By: Dan Pierron Since March of 2013, I have been filing more and more provisional patent applications. This was expected, due to the increasing importance in filing as early as possible as a result of the change to a first-to-file system. However, a particular type of provisional application we’ve labeled a “precautionary” provisional patent application […]
Widerman Malek Law Blog
Patent Protection Doesn’t Mean Freedom to Operate
By: Dan Pierron I’ve recently had several discussions with a client whose primary concern was his ability to make and sell his product, as well as to prevent others from stopping him from making and selling his product. His concerns, while seemingly simple and certainly reasonable, are actually quite nuanced in their meaning and requiring […]
Pre-Issuance Submissions – To Submit or Not Submit?
By: Dan Pierron Included in the changes with the AIA was the ability for third parties, those not under a duty to disclose prior art to the patent office for a given pending application, to submit prior art. There have been numerous articles about the particularities of the statute, which need to be read and understood […]
Inventing as an Employee – What to Know
By: Dan Pierron Inventing is for many employees all in a day’s work, literally. Very often, engineers, scientists, industrial designers, and many others are innovating new solutions to problems, and developing patentable inventions along the way. While those individuals are the undisputed inventors of the invention, it is quite likely they are under a contractual […]
Enablement Requirement – Get In Those Details!
The Enablement Requirement can come into play in the most critical moments in patent prosecution
A Fitting End(?) to Apple v. Samsung
By: Dan Pierron Nearly a year ago, the verdict in the patent infringement suit Apple v. Samsung came in, awarding Apple $1 billion in damages. Samsung has finally paid up, in comical fashion. I’m pretty sure everyone has thought of repaying an unpalatable debt in this fashion, but Samsung’s chutzpah in doing it is, if a […]
Defensive Patenting
Defensive patenting is a strategy for those seeking to avoid confrontation on both sides of the table.
Effective Filing Date – NPE’s Best Friend
By: Dan Pierron Infringement suits filed by Non-Practicing Entities/Patent Trolls are old news. In reading articles and comment boards on such suits, it seems the criticisms of the NPE tend to fall into one of two categories: that those who do not participate in the marketplace should not be able to benefit from patent suits; […]
How Do I Enforce My Patent? Part 3: Filing an Infringement Suit
By: Dan Pierron Although frequently an option of last resort, filing a patent infringement lawsuit is the most direct and aggressive manner of enforcing a patent. By filing a lawsuit in federal court, you can command a response from an otherwise unresponsive party, stand up to an unreasonable and uncooperative party, or demonstrate a position […]
How Do I Enforce My Patent? Part 2: Cease-and-Desist Letters
By: Dan Pierron As mentioned in my previous post, one strategy in enforcing your patent is to send an entity that is potentially infringing your patent what is called a “Cease and Desist” letter. The letter has a few core purposes. First, it provides “actual notice,” which is notifying the allegedly infringing party that you believe […]