Los Angeles Patent Attorney
We help Los Angeles businesses with patent issues from our office in Santa Monica. We are a full service intellectual property law firm assisting with patent, trademark, and copyright issues. If you need a Los Angeles patent lawyer, please contact us.
Patents protect novel inventions. The owner of a utility patent has a monopoly on the invention and can exclude others from making, selling, or using the invention for a period of 20 years. At the end of the 20 years, the invention enters into the public domain and is free for anyone to use.
In the United States, patents are protected at the federal level by Title 35, which is periodically updated with Patent Reform Acts.
Patent Registration in Los Angeles
The U.S. Patent Office recognizes three different types of patents:
- Utility patents protects the way something functions.
- Design patents protect the way something appears.
- Plant patents protect new varieties of plants.
Utility patents are further divided into process patents and machine patents.
For an invention to be patentable, it must be a process, machine, articles of manufacture, or composition that is:
- New or novel
To be new or novel in the U.S., a patent application must be filed within one year from the time an invention is available to the public in the U.S. Regardless, to ensure protection patent applications should be filed immediately. Internationally patents must be filed prior to any disclosure at all. Inventions can either be completely new, or they can be an improvement or change to existing inventions.
Inventions for which individuals seek utility patent protection must be useful, meaning that they need to achieve a goal or assist in the performance of a task. Design patents, however, protect ornamental features and do not need to be useful.
For an invention to be non-obvious, it must have some sort of creativity or unique insight into its design, so that a person having ordinary skill in the art would not create the exact same item.
The first step in protecting a patent is conducting an initial patent search. A patent search will review previous patent applications and determine whether similar inventions are already patented.
While a patent search is not required prior to filing for patent protection, performing a search is an important part of due diligence. The search allows an inventor to assess the strength of a patent against what exists already and often leads to a stronger patent application.
Moreover, having documented proof of your due diligence can help avoid claims of willful patent infringement in the future if you are sued for patent infringement. This can significantly reduce damages to which you may otherwise be subject.
Patent applications have four primary elements:
- The abstract
- The specification
- The claims
- The drawings
The abstract summarizes the invention and the specification provides instructions allowing someone else to recreate the invention. This portion of the application also contains descriptions of relevant prior inventions and problems solved by the invention.
The claims of the application define the scope of the patent rights. Claims should be drafted broadly enough to cover the essential portions of a patent, while limiting liability for potential infringement on prior relevant inventions.
Finally, patent drawings should be included if they demonstrate how the invention works. If you include drawings with your application, they must illustrate each element listed in your claims.
There are currently more than half a million pending patent applications. Typically, the approval process involves a dialogue between the assigned Patent Examiner and the applicant. The Examiner may seek additional clarification on claimed elements. On average, it takes nearly two years for a patent to be approved, and a patent may wait nearly 16 months before you hear back from the patent office.
Patent Infringement Attorneys in Los Angeles
Patent infringement, whether intentional or unintentional, carries serious potential civil liability.
Intentional infringement, otherwise known as willful infringement, happens if a business is aware of another patent, yet sells, imports, uses, or makes that item without permission.
Even if a company is unaware that a particular patented invention exists, and believes that they created it, they can still be liable for unintentional infringement. This is because the United States is a first to file jurisdiction, meaning that if multiple people independently create the same invention, only the first patent applicant will be protected.
Protecting Your Patent
On the other hand, if you discover that someone is infringing your patent rights, the first step to curbing the infringing activity is typically to send a cease and desist letter. The benefits of sending this type of letter include:
- It puts the infringer on notice of your rights which can lead to willful infringement damages if the activity continues
- If sent by a patent attorney that litigates, it shows that you are serious about protecting your rights which often leads to a quick settlement
Avoiding Patent Infringement
If you receive a cease and desist letter, you should have your patent lawyer do some research into the merits of the patent that is alleged to be infringed. Once you weigh the merits of both parties’ claims, you may decide to do one of three things:
- Reply to the letter denying infringement.
- Attempt to negotiate a settlement or licensing arrangement in order to avoid a potential lawsuit.
- File a lawsuit for declaratory relief requesting that a federal judge hold the other patent invalid or rule that your are not infringing
You should also be wary of patent trolls – companies that aggressively send cease and desist letters threatening litigation for inventions they do not even utilize. Many states are fighting these bad faith tactics through legislation. California’s Cartwright Act, designed to prevent unfair competition, is one such piece of legislation.
Additionally, when you are investing in or developing a new invention, there are a number of steps you can take to avoid claims of patent infringement before they arise.
First, you should research existing patent databases for the same or similar inventions. While this may not be enough to avoid infringing an existing patent, it could remove potential claims of willful infringement.
Second, if you find similar patents to your invention, you should carefully examine each of the listed claims. If your invention does not contain any of the claimed features, you may be able to avoid liability for infringement in future litigation. This is another analysis that, if performed ahead of time patent attorney, can be used to avoid liability for willful infringement in a patent infringement lawsuit.
Patent Litigation Lawyers in LA
If the parties are unable to come to an agreement outside of court, the plaintiff can initiate patent litigation by filing a complaint in federal court.
In the complaint, the plaintiff must:
- Demonstrate its claim to the patent alleged to be infringed
- State facts alleging the defendant’s infringing activity
- Ask the court for monetary relief and/or an injunction on further infringing activities
In order to win, the plaintiff must prove that the defendant infringed upon the plaintiff’s invention by a preponderance of the evidence.
When making its case, the plaintiff will rely on the scope of the claimed elements in its patent. These claims will be examined against the infringing invention. The plaintiff must demonstrate that each element of one or more claims is present in the infringing invention in order to be successful. If even one element of a claim is not present, the alleged infringement may be unsuccessful.
