Microorganisms Patented

What is Patentable: From Microorganisms to Abstract Ideas

What Inventions are Patentable?

35 United States Code (U.S.C.) 101 provides the statutory basis for what inventions are patentable.

35 U.S.C. 101 reads, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Are Manmade Microorganism Patentable?

In the US Supreme Court case of Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Court held that 35 U.S.C. 101 did not prohibit a manmade microorganism from being patented.

On page 309 of Diamond, Mr. Chief Justice Burger wrote, “…when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.

Are Abstract Ideas Patentable?

1.) In this example, the question posed involves an invention explaining how buyers and sellers in the energy market protect or hedge against the risk of price changes to determine if it is patentable.

In the US Supreme Court case of Bilski v. Kappos, 561 U.S. 593 (2010) it was held that Bilski’s program was not patentable subject matter.

On Pages 611-612, Mr. Justice Kennedy wrote, “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.  Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

2. In this example, the question involves a computer-implemented scheme for mitigating “settlement risk” as a patentable abstract idea.

On Page 212 of the US Supreme Court Case of Alice Corp. Pty Ltd. v. CLS Bank International, 573 U.S. 208 (2014), Mr. Justice Thomas held:

“The patents at issue in this case disclose a computer-implemented scheme for mitigating “settlement risk”…only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U.S.C. § 101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

Judicial Exceptions to Patentability

On page 216 of Alice Corp. Pty Ltd., the long standing judicial exemptions to patentability were reiterated.  The Court stated, “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”…We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.”

The judicial exceptions to patentabilty are:

    • Laws of nature
    • Natural phenomena
    • Abstract ideas

On page 217 of Alice Corp. Pty Ltd., Mr. Justice Thomas wrote:

“Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the ” ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more,…thereby “transform[ing]” them into a patent-eligible invention. The former “would risk disproportionately tying up the use of the underlying” ideas,and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.”

Based on Business Patent Law’s experience, if your company’s invention(s) are chemical, electrical, electromechanical, mechanical, optical or pharmaceutical, only on rare occasions could the judicial exceptions to patentability potentially manifest.

If you need legal assistance with your company’s Patents or Patent Applications, please contact Business Patent Law, PLLC.

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

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.

covid19 response

COVID19 Office Response

Our offices remain open and serving clients. We have only made a few changes to the way we do business. We are able to work with you by phone and email, as always, but are not meeting in person at this time. This is to protect our clients and staff. It will not impact the quality or timeliness of your service and we intend to keep your matters on track and on time.

Since our practice is primarily of national and international scope, changes in operations in the various state court systems will not likely impede most matters managed by us.

Federal Courts and the United States Patent and Trademark Office (USPTO) made some changes to standard operating practices. For example, USPTO offices are closed to the public and some petition fees may be waived and extensions of certain patent and trademark deadlines may be possible. In-person oral hearings and meetings with USPTO employees are not possible at his time.  However, for years, Business Patent Law has used digital technologies to communicate with the USPTO, other federal agencies and our foreign clients and associates.

If you want to know how this impacts your intellectual property and business concerns, please contact us and we can discuss it.

Precise Patent Claims

Patent Claims Must Be Written Precisely

Overcoming the Examiner’s Rejection

The Patent Examiner stated that our claims did not particularly point out and distinctly claim our invention. Can we overcome the Examiner’s rejection?

Whether Applicants can overcome the Examiner’s rejections of the claims, depends on the evidence.

35 U.S.C. 112, in part, reads:

(a)      In General:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b)      Conclusion:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

Be Precise

35 U.S.C. 112 requires Applicants’ claims to precisely claim the subject matter of the invention. When the Examiner argues that the Applicants’ claims failed to particularly point out and distinctly claim the subject matter the inventors regard as the invention, in effect, the Examiner argues that the claim language is unclear or uncertain.

An Unfixable Rejection

Example of an unfixable 35 U.S.C. 112(b) claim rejection: Applicants’ claimed subject matter is not disclosed and enabled in the Specification and Drawings. By way of illustration, Applicants claimed a chair with arms and the Application does not disclose a chair with arms.

A Potentially Fixable Rejection

Example of a potentially fixable 35 U.S.C. 112(b) claim rejection: Applicants used terminology in the claims not utilized in the Specification.

