The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases. 35 U.S.C. §285. An exceptional case is determined based on the totality of the circumstances. A case can be exceptional due to a substantive legal position taken by a party or a party’s unreasonable litigation tactics. Courts can and will award attorneys’ fees to a prevailing defendant if the plaintiff was not justified in filing a patent infringement suit in the first place by failing to conduct a proper investigation of infringement before filing suit.
Continue Reading Do Your Homework Before Suing for Patent Infringement!
When is an Invention Obvious?
To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO). First, the invention must be novel. This means that the same invention cannot have been disclosed in a single prior art reference. The prior art is all of the publicly available information that existed before the date the patent application was filed. Second, the invention must not have been obvious to a (hypothetical) person skilled in the art (the field of the invention) based on the prior art.
Continue Reading When is an Invention Obvious?
Supreme Court: Federal Government Cannot Challenge Patents in PTAB
The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based on prior art.
The other three proceedings were established by the America Invents Act. These proceedings are conducted by the Patent Trial and Appeal Board (PTAB) before a panel of three judges. The proceedings are adversarial;
Continue Reading Supreme Court: Federal Government Cannot Challenge Patents in PTAB
If You Can’t Describe It, You Can’t Patent It!
One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a). This requirement means that the specification must fully disclose what the invention is. The purpose of the written description requirement is to demonstrate to persons skilled in the
Are Rules for Playing a Game Patentable?
A lot of things are patentable. Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable. But some things are not: the exceptions are laws of nature, natural phenomena, and abstract ideas.
The Federal Circuit Court of Appeals has many times had to decide what these