Can I Patent This? – PART II

“Can I patent this?” PART II – What may seem like a perfectly reasonable question by inventors everywhere is actually a tough question to answer in practice. According to “water cooler” conversation between patent attorneys and setting aside issues of “patentable subject matter”, it is more difficult now than it used to be to get something patented. Back in the 90’s, a popular adage was that “you can patent anything.”… Continue reading

Can I Patent This?

“Can I patent this?” Many people don’t realize that not all new and clever inventions are patentable. Certain inventions are not “subject matter” eligible for patenting. However, if you can drop the invention on your foot or if the invention transforms a physical object (the so-called “machine-or-transformation test”), current case law tells us that the invention is likely not excluded from patent protection. This test is a bit less helpful… Continue reading

Congress-mandated US Patent & Trademark Office Fees

In September of last year, the America Invents Act was passed with one of the first features to be effective being a 15% increase in all U.S. Patent & Trademark Office (USPTO) fees. The USPTO has posted proposed new fees today. Apparently, Congress has required the USPTO to set pricing for each service to match the calculated cost for offering each such service to the public. This contrasts with the… Continue reading

Practice Tips: America Invents Act

It should come as no surprise that to increase the odds of winning a poker hand, one should be aware of and use all of the available rules of the game.  So too, patent practitioners looking for a significant reduction in first office action pendency in the U.S Patent & Trademark Office (USPTO) need to be aware of all the latest tools.  Acordia’s attorneys have described a few of the… Continue reading

New Matter Contribution

Your fine attorneys at Acordia Intellectual Property Law Group are proud to announce their contribution to the upcoming issue of New Matter, the official publication of the Intellectual Property Section of the California Bar Association.  The article will discuss the apparent synergy between the America Invents Act (AIA) and the Patent Prosecution Highway pilot program established between the European Patent Office, Korean Patent Office and the U.S. Patent & Trademark… Continue reading

“First-to-File” System? Not Really

Why do we talk about the America Invents Act (AIA) creating a “first-to-file” system?  Up to this point, a “first-to-file” system was traditionally understood to mean 1) the first inventor to file the patent application is entitled to it even if they didn’t invent it first, and 2) disclosure of the invention to the public destroys the ability for anyone to subsequently file for patent protection.  When the “first-to-file” features… Continue reading

The America Invents Act Arrives

Patent reform has finally arrived.  The America Invents Act (AIA) became effective September 16, 2011.  What changes immediately?  Well, increased patent office fees, of course!  Effective immediately, all patent office fees are increased by 15%.  Several other features of the AIA are effective immediately or within ten days of enactment, such as a new Accelerated Exam option for patent applicants (and it’s not cheap), establishment of “micro-entity” fee discounts, removal… Continue reading

Software Patents Continue to Challenge Patent Attorneys

Are Beauregard claims dead? In the 90’s, claims to computer programs were for a time generally considered unpatentable because they were viewed as “printed matter”, or equivalent to a set of instructions written down on paper, by the U.S. Patent & Trademark Office. Thanks in part to Vicotr Siber, IBM’s chief patent lawyer at the time, “Beauregard claims” were devised to recast software as an article of manufacture: Computer program… Continue reading

Attention universities and “micro-entities” – cheaper patents!

The Senate and House have both passed their versions of the new patent reform bills and they are still in conference to work out the differences. The final draft will no doubt feature a new and historic first-to-file patent scheme.

What should be of interest to patent applicants that are “micro entities” and universities (restricted to State public institutions of higher education in the case of the Senate version)… Continue reading

The new inequitable conduct standard

Therasense v. Becton Dickinson has arrived! The en banc Federal Circuit opinion has set a new standard for how inequitable conduct is proved to attack an issued patent.

Litigators must now prove with “clear and convincing evidence” that “the applicant misrepresented or omitted material information with the specific intent to deceive the PTO” or must find other “affirmative egregious misconduct.” A “deliberate decision” must be found to deceive. Patent… Continue reading