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Design vs. Utility Patents: What’s the Difference?

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  

(919) 825-3309  

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Albert Minn is a patent attorney with 10 years of experience practicing before the United States Patent and Trademark Office.  

What’s the difference between a design patent and a utility patent?  What does a design patent actually protect?  Are design patents worth their costs?  These are some questions that all inventors and entrepreneurs should consider as part of their innovative development. 

What’s the difference?

Utility patents are more well-known between utility and design patents.  And although design patents are often overlooked, they provide a unique layer of protection for particular intellectual property portfolios.  Utility patents, as their name suggests, protect the utilitarian aspects of an invention (i.e., how it works), whereas design patents protect the ornamental aspects of a particular article.  Other differences include the length of terms of protection.

What do Design Patents protect?

In three simple words: how it looks.  Design patents protect the visual ornamentation of a particular product (i.e., how it looks) and can help protect you from others copying the appearance of your product.  When looking to protect the way a product looks, a design patent may be all that is required.  Although design patents afford narrow protection compared to utility patents, design patents are extremely effective at preventing direct knockoffs.  Courts have defined an ordinary observer test for determining whether a product infringes upon a design patent.  Further, design patents can be used to protect cover not just the entire visual appearance of a product, but also a portion of the visual appearance of a product. This allows for protecting the most unique portion of the product even though more usual or unimportant portions of the product exist.

Can I file for both patents?

In some cases, it may be necessary to protect both the functional aspects of an invention (i.e., utilitarian aspects) and the visual appearance of the invention (i.e., ornamental aspects).  In such cases, filing for a utility patent concurrently with a design patent should be considered. 

If you have additional questions about design patents or want to get started on the patent process, give Grell & Watson a call at (919) 825-3309!

 

 

 

 

 

 

Determining Inventorship for Patent Applications

Patent Attorney

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  

(919) 825-3309  

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Albert Minn is a patent attorney with 10 years of experience practicing before the United States Patent and Trademark Office.  

 

When multiple people contribute towards an invention, determining who is and is not an inventor for a patent application is an important matter. 35 U.S.C. §116 requires each joint-inventor to state an oath that each listed inventor being named as a co-inventor is accurate and truthful. Yet, determining what contributions are sufficient to establish inventorship is not always straightforward; egos and personal ambitions may blur sound judgement. Further, some inventors may mistakenly attribute inventorship to non-inventors involved with the invention out of an abundance of caution. Errors in listing inventorship could be problematic during examination of the application. In some cases, improperly listing inventors could lead to a granted patent being invalidated.

 

Inventorship hinges upon whether a person materially contributed to the invention that is defined by the claimed invention. Under US law, an inventor is a party who contributes to the conception of an invention. Specifically, according to §116, “[w]hen an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.”

 

In other words, each inventor must merely “perform only a part of the task which produces the invention. On the other hand, one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention.” Ethicon, Inc. v. US Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). But, a co-inventor does need to make a contribution to at least one claim to be considered an inventor. SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878 (Fed. Cir. 1988). Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims of the invention.

 

Another complication to determining inventorship includes the fluidity of inventorship during prosecution of the application. Inventorship is not fixed in time and may change during prosecution. Particularly, inventorship is not determined when the initially contemplated claims are drafted, but when the claims are fully-examined and allowed by the Patent Office.

 

Although options may be available for correcting inventorship, taking steps to ensure the correct inventors are named and correcting inventorship mistakes early when errors are discovered can avoid the high costs of correcting inventorship or patent litigation, should a dispute arise. If you have questions about determining inventorship or other aspects of the patent process, give Grell & Watson a call at (919) 825-3309!

The Value of Non-infringement and Invalidity Opinions, Part 2

 

Patent Attorney

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  

(919) 825-3309  

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Albert Minn is a patent attorney with 10 years of experience practicing before the United States Patent and Trademark Office.  

 

Opinions by In-house Counsel

As we discussed in our previous post about non-infringement and invalidity opinions, Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (1983) stated that whether an opinion is prepared by in-house business counsel or by outside third-party counsel is only one factor to consider when determining whether an opinion was obtained in good faith.  Another factor the court considered was whether or not the in-house legal counsel was a qualified patent attorney

Yet, just because an attorney is also employed by the business as in-house counsel does not necessarily mean that the opinion is automatically suspect.  For example, the Federal Circuit held in Radio Steel & Mfg. Co. v. MTD Products, Inc., 788 F.2d 1554 (Fed. Cir. 1986) that an oral opinion by non-patent counsel was sufficient to form the basis of the defendant’s good-faith belief.  Likewise, the 4th Circuit Court of Appeals held in Western Elec. Co. v. Stewart-Warner Corp., 631 F.2d 333 (4th Cir. 1980) that reliance on an in-house counsel prepared opinion was reasonable.  Although it cannot be said that an attorney must be an experienced patent attorney to provide a valid non-infringement or invalidity opinion, the attorney must be held to the same standard and be expected to provide the same due diligence that would be expected of any patent attorney.