Other examples of fixable 35 U.S.C. 112(b) rejections:

    • Applicants incorrectly numbered the claims
    • Applicants failed to provide an antecedent basis before associating the word “the” or “said” with a claimed structural element
    • Applicants erroneously referenced element 1 of the invention as element number 2 and referenced element number 2 as number 1
    • In a third claim, Applicants referenced a second claim that depended from more than one previous claim
    • Applicants over utilized the conjunctions “and”, “but” or “or”
    • Applicants claimed structural elements are not interconnected

If you need legal assistance procuring your Patents and other intellectual property rights, please contact Business Patent Law, PLLC.

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

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.

Improvement Patents on Spoons

Improvement Patents

Can Improvements on An Existing Patent be Patented? 

There are two key features of Patents and Improvement Patents in the United States:

  1.  The Patent Application must claim an invention is novel over the prior art and
  2.  It must also claim an invention that is non-obvious in the prior art

Basic parameters for an Improvement Patent’s validity in most countries other the United States are:

  1. The claimed invention must be novel over the prior art and
  2. It must have an inventive step, in view of the prior art

In the United States and foreign jurisdictions, one of the attributes of patent counsel is their ability to persuade Patent Examiners that the client’s Patent claims are novel and nonobvious or include inventive step and therefore are patentable.

Can Utility Improvement Patents for a Simple Invention (a Spoon) be granted?

Yes.

For clarity, a utility Patent is based on the invention’s structure and/or function rather than its nonfunctional appearance.  Design Patents would be directed toward ornamentation of a spoon.

Selected Examples of Utility Patents for Spoons from 1899 to the Present

 

1899 – Egg Spoon

 

1899 - Egg Spoon

 

 

1905 – Spoon

 

1905 - Spoon

 

 

1968 – Spoon

1968 - Spoon

 

 

2012 – Musical Spoon

2012 - Musical Spoon

 

2014 – Hair Spoon

2014 - Hair Spoon

It is estimated that spoons with handles have existed for at least three thousand years.  Humans still find ways to modify the basic spoon’s structure to obtain Patents for their new inventions.

If you need legal assistance procuring your Patents and other intellectual property rights or managing your maintenance fees, please contact Business Patent Law, PLLC.

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

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.

When is a Patent Obvious

What is an Obvious Patent Claim?

What does it mean when a Patent Examiner or Adverse Party argues that the Claim is Obvious?

Since the United States’ legal system is adversarial, winning an obvious-type Patent case can be difficult. In view of shifting burdens of persuasion, American jurisprudence requires admissible evidence, testimony and arguments to prove a case before a court or an administrative agency such as the Patent Office.

Under the US legal system:

  • When a Patent Examiner argues that a Patent Application’s claim is obvious, the Examiner argues that the claim is not patentable.
  • When an adverse party argues that the Patent’s claim is invalid, the adverse party argues that the Patent’s claim is obvious and, therefore, invalid.

35 United States Code 103 – Statutory Obviousness

35 U.S.C. 103 reads:

“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

The US Supreme Court’s Standard for Determination of When a Claim is Obvious

“Obviousness is decided as a matter of law based on four basic factual inquiries, as set forth in Graham v. John Deere Co., 383 U.S. 1…(1966), and elaborated in KSR International, Co. v. Teleflex Inc., 550 U.S. 398…”  Those inquiries are:

  1. The scope and content of the prior art
  2. The level of ordinary skill in the field of the invention
  3. The differences between the claimed subject matter and the prior art, and
  4. Any objective indicia of unobviousness, such as commercial success or long-felt need, or failure of others.

In a Pharmaceutical Composition, is the Replacement of a Carbon Functional Group with a Sulfur Functional Group Obvious?

  • In the case of In re Rousuvastatin Calcium Patent Litigation, 703 F. 3d 511, (Fed. Cir. 2012), the defendants argued that replacement of the known simple hydrophobic carbon functional group with a lesser known simple hydrophilic sulfur functional group was obvious.
  • The Patentee argued that at the time the pharmaceutical compound was invented there was no reasonable expectation of success for use of the simple hydrophilic sulfur functional group in reducing cholesterol levels.

On page 518 of the Rousuvastatin Calcium Patent Litigation case, the Court of Appeals for the Federal Circuit (the Patent appellate court) affirmed the District Court’s ruling that the Patentee’s claim was not obvious and that the Patent was valid and enforceable.

If you find the “obviousness” legal standard confusing and need assistance, please contact Business Patent Law, PLLC.

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

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.

How to get expired patent reinstated

Can Expired Patents Be Reinstated?

The short answer is: It depends. Let’s look into possible scenarios as they relate to unpaid patent maintenance fees.

