Patents

In the United States, for an invention to be patentable, it must be new (i.e. not something you have been doing for many years), novel (sufficiently different from what has been previously done) and non-obvious (not something a person with ordinary skill in the art would think of based on available information and patents). Moreover, there are specific bars that prevent an inventor from waiting more than a year to apply for a patent after taking certain actions such as writing or advertising it in a publication, using it in public or offering it for sale.  In many other countries, these bars are immediate (i.e. if you publish or offer for sale or publicly display the invention before applying for patent protection, you lose your right to obtain patent protection in that country).

In our experience, there are three reasons that patents are sought. First, if an invention is particularly profitable, a patent gives the invention owner a monopoly until either the patent expires or someone comes up with an alternative approach that is competitive both in cost and quality. Second, a patent protects the patent owner from someone else obtaining a patent on the invention. This is generally referred to as defensive patenting and is done because the applicant does not want someone to be able to stop them from using the invention. Third, intellectual property in the form of patents may increase the value of a business.

We assist clients in identifying possible inventions, obtaining and reviewing searches of prior art to determine whether there is a possibility of patenting the invention, determining the scope of protection available for the invention and evaluating the possibility that someone will be able to design around the invention (i.e. duplicating the concept without infringing on the patent). We also determine whether a claim of invalidity might be asserted against an existing patent. We prepare patent applications and prosecute them through issuance. We also represent clients in other patent proceedings before the United States Patent Office.