Fort Lauderdale Patent Attorneys

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Patent Law and Litigation

General

There are strict deadlines within which an inventor or her/his employer must act to secure patent protection or it can be lost forever. The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents, non-provisional patents and international patents.

What Can Be The Subject of A Patent?

In the language of the United States Patent Act, Title 35, U.S.C. §§ 1, et. seq., any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

Interpretations of the statute by the courts have defined the limits of the subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. A patent is granted upon the new machine, manufacture, etc., not upon the idea or suggestion of a new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Who May Apply for a Patent?

According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or, if there is no joint inventor available, a person having a proprietary interest in the invention may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they must apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor. Basic and/or comprehensive patent searches

Applications to the United States Patent and Trademark Office

The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents and international patents.

International Applications

The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents and international patents. Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent law, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country.

The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the application will bar the right to a patent. In most foreign countries maintenance fees are required. Most foreign countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void in some countries.

A treaty known as the Patent Cooperation Treaty was negotiated at a diplomatic conference in Washington, D.C., in 1970. The treaty came into force in 1978, and is now adhered to by over 100 countries, including the United States. The treaty facilitates the filing of applications for patent on the same invention in member countries by providing, among other things, centralized filing procedures and a standardized application format.

The timely filing of an international application affords applicants an international filing date in each country which is designated in the international application and provides (1) a search of the invention and (2) a later time period within which the national applications for patent must be filed. A number of patent attorneys specialize in obtaining patents in foreign countries, including this Firm.

Under U.S. law it is necessary, in the case of inventions made in the United States, to obtain a license from the Director of the USPTO before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States.

Utility patents

The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents and international patents.

Provisional patents

Since 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides a means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions.

Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which claims benefit of the filing date of the provisional application.

The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents and international patents.

Non-Provisional patents

A non-provisional, also known as a regular utility application, for a patent is made to the Director of the United States Patent and Trademark Office and includes:

1. A written document which comprises a specification (description and claims), and an oath or declaration; 2. A drawing in cases in which a drawing is necessary; and 3. Filing, search, and examination fees.

The filing date of an application for patent is the date on which a specification (including at least one claim) and any drawings necessary to understand the subject matter sought to be patented are received in the USPTO; or the date on which the last part completing the application is received in the case of a previously incomplete or defective application.

The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents and international patents.

Design patents

A design patent is a particular type of patent. A design patent protects the ornamental appearance of an article of manufacture exactly as shown in the drawings. It does not protect any functional features of the article shown in the drawings and does not protect any features not shown. For example, if the actual object produced or sold by the design patent owner has certain ornamental features on its back and these were not shown in the drawings of the patent, then those features can be copied by anyone else.

The law firm of Santucci Priore, P.L. can help guide you through the patent process for design patents, utility patents, provisional patents and international patents.

Foreign Applicants for United States Patents

The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a patent on the same basis as a U.S. citizen. There are, however, a number of particular points of special interest to applicants located in foreign countries.

The application for patent in the United States must be made by the inventor and the inventor must sign the oath or declaration (with certain exceptions), differing from the law in many countries where the signature of the inventor and an oath of inventorship are not necessary. If the inventor is dead, the application may be made by his/her executor or administrator, or equivalent, and in the case of mental disability it may be made by his/her legal representative (guardian).

No U.S. patent can be obtained if the invention was patented abroad before applying in the United States by the inventor or his/her legal representatives if the foreign application was filed more than 12 months before filing in the United States. Six months are allowed in the case of designs. 35 U.S.C. 172.

Office Actions and Replies

A patent applicant is notified in writing of the United States Patent and Trademark Office examiner’s decision by an “Office Action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office Action by the examiner; relatively few applications are allowed as filed.

The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s Office Action. The applicant’s reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.

In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections. After reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office Action usually will be made final.

Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office Actions within the required time.

Litigation/Policing

The procedures and laws governing patent infringement litigation are rapidly changing. There are unique procedures and appellate options available to patent litigants, as plaintiffs and defendants. Attorneys should not only have relevant patent infringement litigation experience, but recent experience to be most effective.

