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Category: Patent (Page 2 of 3)

Who owns the invention Employer or Employee

Employer vs. Employee?

It’s not a simple answer and depends on a number of factors and state law not fully disclosed herein.  A) Was the employee “hired to invent” something or to solve a particular problem? Then the Company may likely own the invention. B) Did the employee use the resources of company to invent or invent during hours of employment?  Does the invention relate to the business of the company?  Then the Company may likely own the invention. Was there an express employment contract covering this issue?

With no express employment contract requiring the employee to assign , and A) or B)  above the Company may claim at least a “shop right” – a non-exclusive license to use the invention (related to company business) within the normal scope of company business.

If not A) or B) then employee may own the invention.

Provisional Patent Application: Preserving IP Rights in Atlanta GA

Provisional Patent Application: Preserving IP Rights in Atlanta GA

Provisional Patent Application Description

provisional patent applicationUnder the first-to-file patent system, a patent claimant should file a patent application as soon as possible. Provisional patent application will establish priority and meet the need to act quickly under the new system. A provisional application can also give an additional year of patent protection.

Patent counsel must understand and weigh the benefits and limitations of the provisional application before filing. The application lays the foundation for procuring a patent, avoids statutory bars, and preserves absolute novelty for foreign filings. However, it also may result in the loss of trade secrets and delay in patent issuance.

How far should patent counsel go to ensure that non-provisional applications obtain priority back to provisional applications? Non-provisional applications will not receive priority over inadequate provisional applications. However, once an inadequate provisional application has been filed, there is no way to restore priority back to the filing date of the inadequate provisional application.

Listen as our panel discusses the benefits and limitations of provisional patent applications as well as when and why to use provisional patent applications. The panel will examine the issue of priority and tying non-provisional applications to the provisional patent application and offer best practices for leveraging provisional applications.

Provisional Patent Application Outline

  1. Benefits and limitations of provisional applications
  2. When and why to use provisional patent applications
  3. Priority—non-provisional applications to provisional applications
  4. Best practices for leveraging provisional patent applications

Provisional Patent Applications Benefits

The panel will review these and other key issues:

  • Under what circumstances will a patent claimant get the most out of a provisional patent?
  • What are the benefits and limitations of using a provisional patent application?
  • What are the important considerations when determining whether and when to use a provisional application?

Thursday, October 29, 2015
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Means-Plus-Function Patent Claims


Demonstrating Patent Eligibility Post-Alice Corp. Decision

Navigating the Nuances and Leveraging Guidance From Federal Circuit and PTAB Opinion


The Federal Circuit and other federal courts, as well as the PTAB, have begun issuing rulings regarding patent eligibility based on and after the Supreme Court’s decision in Alice Corp. v. CLS Bank (June 19, 2014). These opinions provide guidance into the application of Alice Corp., in which the Court concluded the claims were not patent eligible because they were drawn to a patent-ineligible abstract idea.

In Judge Mayer’s concurring opinion in I/P Engine v. AOL (Fed. Cir. Aug. 15, 2014), he discussed what claim limitations could qualify to meet the “significantly more” standard expressed in Alice Corp. to ensure a claim is patent eligible. In Planet Bingo v. VKGS (Fed. Cir. Aug. 26, 2014), the Federal Circuit examines what courts may consider in a mental steps analysis for §101 inquiries. Moreover, the PTAB has issued §101 decisions post-Alice.

Patent counsel should take note of these and other instructive opinions that provide insight into how §101 will be applied to determine patent eligibility.

Listen as our authoritative panel of patent attorneys discusses the cases handed down by the Federal Circuit, PTAB and various district courts since the Supreme Court’s decision in Alice Corp. v. CLS Bank and examines the guidance these cases provide for patent counsel regarding patent eligibility. The panel will offer best practices going forward for demonstrating patent eligibility.


  1. Review of Alice Corp. v. CLS Bank
  2. Guidance from recent opinions
    1. District court decisions
    2. PTAB decisions
  3. Best practices for patent eligibility post-Alice Corp.


The panel will review these and other key issues:

  • How are the courts applying the framework for patent eligibility created in Alice Corp.?
  • How can patent litigation defendants take advantage of the guidance for Section 101 challenges?
  • What are best practices for patent counsel to demonstrate patent eligibility?


Patent, Trademark and Copyright Cases To Watch In 2015

Patent, Trademark and Copyright Cases To Watch In 2015

Patent Cases To Watch In 2015

The U.S. Supreme Court will decide three patent cases involving claim construction, induced infringement and patent royalties in 2015, while the Federal Circuit grapples with the fallout from the high court’s recent patent-eligibility rulings and the standards for America Invents Act reviews.

Patent Legislation To Watch In 2015

After a bill aimed at cracking down on so-called patent trolls stalled in Congress last year, attorneys expect lawmakers to make a major push to enact legislation on the issue in the coming months, and also possibly weigh measures to clarify patent eligibility and extend the life of some drug patents.

