If you are a company that files patent applications, you need to make sure you actually own the patents that come out of them. That might sound obvious, but the wrong word in an employment agreement can mean you never owned the invention at all. The fix is straightforward: use present-tense assignment language—”hereby assigns”—in a…
DetailsReceiving a non-final office action represents a critical moment in patent prosecution. The examiner has reviewed your application and identified issues that must be resolved before the patent can grant. How you respond to this office action determines whether your application moves forward toward allowance or faces continued rejection. Many applicants treat office action responses…
DetailsPatent litigation by non-practicing entities (NPEs) remains a frustration for companies who manufacture products in innovative industries. NPEs follow a consistent business model: acquire patents at low cost by purchase or filing, and assert then them against companies where the settlement value exceeds the cost of defense. This creates an asymmetry that NPEs exploit—they face…
DetailsMany patent attorneys avoid discussing pricing. Some attorneys want to bill hourly, or bill separately for drawings, or otherwise leave the door open to unclear future charges. I take a different approach. Clear, flat-fee pricing establishes trust from the first conversation and allows you to make informed decisions about protecting your invention. Transparent pricing benefits…
DetailsSelecting the right patent attorney is one of the most consequential decisions an inventor or business can make. A patent application is not a form to fill out—it is a complex legal document that defines the scope of your intellectual property rights for up to twenty years. The attorney you choose will shape the strength…
DetailsThe Federal Circuit reversed a lost profits award in a patent infringement case, holding that the district court applied the wrong legal standard when it excluded evidence of noninfringing substitutes. The case provides guidance on when hypothetical design alternatives may reduce or eliminate lost profits damages. The Inventist Case In Inventist Inc. v. Ninebot Inc.…
DetailsIf you are a patent attorney with clients selling on Amazon, you’ve probably heard about APEX—Amazon’s Patent Evaluation eXpress program. On paper, it sounds almost too good to be true: resolve patent disputes in 30 days for just $4,000 per party. Compare that to traditional patent litigation, which can drag on for years and cost…
DetailsThe explosion of Generative AI (GAI) tools has brought the complex question of AI authorship to a head. When a machine creates an image or a complex piece of text, who owns it? While various jurisdictions have adopted nuanced positions, the fundamental legal principle remains the same: human creative contribution is the required doctrinal touchstone…
DetailsMedical device companies face a unique trap at the intersection of FDA regulation and patent law. Mandatory adverse event reports submitted to the FDA become publicly accessible and can qualify as prior art that affect patent rights. Even well-intentioned compliance with FDA requirements can eliminate a patentee’s ability to patent valuable innovations if a patent…
DetailsReceiving a Final Office Action from the USPTO (US Patent and Trademark Office) can feel like hitting a wall in the patent application process. However, “final” does not mean the end of the road. Several paths remain available to obtain patent protection, and selecting the right strategy depends on the specific circumstances and goals. What…
Details