San Diego Patent Attorney


San Diego Patent Attorney

If you are seeking a patent attorney in San Diego‚ Mandour & Associates can assist you. In addition to patent issues, we assist San Diego businesses with all types of intellectual property issues including trademark and copyright issues.

Types of Patents

The United States Patent & Trademark Office (USPTO) grants three types of patents:

 Utility Patent

 The most common type of patent is a utility patent which protects how an invention functions. Utility patents correspond to useful, innovative (or improved) machines, products, or processes. Utility patents last for 20 years.

Design Patent

 A design patent protects how an invention looks. If a product features a new and unique design, the inventor can apply for a design patent. Packaging and furniture are examples of the types of products that might hold design patents. The casing of Apple’s original Macintosh computer and the shape of the original Coca-Cola bottle are examples of patented designs. Design patents filed before May 13, 2015 last for 14 years whereas design patents filed on or after May 13, 2015 last 15 years.

 Plant Patent

 This type of patent applies to newly discovered varieties of plants if the inventor can asexually reproduce the plant. Plant patents last for 20 years.

Patent Registration for San Diego Businesses

USPTO administers laws related to the granting of patents. Generally, 35 U.S.C. § 101 states that a patent may be obtained for any new or useful invention, or any improvement to an existing invention.

 The USPTO grants a patent on the grounds that the invention is:


According to 35 U.S.C. §101, machines, processes, articles of manufacture, and compositions of matter are patent eligible. The Supreme Court mandates three subject-matter categories that are not patent eligible: laws of nature, natural phenomena, and abstract ideas.


The invention must have a useful purpose. An invention must not only have a purpose but must also operate to perform the intended purpose. An invention that is inoperable and does not achieve the intended purpose is not useful, and therefore, is not patentable.


The differences between the invention and “prior art” cannot be such that the invention’s subject matter would be obvious at the time the inventor files a patent application. If someone with knowledge in the area of the invention considers it already known, the invention is considered obvious and not patentable.


The invention must be new to at least some extent and not made public before the inventor applies for a patent. Even if an invention is useful and non-obvious, it does not necessarily mean it is novel.

According to patent law, an invention is not patentable if the invention was previously in use, or disclosed to the public or in a patent application.

Before embarking on the process of registering a patent, the inventor should conduct a patent search to make sure the invention is, in fact, novel.  To satisfy the novelty requirement, the inventor should apply for the patent before engaging in any public disclosure of the invention.

Patent Infringement Attorneys in San Diego

During the term of a patent, nobody can make, use, offer for sale, or sell the invention without the patent holder’s authorization. The claims portion of the granted patent defines what can and cannot be done without the approval of the patent holder. It is important to remember that the USPTO does not monitor the marketplace for instances of patent infringement. Instead, patent holders are responsible for enforcing their patents.

If someone violates the protection offered by a U.S. patent (either within the United States or by importing the unauthorized reproduction of the invention into the United States), the act will be considered patent infringement under 35 U.S.C. § 271(a).

Infringement is based on the claims outlined in the patent. If the alleged infringer’s product, service, or business method is proven to embody a claim of the patent, it is said that the claim “reads” on (describes) the infringing device, and an instance of patent infringement has occurred.

If even one element in the patent’s claim is not reproduced in the alleged infringer’s product, service, or method, patent infringement may not exist.

Exception: The Doctrine of Equivalents

Sometimes, patent infringers will modify one aspect of a patent claim in an insignificant way to get around the claims comparison provision of proving patent infringement. In these instances, the Doctrine of Equivalents comes into play.

Within the Doctrine of Equivalents, patent infringement is identified by answering the question of whether the alleged infringing product contains elements equivalent to the elements of the patent.

Equivalence is determined by analyzing the role played by each element in the patent claim. If the substituted element mirrors the “function, way, and result” of the corresponding element the patent holder claims in the patent, then patent infringement may have occurred.

If, however, the role of the substituted element is “substantially different” from the role of the corresponding element the patent holder claims in the patent, then patent infringement may be avoided.

Patent Litigation Lawyers in San DIego

The first step patent holders typically take in a case of patent infringement is to send a cease and desist letter to the infringer. This action, which a patent lawyer can send on behalf of the patent holder, may result in the infringer stopping the production, attempted sale, or actual sale of the patented invention.