However, the plaintiff may be able to rely on the doctrine of equivalents to make its case. Under this doctrine, infringement occurs if the individual claim elements and the infringing invention are sufficiently equivalent in:
- What they do
- How they do it
After the plaintiff files its complaint, it will serve the defendant with a summons and complaint. If a defendant does not file a response within 21 days of being served, the plaintiff can obtain a default judgment in its favor.
After the pleadings are filed, the parties will move into the discovery phase of the case. This process typically takes a few months and is subject to the judge’s timeline as well as judicial oversight. While discovery primarily occurs outside of court, discovery disputes may be decided by the assigned magistrate judge.
While discovery is open, the parties will gather information from one another. Information requested will include:
- Document requests
- Interrogatories, written questions answered by someone knowledgeable about the facts within the company
- Requests for Admission
- Depositions, where witnesses are questioned under oath by patent attorneys representing both parties, and answers are recorded by a court reporter
Additionally, when conducting depositions, the parties may question each other’s employees regarding the creation, sales, marketing, and distribution of the products. Expert witnesses may be brought in to provide testimony relating to the claimed elements, or to help establish monetary damages.
After completing discovery, either party may file for summary judgment, arguing there are no material questions of fact on a particular claim, in an attempt to define and limit the issues for trial.
In patent litigation cases, a Markman hearing is conducted during which a judge determines the meanings of key words in a patent claim. The hearing is also called a Claim Construction Hearing.
During the hearing the plaintiff and defendant submit to the judge proposed definitions of terms in the patent claims. The judge then decides the definitions that will be used in determining the infringement.
If the judge determines there are outstanding issues of material fact, the lawsuit will move to trial. During the trial, the judge or jury will provide a decision on the issues raised. However, the vast majority of patent lawsuits never reach this stage: While there are approximately 4,000 patent cases filed each year, 90% are either settled outside of court or abandoned by the plaintiff.
Damages from Patent Infringement
There are two methods a plaintiff can utilize when proving damages in patent infringement cases — lost profits or reasonable royalties. Regardless of which method is utilized, both parties will typically present evidence gained from discovery, including financial statements.
This method of proving damages is generally preferred by plaintiffs because it can allow for greater recovery, but lost profits are often more difficult to prove. Specifically, plaintiffs must demonstrate lost sales due to the defendant’s infringement.
In order to be eligible to receive lost profits, a plaintiff must either manufacture or sell products protected by their patent. Plaintiffs may also request compensation for future lost profits and damage to their reputation.
If a plaintiff is seeking reasonable royalties, courts look at a number of factors to determine a reasonable licensing fee the defendant would have paid, had the invention been properly licensed from the plaintiff.
There are a number of factors that can come into play, including:
- The value of the patent’s previous licensing agreements
- The value of the product
- Profits the defendant received due to its infringing activity
- How often the plaintiff and the defendant each sold the product
In addition to presenting financial documents, both parties may elicit expert testimony from third-parties.
Additional Available Damages
If the defendant’s infringement was willful or intentional, the plaintiff is eligible to receive enhanced damages, up to tripling the award. Evidence of willfulness can come from the defendant’s internal communications by demonstrating what the defendant knew and when they knew it. If a defendant can demonstrate due diligence in its patent searches and analysis before proceeding with an invention, the defendant may be able to avoid being liable for these enhanced damages.
Additionally, the court may award attorney’s fees and costs to the prevailing party in “exceptional cases.” In recent years, these awards are granted in about 33% of patent cases.
Finally, the plaintiff can seek equitable relief in the form of an injunction. If granted, the defendant would be prohibited from utilizing the patent in the future.
There are several affirmative defenses that can be raised when defending against patent infringement claims.
First, the defendant can attempt to invalidate the plaintiff’s patent by arguing that it is not patentable. If the judge agrees that the invention is obvious or not novel or useful, and determines that the patent is invalid, there can be no infringement claim.
Second, the defendant can demonstrate that its invention does not infringe the plaintiff’s patent, by demonstrating that the claimed elements of the plaintiff’s patent are not present. In a similar vein, if the plaintiff disclaimed rights in a particular portion of its invention when applying for the patent, the plaintiff should be estopped from asserting those rights in a patent infringement case.
When presenting these affirmative defenses, the defendant may present evidence gathered during the discovery process, such as internal memoranda, communications, or meeting minutes discussing the plaintiff’s research and development into the patent at question. Communications and filings with the Patent Office may also be of assistance in mounting a defense.
The defendant may also claim that the plaintiff is attempting to over-assert its patent rights. For example, under the first sale doctrine, a plaintiff may not prohibit or otherwise limit sales of patented inventions once it has been sold. However, contractual agreements may limit the applicability of this doctrine. Additionally, plaintiffs cannot prohibit repair or replacement of non-patented elements of a protected invention.
Finally, there are a number of affirmative defenses related to procedural matters. For example,
- Plaintiffs must file patent infringement cases within six years of the outset of the infringing activity to claim monetary damages, or risk running afoul of the statute of limitations.
- All federal cases must be filed in the proper jurisdiction – for example where the defendant is or where the infringing activity took please – or risk dismissal for improper jurisdiction.
Mandour & Associates – Los Angeles Patent Attorneys
The attorneys at Mandour & Associates are highly experienced with regard to patent infringement matters. In the event of an infringement, we aggressively defend our client’s rights.
If you would like to speak to a Los Angeles patent attorney‚ please feel free to contact us. We look forward to hearing from you.