Patent Law Practice Center

Invention to Patent: The Pitfalls, Perils and Process

The following was written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

So you have an idea and want to get a patent? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you.

The first thing to know is that you cannot patent an idea. Many people will have great ideas, but will not be able to put that idea into a package appropriate for a patent because there is no invention, only a concept. To be sure, the idea is the all critical first step in the invention process. After you come up with the idea or concept you now need to put together a game plan on how to carry that idea through. The idea and game plan together form what the law calls conception. Conception is an important concept in patent law because in the United States it is the first person to invent that CAN ultimately receive the exclusive rights on an invention. Read the rest of this entry »

RCT v. Microsoft – Fed. Cir. Attempts to Shift Focus Away from MOT Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

On December 8 the Federal Circuit issued its first post-Bilski opinion on patentable subject matter when it decided Research Corporation Technologies Inc. v. Microsoft .

In RCT the court was asked whether RCT’s patents on digital image halftoning were directed to patentable subject matter.  Digital image halftoning is a technique for displaying tones (either shades of grey or colors) that lie between those that a monitor or printer can natively produce by creating a matrix of dots that blur together when viewed from a distance.  The patent was directed to a method for creating a halftoned image using a mask (essentially a series of prearranged dots of known values which can be compared to the pixels in a given image) and, in particular, for creating an improved mask through the use of a particular kind of mathematical operation.  For example, claim 1 of one of the two relevant patents called for:

A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue notice mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images. Read the rest of this entry »

Verizon Attack On EMSAT Cell Phone System Patent Among Reexamination Requests Filed Week Of December 13, 2010

Here is the latest  installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

The most interesting reexamination request last week was filed by Verizon Wireless against EMSAT’s U.S. Patent No. 7,289,763 for a cellular telephone system (see Inter partes Request No. (6)).  EMSAT had sued nine companies for infringement of the ‘763 patent, including Verizon.

But perhaps most noteworthy was the fact that Apple did not file any requests.

The following inter partes requests were filed: Read the rest of this entry »

Top 10 Issues for Patent Litigators in 2011

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor).

The end of the year is the time for top 10 lists.  Here, in no particular order, are my top 10 issues for patent litigators in 2011.

10.  Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art.  Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO?  If so, this will profoundly change both litigation and prosecution practice.  My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art?  And will the PTO experience a data dump of prior art, if Microsoft prevails?

9.  Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement.  Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state. Read the rest of this entry »

Federal Circuit Reaffirms Patent Eligibility of Personalized Medicine and Diagnostic Method Claims

Today’s guest post was written by our friends at Foley Lardner, Courtenay C. Brinckerhoff and Antoinette F. Konski.

Last Friday, in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403 (Fed. Cir. 2010), the Federal Circuit affirmed that personalized medicine and medical diagnostic claims are not per se unpatentable for claiming natural phenomena. The Court’s opinion provides guidance on the post-Bilski application of patent-eligibility requirements to claims that define the relationship between a treatment or drug regimen to the presence or absence of a patient-specific clinical marker (in this case, a metabolite of the administered drug).

The patent-eligibility of such claims has been in question since the Supreme Court’s dismissal of the grant of certiorari in Laboratory Corp. of American Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006). Supreme Court Justice Breyer dissented from the dismissal and wrote a non-binding opinion that “detecting” and “correlating” claims were not patent-eligible. More recently, the Supreme Court decision to vacate and remand the Federal Circuit’s 2009 Prometheus decision in view of its decision in Bilski v. Kappos, 130 S.Ct. 3218 (2010), fueled speculation that the patent-eligibility of such methods might not survive scrutiny under Bilski. Read the rest of this entry »