Tag: patent infringement

The 66 Claims - A Patent Infringement Case

66 Claims: A Tale of Patent Infringement

The 66 Claims

This is a tale of what happened to the 66 claims.

A, B and C were officers and engineers for ABC company located in Cincinnati. In 2022, A, B and C assigned their interests in their joint invention to ABC company. In 2022, ABC company filed the Patent Application in the United States Patent and Trademark Office (USPTO). The original ABC Patent Application had 66 claims.

What Happened With the 66 Claims

In 2024, A and B were playing a best ball golf tournament in Louisville. The other twosome happened to be X and Z, who were officers of XYZ company located in Indianapolis. Before starting the back nine, all players took a break at the clubhouse. By the thirteenth hole, A and B were talking about their joint invention.  X and Z listened closely.

In early 2025, ABC company became aware that XYZ company was selling an XYZ invention that appeared to be identical to the ABC company’s invention. ABC had yet to receive regulatory approval for use of its invention. Somehow, XYZ received regulatory approval and made it to market before ABC.

The 66 Claims of the ABC Company’s Application

In the summer of 2025, ABC received the First Office Action from the Examiner regarding the 66 claims. In the Office Action, the Examiner rejected the first 60 claims of the 66 claims but indicated that the last six claims were allowable if some of the language of those six claims was tweaked. Since A, B and C were engineers and not patent attorneys, A, B and C opted to seek legal assistance.

What Did the Law Firm Do With ABC’s Patent Application?

  • First – the firm determined what product XYZ sold.
  • Second – the firm tweaked the last six claims to make them allowable while at the same time ensuring that those six claims read on XYZ product.
  • Third – the firm filed a Response to the Office Action cancelling the first 60 claims and requesting the Examiner allow the last six claims to mature into a Patent.
  • Fourth – the firm prepared another five Patent Applications claiming priority/benefit to the first ABC Application. Each of those five Patent Applications contained 20 claims.  Three of the Applications were Continuations, and one of those included less structures to achieve the same result. Two of the Applications were Continuation-In-Part Applications that included additional structures that ABC had invented since the filing of the first ABC Company Application.

35 U.S.C. § 120 allows an Applicant to claim the benefit of an earlier Patent Application if the earlier Patent Application is still pending.

What Was the Outcome of the 66 Claims?

  • Before the first ABC Company Application was abandoned, the original first 60 claims morphed into five additional Patent Applications having a total of 100 claims.
  • Original claims 61-66 were the basis for the first Patent. ABC sued XYZ for infringement.
  • Before going to trial and because of the distinct possibility of intentional infringement and treble damages, XYZ agreed to allow ABC to select the infringement damages calculation, e.g., ABC’s losses, such as lost profits or a reasonable royalty, or an accounting of the infringer’s profits.
  • XYZ ceases to use, offer for sale, sale, or make ABC’s patented invention.

Ask Us Anything… about Intellectual Property!

If you or your business are in the greater Cincinnati Indianapolis, Lexington or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Do a Claims Check on Your Patent

Claims Checks Are Important  

Claims Checks

Doing claims checks of  your Patents are essential because they define the scope and boundaries of the Patent.

Claims are Legal Boundaries

As previously indicated in this Blog on Patent Infringement: “A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.”

The Situation

Approximately five years ago, our company filed three Patent Applications for three separate products that our company continues to market and sell to our national and international customers.

Our attorneys and the USPTO examiners had several rounds of arguments regarding the patentability of claims of our three Patent Applications. Over this timespan, some of the as-filed claims of the three Patent Applications were amended, canceled and/or re-amended by our attorneys. Before the end of the patenting process, our attorneys also added some new claims not previously set forth in the as-filed claims. Even the examiners made some examiners’ amendments to the claims.

After all the arguments, the USPTO issued Notice of Allowances. We paid the Issue Fees and we eventually received the three granted Patents.

The claims of two of the Patent we received were perfect. However, the claims checks revealed that about half of the claims of the third Patent were incorrect.

What should we do?

Actions: When a Claims Check Reveals Errors

  • Although not recommended, a few Patent owners do not attempt to correct the incorrect claims.
  • Review the USPTO file wrapper and your files to determine where and when the claims errors occurred. If the errors were caused by the USPTO, the USPTO requires no additional fees to correct the incorrect claims. If the errors were caused by the Applicant(s), the USPTO requires the payment of a government fee to correct the errors.
  • Sometimes, other parts of a Patent contain errors that need correction.
  • Submit a Certificate of Correction (PDF) to the USPTO.

