Introduction Crafting the specification, and particularly the claims, of a patent application can be critical to the chances of ultimate allowance of the application into a legally enforceable patent. This applies not only to distinguishing your invention over the prior art or confirming that your invention is eligible for patent protection, e.g., not merely an abstract…
Patent Application
Avoiding the “Abstract Idea” Trap Against Patentability
INTRODUCTION: I have written many times of the ambiguity created by the courts in the Alice and Mayo decisions regarding what is patentable subject matter. I am today suggesting a method of “avoiding the abstract idea trap against patentability”. What I am referring to is the rejection of patentable innovations on the basis that the patent is merely claiming an abstract idea. An…
Licensing: How to slice the pie
INTRODUCTION: Rights in intellectual property can be transferred by sale, i.e., “assignment” or by granting a limited interest, e.g., a “license” or “licensing”. See my article on assignments. To use the analogy of land, title or ownership can be conveyed in land via a written deed recorded with the appropriate government agency. Similarly, a limited right to use or…
Who owns the invention?
Introduction: Ownership of inventions can be confusing. The inventor may not be the owner. If there are more than one inventor, it is possible that each separately owns an undivided interest in the whole with independent rights to exploit the invention. This is problematic. Often the invention is made by an employee of a company. The invention is typically…
When is Computer Software Patentable?
Software is patentable when and if it can meet the following two part test: Does the claim recite (expressly state or inherently infer) that the software pertains to a method of organizing human activity (including satisfying legal obligations), mathematical formulas or mental processes? If no, then the software claim is patent eligible. If yes, then go to the second part…
Patenting Software – Another Wrinkle
Introduction If you have followed my past postings, you will know I am often trying to explain issues involved in patenting software or computer business methods. Much of the controversy of the last several years has been whether the software or business method is actually patentable subject matter. This has involved discussions of Section 101 and whether…
Patenting Medical Devices
Introduction This article is meant to be read in conjunction with my article Patentability Swamp. In this prior article, I have discussed the newest USPTO Guidelines (October 17, 2019) pertaining to patenting matters that may incorporate patent ineligible material under 35 USC Section 101, i.e., natural law, natural products, natural phenomena or abstract ideas. I have discussed the…
Patentability Swamp
Introduction I have recently posted a blog of mechanical device patents becoming ensnared in the patentability swamp. The swamp is the ineligibility of patenting “natural laws”, “natural phenomena” and “abstract ideas”. This has followed the adverse rulings for patenting medical procedures and business methods. There has been another shift in the ground underlying this swamp. Further guidance was issued from the USPTO…
What NOT to do before you file
Introduction This is an update of my previously published post from January. The key element is to avoid public disclosure of your invention. This article attempts to clarify what NOT to do before you file a provisional or non-provisional application for patent. Remember, once the innovative horse has galloped out (or been lured out) of…
Strategic Response to Rejection
Introduction Many suspect that the patent application process is a bureaucratic morass. The fate of your patent application can appear to be tied to the whims of a faceless patent examiner. It can be. But the astute applicant can expedite the process. Discussion The patent examiner responsible for examining and processing your application is selected by a process…