Whether you have a novel idea for a gadget or how to accomplish an objective on a smartphone, whether it's something that's never been done before or a revolutionary improvement on an existing innovation, Keleti+Moradian LLP takes inventors through the process of obtaining patents for their inventions.

K+MLLP also works with businesses to strategize and implement a robust patent plan, whether it's gathering a group of patents to enhance exit value by creating a defensible portfolio for venture capital-funded and growth companies, or creating a patent chain and posturing a portfolio to capture and maintain long-term market dominance.

Patents provide exclusive rights to a new inventions and original industrial designs. Keleti+Moradian LLP can apply for patents on your behalf, bring or defend patent infringement lawsuits, or challenge the validity of patent claims asserted against you.

 

Utility Patents A utility patent covers the useful features of an invention, such as a machine, process, or composition of matter. Utility patents include the rights to manufacture, sell, use, or import the invention. For more information about applying for a utility patent, click here.

Both design and utility patents may be obtained on an article if it is both functional and ornamental appearance, although utility patents are often broader in scope.

Patents must be obtained separately for each territory (country or group of countries) in which protection is sought. Utility patents are available in more territories than design patents.

Patent protection is available for a limited time, and periodic payments are required to keep a patent in force. In the United States, for utility patents filed on or after June 8, 1995, the term of the patent is 20 years from the earliest filing date of the application on which the patent was granted and any prior U.S. or Patent Cooperation Treaty (PCT) applications from which the patent claims priority, regardless of the time it takes for the patent to issue. In the United States, design patents have a term of 14 or 15 years from the date of patent grant.

Design Patents A design patent covers non-functional features of an industrial design, that is, the visual appearance of a product’s ornamentation, shape, pattern, and configuration. In some countries in which protection is available for industrial designs, the word “patent” is not used; rather, the term “registration” is. For more information about applying for a design patent, contact us.

Both design and utility patents may be obtained on an article if it is both functional and ornamental appearance, although utility patents are often broader in scope.

Patents must be obtained separately for each territory (country or group of countries) in which protection is sought. Utility patents are available in more territories than design patents.

Patent protection is available for a limited time, and periodic payments are required to keep a patent in force. In the United States, for utility patents filed on or after June 8, 1995, the term of the patent is 20 years from the earliest filing date of the application on which the patent was granted and any prior U.S. or Patent Cooperation Treaty (PCT) applications from which the patent claims priority, regardless of the time it takes for the patent to issue. In the United States, design patents have a term of 14 or 15 years from the date of patent grant.

Patent Infringement Litigation The unauthorized use, sale, manufacture or importation of a patented invention or design is a legal wrong called “infringement.” If you have a patent which is being infringed, Keleti+Moradian LLP can assist you in suing the infringer(s). If you have received a cease-and-desist letter or been served with a summons and complaint alleging that you are infringing a patent, we can represent you in defending the suit. For more information about intellectual property litigation services, click here.

Patent Validity Challenges The chief way to avoid patent infringement is to prevent the invention from being patented in the first place. A patent application may be challenged before a patent issues, and there are also many ways of challenging the validity of an issued patent, either in court (as a defense to patent infringement) or before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).

Pre-Issuance Submission A party can submit “prior art” (patents and other publications) to the USPTO demonstrating that the invention is not patentable because it is not sufficiently new or original, together with a description of the material’s relevance. Submissions may be anonymous, but anonymous submissions must be made through a registered patent agent.

Post-Grant Review For a limited time after issuance of a patent, a party may submit prior art or other reasons that a patent should not have been granted, instead of litigating this issue in court.

Inter Partes Review Similar to Post-Grant Review (discussed above), Inter Partes Review takes during a later limited time period. The grounds for review are more limited in scope, yet the materials which may be introduced are broader in scope. A jury is not involved in the process, and the decision is made by administrative judges, who can invalidate a patent based on a preponderance of evidence. In addition, a patent is not presumed to be valid. This is in contrast to a court case before a jury, where a patent is presumed to be valid and can only be invalidated by clear and convincing evidence. The clear and convincing standard makes it difficult to invalidate a patent.

Ex Parte Reexamination Patent reexamination is a procedure by which a granted patent is reexamined by a primary examiner in the USPTO’s Central Reexamination Unit (CRU). The procedure provides an alternative forum to the courts to challenge a patent’s validity, but it cannot be used by a party who has already petitioned for Post-Grant Review or Inter Partes Review.

Business method review (TPCBM) The Transitional Program for Covered Business Method Patents (TPCBM) is a new trial proceeding conducted at the PTAB to review the patentability of one or more claims in a covered business method patent. Covered Business Method (CBM) patents are patents that claim a method, apparatus, or operation used in the practice, administration, or management of a financial product or service. A party can only file after already having been sued for infringement under the patent; while the TPCBM filing fee is high, it may still be less expensive than defending in court the alleged infringement of a bad business patent.

Derivation proceedings With the reform of the United States patent system from a first-to-invent system to a first-to-file system jurisdiction to harmonize U.S. patent laws with the rest of the world, a new proceeding was created, designed to ensure the first person to file a patent application is actually the true inventor.