California Patent Attorney
Mandour & Associates employs experienced and qualified patent attorneys at three California locations in Los Angeles‚ Orange County‚ and San Diego. We also assist with all major types of of intellectual property issues including trademarks‚ copyrights‚ and patents.
If you are in need of or are considering consulting the services of a patent attorney‚ we would be happy to assist you. Whether you are considering applying for a patent or involved in patent litigation‚ our patent attorneys can help you protect your rights.
Patentable innovations are detailed in Title 35 of the United States code, Section 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Patent Registration in California
The process of applying for a patent should include: (1) keeping the idea confidential to avoid losing rights; (2) having a patent attorney conduct a patent search; and (3) filing a patent application.
To be eligible for patent protection, your invention generally must be:
- Non-obvious; and
To be useful, the invention must work and serve some useful purpose. The novelty and non-obvious requirements are detailed in Title 35 of the United States Code, Sections 102 and 103.
- Section 102 concerns novelty and states that an invention cannot be patented if:
- The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, or
- The claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
In other words, you can only patent an invention if it is new and was not already public knowledge.
- Section 103 states that an invention must also be “non-obvious” in order to be patentable:
- A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
For example, an invention that simply swaps out easily understandable characteristics, such as color and size, are typically not patentable.
Types of Patents
The two primary types of patents are utility patents and design patents.
Utility patents protects the way an invention functions. This is the most common type of patent, representing about 90% of all patent applications. These patents typically remain in effect for up to twenty years provided that the maintenance fees are paid as required.
A design patent protects the visual appearance, shape or form of your invention. To qualify for a design patent, your design must be reproduceable and have no practical usefulness or function. Instead, it must be solely ornamental. Design patents granted for applications filed on or after May 13, 2015 are effective for fifteen years and require no maintenance fees. The previous fourteen-year term still applies to design patents issued prior to that date.
Patent Infringement Attorneys in California
Once the United States Patent and Trademark Office (USPTO) approves a patent application, the owner of that patent has exclusive rights for that invention for the duration of the patent. Contrary to common belief, patents exclude others from utilizing an invention rather than granting rights of use to the patent holder.
Unfortunately, patent rights aren’t always respected by third parties. Patent infringement has been on the rise in America. Patent infringement occurs when an individual or organization utilizes one or more claims of a patent without permission from the patent holder.
Types of Patent Infringement
There are various types of patent infringement, as well as different ways that someone can infringe. Some common examples include:
Literal infringement: This is a straightforward case of infringement. Essentially, the infringer makes a copycat version of your invention, literally following the claims, details and instructions laid out in your patent.
Doctrine of Equivalents: The doctrine of equivalents states that if a device or process does not fall within the literal scope of a patent but can be considered equivalent to the invention, the offender is liable for patent infringement.
Essentially, that means that even if a product is different in appearance or design to an existing patent, it may still be considered infringement if it has similar functions and produces the same results.
Direct infringement: Someone directly infringes your patent – whether literally or under the doctrine of equivalents. They’re the individual or company that personally violates your exclusive patent rights. This is typically the way infringement occurs.
Indirect infringement: One party causes another person or entity to infringe your patent. There are a few ways this may occur.
- Induced infringement: This is when an indirect infringer knowingly directs, encourages or persuades another party to infringe your patent. The infringing action occurs, and the third party is identified as a direct infringer. Intent isn’t a requirement.
- Contributory infringement: Selling or distributing a patented item or parts for a patented item may be contributory infringement.
- Divided infringement: Two or more people or companies work together to infringe on a patent.
Willful infringement: If someone purposefully and blatantly violates your patent rights, ignoring your cease and desist letter, they can be sued as a willful infringer. This determination is a subjective one, but if the court finds in your favor, you can receive treble or triple damages for your actual monetary losses.
Patent Pending Status
After applying for a patent or a provisional patent, you can mark your inventions with Pat. Pend. or Patent Pending. While this offers no enforceable legal protection from infringement, it does give notice that you’re awaiting patent approval. However, if you publish your application and it’s eventually approved, you may be able collect royalties from an infringer under provisional rights.
Patent Litigation Lawyers in CA
When someone is infringing on your patent, your first action should be stopping the infringement. That’s why a cease and desist letter is often the first step. But, if the accused party denies the infringement or you learn they’ve already made a significant amount of money from the infringement, patent litigation may be the next course of action.
Generally, patent litigation proceeds as follows:
- Filing a complaint. This formally begins the legal proceedings of a patent infringement case. A complaint is filed in a federal district court which identifies the patent owner, the alleged infringer, and any relevant patents that have been infringed. The complaint details instances of infringement and proposes the relief that is being sought as a result of this alleged infringement.
- Defendant response. After the complaint is filed and served, the defendant is then given 21 days to reply to the complaint. The response typically consists of either an answer to the claims, a counterclaim against the plaintiff, or a motion to dismiss the law suit entirely with specific reasons detailing why.
- Pre-trial conference. After the complaint and answer, the parties will usually have a conference to discuss the case. In this meeting, the parties will discuss how to proceed with the lawsuit including discovery issues and whether settlement may be possible.
- Discovery period. Next the discovery period begins – the phase in which evidence is gathered, documented, and researched to substantiate the case. In a patent case, this period may include a Markman hearing. Also known as patent claim construction, in the Markman hearing the judge determines the definition of certain words in the patent claims which assists in determining infringement.
- Trial. During a trial, all of the information gathered in discovery is used to build a case that supports or denies claims of infringement. Though a jury trial is possible, the judge will still rule on matters of law, while the jury weighs in on fact determinations. Patent trials in the United States are usual jury trials that may last one to two weeks.
It is important to note that both parties may agree to reach a settlement at any point during the litigation process.
If a patent infringement litigation claim is successful, a plaintiff may be entitled to damages in the form of monetary compensation. U.S. Patent law gives courts the right to award damages to an inventor whose patent has been infringed. But the code doesn’t give details on these awards. Case law weighs in heavily.
In successful patent infringement lawsuits, courts typically award the plaintiff lost profits or reasonable royalties. Lost profits are the earnings you would have made if the defendant hadn’t intervened by offering infringing versions of your patented invention. Courts assess reasonable royalties as what you would typically charge someone for a license, based on market value.
Expert witnesses play a pivotal role in determining damages in a successful infringement suit. Your patent attorney should be knowledgeable of what type of experts you need, who can help substantiate your losses and the most effective use of their testimony.
A plaintiff may also receive an injunction to stop the infringing activity, plus costs and attorney fees in exceptional cases. If a plaintiff is able to prove willful infringement, a defendant may be liable for treble damages.
Patent Infringement Defenses
Some common patent infringement defenses include:
- Non-infringement – The defendant claims non-infringement, denying that their product reads on the claims in the patent.
- Prior art invalidity – The defendant attempts to prove that the patent is invalid because prior art shows that the invention wasn’t novel or non-obvious.
- Non-prior art invalidity – This defense relies on statutory inadequacies in the patent that would render it invalid because it failed to meet patent law specification requirements.
- Inequitable conduct – Here, the defendant tries to turn the tables on the patent holder by asserting that the patent was obtained via fraudulent, deceitful or untruthful means.
Mandour & Associates – California Patent Lawyers
When you are considering whether you have a patent infringement claim or a patentable invention, working with an experienced patent attorney is a must. Mandour & Associates is dedicated to zealously protecting the patent rights of our clients.
If you are interested in a complimentary consultation regarding your patent issue, please feel free to contact us.