Claims can be considered the heart and soul of the Patent, so it’s essential that yours be correct.

Need More Information?

If you have a question about Claims checks, please get in touch with Business Patent Law, PLLC.

Have another topic or question you would like Business Patent Law, PLLC to address in the blog? Please send us an email!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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patent application possibilities

Patent Application Possibilities

Depending on your company’s intellectual property strategy, there are many Patent Application possibilities.

The Question

Our R&D engineers recently invented improvements for our Company’s Product One.  We have sold Product One for more than a year. The US Patent for Product One was granted six months ago. Can the Company file a US Patent Application for Product Two that includes two structures not part of Product One?

The Answer

It depends on the situation and 35 United States Code 120.

Examples and Possibilities

Patent Application Possibilities  – First Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
  • The USPTO granted our US Patent for Product One on February 9, 2021.

In August 2021, your Company can file a Patent Application for Product Two in the USPTO. However, the USPTO will be able to use the US Patent for Product One to argue against the patentability of Product Two. Unless there are novel and nonobvious structural differences between Product Two and Product One, the USPTO will not grant a Patent for Product Two.

Patent Application Possibilities – Second Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
  • In August 2021, the US Nonprovisional Patent Application for Product One is still pending in the USPTO.

Because the Product One US Nonprovisional Patent Application is still pending, your Company can file a US Continuation-in-Part Nonprovisional Application for Product Two, claiming priority to pending US Nonprovisional Patent Application for Product One. The USPTO cannot effectively use the structures of the Product One Patent Application to reject identical structures in the Product Two Patent Application.

Patent Application Possibilities – Third Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a Patent Cooperation Treaty Patent (PCT) Application disclosing and claiming Product One on June 15, 2020.
  • Our Company filed a US National Stage Nonprovisional Application claiming priority to PCT Application for Product One on August 15, 2020.
  • The USPTO granted our US National Stage Patent for Product One on April 13, 2021.

Pursuant to Title 35 of United States Code and Patent Cooperation Treaty, your Company has until December 2021, to file a US Continuation-in-Part Nonprovisional Application for Product Two claiming priority to PCT Application for Product One.

The USPTO cannot effectively use the structures of the PCT Application for Product One or the April 13, 2021 US Patent for Product One to reject identical structures in the Product Two Patent Application.

35 United States Code 120 Benefit of earlier filing date in the United States

 35 U.S.C. 120, in part, reads:

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

For those companies that have a profitable (or potentially profitable) product that is patentable, it is wise to keep a Patent Application pending.  The marketplace decides whether the first generation, the second generation or a subsequent generation product is the most profitable.

Need Help With Securing Your Product Patent?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios. If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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Patent Infringement Cease and Desist Letter

Patent Infringement: The Cease and Desist Letter

What is Patent Infringement?

Patent infringement is similar to trespassing on private real estate. A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.

Patent infringement is defined in United States Code Section (U.S.C.) 271. In part, Section 271 reads:

“Infringement of Patent (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Patent Infringement Damages

Patent infringement damages are defined in U.S.C. 284 which, in part, reads:

“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d).”

What Happened to Our Business was Surprising

We received a letter from the legal department of Company ABC demanding payment of damages for our alleged sales of Company ABC’s patented gadget. Prior to receiving the letter, our business was not aware that Company ABC’s gadget was patented. What can we do?

How To Defend Against Allegations of Patent Infringement

  • Contact an experienced patent attorney.
  • Determine if the patent is in full force and effect and is owned either directly or indirectly by Company ABC. The USPTO Assignment Database gives notice to the world of ownership rights in assigned Patents.
  • Determine if the gadget was identified by the patent number as set forth in 35 U.S.C. 287(a). In part, 35 U.S.C. 287(a) reads, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
  • Calculate the expiration date of the Patent. The USPTO website includes a Patent Term Calculator to assist in determining if a Patent remains in full force and effect. Practicing the claimed subject matter of an expired Patent is not an infringement.
  • If there is no settlement agreement with company ABC, make no payments to Company ABC.
  • In this scenario, receiving a letter from the legal department of Company ABC instead of a law firm is unusual.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need legal assistance procuring and managing your intellectual property assets, please contact us.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.