Platnick of the Pasadena Angels a few questions about his group.  I want to thank Joe for taking time out of his busy schedule to answer a few questions and to help educate our  community about the benefits that the Pasadena Angels has been providing to our community since its founding in 2000.  Click here for Joe Platnick’s professional profiles.  The mission of…
The two online patent search resources that I utilize the most to retrieve patent documents and to research patents are freepatentsonline.com and the uspto.gov website. The uspto.gov website provides two different databases.  One for issued patents and one for published patent applications.  Some published patents applications mature into a patent but some do not.  Hence, the published patent application database and issued patent database have redundant data set.  The bigger problem is that they are…
Bottom line The pro for filing a continuation-in-part application is lower downstream costs.  The cons are a shortened patent term and also your prior arguments and statements made in the parent application/patent can and will be used against you to narrowly interpret the claim language in a patent maturing from the subsequent continuation-in-part application. To discuss the cons of claim interpretation in filing a continuation-in-part application, the Trading Technologies v. Open E Cry case is discussed…
A patent application is a well-crafted document which has many different requirements for it to be effective.  One of the requirements is the written description requirement.  The Manual of Patent Examining Procedure states that “to satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.” To a layperson, this means that…
In order to ensure maximum compensation for any infringements on your patents, your products should include a clear patent marking to show that they are protected. Let’s dive-in: Patent marking provides constructive notice to the public of your patent.  Constructive notice is given to the public of your patent by affixing the patent number on the patented product.  By doing so, alleged infringers are liable for patent infringement as soon as possible even if they don’t…
The process for getting a patent has four steps. Step 1: File an application for patent with the United States Patent and Trademark Office (USPTO) Step 2: Examination of patent application Step 3: Respond to any objections or rejections made by the examiner Step 4: Patent grant Read more about each step and what you ought to do before and during each step. [cmtoc_table_of_contents] Step 1: File Patent Application 1a.       Understand the overall patent…