Introduction This is an update of my previously published WARNING. If you have made an innovation, you don’t want to lose the right to ownership of your invention and the opportunity to exploit it for possible income. The easiest way to lose your rights is to make a public disclosure of the innovation. Public disclosure…
Protecting IP
Design Choice and Obviousness
INTRODUCTION: Many of my recent articles have focused upon the whether an innovation is eligible for patent protection. This has been described as a Section 101 issue. Many innovations have been barred from patenting as being merely abstract ideas. This is a confused area. However, even if an innovation is deemed patentable subject matter, it still needs to be…
Design Patents: $1 Billion Stepchild
INTRODUCTION: Everyone remembers Apple being awarded $1 billion in damages against Samsung for copying the design of Apple’s iPhone. The award was the product of Apple obtaining a patent on a smart phone design, particularly the curved corners of the smart phone frame. Samsung’s copying of a curved frame probably seemed a trivial detail to some. However Apple…
Avoiding the “Un-patentable Abstract Idea”
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 un-patentable abstract idea”. What I am referring to is the rejection of patentable innovations on the basis that the patent is merely claiming an abstract idea. An abstract idea…
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…
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 WARNING. If you have made and innovation, you don’t want to lose the right to protect your innovation and to exploit it for possible income. The easiest way to lose your rights is to make a public disclosure of the innovation. As you probably know, the…