PATENTS

Prosecution

  • Strangely enough, the term has nothing to do with prosecutors or lawsuits. The term refers to the legal process of obtaining a patent through the United States Patent & Trademark Office ("PTO").

  • Inventors must prove that they have a new, useful & nonobvious invention to receive a patent.

  • Patents can be granted for articles of manufacture, designs on articles of manufacture, living organisms, plants, chemical compositions, nonobvious methods of using existing inventions, and on methods of doing business.

  • Patents essentially offer a 20-year monopoly to the owner, who can exclude any other person or company from the manufacture, use, sale or import into the United States of infringing technology.

  • Attorneys who practice before the PTO must have a scientific educational background and pass a separate federal bar exam, in addition to the state bar exam, to be able to practice as a "Patent Attorney."

  • You have 1 year to file for a patent from the time a patentable idea is patented or published anywhere in the world or sold or known of in the United States.

Litigation

  • When someone steals, i.e., "infringes" your idea, or you are accused of infringing someone else's idea, patent litigation can result.

  • Patent litigation proceeds in federal court or arbitration.

  • As complex as the technology may be, the arguments are typically that the Defendant's technology has all the elements recited in the Plaintiff's patent, which defines the invention.

Patent Claim 1 has elements A, B, C
Defendant infringes if technology has A, B, C

  • If the match is not exact, a Plaintiff may sue under the "Doctrine of Equivalents" and argue: "…not exactly, but close enough!"

  • Typically, a Plaintiff wants the infringement to stop, the imports to stop, or monetary damages (e.g., lost licensing royalties, lost sales, lost profits).

  • If willful conduct is found against a Defendant, damages may be enhanced.

  • Defendants typically argue noninfringement, fraud on the patent office, or that the patent never should have issued by way of time bars or "prior art"-i.e., the invention was not new at the time of patenting.

  • If there is any question of patent infringement, it is important to seek a patent opinion from a qualified Patent Attorney. Patent Infringement litigation is highly specialized and can be extremely expensive, particularly when conducted by larger law firms. Therefore, in most cases it is prudent to secure a written opinion of likely infringement to fully assess the cost versus benefit of engaging an opponent through the courts. If your business has a case of patent infringement, Cain & LaCroix, P.C. may be able to assist you to level the playing field by way of contingency arrangements. You should contact the lawyers of Cain & LaCroix, P.C. to discuss the specifics of your case.