If, however, a cease and desist letter fails to prompt the desired result, the patent holder can sue the patent infringer in a U.S. District Court. To initiate the process, the patent holder will file a Complaint. The defendant then has 21 days to file a response, including an Answer or a Motion to Dismiss.

After the pleading stage, the discovery period begins which is a pretrial phase of litigation during which either party may request documents, interrogatories, and other evidence, or may participate in depositions.

At the close of discovery the parties can file motions for summary judgment in an attempt to win the case, or at least to narrow the scope of issues for trial.

Markman Hearing A Markman hearing is a pretrial hearing during which a judge determines the appropriate meanings of key words in a patent claim. The Markman hearing, otherwise referred to as a Claim Construction Hearing, comes from Markman v. Westview Instruments which was a Supreme Court case that decided that judges should determine claim construction in patent infringement cases.

Legal counsel for both sides of the patent infringement case present evidence in the Markman hearing. This evidence can take two forms:

Intrinsic Evidence – Patent documentation and history surrounding prosecution of the patent

Extrinsic Evidence – Dictionary definitions, expert opinions, and other testimony on the interpretation of the patent’s claim

Essentially, both the plaintiff and defendant submit to the judge their definitions of specific terms in the patent claim. The judge decides which proposed definitions shall be accepted for the purpose of the case. If the judge agrees with neither of the definitions proposed, the judge can reject them both.

Patent Injuction and DamagesWhen a plaintiff prevails in a patent lawsuit, typical outcomes are an injunction or damage award.

Injunction – With an injunction, the judge orders that the infringer stop all infringing actions. That is, the infringer must stop the production, attempted sale, and actual sale of the patented invention.

Damages – If proven by the plaintiff, the court may award damages to compensate the plaintiff for the patent infringement. Treble damages may also be awarded (see 35 U.S.C. § 284). Patent damages can include:

  • Reasonable royalties, plus interest
  • Disgorgement of profits, resulting in the defendant’s having to give up any profits arising from the infringing actions
  • Treble damages, in which the judge triples the found or assessed amount
  • Court costs
  • Attorney fees

Defenses for Patent Infringement

Common defenses in patent infringement lawsuits include allegations of non-infringement and patent invalidity.

Non-Infringement of Patent

The defendant may argue that its product, service, or business method does not infringe upon the plaintiff’s patented invention. Essentially, this defense contends that the defendant’s product, service, or method is different than the plaintiff’s patented product, service, or method.

The defendant may contend non-infringement of the patent by highlighting differences in the products at issue, or by arguing the definition of words in a claim outlined in the patent.

Invalid Patent Based on Prior Art

This defense hinges on proving that the USPTO erred in issuing the patent to the patent holder. For example, the defendant may argue that the plaintiff’s patent did not meet the novelty requirement, and thus the USPTO should never have granted the patent.

Other defenses based on prior art may argue that the product, service, or method in question was, at the time of the patent application, obvious to an individual with knowledge or skill in the field relating to the invention.

Invalid Patent Based on Incomplete or Missing Information

A patent may also be invalidated by proving that the patent holder:

  • Was not truthful on the patent application; or
  • Withheld vital information from the USPTO.

Repair Doctrine

A plaintiff cannot maintain a patent lawsuit against someone who repairs a non-patented portion of a patented item.

First-Sale Doctrine

A patent does not protect the resale of the patented product. Thus, if the defendant purchased the patented product and then resold it on the secondary market, it may not constitute patent infringement.

Patent Misuse

The patent misuse defense argues that the patent holder engaged in prohibited behavior related to its patent rights. Essentially, the patent misuse defense alleges that the patent holder is abusing and exceeding its patent rights in order to prevent competition.


A defense based on laches argues that there was an unreasonable delay in the patent holder filing the infringement lawsuit. The defendant can argue that it had increased operations and/or made significant investment in producing the product or service because there was no accusation of patent infringement.


The estoppel defense may also argue that the plaintiff disclaimed certain rights or acknowledged certain limitations to the patent when filing the patent application. If that was the case, then the patent holder cannot base a patent infringement case on those specific rights or limitations.

A defendant may also use the estoppel defense to argue that the plaintiff made the defendant believe that the plaintiff had no intention of enforcing the patent.

Mandour & Associates – San Diego Patent Lawyers

Mandour & Associates is a patent infringement law firm that represents clients on both sides of a patent claim.  We are happy to review your patent registration or infringement matter.

Contact Us

If you would like to speak to a San Diego patent attorney‚ please feel free to contact us. We look forward to hearing from you.

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