Copyright And Trademark Cases To Watch In 2015

The worlds of copyright and trademark law are going to be anything but soft in 2015, with two trademark cases pending before the U.S. Supreme Court, a showdown between Google and Oracle over software copyrights looming, and more.

Fed. Circ. To Weigh Patent Impact Of ‘Raging Bull’

The Federal Circuit will consider whether the U.S. Supreme Court’s “Raging Bull” decision limiting laches as a defense in copyright cases applies equally to patent law, agreeing to conduct an en banc rehearing of its decision that an adult diaper patent suit was barred by laches because the patent owner waited too long to file suit.

Motorola Urges 9th Circ. To Overturn Landmark RAND Ruling

Motorola Inc. has hit back at Microsoft Corp.’s attempts to kill Motorola’s Ninth Circuit appeal of a decision that Motorola had breached an obligation to license its standard-essential patents to Microsoft on fair terms, saying that Microsoft is trying to evade infringement liability by hiding behind a breach-of-contract suit.


PTAB Says Filing Misstep Dooms Movie Studios’ AIA Bids

The Patent Trial and Appeal Board has rejected petitions by Paramount Pictures Corp. and other Hollywood studios seeking inter partes review of two DVD patents owned by Nissim Corp., ruling that the petitions failed to list all of the interested parties in the dispute.

DC Circ. Voids $200M Judgment In Cuba Torture Row

The D.C. Circuit has refused to let a man who was allegedly tortured while incarcerated in Cuba in the early 1970s execute a $200 million default judgment upon patents and trademark registrations issued to nearly two dozen Cuban research institutes and enterprises, voiding the judgment.

Nexium Buyers Seek New Trial In Pay-For-Delay Case

A group of Nexium buyers has asked a Massachusetts federal court for a new trial over antitrust claims that AstraZeneca PLC and Ranbaxy Inc. used a patent settlement to delay the launch of a cheaper generic version of the heartburn treatment.

NY AG Says Actavis Can’t Suspend Antitrust Injunction

The New York attorney general has urged the Second Circuit to deny Actavis PLC’s bid to hit the brakes on an injunction that prevents it from halting sales of immediate-release dementia drug Namenda while the drugmaker pursues an appeal in the antitrust case, saying patients would be irreparably harmed.


Turtles Say It’s Game Over For Sirius’ ‘Fictional Analysis’

Three weeks after a New York federal refused to reverse her ruling that Sirius XM needs to pay to play pre-1972 records, the band that’s suing the satcaster is urging her to grant it full victory in the case.

9th Circ. Overturns ‘Pom’ Trademark Ruling

The Ninth Circuit this week vacated a lower court’s decision to deny Pom Wonderful LLC a preliminary injunction blocking the sale of a “pur pom” energy drink, saying the trial judge botched the likelihood of confusion analysis.

Google Pushes High Court To Take Up Java Copyright Row

Google Inc. recently told the U.S. Supreme Court that it isn’t trying to undermine copyright protection for all computer code in its battle with Oracle Corp. over the use of its Java programming language, saying only certain parts of the language aren’t copyright-eligible.

Shopping App Maker InMarket Ducks Injunction Bid In TM Suit

A New York federal judge has denied a request by Berkley Networks Corp. to bar rival InMarket Media LLC from using the “inMarket” trademark for its shopping discount app for smartphones, ruling that Berkley Networks can’t get swift court action after years of “lassitude.”

US Patent and Trademark Office News 4-1-2014

Edition 9 of the Manual of Patent Examining Procedure (MPEP) has been released http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml

USPTO Launches New Glossary Pilot Program to Promote Patent Claim Clarity

New landing page on the USPTO website devoted to third-party preissuance patent submissions

Copyright Office Announces New Fee Schedule; First Since 2009 http://www.copyright.gov/fedreg/2014/79fr15910.pdf

How to Patent an Idea

how to patent an ideaHow to Patent an Idea – Choose between a Provisional Patent and a Non Provisional Patent Application

How to Patent an Idea – What is a Non Provisional Patent Application

A non-provisional patent application, sometimes called a “regular” patent application or just a “patent application”, is a “real” application for a patent. It will be examined, and ultimately, through the examination process can mature into a patent. It’s “term” or life ends twenty years from the earliest priority date, which may be the date it is filed or the date that an application from which it takes priority benefit is filed. (See above for the effect of a provisional priority date.) A complete non-provisional patent application contains at least a specification, all the drawing figures and at least one claim. Claims are the invention. The specification and drawings must disclose what is in the claims, but they do not comprise the invention, only the claims do. Twenty claims are paid for with the filing fee, of which three may be independent claims. (Independent claims stand alone. The remaining are dependent claims which refer to another claim and thus cannot stand alone.) There are various types of non-provisional patent applications, including the “parent” application and such “children” as divisional patent applications (occasionally the USPTO examiner requires restriction between more than one invention in the patent application; after proceeding with one selected invention, the other or others can be filed as divisionals), continuation patent applications (typically only a new set of claims to the original invention) and continuation-in-part patent applications (the original patent application plus some new matter (written description & drawings) added — this is the only way to add new matter to a patent application).