 

Opinions by Non-Patent Attorneys and Non-Attorney Employees

Some courts have outright dismissed non-infringement or invalidity opinions provided by in-house patent agents as being reasonable to avoid willful infringement.  For example, the U.S. District Court in the Western District of Texas held in Signtech USA, Ltd vs. Vutek, Inc. that a patent agent not licensed to practice law was incompetent to provide a valid opinion.  On appeal, the Federal Circuit Court of Appeals held that no valid opinion from competent counsel was obtained, and thus, the defendant did not have a reasonable, good faith belief their product did not infringe the patent in question.  As such, a finding of willful infringement and the trebling of damages was upheld.  

Another point to consider is that any business obtaining an opinion from a non-attorney employee runs the risk of the author being subpoenaed as a witness during litigation.  Thus, the non-attorney employee could be deposed with respect to the opinion’s origins or motivations, as well as any other related subjects such as the company’s intellectual property or patent strategies.  However, an opinion prepared by outside patent counsel, and any work product associated with the opinion, would be protected by attorney-client privilege.  

 

Strategies and Best Practices to Consider

Regardless of whether the opinion was prepared by in-house counsel, a patent agent, or an engineer employee, a business can take some actions to help ensure the author’s impartiality.  First, the author of the opinion should be certain to give an accurate and verifiable accounting of all the facts.  Additionally, the business should have a written policy stating that any research and development managers and/or managing executives are forbidden to have any role in preparing and/or writing the opinion.  Having such a policy ensures the opinion author is free to arrive at an independent opinion without interference from a supervisor.  Further, the written policy may help prove the opinion was based solely on the author’s own professional judgment without any undue influence.

Yet, in view of courts’ decisions and overall attitude towards non-patent counsel, patent agents, and other non-attorney employees preparing non-infringement and/or invalidity opinions, it is probably best to have outside, third-party patent attorneys prepare those opinions.  Hiring outside counsel provides the greatest assurance that the author is not influenced by any internal business interests.  Additionally, obtaining an opinion from outside counsel will avoid any unnecessary risks if litigation were ever to arise, such as waivers of privilege or confidentiality. 

If you have other questions or need to speak with a patent attorney about non-infringement or invalidity opinions, give Grell & Watson a call at (919) 825-3309!

 

 

The Value of Non-infringement and Invalidity Opinions

 

Patent Attorney

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  

(919) 825-3309  

Email 

Albert Minn is a patent attorney with 10 years of experience practicing before the United States Patent and Trademark Office.  

 

Protecting Business Activities with Opinions

Every business decision a company makes must be strategic and ensure that necessary measures and precautions are taken to minimize or avoid liability for its actions.  When the decision involves potential patent infringement, and more specifically willful patent infringement, court decisions in the past several years have shifted the paradigms that determine which measures to take, and when to take them. 

How to Avoid Willful Infringement

The Federal Circuit held in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (1983) that a potential infringer has an affirmative duty to exercise due care to determine whether or not he or she is infringing a patent.  This placed the burden on the potential infringer to seek competent counsel and obtain either a non-infringement opinion or an invalidity opinion prior to undertaking any possible infringing actions.  This would prevent a finding of willful infringement and treble damages.

The decision in Underwater Devices put an extremely heavy emphasis on obtaining non-infringement opinions and/or invalidity opinions in order to ensure that a court could not hold that any infringement was willful.  However, in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), the Federal Circuit reversed its previous holding in Underwater Devices by adopting an “objective recklessness” standard, which discarded the potential infringer’s affirmative duty to obtain an opinion from counsel.  As a result of the decision in In re Seagate, the burden of proof for demonstrating that the infringement was not willful was drastically and allowed for any argument of non-infringement or invalidity to be presented well after the infringing activities.

