Tag: Rules

Corset Stays - Public Use vs. Public Disclosure in Patents

Public Use Bar

Public Use Bar: A Cautionary Tale for Innovators

For anyone in the world of Patents, the terms “public use” and “public disclosure” are critical—and often misunderstood. 35 U.S.C. § 102 defines these terms and their implications for patentability.

Grace Period

A key point to remember:  the U.S. has a unique one-year grace period for filing a patent application after a public disclosure. In most other countries, any public disclosure can immediately bar you from obtaining a Patent. This is a crucial distinction that can make or break your intellectual property.

Defining the Public Use Bar

What exactly constitutes “public use bar”?  Can a use be “public” even when it’s hidden from the public eye?

The U.S. Supreme Court’s 1881 decision in Egbert v. Lippmann (104 U.S. 333) provides a fascinating and enduring lesson. The inventor in this case created improved corset steels in 1855, giving them to a single individual to use. Even though the steels were never publicly seen, the Court ruled that this was a public use. The inventor’s subsequent patent, filed years later, was therefore invalidated.

The Egbert Court’s conclusions still stand as a stark warning:

  • A single public use is enough. You don’t need to have a crowd of people using your invention to trigger the bar.
  • Unrestricted use is public use. If you give or sell your invention to another person without any confidentiality agreements or restrictions, that use is considered public.
  • However, experimental use is an exception. A use that is open to public view but is made in good faith solely for testing and experimental purposes does not count as a public use.

Egbert serves as a powerful reminder: the definition of “public use” is far broader than most people realize.

Protect Your Innovation

Don’t let a seemingly private action become a public forfeiture.

35 U.S.C. 102, in part, reads:

(a)    Novelty; Prior Art.—A person shall be entitled to a patent unless—

           (1)     the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

          (2)    the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b)    Exceptions.—

          (1)     Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

                    (A)    the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

                    (B)    the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Get Help With Your 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.

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.

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.

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.

USPTO Inventor's Oath or Declaration Requirement

Notice Requiring Inventor’s Oath or Declaration

The USPTO can issue a Notice Requiring Inventor’s Oath or Declaration that requires action by the Applicant. Failure of the Applicant to respond will cause the Patent Application to become abandoned.

Basic Requirements for a US Patent Application

An Inventor’s oath or declaration is one of the requirements for filing a US Patent Application. Basic minimum requirements for filing a US Patent Application include:

  • Specification
  • Drawings
  • At least one claim
  • Application Data Sheet
  • Inventor’s Oath or Declaration
  • USPTO fees – NOTE: It is less expensive to pay the required USPTO fees on the day the Application is filed

An Example of Oath/Declaration Problems

The given name of the inventor was William.  However, William generally used the name Will in his business.  Will also used the name Will on his federal income taxes.

With the filing of the Patent Application, in the Inventor’s Declaration, the name William was used.  However, in the Application Data Sheet, the name Will was utilized.

The Scenario that Unfolded

Will’s Patent Application was examined and approved by the Examiner. A Notice of Allowance was issued. Will was very happy he was going to be granted his first US Patent.

Several days after receiving the Notice of Allowance, Will received a USPTO Notice Requiring Inventor’s Oath or Declaration. Will contacted Business Patent Law about his dilemma.

The Solution to the USPTO Notice

  • William can file an amended Application Data Sheet indicating his name is William or
  • Will can file a substitute Inventor’s Declaration changing the name to William

Of course, the USPTO charges a small fee for making either one of these corrections.

The Takeaway

When comes to an inventor’s given name and surname, the USPTO demands precision.

Based on information provided to BPL by our IRS and Social Security affiliates, it appears it does not matter if William or Will is utilized for those agencies as long as the social security number is identical.

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.

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.

Election Requirements for Patents

Election Requirement

What is a USPTO Election Requirement?

Before the Patent Examiner examines the Application on its merits, the Examiner can generate an Election Requirement causing the Applicant to select a first group of claims for first examination.

The Examiner generates a USPTO Office Action that includes wording similar to:

“The Application contains claims directed to the following patentably distinct species:

  • Group 1: Claims 1-5 and 15-20, drawn to invention Z1, shown in figures 1-10.
  • Group 2: Claims 6-14, drawn to invention Z2 shown in figures 11-17.
  • Group 3: Claims 21-27, drawn to invention Z3 shown in figures 18-27.”

