Patent Law FAQs

First, I assist in helping to determine what type of intellectual property protection is needed e.g. a patent, trademark, or copyright. While my entire team is well-versed in patent law, my attorneys also have extensive experience in other areas of intellectual property, which can often be paired to bolster the protection of your intellectual property with protection mechanisms that are most valuable and best suited for your particular needs.

Next, we’ll be looking into the actual patentability of the invention by answering questions like: who is able to apply for the patent? Is the invention patentable? Is it advantageous to patent and for how long is a patent needed? Will the costs of patent be outweighed by the potential gain?

Performing an in-depth patent search for previous public disclosures is a crucial step in the preliminary phases of seeking patent protection. My patent searches are extensive and include foreign patents and publications.

Discovering the best form of patent protection for your invention and goals going forward takes strategic thinking. When looking at Utility Patents, for example, inventors have two options with either a non-provisional patent application or a provisional patent application. I help my clients choose the most appropriate course of action for their situation.

Getting my clients ready to actually file their patent application is completed by answering questions like: How much does a patent application cost? How long do patent applications take? Do we need to seek international protection as well?

Helping my clients submit their patent applications is what I do best. Filing typically can be done over the internet for the most common types of patent applications.

The sections included within a patent application vary depending on what type of patent application is being filed. Non-provisional utility patent applications require the following sections to be completed in their entirety and in-line with the requirements set forth in Title 35 of the United States Code:

• Patent Title

• Abstract Providing Overview

• Figures and Tables

• Field(s) of Invention

• Brief Summary of the Invention

• Figure Descriptions

• Number References

• Detailed Description

• Claims

If a patent application is submitted incomplete, it can lead to delays, result in additional government filing fees, and even abandonment if not promptly and correctly amended. That’s why I work tirelessly to make sure the patent application is complete and submitted in accordance with the USPTO’s requirements to avoid any unnecessary delays or fees.

Patent infringement is a violation of the rights granted by the USPTO for patent protection. Except in a limited number of cases where permission is expressly granted by the patent holder, patent infringement occurs when another entity (typically a business) makes, imports, sells, or otherwise takes part in the unauthorized use of your invention.

Patent infringement can also occur indirectly. If another entity induces or contributes to the infringement of your patent rights, you may be able to hold them accountable. Such infringement is referred to as induced and contributory infringement.

When another party infringes upon your patent rights, it may require litigation to hold them accountable and help recover what was lost. This may involve filing a lawsuit to have the other party cease operations in the form of an injunction, as well as seeking compensation for damages incurred as a result of the infringement.

It’s important to note that patent owners need to bring about a patent infringement action within six years from the date of the perceived infringement. To build a case, I look at areas such as the validity of the patent, what type of patent infringement may have occurred, and the extent of the damages caused by the infringement.

Litigating patent infringement cases takes a unique set of skills and is a service I can provide for my clients.

While it may seem straightforward, patent litigation involves a keen understanding of the mechanics behind the invention, as well as the federal statutes and applicable case law. I take immense pride in making sure I understand both the invention and the strategic goals my clients have in mind when seeking patent protection.

I work with a wide range of inventors and tailor my approach to meet their needs wherever they may be in a patent dispute. This may pertain to either defensive coverage and fortification against potential litigation or with enforcement of an entity’s patent rights.

Post-grant reviews are, in essence, a trial proceeding. This trial is handled by the PTAB according to 35 U.S.C. 282 and other sections of the United States Code. The review process typically starts when an opposing third-party files a petition for the PTAB to review the patentability of one or more claims within a patent within nine months of the patent being granted.

The petition for the review is only granted when it can be demonstrated that some portion of the patent was actually unpatentable under the law. When the proceedings actually do occur, the PTAB typically issues a final determination within one year.

Post-grant proceedings are usually highly technical in nature as the patentability of the object in question is examined. My team is composed of both attorneys and engineering experts that can take the time to understand the nuances of the invention in order to chart the most advantageous path forward for my clients undergoing a post-grant proceeding.