A Common Scenario for Unpaid Maintenance Fees

“Our US company recently received an offer from a European competitor to purchase a small portfolio of Patents related to a product line that we no longer manufacture. The due diligence team declared that the offer was bona fide. However, due diligence uncovered that accounting failed to pay the maintenance fee for one of the Patents, and the Patent expired nine months earlier. This expired Patent is critical to the sale of the Patent Portfolio. Is there anything we can do to save the sale of the portfolio?”

Failure to Pay Maintenance Fees, Expired Patents and Patent Reinstatement

If the delay in paying the maintenance fee is unintentional, a petition to reinstate the expired Patent may be accepted by the USPTO:

37 Code of Federal Regulations – Reinstatement of Expired Patents

37 C.F.R. 1.378, in part, reads:

(a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).

(b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:

(1) The required maintenance fee set forth in § 1.20(e) through (g);

(2) The petition fee as set forth in § 1.17(m); and

(3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

In the “Common Scenario” example at the beginning of this post; provided the European buyer agreed to the sale, the expired Patent could be reinstated:

Expired Patents – Section 2590 of the USPTO Manual of Patent Examining Procedure

 Section 2590 of the USPTO Manual of Patent Examining Procedure, in part, indicates:

      • If the delay in payment of the maintenance fee is unintentional, the USPTO may accept late payment of any maintenance fee filed after the 6-month grace period
      • A Petition that the delay in payment of the maintenance fee was unintentional would not be proper when the Patentee becomes aware of an unintentional failure to timely pay the maintenance fee and then intentionally delays filing a petition for reinstatement of the Patent
      • Petitions to accept unintentionally delayed payment of the maintenance fee in an expired patent, if expired for two years or less, can be processed digitally via the USPTO website
      • After the Patent owner failed to pay the maintenance fee for more than two years, a petition to accept the unintentional delay in payment of the maintenance fee can be filed in the USPTO and may reinstate the Patent

approval for patent reinstatement

FAQ: Situations for Expired Patents and Reinstatement

  • Your company opted to let the Patent expire for failure to pay the maintenance fee, and after 21 months, the company decided to pay the maintenance fee. Will this reinstate the Patent? Most likely – Yes.
  • Your company opted to let the Patent expire for failure to pay the maintenance fee, and after 36 months, the company decided to pay the maintenance fee and reinstate the Patent. Will this work? Depending on the facts – Possibly.
  • Your company did not pay two maintenance fees (NOTE: As a general rule, due times can be variable at 3 years, 7 years and 11 years in the USA and most international fees are due annually)? Can the patent be reinstated? No.
  • Your company intentionally did not pay the maintenance fee for 3 years? Can you get the patent reinstated? Probably not.
  • You are an individual who was made aware that your Patent had expired. Thereafter, you forwarded a money order to pay the required fees to the wrong address for the USPTO. Two years later, you learned that your Patent remained expired. Depending on the evidence presented to the USPTO, your Patent may be reinstated.

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

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.

Trade Dress in Patent Law

Trade Dress: Likelihood of Confusion

What is Trade Dress?

Generally, trade dress relates to a product’s physical appearance, including its size shape, color and design. Texture is sometimes considered part of the product’s physical appearance. It can also refer to the manner in which a product is packaged, wrapped, labeled, presented, promoted or advertised.

When the plaintiff thinks that the defendant’s trade dress is likely to cause confusion with the plaintiff’s product, the plaintiff can sue under 15 United States Code 1125.  Section 1125 is entitled “False designations of origin, false descriptions, and dilution forbidden.”

Can an invention that is patented also have trade dress protection?

It depends – trade dress protection may be available.

Trade Dress: An Illustrative case for False Designation of Origin

The drawing below from US Patent 3,646,696 is set forth below. The plaintiff’s invention was used for such things as “Road Work Ahead” signs.

Trade Dress Illustration: Patent Law Drawing

After the ‘696 Patent expired, the defendant copied the plaintiff’s design.  The plaintiff argued that defendant’s copying of springs 16 and 18 was a trade dress false designation of origin.

Points of Contention

The Court indicated:

  • Trade dress can be protected under federal law
  • The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source
  • A design or package which acquires secondary meaning is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods
  • The [Trademark Act] provides a cause of action when any word, term name, or device, or any combination thereof is likely to cause confusion as to the origin, sponsorship or approval of the goods
  • Trade dress protection exists with the recognition that in many instances there is no prohibition against copying goods and products
  • Unless a Patent or Copyright protects an item, it will be subject to copying
  • The plaintiff must prove that the trade dress asserted is not functional

The defendant argued that plaintiff’s springs 16 and 18 shown in the above drawing were functional.