“Applicant is required under 35 U.S.C. 121 to select a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.”

“There is a serious search and/or examination burden for the patentably distinct species as for above because at least the following reason(s)…”

Election Requirement – Statutory Law

35 United States Code 121 reads, “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.” [Emphasis by BPL].

Observations Regarding Divisional Applications

  • In view of the Election Requirement, the Applicant elects a first group of claims for first examination
  • Although an Applicant can argue against the Examiner’s Restriction Requirement, it is generally not cost-efficient for an Applicant to make such an argument
  • After the election of the first group of claims, in due course, the Examiner will issue an Office Action regarding the patentability of the elected claims
  • When the original Application has allowable claims, to receive the benefit of the original filing date, any Divisional Application to be filed, must be filed before the Patent for the original Application is granted
  • A Divisional Application can be filed at any time prior to the Patent grant flowing from the original Application

If your company or you need assistance with US national, foreign or international Patent Applications, please contact Business Patent Law, PLLC.

Ask Us Anything…About Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville Kentucky 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.

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.

The Patent Exhaustion Doctrine - Monsanto Case on GMO Soybeans

The Patent Exhaustion Doctrine

When does the Patent Exhaustion Doctrine Apply?

In the US Supreme Court case of Bowman v. Monsanto Co., 569 U.S. 278 (2013), the Court set forth some thresholds for the application of the Patent Exhaustion Doctrine.

The Monsanto Facts

Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration.

Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement. That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. Under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose.

The Bowman Facts

Bowman, an Indiana farmer, devised an approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed. He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields. Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology.

When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds (and any non-resistant plants), and produced a new crop of glyphosate-resistant—i.e., Roundup Ready—soybeans.

In his defense, Bowman argued the Patent Exhaustion Doctrine.

The Bowman Court’s Holding on the Patent Exhaustion Doctrine

On Page 289 of Bowman, Justice Kegan wrote, “Our holding today is limited—addressing the situation before us, rather than every one involving a self-replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose…We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances. In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.”

If your company needs assistance with its Patent Applications, please contact Business Patent Law, PLLC.

Ask Us Anything…about Intellectual Property!

If you or your business are located 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.

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.

Federal Trade Commission Non-compete Ban

What is the FTC Non-Compete Ban?

Partial Summary of the FTC Ban

The Federal Trade Commission adopted a comprehensive ban on new non-competes with all workers, including senior executives. The final rule provides that it is an unfair method of competition—and therefore a violation of Section 5—for employers to enter into Non-competes with workers.

Unless a court intervenes, the new rule becomes effective 120 days subsequent to April 23, 2024.

Here are some of the legal parameters of the FTC non-compete ban:

Non-Compete Defined (16 CFR Part 910.1)

(1) A term or condition of employment that prohibits a worker from, penalizes a worker for, or functions to prevent a worker from:

(i) seeking or accepting work in the United States with a different person where such work would begin after the conclusion of the employment that includes the term or condition; or

(ii) operating a business in the United States after the conclusion of the employment that includes the term or condition.

(2) For the purposes of this part 910, term or condition of employment includes, but is not limited to, a contractual term or workplace policy, whether written or oral.

Definitions of Persons Affected by the Ban – Abbreviated

Officer: A president, vice president, secretary, treasurer or principal financial officer, comptroller or principal accounting officer, and any natural person routinely performing corresponding functions with respect to any business entity whether incorporated or unincorporated.

Person: Any natural person, partnership, corporation, association, or other legal entity within the Commission’s jurisdiction, including any person acting under color or authority of State law.

Preceding Year: A person’s choice among the following time periods: the most recent 52-week year, the most recent calendar year, the most recent fiscal year, or the most recent anniversary of hire year.

Senior Executive: A worker who:

(1) Was in a policy-making position; and

(2) Received from a person for the employment:

(i) Total annual compensation of at least $151,164 in the preceding year; or

(ii) Total compensation of at least $151,164 when annualized if the worker was employed during only part of the preceding year; or

(iii) Total compensation of at least $151,164 when annualized in the preceding year prior to the worker’s departure if the worker departed from employment prior to the preceding year and the worker is subject to a non-compete clause.

