Goodman Allen Donnelly can help you develop and protect your company's greatest assets. Whether you want to protect inventions and discoveries, business or product names, or any other intellectual property, our experienced attorneys are here to help.
The Patent Act states that most things can be patented: any new and useful process, machine, manufacture, or composition of matter, or any improvement thereof.
The courts and the USPTO, however, have made this inquiry a bit more complicated, especially in the life science and software fields. The courts have indicated that “laws of nature, natural phenomena, and abstract ideas” cannot be patented.
The USPTO will often reject software claims as directed to an abstract idea. To overcome this rejection, it will often be necessary to demonstrate that the software includes a practical application through additional elements in the claims. Examples of additional elements in the claims that can overcome patentable subject matter rejections include: improvements in functioning of a computer or other technology, use with a particular machine or manufacture that is integral to the claim, additional elements that transform or reduce the particular article to a different state or thing, and others.
This has become a complicated area of law with which we provide clients with guidance in preparing patent applications.
US patents can be used to stop competitors from making, using, selling, or offering the claimed invention for sale within the US and from importing the claimed invention into the US. To protect the invention from copying or infringement in other countries, it is necessary to obtain patent in each country in which protection is desired.
Patenting outside the US can be expensive, so there are several mechanisms that can delay the cost of non-US patents to be certain that the invention warrants such costs. One is the Patent Cooperation Treaty (PCT) application. There are currently 152 countries that are part of the PCT.
A PCT application is another patent application that must be filed within one year of the first patent application that is filed for an invention. The primary purpose of the PCT application is to delay the decision on which countries in which to file a patent application, as the national stage applications for most PCT countries can be delayed for 30 or 31 months from the initial application filing. At the national stage, it will be necessary for us to engage patent counsel in the various countries in which patent protection is sought, which will often include translating the application and payment of annual annuities to those countries. The PCT can help delay these costs.
Alternatively, and exclusively for non-PCT countries, a patent application can be directly filed in each country in which a patent is sought within one year of the original patent application filing.
We work with patent attorneys and agents around the world to aid or clients in patenting their inventions.
When launching a new product or service, it is important to be sure that (1) the product or service will not be infringing a third party’s patent, and (2) the new product or service will be protected from copying or infringement by a third party. These are two separate, but related, inquiries.
First, we recommend that we perform a clearance search to determine whether the new product or service may be covered by another party’s patent, especially if the field is known to include competitors. This type of search would be for the claims of patents that are currently in force. If patents are found that are close, we perform an invalidity or non-infringement analysis for clients and can even provide a formal opinion of such as necessary. Alternatively, clients may decide to alter the product or service to avoid potential claims of infringement, contact the patent owner in an attempt to negotiate a license or similar type of agreement, or in rare cases, even abandon the product or service altogether.
Second, we recommend that we perform a patentability search to determine whether the new product or service might be patentable. This type of search would include all patents, articles, and internet sources, as well as any other potential sources of prior art of which the client is aware. The search results will aid us in preparing a patent application that shows the inventiveness of the invention and avoids the prior art, or it can help the client to alter the product or service to avoid prior art and increase the chances of obtaining patent protection.
We perform these searches and analyses for our clients when they are launching new products or services.
Not only must an invention be novel to be patentable, it must also be non-obvious. That is, it cannot be an obvious modification or combination of existing technology as per one of ordinary skill in the art. While the inquiry is highly fact-specific, there are several ways to address the non-obviousness requirement.
One way to show non-obviousness is to perform a patentability search. Such a search should elicit the closest prior art, which will permit us to tell the story of the inventiveness of the invention and to prepare the claims of the application in such a way so as to avoid the prior art.
Sometimes, a patent examiner’s obviousness rejection cannot be predicted ahead of time. Some of the ways of responding to such a rejection include that the references cited by the examiner cannot actually be combined in the way the examiner suggests, even if the references can be combined in that way, the resulting combination would not actually work or work in the way the examiner suggests, or that the combination would not actually result in the claimed invention. In some cases, the references actually teach away from the combination suggested by the examiner. This can be particularly compelling evidence of non-obviousness.
Secondary considerations can also be used to demonstrate non-obviousness. These include (1) commercial success of the claimed invention, (2) a long felt need in the industry, (3) failure by others to find a solution to the problem, (4) unexpected results, (5) copying or licensing by others, (6) skepticism of experts. Some of these can be difficult to prove because it will be necessary to show a nexus between the claimed features and the particular consideration at issue. For example, commercial success could be due to particular marketing skill or business prowess, rather than the claimed features of the invention.
We aid and advise clients regarding non-obviousness, both prior to filing a patent application and during the prosecution process.
Anthony counsels clients in a full range of transactional and litigation intellectual property matters, including in the areas of trademark, copyright and patent infringement, trademark registration and protection, and copyright registration and licensing. A graduate of the College of William and Mary School of Law, Anthony is admitted to practice in Virginia, Pennsylvania and New Jersey. He is also a licensed patent attorney, admitted to practice before the U.S. Patent and Trademark Office.
Matt's patent prosecution practice encompasses all aspects of patent practice before the U.S. Patent and Trademark Office, including the preparation and prosecution of patent applications, reexaminations, reissue application, examiner interviews, and preparing briefs and arguments for appeals and post-grant reviews before the Patent Trial and Appeal Board. A graduate of the University of Illinois, Matt is admitted to practice in Virginia, Illinois, the District of Columbia, and the U.S. Patent and Trademark Office.