What the Court Determined

In the case of Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-30 (2001), the Supreme Court of the United States, held:

  • A prior patent, we conclude, has vital significance in resolving the trade dress claim.
  • A utility patent is strong evidence that the features therein claimed are functional.
  • Where the expired patent claimed the features in question, one who seeks to establish protection must carry the heavy burden of showing that the feature is not functional
  • This can be accomplished, for instance, by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

A trade dress that is functional is not enforceable under the Lanham Act [the Trademark Act].

Elements of a utility Patent are presumed functional.  However, on page 34 of Traffix Devices, Inc., the Supreme Court did not completely bar trade dress protection for current or previously patented items.  Mr. Justice Kennedy wrote:

“In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent.”

The Basic Trade Dress Question

To answer the initial question, if the part of the patented invention is functional it cannot be protected under the Trademark Act.  If the part of the patented invention is arbitrary, incidental or ornament, protection of the Trademark Act may be available.

Need More Information?

If you need legal assistance preparing or managing your unfair competition issues or intellectual property Applications, please contact Business Patent Law, PLLC.

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

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.

Patent Claim - Learn about patents

Patent Claims 101 – What is a Patent Claim?

What are Patent Claims?

Patent claims are for intellectual property what a property deed is for physical property. A property deed defines the physical boundaries of your real properly (real estate). Similarly, a Patent claim defines the ownership boundaries of your Intellectual Property.

Claims Determine If There Is Infringement

When a person crosses over your physical property line and enters onto your real property without your permission, they are trespassing and you can file a legal trespass action in the appropriate State court.

Likewise, when someone (who does not have your permission) attempts to use your patented Intellectual Property, you can file an infringement suit in the appropriate US District Court.

Are Patent Claims Complicated?

Because a Patent claim is a single sentence, the claim can be complex. Here are some Patent claim facts for you:

The Anatomy of a Patent Claim:

  • Since 1790, the US Patent Office has required that any Patent claim must be a single sentence
  • An independent claim is a Patent claim that does not reference or refer to another claim of the Patent
  • A dependent claim refers to another claim number in the preamble of the dependent claim
  • The words of the claim preceding “comprising” or “consisting” are the preamble
  • The words that follow “comprising” or “consisting” in a claim are the body of the claim

In Addition:

  • The body of the claim is used to determine patentability or infringement
  • A dependent claim can reference (depend on) an independent claim or another dependent claim
  • Dependent claims include all the structures/limitations of the claim (or claims) from which they depend

How Patent Claims Work

Below are examples of an independent Patent claim and three related dependent Patent claims. The parts of the independent claim (preamble and body) are labeled:

Independent Claim (#1)

[the preamble]         A transportation vehicle comprising:

[the body]                  a)  a frame supporting a surface area adapted to transport matter;

b) an axle attached to the frame; and

c) at least two wheels.

NOTE: A Patent Examiner could construe Independent Claim #1 to include: a bicycle, cart, motorcycle, wagon, trailer, automobile, truck, airplane, etc.

Dependent Claim (#2)

The transportation vehicle of  Independent Claim #1 further comprising a motor.

NOTE: A Patent Examiner could construe claim 2 to include: a motorcycle, automobile, truck, airplane, etc.

Dependent Claim (#3)

The transportation vehicle of Dependent Claim #2, wherein the surface area is adapted to carry at least 25 metric tons.

NOTE: A Patent Examiner could construe claim 3 to include a truck or an airplane.

Dependent Claim (#4)

The transportation vehicle of Dependent Claim #3 further comprising wings.

NOTE: A Patent Examiner could construe claim 4 to include an airplane.

Need Help With Your Patent or Patent Application?

If you need legal assistance preparing or managing Patent Applications, please contact Business Patent Law, PLLC.

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

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.

Patent law, popcorn dispenser and anticipated patents

Anticipated Patent Claims – 35 U.S.C. 102

When Your Patent is “Anticipated by a Prior Reference”

The Patent Examiner argues that one or more claims of my Patent Application are anticipated by a prior reference. What does this mean?

In short, it means that the Examiner argues that someone else invented your invention before you did.

Let’s expand on that:

35 United States Code (U.S.C.) 102, in part reads: “A person shall be entitled to a patent unless – the claimed invention was patented, described in a printed publication…before the effective filing of the claimed invention…” 35 U.S.C. §102 requires that the prior reference must have existed before your Patent Application was filed. When the Patent Application’s claim is rejected under 35 U.S.C. §102, the Examiner argues that the rejected claim is “anticipated.”

When a Patent Examiner argues that one or more of your Patent Application’s claims defining your invention are anticipated, the Examiner is saying that a single prior reference discloses all of the structures of your invention.