How to Patent an Idea – What is a Provisional Patent?

Provisional patent applications are US patent applications for a patent, meaning patent pending, which does not mature into an issued US patent (not examined by the USPTO) unless further steps are taken by the applicant within twelve (12) months of filing the provisional application. Such applications are designed to provide lower cost first patent filing by reducing the formal requirements, such as, not requiring formal drawings, claims, oath and declarations, or an information disclosure statement. However, if drafted properly (adequate technical written description and figures) the provisional application provides the inventor with an application priority date and “patent pending” status. Note a provisional application must be converted to a non-provisional application within one year of the filing date to maintain priority based on the provisional filing.  Failure to file the non-provisional could result in loss of US patent rights, including a complete bar to obtaining a patent. Provisional patent applications are NOT examined by an Examiner at the USPTO.

How to Patent an Idea – Which Costs Less

Many people think that a provisional patent application is less costly way to get a patent than a non-provisional patent application. However, this is not the case. Again, because the provisional expires and a non-provisional must be filed to take priority to the provisional, this two-step process is more expensive. It is true that a provisional patent application is the least expensive way to get “Patent Pending” status, but that will expire after a year unless the non-provisional is filed within that time. Further, in order to be fully enabling and not just a waste of time and money, the provisional must contain everything that a non-provisional would include except the claims. That constitutes about ninety percent of the cost of a patent. Later, the non-provisional that is filed taking priority to the provisional will cost about 2-3x times more. Thus, the provisional route is the more expensive route to obtaining a patent. Notwithstanding, as noted below, there are sometimes good reasons to file a provisional patent application and incur the additional costs.

1- when product is still in development or prototyping and you want to be patent pending

2- when you need to disclose the invention and you want to be patent pending before the disclosure

When to use a non-provisional

Pretty much any other reason than those two above will be a good reason for filing a non-provisional. Namely, if you want to get a patent you should immediately file a non-provisional patent application and get the process going.

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Provisional or Non-provisional Patent Application — Which Should You Choose? What is a Provisional Patent Application?

What They Are and Aren’t

What is a Provisional Patent Application

A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single exception of converting the provisional application to a non-provisional (or regular) patent application. It automatically expires after twelve months following the day of filing and cannot be revived. It does provide a priority date for concurrent later-filed non-provisional applications for the content disclosed in the provisional patent application. This means that references that could defeat the later-filed non-provisional (or regular) patent application as to the matter in the provisional patent application (but which could not defeat the provisional filing date) will now not be utilized to defeat the later-filed non-provisional (or regular) patent application. Further, it does not subtract from the twenty year term of the later-filed application unless it is truly converted as discussed below. While patent attorneys often speak of “converting” a provisional into a non-provisional, this is not usually an accurate description of the case (with a single exception), since the provisional has no life beyond its twelve-month term and “converting” is usually done by filing a non-provisional application that claims benefit of the filing date of the provisional. Thus, the provisional is primarily a means for delaying the filing of a non-provisional patent application, while still getting benefit of the earlier filing date of the provisional. (The single exception as to “converting” is that a provisional patent application can be truly converted with an extra processing fee if it has a least one claim, or is amended to contain at least one claim, but this process is rarely done, since now the term of the resulting non-provisional will be twenty years from the date of the provisional filing, thereby losing a year.) A provisional patent application requires a full written specification and all the drawing figures, but does not require claims. It is never examined (unless truly converted) other than to ensure that the proper papers are present. Lastly, a provisional patent application never sees the light of day and remains confidential, unless a non-provisional patent application (or a Patent Cooperation Treaty application — to preserve foreign filing rights — or a design application) takes priority to it.

When to use a Provisional Patent Application

There are a few good reasons to file a provisional patent application: 1. When an invention is fully definable, but will likely require further improvements that can be accomplished within a year, that is a good time to file a provisional patent application on the existing invention. The key is that the improvements must be completed within a year so that the non-provisional can be filed with the improvements during the pendency of the provisional so that priority as to the matter of the original invention defined in the provisional can be taken before the provisional expires. 2. On occasion, someone has an invention that they merely want to sell or license and are certain that they will have found someone to buy or license within the one-year pendency of the provisional patent application. Alternately, if they do not find someone, they plan to let the provisional patent application expire without filing a non-provisional patent application and incur no further expenses. 3. If the inventor is scheduled to publicly disclose or sell the invention and a short period of time exists prior to such event then a provisional patent application may be utilized to get a quick filing.

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