Patent

Protect Your Patents

A patent is a valuable piece of commercial property that helps prevent your competitors from copying your invention. At Italia IP, we can help you at every step of the way towards obtaining one.

Italia IP

Patent Services

A patent is a valuable piece of commercial property that helps prevent your competitors from copying your invention. Italia IP can help you at every step of the way towards obtaining one.

Whatever your patent needs, Italia IP can help, whether it's:

  • Searching to establish patentability or freedom of use
  • Drafting patent specifications
  • Filing patent applications
  • Responding to office actions
  • Representing you in patent oppositions
  • Paying maintenance fees
  • Managing your patent portfolio
  • Advising on patent infringement and validity
  • Auditing your intellectual property
  • Advising appropriate screening protocols for inventive activity & infringement risk management
Italia IP
Italia IP

Patent Drafting Strategy

A new patent drafting strategy in recent years in the U.S. Court of Appeals for the Federal Circuit has issued a number of opinions that benefit the would-be copyists by limiting a patentee's ability to enforce his or her patent rights through the use of, "the doctrine of equivalents."

Doctrine of Equivalents

Doctrine of Equivalents

The doctrine of equivalents (DOE) is used by a patentee when a competitor's product is not literally the same, but nonetheless, is "close enough" that it infringes because it is equivalent. This is an extremely valuable tool in a patentee's arsenal against competitors because it is rare that a competitor's product is literally described in a patentee's issued patent.

Equivalent to Invention

Equivalent to Invention

It is substantially more frequent that the competitor has "tweaked" its product such that it is not literally the same from a technical perspective, but nevertheless, it performs and is equivalent to the invention described (claimed) in an issued patent.

Prosecution History Estoppel

Prosecution History Estoppel

A patentee loses its right to use the DOE to ensnare an infringer when, during communication with the United States Patent and Trademark Office (patent prosecution), a patent attorney must amend (or merely argue) a claim limitation to get the patent issued in light of what is previously known (prior art). This cutting off of the DOE is termed "prosecution history estoppel" (PHE).

A New Patent Drafting Strategy

With Italia IP, drafting a new patent is easy. We have a proven strategy to help your intellectual property get patents. Here are a couple simple examples relating to a car to illustrate the dramatic effect PHE has on limiting a patentee's rights. 

A patent attorney drafts and files an application with the following original claim.

Claim 1

The claim is with regard to a car comprising a body, a suspension, and a gasoline engine. Let's assume that the patent issues without amendment. In this circumstance a patentee would be able to successfully sue a would-be copyist for literal patent infringement for producing a car with a gasoline engine (assuming the car also had a body and suspension).

DOE

In addition, because there was no amendment to the claim during prosecution, no PHE would apply. Thus, the patentee would also be able to successfully sue under the DOE a competitor that produced a car with a diesel or alcohol powered engine - assuming that diesel and alcohol engines are equivalent to gasoline engines. The end result is that the patentee would have broad patent protection because the DOE was available to expand the claim beyond its literal scope.

Now take the example of a patent attorney who drafts an even broader original claim by removing the limitation that the engine is gasoline powered.

Claim 1

Let's assume that a car comprising a body, a suspension, and an engine. On its face, this is a broader claim because it literally covers every potential type of engine. However, now let us say that it is generally known that there are various types engines available to be used in cars and that the PTO rejects the claim because the engine limitation is too broad. In response to the office action, the patent attorney amends Claim 1 to include the gasoline limitation. The claim is allowed and the patent issues with the following claim.

Amendment During Prosecution

Claim 1.   A car comprising: a body; a suspension; and a gasoline engine.

This is the same claim as in the patent in Example 1, but because of the amendment during prosecution, PHE now applies. The patentee would still be able to successfully sue under literal infringement the competitors that produce a car with a gasoline engine.

However, more importantly, because the claim was amended, PHE would cut-off the patentee's ability to successfully sue under the DOE competitors that produce cars with diesel or alcohol powered engines. Thus, the application that was originally drafted with a broader claim, has been dramatically narrowed because of the amendment and resulting PHE.

