Patent Blog — JDB IP • The Law Offices of James David Busch LLC

written by The Law Offices of James David Busch LLC.

James is Licensed to Practice before the USPTO, in Illinois and Arizona.

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

Nov 12

Nov 12 What Should Inventors Document from Conception Regarding Secondary Considerations of Non-Obviousness?

Patent Due Diligence

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?

Nov 9

Nov 9 What do Contingent Fee Lawyers Consider when Evaluating Novelty and Non-Obviousness?

Patent Due Diligence

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

Nov 7

Nov 7 Making Sense of the Mess Caused by Alice, and Evaluating a Contingent Fee Patent Matter for Subject Matter Eligibility

Patent Prosecution, Patent Due Diligence

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?

Nov 5

Nov 5 How Do You Cite to a YouTube Video as Non-Patent Literature in an Information Disclosure Statement?

Tools of the Trade, Patent Prosecution

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

Nov 2

Nov 2 Checking Completeness of Art Citations with a Cited Art Matrix

Tools of the Trade, Patent Prosecution, Patent Due Diligence

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.

What Different Types of Art Must be Cited to the USPTO?

Oct 31

Oct 31 What Different Types of Art Must be Cited to the USPTO?

Patent Prosecution, Patent Due Diligence

What are the types of information that need to be cataloged? Anything and everything. From the perspective of an Information Disclosure Statement filing, there three main types of “art”: U.S. Patent Documents, Foreign Patent Documents, and Non-Patent Literature. I will discuss what each of these categories includes and the citation of foreign language material.

Validity and the Duty of Candor

Oct 29

Oct 29 Validity and the Duty of Candor

Patent Due Diligence

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 Validity During Due Diligence?

Oct 26

Oct 26 What do Contingent Fee Patent Lawyers Look for When Considering Validity During Due Diligence?

Patent Due Diligence

In the validity phase of the due diligence process, we typically focus on one rule and four principal statutes that are most commonly used to try and invalidate patents. Our technical and legal teams internally analyze the validity of the patent given these statutes. Validity is likely the most subjective area of a patent case.

What is a Patent Family Tree and How Do I Make One?

Oct 24

Oct 24 What is a Patent Family Tree and How Do I Make One?

Tools of the Trade, Patent Due Diligence

Patent families can become complicated. It is helpful to have a simple tool like a patent family tree to avoid making a mistake that can have a significant impact on the overall value of a patent portfolio.

What do Contingent Fee Patent Lawyers Look for When Considering Continuity?

Oct 22

Oct 22 What do Contingent Fee Patent Lawyers Look for When Considering Continuity?

Patent Due Diligence

The existence of a pending continuation and proper continuity is one of the most important factors for a contingent fee patent representation.

Checking Term and Maintenance Fees Payment Status

Oct 19

Oct 19 Checking Term and Maintenance Fees Payment Status

Tools of the Trade, Patent Due Diligence

One way that independent inventors and patent owners can track the patent terms and maintenance fee status of each of the patents in a portfolio is with a spreadsheet. This post will illustrate how you can collect and organize the information.

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

Oct 17

Oct 17 What do Contingent Fee Patent Lawyers Look for When Considering Patent Title and Term?

Patent Due Diligence

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?

Oct 15

Oct 15 What Information do Contingent Fee Patent Lawyers Need From a Prospective Client?

Patent Due Diligence

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.

What Makes a Good Contingent Fee Patent Case?

Oct 12

Oct 12 What Makes a Good Contingent Fee Patent Case?

Patent Due Diligence

During the initial due diligence period, a contingent fee lawyer evaluates at least the following factors: title, term, continuity, validity, infringement, and damages. In this post, I will generally discuss what we look for with respect to each factor.

Some of the Many Ways You Can Lose Your Patents or Won't Be Able to Assert Your Rights

Oct 10

Oct 10 Some of the Many Ways You Can Lose Your Patents or Won't Be Able to Assert Your Rights

Patent Overview

Knowing the many ways that rights can be taken away or rendered inapplicable during an infringement action can help patent owners plan for and avoid these issues. For each of these hazards, there are ways to minimize the associated risks.

How to Create a Valuable Patent Portfolio

Oct 8

Oct 8 How to Create a Valuable Patent Portfolio

Patent Overview

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 is it Important to Create a Patent Portfolio “Worthy of” Contingent Fee Representation?

Oct 5

Oct 5 Why is it Important to Create a Patent Portfolio “Worthy of” Contingent Fee Representation?

Patent Overview

If you prosecute your patents from the beginning with an eye toward contingent fee enforcement, you can keep open as many options as possible. Creating a patent portfolio worthy of contingent fee representation is synonymous with creating a strong and valuable patent portfolio.

Why You Should Consider Contingent Fee Representation

Oct 3

Oct 3 Why You Should Consider Contingent Fee Representation

Patent Overview

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

Oct 1

Oct 1 The Importance of Patent Enforcement to a Patent Owner

Patent Overview

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.