This standard remained in effect until the United States Supreme Court decided in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016) that the In re Seagate decision was overly rigid.  In doing so, the Court swung the pendulum back towards Underwater Devices by disregarding the Federal Circuit’s “objective recklessness” standard established in In re Seagate and by adopting a “subjective recklessness” standard.  This encourages the Court to analyze the “particular circumstances” of each case on a case-by-case basis.  While this decision does not put an absolute burden back on the potential infringer to provide an infringement opinion or validity opinion, as provided in Underwater Devices, it breathes life back into the importance of obtaining an infringement opinion at the outset of undertaking any potentially infringing activities instead of waiting to present such arguments at trial.

As a result of the Halo decision, it is critical for businesses to seek competent counsel and obtain a non-infringement and/or invalidity opinion sooner rather than later to successfully rebut any claims of willful infringement.  But what about using competent in-house employees, such as legal counsel, patent attorney or other, patent agents, or engineers, to furnish such an opinion?  Could it save costs?  Is it self-serving and unreliable?  Check back to see the answers to these questions and other best practices.  

If you have other questions about patent infringement or the patent process, give Grell & Watson a call at (919) 825-3309 to talk to a patent attorney today!

 

 

Patent Attorney Wake Forest

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Patent Attorney Lawyer Wake Forest

Wake Forest Patent Attorney Lawyer

What are your options?

  • A new business model Wake Forest law firm, which has removed all of the big firm inefficiencies and expenses, providing excellent intellectual property services on time and at affordable hourly or flat fee rates.  We are a group of experienced patent attorneys in Raleigh who have in-house and start-up experience, spent time within the big law firm structure, were former corporate America engineers, and we are inventors as well.

Or

  • A large traditional Wake Forest law firm with excessive hourly rates, unnecessary overhead such as extravagant class-A building rents (mahogany and marble), inexperienced junior attorneys, and a multiple layered structure of associates, partners and equity partners all factored into the big firms hourly rate.

At BG IP Law our team of Patent Attorneys provides excellent personalized legal service.  We make office calls in Wake Forest to come see you, to meet with you or your team in person, and to visualize any prototypes or working models of your invention. In our experience this initial time spent understanding your business, the importance of the invention to you or your team, and the visualization of any prototype results in a more efficient drafting of your patent application.

Call now to for a FREE consultation with Jeff Watson in Wake Forest.

(919)-825-3309

How to find a Great Patent Attorney

Patent Attorney Wake Forest

Wake Forest Patent Attorney

Balser & Grell IP Law, LLC, 1300 Longhouse Street, Wake Forest, NC 27587 (919)-825-3309 phone (678) 373-4746 fax

Patent, Trademark and Copyright Cases To Watch In 2015

Patent, Trademark and Copyright Cases To Watch In 2015

Patent Cases To Watch In 2015

The U.S. Supreme Court will decide three patent cases involving claim construction, induced infringement and patent royalties in 2015, while the Federal Circuit grapples with the fallout from the high court’s recent patent-eligibility rulings and the standards for America Invents Act reviews.

Patent Legislation To Watch In 2015

After a bill aimed at cracking down on so-called patent trolls stalled in Congress last year, attorneys expect lawmakers to make a major push to enact legislation on the issue in the coming months, and also possibly weigh measures to clarify patent eligibility and extend the life of some drug patents.

Copyright And Trademark Cases To Watch In 2015

The worlds of copyright and trademark law are going to be anything but soft in 2015, with two trademark cases pending before the U.S. Supreme Court, a showdown between Google and Oracle over software copyrights looming, and more.

Fed. Circ. To Weigh Patent Impact Of ‘Raging Bull’

The Federal Circuit will consider whether the U.S. Supreme Court’s “Raging Bull” decision limiting laches as a defense in copyright cases applies equally to patent law, agreeing to conduct an en banc rehearing of its decision that an adult diaper patent suit was barred by laches because the patent owner waited too long to file suit.

Motorola Urges 9th Circ. To Overturn Landmark RAND Ruling

Motorola Inc. has hit back at Microsoft Corp.’s attempts to kill Motorola’s Ninth Circuit appeal of a decision that Motorola had breached an obligation to license its standard-essential patents to Microsoft on fair terms, saying that Microsoft is trying to evade infringement liability by hiding behind a breach-of-contract suit.

PATENTS

PTAB Says Filing Misstep Dooms Movie Studios’ AIA Bids

The Patent Trial and Appeal Board has rejected petitions by Paramount Pictures Corp. and other Hollywood studios seeking inter partes review of two DVD patents owned by Nissim Corp., ruling that the petitions failed to list all of the interested parties in the dispute.

