Counseling Business Clients on various aspects of Patents and other forms of Intellectual Property

(847) 809-4285    (847) 607-0580 fax

North Suburban Location/ Greater Metropolitan Chicago


 


Practice Areas



Phone (847) 809-4285
Fax (847) 607-0580
Email perry@wedoip.com

Address
North Surburban location:

(Cook, Lake Cos., Illinois)

15 minutes from O'Hare International Airport


     
Traditionally, intellectual property rights fall under four categories: patent, copyright, trademark, and trade secret.  We provide all services necessary for obtaining, maintaining, and enforcing the intellectual property rights of our clients.  Please see our Practice Areas page for a general overview of the intellectual property field.


PATENT PROCUREMENT, CLEARANCE AND INFRINGEMENT MATTERS

Patent law protects the embodiment of an invention. Outside of the laws of nature, most "anything under the sun made by man" can be patented. To obtain a patent, the invention must be useful, novel, and non-obvious in light of previously known technologies. Unlike other areas of intellectual property in which rights may be conferred merely by use or creation, patents can only be obtained through formal application in the government's Patent Office. Non-confidential disclosure to others however can lead to loss of the ability to obtain a legal patent monopoly. Such public disclosures or sales of products often result in an immediate loss of foreign rights; in the United States the law provides a one-year grace period after which patent filing is barred. The issue being that once something is placed into the public domain it (the technology) should remain in the public domain for free use by anyone (i.e., Nature abhors monopoly). Moreover, if one merely sits on their rights they may lose them. Failure to seek patent protection in a timely fashion will often lead to a loss of such rights.


Related services include:
  • U.S. and foreign patent procurement
  • Intellectual property due diligence
  • Patent portfolio analysis, strategy development and counseling
  • Patentability searches, analyses and opinions
  • Patent infringement and/or validity analyses and opinions
  • Settlement negotiations/resolution
  • Due diligence for acquisitions, mergers and venture financing
  • Patent licensing and technology transfer
  • Product development strategies
  • Intellectual property licensing
Terms used in patent law:
  • Prosecution: The process of obtaining a patent from the Patent Office, beginning with filing an application and ending with an issued patent or a final rejection.
  • Prior Art: Every publicly accessible publication (including previous patents) relating to the invention that is being patented.  An invention that is disclosed in prior art is not patentable.
  • Claims: Statements in the application describing the invention and setting forth the boundaries of the protection of the patent.
  • Elements: Individual components of an invention which, in combination, make up a claim.
  • Patentability Search: A search through prior art indicating whether an invention is likely patentable.
  • Grant of Patent: ...


Infringement

Infringement comes in many forms, and is not limited to the typical case of a manufacturer creating and selling a product that infringes on the patent of another. Even a mere offer to sell an infringing product is an infringement. Customers are not safe either: The use of an infringing device is an infringement. The use of an infringing product as a component in another product is an infringement. The law further states that actively and knowingly aiding and abetting another's direct infringement is itself an infringement.

It is not rare for a product to infringe several patents. Even if the product is itself patented, it may infringe upon other patents at the same time. Such is the case often when one patent is an improvement on another. While the improvement itself is patentable, the use of the original invention still must be licensed.

When one's patent is infringed, he typically sends a letter to the infringing party to notify him of the alleged infringement. The letter may request that the infringing party stop the activity; it also often will initiate licensing negotiations. When such a letter is received, the alleged infringer has been put on notice. The letter will:
  • Identify the infringing activity
  • Identify the specific patent being infringed
  • Propose licensing negotiations or alternatively threaten a lawsuit

At this point, he should obtain an opinion from an attorney. Although in-house patent counsel, which is usually already familiar with the product technology, is not disqualified from rendering this opinion, it is often advisable to seek advice from an outside attorney.

If the attorney believes no infringement is taking place, he will write an opinion setting forth his reasons. Obtaining this opinion of counsel is particularly important in avoiding willful infringement, which occurs when one engages in continued infringement of which he is aware. If a willful infringer loses a lawsuit, he is penalized not only for the infringement itself, but also treble damages on top of that. Treble damages are monetary awards of up to three times the amount assessed for the infringement. Courts have held that one with notice of another's patent rights has an affirmative duty to exercise due care to determine whether there is actual infringement. The existence or absence of an opinion of counsel is a key factor in whether willful infringement is found, and thus whether treble damages are awarded. Likewise, the failure to seek competent legal advice is frequently a key factor supporting treble damages.                                                                                                                                    


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Copyright © 2007 Perry Hoffman & Associates, P.C., WeDoIP.com

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Last modified: 05/13/08