Worker: A natural person who works or who previously worked, whether paid or unpaid, without regard to the worker’s title or the worker’s status under any other State or Federal laws, including, but not limited to, whether the worker is an employee, independent contractor, extern, intern, volunteer, apprentice, or a sole proprietor who provides a service to a person. The term worker includes a natural person who works for a franchisee or franchisor, but does not include a franchisee in the context of a franchisee-franchisor relationship.

Unfair Methods of Competition (16 CFR Part 910.2) – Abbreviated

(a) Unfair methods of competition—(1) Workers other than senior executives. With respect to a worker other than a senior executive, it is an unfair method of competition for a person:

(i) To enter into or attempt to enter into a non-compete clause;

(ii) To enforce or attempt to enforce a non-compete clause; or

(iii) To represent that the worker is subject to a non-compete clause.

Exceptions to the FTC Non-Compete Ban (16 CFR Part 910.3)

(a) Bona fide sales of business. The requirements of this part 910 shall not apply to a non-compete clause that is entered into by a person pursuant to a bona fide sale of a business entity, of the person’s ownership interest in a business entity, or of all or substantially all of a business entity’s operating assets.

(b) Existing causes of action. The requirements of this part 910 do not apply where a cause of action related to a non-compete clause accrued prior to the effective date.

(c) Good faith. It is not an unfair method of competition to enforce or attempt to enforce a non-compete clause or to make representations about a non-compete clause where a person has a good-faith basis to believe that this part 910 is inapplicable.

Ask Us Anything… about Intellectual Property!

If you or your business are located 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.

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.

Beneficial Ownership Information Reporting

What is the Beneficial Ownership Information Report?

Beneficial Ownership Information Report

The Beneficial Ownership Information Report, which went into effect on January 1, 2024, is authorized by the 2021 National Defense Authorization (Pub.L. No. 116-283, 134 Stat. 338). It contains anti-money laundering provisions and also includes the Corporate Transparency Act.

It is the United States Department of the Treasury that enforces the Corporate Transparency Act (CTA).

Unless a company has an exemption from the CTA, the company must file a Beneficial Ownership Information Report (BOIR) with the Department of the Treasury.

What Entities Must File The Beneficial Ownership Information Report

As a general rule, reporting companies are corporations, limited liability companies or professional limited liability companies that have filed one or more documents with a State’s Secretary of State or a similar office of an Indian Tribe.

A reporting company can be a domestic or a foreign jurisdiction company and must file a BOIR.

What Entities Are Exempt From Filing The BOIR

There are some business entities who are exempt from filing the Beneficial Ownership Information Report. They include:

1 Securities reporting issuer

2 Governmental authority

3 Bank

4 Credit union

5 Depository institution holding company

6 Money services business

7 Broker or dealer in securities

8 Securities exchange or clearing agency

9 Other Exchange Act registered entity

10 Investment company or investment adviser

11 Venture capital fund adviser

12 Insurance company

13 State-licensed insurance producer

14 Commodity Exchange Act registered entity

15 Accounting firm

16 Public utility

17 Financial market utility

18 Pooled investment vehicle

19 Tax-exempt entity

20 Entity assisting a tax-exempt entity

21 Large operating company

22 Subsidiary of certain exempt entities

23 Inactive entity

When Must File The BOIR Be Filed

For a company created before January 1, 2024, the BOIR must be filed by December 31, 2024. For a company created after January 1, 2024, the BOIR must be filed with 90 days of the company’s creation.

If your company needs assistance with its BOIR, please contact Business Patent Law.

Ask Us Anything… about Intellectual Property!

If you or your business are located 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.

Stay Up To Date

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 rights transfer around the world - Patent Rights

Patent Assignments

What are Patent Assignments?

What is a patent assignment? In general, a Patent Assignment transfers ownership of the entire patent right, title, and interest owned by one party to a second party.

Patent Assignments are a type of contract between the Assignor (current holder) of Patent rights and the Assignee (new owner) of Patent rights. Recording an executed Assignment in the Patent Offices gives notice of the change in the Patent owner.

Recording ownership of a Patent is similar to recording a deed for real property — like your house. The recording of the deed to your house gives notice of your current ownership and specifies the location of that home in the State. Recording a Patent Assignment gives notice of ownership and the location of your intangible Patent rights.

National and Regional Patent Offices

The European Patent Office is a regional Patent Office and the Japanese and United States Patent Offices are national Patent Offices.