Infringement penalties for infringing upon a patent can threaten the very survival of a business if not properly defended or settled. A patent owner is entitled to and may receive actual damages, profits, royalties and other damages. The court can also issue injunctions prohibiting continued infringement or issue a writ of seizure to impound infringing articles. The court may also order the infringer, or an unsuccessful plaintiff claim to pay attorney’s fees.

Successful policing strategies for patent owners need to be effective, but also practical and cost-effective. Attorneys representing patent owners should have intimate knowledge of the specific and often unique needs of their patent owner clients to be effective.

The law firm of Santucci Priore, P.L. is experienced in prosecuting and defending patent infringement matters and disputes as to ownership of patents at the trial court, appellate and administrative levels. Contact us immediately if you have received a “cease-and-desist” type letter or have been served with a lawsuit.

Attorneys at the law firm of Santucci Priore, P.L. are licensed to prosecute and defend patent infringement and ownership disputes before the United States Court of Appeals for the Federal Circuit, the United States District Court in and for the Southern District of Florida, United States District Court in and for the Middle District of Florida, the United States District Court in and for the Northern District of Florida and before the United States Patent and Trademark Office. Its attorneys have also enjoyed the privilege of being admitted to the federal courts of various other states to practice pro hac vice.

Licensing

A sound patent licensing strategy can be the key to monetizing an invention for a patent owner. As a manufacturer, importer, exporter or seller of patented items, securing a well-drafted, well-negotiated patent license agreement can be essential to minimize exposure to liability and smoothly operate a business.

Office Actions and Replies

A patent applicant is notified in writing of the United States Patent and Trademark Office examiner’s decision by an “Office Action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office Action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office Action by the examiner; relatively few applications are allowed as filed.

The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s Office Action. The applicant’s reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.

In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections. After reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office Action usually will be made final.

Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office Actions within the required time.

Ownership Issues and Disputes

Disputes as to ownership of patents are common between inventor and client, employee and employer and between contractor and company. Santucci Priore P.L. can help you navigate through such issues and draft the necessary documents to prevent dispute before they happen. If such disputes do arise, then attorneys at the law firm of Santucci Priore, P.L. are also licensed to prosecute and defend claims over ownership to patents before the U.S. Court of Appeals for the Federal Circuit, the Court of Appeals for the Eleventh Circuit, the United States District Court in and for the Southern District of Florida, United States District Court in and for the Middle District of Florida, the United States District Court in and for the Northern District of Florida and any Florida circuit court, appellate court or administrative court. They have also enjoyed the privilege of being admitted to the federal courts of various other states to practice pro hac vice.

Patents may be owned jointly by two or more persons as in the case of a patent granted to joint inventors, or in the case of the assignment of a part interest in a patent. Any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention for his or her own profit provided they do not infringe another’s patent rights, without regard to the other owners, and may sell the interest or any part of it, or grant licenses to others, without regard to the other joint owners, unless the joint owners have made a contract governing their relation to each other. It is therefore dangerous to assign a part interest without a definite agreement between the parties as to the extent of their respective rights and their obligations to each other, and it is highly desirable for joint inventors to have a written agreement between them to govern their respective rights.

Appeals

If an examiner at the United States Patent and Trademark Office persists in the rejection of any of the claims in a patent application, or if the rejection has been made final, the applicant may appeal to the Board of Patent Appeals and Interferences in the United States Patent and Trademark Office.

As an alternative to appeal, in situations where an applicant desires consideration of different claims or further evidence, a request for continued examination (RCE) or a continuation application is often filed. For the requirements for filing an RCE, see 37 CFR 1.114. An RCE is not available in an application for a design patent, but a continuation of a design application may be filed as a Continued Prosecution Application (CPA) under 37 CFR 1.53(d).

We also practice extensively in the areas of entertinament, copyright and trademark law. If you’d like to receive additional information regarding our legal services, please contact us to schedule a free consultation, or click here to learn more about what we do.

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