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Patent Issues

If you tinker with devices and fancy yourself as an inventor, sooner or later, you may come up with a product that requires the protection of a patent. A patent is a legal monopoly on the right to manufacture a certain product to the exclusion of all others for a certain period of time. The government issues patents in order to reward creativity and ingenuity. If you own a patented product, you are entitled to the exclusive right to manufacture the product for a period of time so that you can recover all of your costs and make a profit.

But the products for which the U.S. Patent Office issues patents are few and far between. The application process is grueling and expensive. Lawyers who handle patents fall into two categories: (1) lawyers who are specially licensed to apply for patents ("Patent Lawyers"); and (2) lawyers who handle patent infringement lawsuits in the courtroom (federal court litigators). Only licensed Patent Lawyers can apply for patents. Only lawyers licensed to handle lawsuits in federal court can handle patent infringement lawsuits. This law firm handles primarily patent infringement lawsuits.

What is the threshold for obtaining a patent?

There is a high threshold for obtaining a patent. The applicant must demonstrate that the invention is both "novel" and "non-obvious."

Novelty Requirement: "Novelty" means that the device, process or substance is not known to others, whether as a result of publication or as a result of public use.

Non-obviousness Requirement: "Non-obviousness" means that the device, process or or material would not constitute an obvious extension of existing knowledge to someone having ordinary skill in the particular art in question.

What is the process of obtaining a patent?

The process of obtaining a patent is both time consuming and expensive. The patent process typically involves: (a) an initial search of the existing art to determine whether the product or process is "novel; (b) an opinion as to patentability; (c) preparation and filing of the application; and (d) prosecution of the application to issuance. The process could cost from $8,000 to more than $20,000 depending upon the complexity of the subject and the number and the nature of objections raised by the patent examiner. Once a patent is obtained, the owner is required to periodically pay "maintenance fees" to keep the patent in effect for the entire term of the patent. These fees are due at 3.5 years, 7.5 years and 11.5 years.

How long does a patent last?

Once the patent has issued, the term of the patent will be for 17 years for a utility or plant patent, and a maximum of 14 years for a design patent.

Should I file a patent infringement lawsuit?

The owner of a valid patent can block the unauthorized use, manufacture or sale in the U.S. of devices or materials embodying the patented invention, or of devices or materials produced in the U.S. for combination offshore with unauthorized products or materials (even if the infringer had independently conceived the idea or innovation). Similarly, the owner can seek to block the importation or use in the U.S. of unauthorized products or materials of foreign design. The owner of a patent may also be entitled to monetary damages, which might include a "reasonable royalty." If the infringement is found to be willful, these monetary damages may be tripled.

However, monetary damages can only be obtained if the owner's product bore a patent notice and the infringer was notified of the infringement and the infringer continued to infringe on the patented product. However, before filing a patent infringement lawsuit, the owner of the patent must consider that the person or business he sues may file a counter-suit attacking the validity of the patent. Therefore, the owner must consider the risk that the patent could be invalidated in such a counter-suit.

Moreover, the owner of the patent must have "clean hands." Since a patent is a government approved monopoly, any actions which improperly abuse this privilege may prevent the patent owner from enforcing the patent.

How do I contact the Patent and Trademark Office?

Call: (703) 308-HELP

Web site: www.uspto.gov

Address: 2900 Crystal Drive, Room 4B10, Arlington, Virginia 22202-3513.

If you have a patent that is being infringed upon by someone else, or you have been sued for patent infringement, contact us at:

(512) 732-0111