Each national or regional jurisdiction has specific formats and rules associated with recording the ownership of Patent rights. European, Japanese, and United States Patent Offices have required wording and procedures for recording an Assignment in the European, Japanese, or United States Patent Office.

  • For an English language Assignment of Patent Rights, the Japanese Patent Office will accept a Japanese/English bilingual Assignment to record.
  • The European Patent Office will accept an English, French, or German language Assignment. After the European Patent is granted, assignments of the Validations of the European Patent are required in most member states’ Patent Offices where the current owner asserts the European Patent’s rights.
  • The USPTO accepts English language Assignments. (Non-English Assignments must be translated/transliterated into English.)

Patent Applications

Assignments of Patent Applications can also be recorded in Patent Offices. Each jurisdiction will have different rules for recording ownership of Patent Applications. In the United States, when the US Patent Application issues as a US Patent, the ownership of the Patent Application applies to the US Patent until the ownership is assigned to another person/entity.

35 United States Code (U.S.C) 261 Ownership; assignment, reads:

“Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.

An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

For Assignments of US Patents and US Patent Applications – because of 35 U.S.C. (U.S.C) 261, Business Patent Law, PLLC advises its clients:

  • In the United States to execute Assignments of Patents or Patent Applications before a notary public.
  • In a jurisdiction other than the United States, to execute the Assignments before the appropriate apostille.

Assignments can become complicated. If your company needs assistance with its Patent Assignments, please contact BPL.

Are you or your business located in the greater Cincinnati, Indianapolis, Lexington, or Louisville areas? Do you have a topic or question you would like us 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.

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

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.

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

foreign patent protection

How Much Does a Foreign Patent Cost?

Contemplating Patent Protection in Foreign Jurisdictions

During management’s last meeting, it was clear that our international sales have tripled over the last few years. Some of us expressed concern about potential “knock-offs” in other countries. Some of our suppliers are in Asia and the Pacific. We talked to other friendly companies about the costs of foreign Patents. The information provided by our friendly contacts about costs varied. Their common denominator was conjunctive – but the foreign Patent costs!

Should Our Company File Foreign Patent Applications?

It depends. As a general rule, Business Patent Law advises clients:  If a foreign Patent will not make money for the Company or prevent the Company from losing money, there is no business reason for filing one.

Patent rights create a limited monopoly in the foreign jurisdiction granting the Patent.

General Observations on the Costs of Foreign Patents.

  • Applications that can be filed in the English language tend to cost the least
  • Applications that must be transliterated from English into a non-Roman alphabet language tend to be the cost the most
  • Applications that can be translated into a foreign language using the Roman alphabet tend to cost somewhere between an English language Application and a transliterated language foreign Patent Application
  • Usually, the Parent Patent Application is a United States Patent Application prepared by Business Patent Law. When Business Patent Law’s foreign associates opt to utilize most of Business Patent Law’s United States Parent Patent Application, costs to our clients tend to be less than when foreign associates do not use BPL’s Parent Patent Application

Rankings of Costs of Procuring and Maintaining Foreign Patents in Select Foreign Jurisdictions*

  1. European Patent Office                                            14-17 x USPTO costs
  2. Japan Patent Office                                                   2.5-3 x USPTO costs
  3. Korean Intellectual Property Office                       2-3 x USPTO costs
  4. China National Intellectual Property Admin.      2-2.5 x USPTO costs
  5. Mexican Patent Office                                              1.5-2 x USPTO costs
  6. Brazilian National Institute of Industrial Prop.  1-2 x USPTO costs
  7. Australian Patent Office                                           1.0-2 x USPTO costs
  8. Russian Patent Office                                                1.0-1.5 x USPTO costs
  9. Philippines Patent Office                                          1.0-1.5 x USPTO costs
  10. Canadian Intellectual Property Office                   1.0-1.5 x USPTO costs
  11. Indian Patent Office                                                   1.o-1.5 x USPTO costs

* Estimates are based on Business Patent Law’s experience, and due to other countries’ Patent Office and foreign associates activities, fees can be outside of the above estimated ranges. Ranges are based on everything proceeding smoothly in the other Patent Offices.

If we can assist your Company with developing a foreign strategy, please contact Business Patent Law, PLLC.

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

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.