Patents: Legal Issues

It’s important to recognize that the skills of a patent attorney may be needed at any time as patent legal issues may arise throughout the life of a patent.

By definition, from the moment of application for a patent and onward, one of the following stages exists:

• Patent application – the initial search that the conditions for a successful application exist.
• Patent prosecution – the verification process in support of an application
• Defending – enforcement of the rights which accrue to a patent holder.

Moreover, any user of patentable technology or processes may be the subject of legal action by a holder defending his rights.

What are examples of patent legal issues?

1) Is the idea or invention really new?

To determine that it is requires knowledge of the existing technology or “prior art”.In the dizzying modern technological environment, whether in the medical, mechanical, pharmaceutical, electronic or computer information industries, this basic first task can be very complex.

The searcher must know:

• the primary classification of the product or process
• any secondary classification
• the current state of the art in each industry

plus, of course, all the legal ramifications.

In other words, if it’s been done before, your invention may be denied the patent.

Worse possibly, your patent may be accepted – at a cost – and later found to be unenforceable.

2) How should the item be described?

If it is poorly done, problems may arise at either the prosecution or the enforcement stages.

The patent examiner may turn the application down if any aspect of the product

does not meet all criteria for a patent.  An amendment – at considerable cost – will have to be submitted for each objection.

Later, if a claim of exclusivity can be refuted by an unauthorized user, the patent may not be enforceable.  This could easily arise if the description lacks enough detail to demonstrate its uniqueness.

Clearly, at both of these early stages, legal and technical expertise on the part of the patent attorney is needed.

3) Is the product usable?

No matter how undeniably unique, if an invention is not commercially viable, the USPTO will not grant patent protection.  With the reality of global commerce, patents in foreign countries are also necessary.

4) Does the inventor have the financial resources to defend – enforce – the rights provided by the patent?  If not, it may be wiser to abandon the application or not initiate it.

A patent application may cost up to $10,000.00 (and take 2 or more years) to obtain.  However this pales next to the cost of litigation which could be 5 times as much, or more.  The inventor will have to do a thorough analysis of the total costs and the prospective returns with the help of his attorney.

Prosecution & Defense Stages

• Has any relevant information been left out of the application?
• Is the product “nonobvious”?  This means that an industry insider could not have come up with the idea themselves.
• Has the patent expired?
• Is the infringer actually licensed?
• Is the infringer using a different product or process?

It is of key importance that the burden of proof rests with the patent holder.

This makes the preliminary work of the patent attorney all the more important no matter what the patent legal issue is.

• If you have questions or need legal help regarding an Intellectual Property matter, Submit Your Case for a Free Evaluation with a local certified Intellectual Property Lawyer. There is no obligation to receive legal services.