Orange County Patent Attorney
Mandour & Associates is an Orange County intellectual property law firm. We assist business in including Irvine, Newport Beach, Anaheim, and Costa Mesa with patent issues, trademark issues, and copyright issues.
Many patent issues fall into one of three broad categories. The categories are set out below and include patent registration‚ patent infringement‚ and patent litigation. If you are seeking an Orange County patent attorney to assist with any issue related to a patent‚ please feel free to contact us for a complimentary initial consultation.
U.S. patent law traces its roots back to 1787 when the United States Congress passed the Copyright and Patent Clause to the U.S. Constitution.
There are hundreds of thousands of laws codified in the United States, but relatively few of them are deemed important enough to be constitutionally protected. Even fewer are protected under federal rather than state constitutions. This underscores just how important the American judicial system views patent law.
At a time when our founding fathers were creating the bedrock of our country, though, why did they think patent law was this important? As it turns out, they explained their reasoning by directly stating the clause’s purpose:
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
The founding fathers decided that Patent law is important because it promotes the expansion of human knowledge.
Patent Registration in Orange County
To patent an invention, it must be novel, useful and non-obvious.
- Novel: An invention is only patentable if it is novel compared to anything that’s already within the public sphere. This doesn’t just apply to items that are already being manufactured. Things that have been previously published in periodicals, for instance, cannot be patented.
- Useful: No invention can be patented unless it can be shown to have a useful purpose. Additionally, you must show that the invention actually works.
- Non-obvious: Inventions cannot be obvious extensions of other technologies. If an improvement is obvious to experts in the field, it most likely won’t be patentable. The non-obvious hurdle is typically the biggest problem an innovator will encounter.
If an invention meets these requirements, its creator should seek immediate protection.
First to File
The U.S. follows a “first to file” rule with patent protection. You typically only gain rights over the invention if you’re the first to file a patent application. This can become a huge issue in industries where innovation is constant and fast-paced.
This creates a situation where procrastination is unwise. Even if you’re striving to find investors before filing or considering about whether a trade secret might be ideal, waiting too long means someone else could lay claim to your idea even if their discovery came months after yours.
Trade Secrets vs Patents
A decision most innovators face is whether to patent their idea or keep it as a trade secret. Both provide some level of protection, and each has benefits that the other lacks. The major difference is that there must be no public disclosure of trade secrets.
The Coca-Cola recipe and New York Times Best Seller List algorithm are both innovations that are protected as trade secrets rather than as patents. The benefit of a trade secret is that you can maintain ownership of your invention far longer than the 20 years provided by a utility patent. Unfortunately, there are also serious disadvantages:
- Others focused on solving a problem may discover your innovation independently.
- Firms and individuals may be able to use reverse engineering to discover your trade secret.
- Instances exist where you may have to cease use of your trade secret if someone else later discovers it.
- Trade secrets aren’t as easily enforceable as patents.
- If a trade secret becomes public, anyone can utilize the technology.
The America Invents Act provided additional protections for trade secrets, but patents are still ideal in many cases.
Patent Infringement Attorneys in Orange County
If a person or entity utilizes all of the elements or one or more claims of a patent without permission, they’ve committed patent infringement. This could include manufacturing, selling, distributing or otherwise using the innovation.
Even using an individual part of a patent – one claim – can constitute infringement. As could be expected, there are a variety of nuances to what qualifies as a patent infringement.
Types of Patent Infringement
Patent infringement can be boiled down to two types. Direct and indirect infringement.
- Direct infringement: If someone is directly involved in the production of a patented technology, it’s known as direct infringement.
- Indirect infringement: If a third-party assists in patent infringement without directly creating or using the product or service, they may still be guilty of violating a patent.
There are two types of indirect infringement:
- Infringement by inducement: Occurs when a party induces another to directly infringe a patent.
- Contributory infringement: If a company distributes an infringing product, they may be liable for contributory infringement.
Proving willful infringement can increase the court awards provided to the patent holder. This provides incentive for the violating party to cease their actions and settle immediately.
Doctrine of Equivalents
The Doctrine of Equivalents dictates that literal or exact infringement isn’t necessary to prove patent infringement. Without the Doctrine of Equivalents, companies could make insubstantial adjustments to innovative technologies just to skirt patent laws. There are three considerations in whether a change is insubstantial under the Doctrine of Equivalents:
- Are there substantial similarities in the functions of both inventions?
- Are there substantial similarities in how these functions are performed?