Just a few years ago, Example 2 was the accepted strategy for drafting a patent application. The strategy was essentially to draft the claims as broadly as possible and then fight it out with the Patent Office and eventually narrow the claims through amendments during prosecution until the claims were sufficiently narrow for the examiner to accept them.

This was a good strategy because there were no ramifications, i.e. no PHE. However in 2000, the Federal Circuit held in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. that any narrowing amendment made to a claim element for purposes of patentability completely bars any resort to the DOE with respect to the amended limitation. After Festo, the old drafting strategy was dead, or at least it should be. At Italia IP, it is.

Example 1 illustrates the new patent strategy utilized by Italia IP. The strategy is to draft patent applications that seek protection, given what is known in the prior art, only as broad as the applicant is rightfully allowed. This requires a patent attorney to conduct a more thorough search of the prior art before drafting the application. This new strategy effectively reduces the amount and nature of the amendments to the claims during prosecution. This preserves a patentee's ability to utilize the DOE to broaden its claims to ensnare or ward off would-be infringers.

It cannot be stressed enough how important it is for a patent attorney to recognize and adapt to these new precedents. Failure to do so leaves a would-be patentee with a patent that is far too narrow to be truly effective. Italia IP is experienced in drafting applications utilizing this new strategy and has formulated additional drafting techniques that help swing the pendulum back in the patentee's favor.

FAQs

Keep It Secret

Inventions can be protected by patents (utility or design), or by the law protecting trade secrets. In either case, it is imperative that you keep your invention secret until you have decided how you will protect it. This means that you do not tell anyone about your invention unless they are bound to keep it secret for you - for example, by signing a confidentiality agreement.

If you disclose your invention to someone who is not obliged to keep it confidential, a patent granted for the invention will be invalid. Further, the law of trade secrets does not protect inventions which are not secret.

Talk to a Patent Attorney

Italia IP can help you choose the best route to protect your invention. So you feel more secure, patent attorneys are obliged to keep your inventions secret. We can discuss your invention with you and advise you whether to apply for a patent or rely on the law protecting trade secrets.

A patent is a monopoly granted by the United States for a period of up to 20 years. It provides an enforceable legal right to prevent others from exploiting an invention. In order to secure patent protection, you first need to file a patent application with the United States Patent and Trademark Office (USPTO), the federal authority responsible for processing patent applications and maintaining the U.S. register of patents.

The invention is described in words (and drawings, if possible) in a document referred to as a patent specification, filed as part of the application. The specification concludes with a series of claims. It is the claims that form the metes and bounds of the invention and are used by a court of law to determine if a particular product infringes or not.

They are the most difficult portion of the application to draft and require the patent drafter to have a clear and complete understanding of the invention, the prior art, and the patent process.

Note that a patent is not a reward for inventiveness. It is a bargain between the inventor and the U.S. whereby the U.S. grants a limited statutory monopoly, in return for the inventor disclosing the invention and how it works. After the patent expires or lapses, anyone can then use the invention.

A patent is a commercial tool that can be exploited, and can be a very valuable asset for you, since it can preserve or create market share, or provide you with a basis for charging a premium price for a superior, differentiated product.

Not all inventions can be patented. To be patentable, an invention must satisfy certain criteria. Italia IP can advise you whether your invention can be patented, and offer you guidance on searches for prior disclosures. A vast range of products and processes can be protected by patents, including pharmaceutical products, chemical processes and all forms of mechanical, electrical and electronic devices.

The Novelty Requirement

The invention must be new when compared with public disclosures of other similar products.

The utility requirement refers to the condition that the subject matter has a useful purpose and also that the invention works for its intended purpose.

The Non-obviousness Requirement

An invention must not only be new when compared to similar products. But it must also be a non-obvious improvement over the prior art.

Patentability

The patent search is a substantial aid to the patent attorney. Knowing the prior art (already published patents and literature) an attorney can draft claims which push the envelope - seeking no less or no more than what the inventor is entitled to. The resultant benefit is two-fold.

