Most patent claims describe an invention using positive claim limitations that expressly recite the required elements or features of an invention. Sometimes, however, it is necessary, or desirable, to use a negative claim limitation to expressly specify an invention requires the absence of an element or feature. But when is it allowable to claim the negative?
Continue Reading When Can a Patent Claim Positively Include the Negative?

A design patent protects a new, original, ornamental design for an article of manufacture. 35 USC section 171. “Ornamental” means that the design is purely decorative; the patentability is based on its visual aspects. Those aspects are the shape or configuration of an article (like the shape of a bottle or a vase), the surface ornamentation on the article (like a painting on the bottle or vase), or a combination of both. The design must be a design for a specific article; it cannot exist independently of the article. The must be visible during normal use of the article; it cannot be concealed.
Continue Reading What is a Design Patent?

In Munchkin, Inc. v. Tomy International, Inc., 1-18-cv-06337 (NDIL May. 24, 2022) the Court considered the permissible extent of attorney participation in the preparation of an expert report. The Court did so in response to plaintiff’s motion to exclude the testimony of defendant’s technical expert for failing to prepare his own report. Specifically, plaintiff Munchkin sought to exclude the opinion of defendant TOMY’s technical expert, Jesse Darley, who offered opinions regarding non-infringement.
Continue Reading District Court Considers Acceptable Limits to Attorney Participation in Drafting of Expert Reports