What Should Inventors Document from Conception Regarding Secondary Considerations of Non-Obviousness?

Inventors and patent owners should do everything they can to establish objective evidence of non-obviousness throughout and contemporaneously with the inventive process and the development of the market. What is this evidence, exactly?  It is evidence of "unpredictable results," "industry praise," "copying by others," "long-felt need," and "commercial success" that is directly tied to the claimed aspects of the invention.  Some examples from "famous" cases follow will help illustrate the type of information that should be compiled.

What do Contingent Fee Lawyers Consider when Evaluating Novelty and Non-Obviousness?

Patent lawyers must consider the question of novelty and obviousness when considering a case on a contingent fee basis. Lack of novelty due to anticipation is rarely a dispositive factor during a contingent fee licensing program.  Typically the more significant issue becomes combinations of art with "expert" arguments that "it would have been obvious" to come up with the invention.  However, with knowledge of the law, inventors can take action to establish a factual record of objective evidence of non-obviousness throughout the inventive process to combat future “obviousness” rejections. 

Making Sense of the Mess Caused by Alice, and Evaluating a Contingent Fee Patent Matter for Subject Matter Eligibility

It used to be that the law surrounding subject matter eligibility was clear-cut and well established.  The Supreme Court's “Alice” decision has cast a shadow over the application of 35 USC 101. We discuss one way to make sense of the current case law. For now, patent owners should analyze the current law to outline, identify, and amplify the aspects of their invention that are not “abstract” or indicate an “inventive concept” such as new technological improvements and/or unconventional features that go against what has been done before.

How Do You Cite to a YouTube Video as Non-Patent Literature in an Information Disclosure Statement?

YouTube is a fantastic source of information.  There is seemingly a video on any topic you can imagine.  If a picture is worth a thousand words, then a video can be worth millions of words.  So how do you take a video and turn it into something that can be submitted as an NPL document as part of an information disclosure statement?  It needs to be converted into a PDF document as I will show below.

Checking Completeness of Art Citations with a Cited Art Matrix

In any patent case, it is important to make sure that all of the known art has been cited during prosecution across all of the patents in the portfolio.  One tool that patent owners and lawyers can use to ensure that literature has been consistently and thoroughly cited across a patent family is an "art matrix." This post shows how to create an “art matrix” in Excel.

Validity and the Duty of Candor

Violation of the duty of candor can result in the invalidation of an entire patent portfolio.  Thus, it is essential to make sure that inventors and patent owners cite all known relevant art.  As a patent owner or inventor, it is a good idea to catalog all references found during your inventive process and err on the side of caution when including art on an information disclosure statement.

What do Contingent Fee Patent Lawyers Look for When Considering Patent Title and Term?

When performing due diligence into a patent matter, we need to make sure that there are no issues with the title, standing, and term of the patents.  Also, given that a contingent fee lawyer is entering into a close relationship with a patent owner or inventor, the lawyer may also want to consider issues relating to the background of the inventors and patent owners.

What Information do Contingent Fee Patent Lawyers Need From a Prospective Client?

When conducting due diligence for a potential contingent fee patent representation, we need to obtain specific information from the prospective client. We require additional information in cases with a more fully developed history. Having this information on hand to provide (when requested) may significantly decrease the time it takes the lawyer to consider your matter.

How to Create a Valuable Patent Portfolio

There are certain steps that can be taken to eliminate risk and make the patent case as clear on liability as reasonably possible.  With an understanding of the criteria and the ways that a patent case can be lost, patent owners and applicants can make better decisions while building their portfolio to minimize their risk and maximize the risk to potential infringers. As a result, the value of the portfolio will increase.

Why You Should Consider Contingent Fee Representation

Some lawyers will take patent licensing and enforcement matters on a contingent fee basis. In a contingent fee representation, the client and attorney incentives are more closely aligned to reach the client's desired outcome. If a lawyer doesn't take your case on a contingent fee basis, you should look closely at the legal issues of concern to the lawyer to determine whether the case is worth paying lawyers hourly to pursue.

The Importance of Patent Enforcement to a Patent Owner

If you have exhausted your resources obtaining patents and cannot afford to enforce them, it may be hard to realize any benefit from them.  Some attorneys will license and enforce patents on a "contingent fee" basis; the client only pays out of funds that are recovered.  Through this series of articles, I aim to help patent owners minimize their risk and create high-quality enforceable patent portfolios that are ripe for contingent fee representation.