Patenting Medical Devices and Procedures

Introduction There is a great deal of valuable intellectual property associated with medical technology.  However the patent landscape is, in my opinion, unclear and unsettled.  Diagnostic procedures that utilize human biologic functions are denied patent protect because the procedures rely on “natural law”. I have tried to outline the problem using the actual wording of disputed patents…

Read More →

APPEALING THE EXAMINER REJECTION

Introduction I recently published a blog regarding the frustrating but common rejection of a patent application based upon the examiner asserting that the invention is obvious.  See  Overcoming an Obviousness Rejection.  Depending upon the individual circumstances, it may be worthwhile for appealing the examiner rejection.   Recall obviousness under 35 U.S.C. section 103 can be a subjective exercise or…

Read More →

Teach Enablement

INTRODUCTION If you have read any of my previous posts, I have habitually urged that any patent application “teach enablement”.  This is the sole and critical requirement of any provisional application.  Please recall that I recommend filing a DIY provisional application if you elect not to seek guidance of a qualified patent attorney.  My simple logic is that…

Read More →

ATTORNEY CONFIDENTIALITY- INTERVIEWS

Is it necessary to obtain a signed non-disclosure agreement from an attorney prior to disclosing your invention ? The clear answer is no. A non-disclosure agreement is not required.  Attorney confidentiality applies. Communication made by the potential client to the attorney in a confidential setting for the purpose of securing legal services (as well as…

Read More →

PROVISIONAL PATENT APPLICATIONS

Introduction Provisional patent applications can be of great benefit in protecting innovation. They must be used, however, with a full understanding of the limited protection provided. Discussion A provisional application is a patent application. It is a type of a utility patent application. It may be thought of as a temporary application good for only…

Read More →

WHAT IS A PATENT?

Introduction What is a patent?  Simply stated, a patent is the exclusive right to prevent others from making, using or selling the invention or things made using the invention. Surprising?  See the following discussion. Discussion Technically, a patent does NOT give you the right to make use or sell the products of your invention since…

Read More →

Documenting Inventions

Introduction Since 2013, the United States has been a “First to File” jurisdiction.  Prior to 2013, the US patent law awarded patents to the first inventor, rather than the first inventor to file.  Previous to this change, it was accepted practice that researchers/inventors maintain documentation of their development efforts.  Documenting inventions however remains important. Typically, documentation involved maintaining…

Read More →

Patents, Trademarks & Copyrights

Introduction The following is a brief summary of each tool for protecting intellectual property (IP). The tools discussed are Patents, Trademarks & Copyrights. Patents Patents protect an idea (invention) that is embodied in a device or method.  This is different from Copyright and Trademarks. The vast majority of patents are “utility patents”. There are also plant patents…

Read More →

PATENT APPLICATION FLOW CHART

  Introduction The following is a simplified description on one possible chain of events that occur in the patenting process.  This is a hypothetical patent application flow chart.  See my article on “Behind the First to File Rules“.  Also review my article regarding “Patent Application Elements“. Pre-Filing Outline Document invention in writing, signed and dated…

Read More →

Prior Use Defense: Trade Secrets v. Patenting II

Indroduction This blog is a clarification of my prior article entitled Trade Secrets v. Patenting.  In my prior article, I stated that a party using a technique or method in manufacturing as a trade secret would lose the right to continue practicing the trade secret if the secret technique or method became subject of a patent by…

Read More →