The Patent Appellate court[i] has held, “For a prior art reference to anticipate in terms of 35 U.S.C. §102, every element [structure] of the claimed invention must be identically shown in a single reference…These elements [structures] must be arranged as in the claim under review.”

How Can I Counter the Rejection?

One way to counter the Patent Examiner’s anticipation rejection is to amend the claim.

Therefore, you can amend the anticipated claim by deleting structure or adding structure to your invention. Additionally, you should add the changes to the wording of the Patent Application’s claims. For instance, if the alleged anticipated claim required a piece of furniture with four legs, you could exclude one of the legs from the claim to create a table with three legs. Similarly, you could add a back support to the claim to create a chair.

In addition, you can argue that the Examiner’s prior reference fails disclose every structure of your invention as claimed in the Patent Application.

How Similar in Structure and Use Does the Anticipated Claim Have to Be?

For instance, can the Patent Examiner use a prior reference that is unrelated to my invention’s use to successfully argue that my claim is anticipated? Can you give me an example?

Sure! Let’s take the question “Can an Oil Can’s Nozzle Anticipate a Popcorn Dispenser?” which was the basis of an actual case!

Yes. An oil can’s nozzle does anticipate a popcorn dispenser. Here’s how it was argued:

In the case of In Re Schreiber, 128 F. 3d 1473 (Fed. Cir. 1997), the Patent Examiner argued that Swiss Patent No. 172,689-Harz  disclosed a “spout for nozzle-ready canisters” that anticipated Schreiber’s claim for a popcorn dispenser.

On Page 1447 of Schreiber, the Court of Appeals for the Federal Circuit wrote:

    • Schreiber argues…that Harz [Swiss Patent No. 172,689] does not disclose that such a structure can be used to dispense popcorn from an open-ended popcorn container.
    • Although Schreiber is correct that Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat anticipation.
    • It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.

In conclusion, according to Schreiber, the function of the invention is irrelevant to the Patent Application’s claims in the United States. So an existing patent on an oil can did, in fact, prevent the patent of a popcorn dispenser with a similar shape, despite the completely different function.

Patent Law Can Be Confusing

If you need legal assistance with responding to a USPTO Office Action, please contact Business Patent Law, PLLCBusiness Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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[i] In Re Bond, 910 F.2 831, 832 (Fed. Cir. 1990).

Legal cease and desist letter on patent infringement

Cease and Desist Letters

I have received a cease and desist letter

The letter claims that my company is infringing a US Patent.  Can you (and your company) ignore the letter? I wouldn’t recommend ignoring a letter. If your company ignores the cease and desist letter, your company could regret not responding to that letter.

How do I know if the cease and desist letter is valid?

An experienced patent attorney can assist you in determining if the claim of infringement has merit. Among other things, your patent counsel will review the United States Patent and Trademark Office (USPTO) record regarding the Patent. Additionally, your attorney will compare your company’s allegedly infringing goods and/or services against the USPTO record.

It is also wise to have your legal counsel prepare an opinion regarding whether or not your company’s goods or services are infringing the potential plaintiff’s Patent.

What are my company’s options?

When responding to an allegation of patent infringement, use experienced counsel. Your patent attorney may recommend any of the following options and/or actions. For example, you (or your company) could:

  • Secure an agreement with the Patent holder stating that your company’s goods and/or services do not infringe the Patent holder’s Patent
  • Enter into a license agreement with the Patent holder
  • Establish a cross-license agreement with the Patent holder
  • Phase-out and cease the use of your company’s allegedly infringing goods and/or services
  • Your company and the Patent holder may agree to mediation or arbitration
  • Join with other third parties receiving a similar cease and desist letter from the Patent holder and collectively litigate against the validity of the Patent holder’s Patent
  • Institute a USPTO Post Grant Procedure against the patentability and/or validity of the Patent holder’s Patent
  • In a federal district court, institute a Declaratory Action Judgment action against the Patent holder
  • After the Patent holder has instituted an infringement action against your company’s goods and/or services in a federal district court, counter-claim that the Patent holder’s Patent is invalid
  • After litigation is commenced in the federal court system, settle the matter

Costs to the company

As a general rule, costs for a USPTO Post Grant procedure are much less than the costs of litigating in the federal court system.  The costs associated with USPTO Post Grant procedures and mediation or arbitration can be similar.

If you have received a cease and desist letter and need legal assistance, please contact Business Patent Law, PLLC. Likewise, if your company believes another company has infringed your Patent and you need to send a cease and desist letter, please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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

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.