- Are there substantial similarities in the results of these functions?
If the answer to these questions is “yes,” then patent infringement has likely occurred even if literal infringement hasn’t taken place.
How to Defend Your Patent
While at times patent infringement can be hard to detect, there are still ways to monitor patent infringement:
- Keep an eye on competitors: You and your competitors are going after the same market. This means any innovation that helps you could also benefit them. Thus you should monitor your direct – and sometimes indirect – competitors for possible patent violations.
- Monitor new technology: Your competitors aren’t the only ones that can benefit from your innovations. Stay on top of tech news that could indirectly link to your patent.
- Stay informed within your industry: Keeping tabs on the trends and happenings in your industry is good practice in general.
All this information should help you identify instances of patent infringement. Once this has occurred, handling the patent violations may only require a cease and desist letter.
Foreign Patent Violations
Patents are jurisdictional in nature. This means that your patent typically won’t be enforceable in other countries if you didn’t register there. You still shouldn’t let this deter you from defending your rights. Domestic entities that assist infringement in any way may be held liable for their actions.
Patent Litigation Lawyers in Orange County
If a patent holder and alleged infringer cannot agree upon a fair outcome, it may be time to let the courts decide. Those who accidentally or willfully violate a patent have a huge incentive to cease their actions if they recognize their actions constitute patent infringement. Unfortunately, not all cases are an obvious infringement. There may also be times when an infringer is content with continuing acts that constitute patent infringement.
While there are a host of steps involved in patent litigation, here are the basics of what you can expect:
- Filing in federal court: A patent litigation case must first be filed in a Federal Court. After a complaint is filed, the defendant must respond to the claim. This will typically a motion to dismiss or an Answer which admits or denies the claims set out in the complaint.
- Discovery: After a complaint is filed and the defendant files a response, discovery will take place. This is the process where both sides collect evidence through issuing interrogatories, requests for admission, document requests, and depositions.
- Markman hearing: This is also referred to as a claim construction hearing. During this hearing the judge determines the meaning of important words in the patent which then forms the basis of whether infringement occurred.
- Motions: Once evidence has been gathered, the parties to the case can make motions to the court in an attempt to end the case such as a motion for summary judgment.
- Trial: Any issues not dismissed or disposed of in summary judgment will proceed to trial which typically last 3-5 days.
A patent plaintiff can request and potentially recover the following forms of relief:
- Lost profits. A patent holder may be entitled to any profits lost as a result of the infringer selling the patented invention. In order to secure damages for lost profits, the plaintiff must prove that the defendant’s infringement was the cause of the decreased sales of the patent holder’s product.
- Reasonable royalties. Patent holders may be entitled to a reasonable royalty from infringers – the amount of money the infringer would have paid in a theoretical deal to license the patent for use.
- An injunction. At the outset of a lawsuit, a patent holder may request a court-ordered injunction against the infringer, immediately preventing the offending party from conducting any further activities involving the alleged infringement.
- Enhanced damages. If the defendant participated in a willful infringement, the patent holder may request enhanced damages against the infringer. This can be up to three times the amount of actual damages detailed in the case and is usually reserved for the most blatant offenders.
- Financial relief for costs and legal fees. In exceptional cases, the courts may also grant the patent holder damages for fees incurred throughout the legal proceedings, such as costs and attorney’s fees.
Patent Litigation Defenses
If you’re accused of patent infringement, you have numerous potential defenses at your disposal.
- Non-infringement: The most common defense – and typically the most easily proven – is non-infringement. The defendant must prove that their product or process isn’t infringing upon a patent. This can be done by comparing the claims in a patent to the device at issue.
- Inequitable conduct: A court may void an entire patent if it’s proven that it was obtained through deceptive means. Failing to disclose prior art, for instance, would qualify as inequitable conduct.
- Prior art invalidity: The existence of prior art doesn’t have to be known by a patent applicant for a patent to be invalidated. If a defendant can prove a patent never should have been granted in the first place, they likely won’t be held liable.
- Authorized use: A defendant who proves they were granted permission to use a patent – either express or implied – will not be held liable for infringement.
Mandour & Associates – Orange County Patent Attorneys
At Mandour & Associates, we’ve spent years getting the results that our clients deserve. We understand that protecting your patent or defending yourself against claims of patent infringement can seem overwhelming. We are here to make the process as fast, efficient and as simple as possible.
If you need help or have questions about any area of patent law, contact us today for a free consultation.