Archive for the 'IP Management' Category

What Are the Costs of Obtaining a US Patent – Part 3

Tuesday, February 10th, 2015

In my last two posts, I discussed cost considerations for obtaining a United States patent.  However, I did not discuss prices and I know that most readers of this blog would like to see “ball park” estimates. First, it is essential to understand that with patent applications you will always “get what you pay for” […]

What are the Costs of Obtaining a U.S. Patent? – Part 2

Friday, January 16th, 2015

In continuing this series of posts, let me describe two scenarios:  (1) a doctor walks into my office with an idea for a new medical instrument.  During the initial interview, he draws a freehand sketch and instructs me to draft a patent application; and (2) an engineer sends me a complete “invention disclosure” providing a […]

What are the costs of obtaining a U.S. Patent? – Part 1

Thursday, January 8th, 2015

This is a difficult question to answer for a variety of reasons.  First, patent costs vary based on differences in technology.  Second, patent costs vary due to the intended use of the patent and the client’s requirements. By way of background, patents are not like copyrights or trademarks in that if you are the first […]

The Patent Indefiniteness Requirement now has Teeth!

Tuesday, June 3rd, 2014

The Supreme Court reverses the Federal Circuit’s Indefiniteness Standard in a decision likely to negatively impact patent owners. As many know who have been involved in patent litigation, it is often impossible to determine claim meaning in some patents.  This uncertainty makes patent claim construction extremely difficult – both for the lawyer advising a client […]

Patent Quality Levels

Wednesday, April 2nd, 2014

At the risk of over simplification, most companies employ one or more of four quality “levels” patents.  Often companies will have patents from a mixture of the levels below.  Sometimes, this mixture occurs as a result of design and prioritization.  Sometimes, it occurs as the result of political influence within the company or other factors.  […]

It is a new Patent Game

Saturday, September 17th, 2011

On September 16, 2011 President Obama signed into law  the Leahy-Smith Patent Reform Act, thereby ending the most favorable patent system in the world for legitimate small businesses. The law is lengthy (169 pages) and complex.  Furthermore, the provisions of the new law have a variety of effective dates.  Some of the provisions are effective […]

The Advantages of Narrow Patent Claiming

Tuesday, March 9th, 2010

The Legacy Approach: For decades, patent attorneys have been taught to submit claims to the USPTO that are as broad as possible.  The theory is that submission of broad claims are opening gambits in a negotiation process that will ultimately yield the correct scope of claims for the applicant. The Current Situation: The patent prosecution […]

Suggestions for Investors

Friday, February 12th, 2010

When investing in a small company, part of the critical information that investors need to know are (1) whether the product or products produced by the company infringe or will infringe patents owned by others, and (2) the strength of the company’s own patent portfolio. While these questions seem related because they both deal with […]

Non-Disclosure Agreements (NDAs)

Sunday, January 31st, 2010

Obviously, a company should give careful consideration to providing proprietary information to anyone outside the company.  Such disclosures should only be made on a strict “need to know” basis. Typically, the outside party agrees to accept the information under conditions that impose a legal obligation on the outside party to maintain and protect the proprietary […]

Transferring Intellectual Property to Others

Tuesday, January 26th, 2010

Generally, there are two ways of transferring intellectual property to others: (1) an assignment, and (2) a license agreement. Assignments: An assignment is a legal document which transfers all the rights in an intellectual property to another.  Patent and trademark assignments, for instance, are typically registered with the U.S. patent office and are a matter […]