First, the quality of the resultant patent will generally be higher. Second, the costs and time in obtaining the patent are reduced. Further, given the current narrowing trend brought about by the Festo line of cases (for a discussion of the Festo case, please see the section below titled, "A New Patent Drafting Strategy") , it is more important than ever to conduct a thorough search of the prior art before drafting and filing a patent application.

You can carry out searches for other reasons. For example, to obtain information about the state-of-the-art in a particular technology, for instance, or to learn about what your competitors are up to.

Italia IP has access to online databases, most of which are subscription only. It can help devise your search strategy, decide appropriate timing for a search and execute it.

Freedom to Use the invention

Patent infringement occurs when an unauthorized person does something that falls within a patentee's monopoly. It is not at all uncommon for this to trigger legal action. Italia IP can search patent registers to find patents that could be infringed. It is crucial this search is done before you invest in commercializing an invention. Being drawn into a legal action for infringement can be extremely costly.

A provisional patent application is a detailed description of the invention that allows an inventor one year with patent pending status to investigate the market worthiness of an idea. Since it lapses one year after filing, if you want to continue seeking patent protection, you must file a complete non-provisional application within this period.

Compared with the provisional application, a non-provisional patent application usually includes a more detailed description of the invention, and must conclude with a series of claims that form the basis of the protection sought.

A design patent protects only the ornamental appearance of an article, and not its structure or utilitarian features. More simply, a design patent protects the way an article looks, whereas a traditional utility patent protects the functional aspects of the article.

The line between what is functional or merely ornamental is sometimes difficult to ascertain. For example, if a design is utilitarian in nature as well as ornamental (such as computer mouse design which is more comfortable to use), a design patent will not protect the design. Such combination inventions (both ornamental and utilitarian) can only be protected by a utility patent.

However, design patents are a powerful tool to protect innovative designs and can be protected relatively inexpensively, thereby preventing a competitor from making a product, which looks identical to an existing product. Italia IP can help you determine what type of patent best suits your invention and your needs.

Prosecution

If you originally filed a provisional application, you need to file a non-provisional application within one year of the provisional's filing date to preserve your right to patent the invention. The USPTO does not make a determination of whether the invention is patentable when a provisional application is originally filed.

If you originally filed a non-provisional or design patent application, the USPTO will assign your application to an examiner who will make a determination whether the application is patentable or not. In the vast majority of cases, the examiner rejects all or most of the patent application claims.

Patent attorneys and experienced inventors expect this to happen. It would be quite easy to write a patent application that "sailed through" the USPTO. However, it would likely seek less protection than which the inventor is entitled to.

To overcome these rejections requires a detailed analysis of each prior art reference (typically an already issued patent). At Italia IP, only as a last resort, will the original patent application be amended to overcome the rejections and more clearly distinguish the invention over the prior art. A discussion of why amendments are to be avoided is presented below in the section titled, "A 'New' Patent Drafting Strategy."

The amendment or response is usually sufficient to overcome the rejection and cause the patent examiner to approve the patent application. However, in many cases the patent examiner maintains his or her position on the rejection and issues a final office action.

Alternatively, the patent examiner may issue another rejection based on different prior art. The office actions generated by patent examiners at the USPTO are the greatest unknown in estimating costs for the patent process. There are thousands of different patent examiners and each one may handle a patent application in a different way.

If a final rejection is received, the applicant has various methods to continue the prosecution of the application each of which have their own particular benefits. Italia IP can help determine what is the appropriate method to respond to a final rejection.

Issuance And Maintenance

Once the patent examiner determines the patent application is acceptable, he or she issues a "Notice of Allowance." Upon receipt of the allowance, the file must be reviewed for correctness and completeness and the issue fee paid. Also, with respect to utility patents, a publication fee is due if the application was published.

To maintain the patent in force, maintenance fees are due at 3.5, 7.5 and 11.5 years after the patent issues. No maintenance fees are due for design patents.

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