What, if anything, can an employer do about the employee who leaves the company, taking his or her ideas along? Inventions belong to the inventor (that’s your employee, not you) unless there’s an agreement to the contrary. If the employee created the invention on company time and using company resources, then the company may have […]
Patent
Who Can Challenge a Patent before the USPTO?
May 20, 2021
Patent
The story today demonstrates that even experienced and sophisticated patent owners, like Apple, can trip over the fundamentals. ‘Inter partes review’ is a way* for a person or company to challenge someone else’s patent before the USPTO. A person who wants to challenge a patent can petition the USPTO and submit prior patents, applications or other […]
Is There Light on the Horizon?
April 15, 2021
Patent
The horizon of which inventions are patentable, that is. For the last decade or so, the Supreme Court has been steadily excluding one technology after another from patent protection. The recent series of cases started in 2010 with Bilski v Kappos, which determined that a method of hedging utility fuel prices was not patentable. Then the […]
The Half-Billion Dollar Family Business
March 11, 2021
Patent
VirnetX Holding Corporation is a 20-employee, publicly-traded (NYSE: VHC) corporation with a market capitalization of $505 million and with unusual family compensation. VirnetX owns 190 patents for some of the key technologies of the last fifteen years, including technologies used for Skype, iMessage, FaceTime and virtual private networks. VirnetX is in the business of licensing those patent […]
U.S. v. Arthrex: A Battle for Power over Patent Judges
March 4, 2021
Patent
A fascinating aspect of the law is that something can be standard practice, or settled law, until a creative lawyer or court pulls it apart, turns it on its head, and a new paradigm is born. Think of Brown vs. the Board of Education, Miranda v. Arizona, or Citizens United v. Federal Election Commission. Each of these decisions […]
It’s Official – Patent Examiner Interviews are Effective
February 18, 2021
Patent
After the patent examiner issues a decision (an ‘office action’) on a patent application, the applicant has the right to an ‘interview’ with the examiner. The interview can be in person, by video or by telephone. During Covid-19, in-person interviews are out, but video and telephone interviews are available. In the interview, the applicant can […]
Bling and the Ordinary Observer Test
January 21, 2021
Patent
Utility patents protect what things are, how they work, or ways of doing things. An example is the guillotine mousetrap that works by, well, the name says it all. Design patents protect the ornamental design of a product, for example this mousetrap that looks like a demented cat. The topic this month is design patents. Let’s say that […]
It’s Official: Patent Examiner Interviews are da Bomb
December 10, 2020
Patent
The patent application process is essentially a negotiation between the patent applicant, represented by his or her patent attorney or patent agent, and the Federal government, represented by the patent examiner. Most communications between the applicant and the examiner are written, in the form of the application itself, office actions by the examiner, and responses and […]
Not Laughing
November 5, 2020
Patent
Walking fast, you round the corner of an urban street and collide with — a clown — the greasepaint, the red, bulbous nose, oversized shoes, fright wig, exaggerated clothing, exaggerated smile, exaggerated eyes. Immediately you feel nausea, your hands sweat, you struggle to breathe, you feel panic, anxiety and dread. Your mouth goes dry and […]
Am I Entitled to Compensation if the USPTO Cancels My Patent?
October 8, 2020
Patent
The USPTO’s trial arm, the Patent Trial and Appeal Board (‘PTAB’), cancels patent claims so frequently that the PTAB is usually the copyist’s first stop in defending against patent infringement. Before the PTAB cancels the claims, the patent owner has a valuable (and expensive) asset, namely the patent. When the PTAB cancels the patent claims, […]