DC Circ. Voids $200M Judgment In Cuba Torture Row

The D.C. Circuit has refused to let a man who was allegedly tortured while incarcerated in Cuba in the early 1970s execute a $200 million default judgment upon patents and trademark registrations issued to nearly two dozen Cuban research institutes and enterprises, voiding the judgment.

Nexium Buyers Seek New Trial In Pay-For-Delay Case

A group of Nexium buyers has asked a Massachusetts federal court for a new trial over antitrust claims that AstraZeneca PLC and Ranbaxy Inc. used a patent settlement to delay the launch of a cheaper generic version of the heartburn treatment.

NY AG Says Actavis Can’t Suspend Antitrust Injunction

The New York attorney general has urged the Second Circuit to deny Actavis PLC’s bid to hit the brakes on an injunction that prevents it from halting sales of immediate-release dementia drug Namenda while the drugmaker pursues an appeal in the antitrust case, saying patients would be irreparably harmed.

COPYRIGHTS & TRADEMARKS

Turtles Say It’s Game Over For Sirius’ ‘Fictional Analysis’

Three weeks after a New York federal refused to reverse her ruling that Sirius XM needs to pay to play pre-1972 records, the band that’s suing the satcaster is urging her to grant it full victory in the case.

9th Circ. Overturns ‘Pom’ Trademark Ruling

The Ninth Circuit this week vacated a lower court’s decision to deny Pom Wonderful LLC a preliminary injunction blocking the sale of a “pur pom” energy drink, saying the trial judge botched the likelihood of confusion analysis.

Google Pushes High Court To Take Up Java Copyright Row

Google Inc. recently told the U.S. Supreme Court that it isn’t trying to undermine copyright protection for all computer code in its battle with Oracle Corp. over the use of its Java programming language, saying only certain parts of the language aren’t copyright-eligible.

Shopping App Maker InMarket Ducks Injunction Bid In TM Suit

A New York federal judge has denied a request by Berkley Networks Corp. to bar rival InMarket Media LLC from using the “inMarket” trademark for its shopping discount app for smartphones, ruling that Berkley Networks can’t get swift court action after years of “lassitude.”

USPTO Satellite Offices

USPTO Satellite Offices – Coming Soon To a Time Zone Near You

 

December 2014

Patent Case Summaries

Patent Attorney

patent attorneyPatent Attorney

Are you looking for Patent Attorneys in Raleigh?

Here are some tips for finding a Patent Attorney that will fit your needs:
• Patent attorneys are subject matter specific based on their technical degree. For example electrical engineer, software, physics, biology, biochemistry, chemistry, computer science, or mechanical engineering, etc.
• Specific job experience can create subject matter expertise.
• Small law firms focusing exclusively on intellectual property often provide specialized attention and service.

• Most patent attorneys are capable of filing patents on mechanical devices and/or systems.
• Look for an entrepreneurial patent attorney (one who has his/her own inventions, issued patents or one who participated in starting a new business).
• In general you get what you pay for, avoid on-line legal service offerings.

Call now to for a FREE consultation with Patent Lawyer Albert Minn in Raleigh.

(919)-825-3309 Email

I am a Raleigh patent attorney, licensed with the State of North Carolina (Raleigh Patent Attorney, Raleigh NC and registered with the United States Patent and Trademark Office.

How to find a Great Patent Lawyer

Grell & Watson Patent Attorneys, LLC,  4801 Glenwood Avenue, Suite 200, Raleigh, NC . (919)-825-3309 Email phone (678) 373-4746 fax

Grell & Watson Patent Attorneys, LLC, 5110 Richland Drive, Raleigh, NC 27612,  (919)-825-3309 Email  phone (678) 373-4746 fax

Grell & Watson Patent Lawyers, LLC, 1300 Loghouse Street, Wake Forest, NC 27587 . (919)-825-3309 Email phone (678) 373-4746 fax

Grell & Watson Patent Lawyer, LLC, 5046 Homeplace, Durham, North Carolina 27539 . (919)-825-3309 Email phone (678) 373-4746 fax

(919)-825-3309 Email

Grell & Watson specializes in Intellectual Property Law – Patent, Trademark, Copyright, Business Contracts, & Licensing. We are a group of Raleigh patent attorneys in Raleigh specializing as Patent Lawyer, Patent Attorneys, Trademark Attorney, and Trademark lawyer.