Patent Prosecution

McHale | Slavin has extensive experience in all areas of patent prosecution for matters before the U.S. Patent and Trademark Office (USPTO) and other patent offices throughout the world. Our firm handles patentability assessments, preparation of all types of patent applications, inventorship determination, assignments and worldwide filing of patent applications. We work with the client to develop a prosecution strategy best suited to the client’s needs. In addition, we handle appeals, reexaminations, reissues and interferences. We work closely with our foreign associates in local prosecution, oppositions and appeals of foreign applications. This enables our client to gain and maintain protection of their intellectual property throughout the world.

Our firm couples strengths in all areas of intellectual property law with a depth of experience in all areas of technical subject matter to provide our clients with the highest caliber of counseling and opinions.

Our patent prosecution services include:

  • Performing patentability and validity searches of the prior art.
  • Preparing patentability opinions.
  • Preparing provisional, non-provisional and design patent applications for filing in the U.S. and foreign countries.
  • Prosecution domestic and foreign patent applications.
  • Evaluating and preparing patent licensing agreements.
  • Preparing confidentiality agreements.
  • Evaluating and resolving inventorship issues.
  • Preparing and prosecution reissue and reexamination applications.
  • Prosecuting appeals before the USPTO’s Patent Trial and Appeal Board (PTAB)

Our firm’s experience in intellectual property law, in conjunction with our knowledge of the technical subject matter, enables us to develop unique and successful prosecution strategies for both domestic and foreign patent applications. Our attorneys and agents have a depth and breath of technical and legal backgrounds that enables them to quickly and correctly grasp legal issues regarding complex legal technological issues without burdening our clients with getting us up to speed. This helps our clients maximize the value of their intellectual property assets. Contact us for additional information or to schedule a consultation.



Patent Litigation

Sometimes innovation begets imitation. An issued patent gives its owner the right to exclude others from making, using, selling, offering for sale or importing the patented invention. Typically, a party wishing to practice a patented invention enters into a license or purchase agreement with the patent owner in order to secure the right to do so.

Occasionally, however, a party wishing to practice the invention does so without the patent owner’s consent, thus infringing the patent. Conversely, a patent owner may overestimate the extent of the limited monopoly granted under an issued patent and allege infringement against a non-infringer. Though we work to resolve issues for our clients without going to court in either instance, in the event patent infringement litigation becomes necessary we represent our clients to the fullest extent, and are experienced in complex patent litigation.

At every stage of the litigation process, it is important to maintain the proper perspective of the case in relation to the overall objectives and needs of the client. Otherwise, litigation can become exceedingly costly, and in some instances may do more harm than good. McHale | Slavin puts its clients’ interests at the forefront in every litigation, with an aim toward achieving maximum results for both the short and long term, at a reasonable expense.

In the United States, there are several forms of relief available to the patent owner who has successfully proven patent infringement. Such relief can include an injunction, protection from future infringement; compensation for past infringement; certain of the costs of litigation; and, in exceptional cases, attorney’s fees and treble damages.

The basic remedy for past infringement is the award of damages (35 U.S.C. § 284). While the law provides no maximum damages, it does provide a minimum. Damages shall “in no event [be] less than a reasonable royalty for the use made of the invention by the infringer.” Compensatory damages are designed to replace what the inventor has lost. In the case of an inventor who does not have the capacity to manufacture his or her own invention, compensatory damages set at a reasonable royalty might be appropriate. Prejudgment and post judgment interest on an infringement award can be requested for damages. The court may also increase damages up to three times for the willful, wanton infringement of the patent.

An alternative source of limited relief is available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States. The ITC can exclude from importation products that infringe a valid U.S. patent and cause injury to a domestic business. However, no compensation for past infringement or attorney’s fees is available in an ITC proceeding.

McHale | Slavin has extensive experience in prosecuting and defending patent litigation, while remaining mindful of a client’s overall business objectives. Contact us for additional information or to schedule a consultation.



Patent Opinions

A patent opinion is a comprehensive analysis of a business entity’s position with respect to the patent landscape prepared by counsel utilizing the attorney’s experience in intellectual property law. There are four types of opinions commonly prepared by patent attorneys: freedom to operate opinions, infringement opinions, patentability opinions, and validity opinions. Freedom to Operate opinions determine whether a product or process would likely infringe the valid and enforceable rights of a third party. These opinions are helpful at the beginning of technology development, prior to investing significant funds, in identifying the risks associated with development of a particular project. Infringement opinions determine whether an accused device, process, or design of another infringes upon a client’s patent. Such an opinion is helpful prior to engaging in the time consuming and costly process of litigation. Patentability opinions occur prior to filing a patent application and help determine whether an invention satisfies the conditions for patentability. Validity opinions determine the validity and enforceability of a patent. Such opinions arise either when a company is accused of patent infringement or when a company seeks to acquire the rights to a patent. Obtaining an opinion as to the invalidity of a patent may provide a defense against willful infringement. On the other hand, failure to obtain a non-infringement opinion may serve as evidence of intent to induce infringement.

McHale | Slavin’s patent attorneys and agents have extensive experience preparing the full array of patent opinions. Contact us for additional information or to schedule a consultation.



Patent Licensing

A patent license involves the granting of permission from a patent owner – the licensor – to another party – the licensee – to make, use, sell or offer for sale the patented invention.

In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a patent license has its own special set of issues. For example, a patent license must address the sharing and development of technology and technical expertise during the term of the license agreement. It is critical for the parties to specify: whether the license grant includes access to related know-how and show-how; procedures for the handling of proprietary information exchanged during the relationship; and ownership and future licensing interests in the event further technology is developed by one or both of the parties during the relationship. A patent license must also address the proper marking of the licensed invention under the patent laws. Marking puts potential infringers – i.e., unlicensed practitioners of the invention – on notice that the licensed invention is protected. Conversely, mismarking, the marking of an invention that is not protected under the patent laws, is unlawful. A patent license must identify the party responsible for the proper marking of the licensed invention.

McHale | Slavin has extensive experience in the preparation and negotiation of patent licenses. Contact us for additional information or to schedule a consultation.



Patent Petitions

Our firm has an active patent petitions practice, providing skilled petition work for matters before the U.S. Patent and Trademark Office. We assist clients seeking equitable remedies for procedural errors and defects.

Petitions provide a formal mechanism for correcting procedural improprieties, not subject to appeal, that may occur in the course of prosecution. The scope of petitions is very broad. Petitions may be filed from any action or requirement of any examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding. A petition may be filed in cases in which a statute or rules specify that the matter is to be determined directly by or reviewed by the Office, and in appropriate circumstances to invoke the supervisory authority of the Director of the USPTO.

Petitions may also be filed in situations not specifically provided for in the regulations and will be decided in accordance with the merits of each situation. In an “extraordinary situation, when justice requires,” the Director may suspend or waive any non-statutory requirement of the rules required to grant the petition, but may not waive any requirement imposed by statute.

A petition must meet certain requirements:

  • It must be in writing.
  • It must contain a statement of facts involved, the point(s) to be reviewed, and the action requested.
  • It must be accompanied by a fee, if required.
  • It must be timely filed. Petitions not filed within 2 months of the action or notice prompting the petition may be dismissed as untimely. Filing of the petition will not stay any period for reply.
  • It must comply with required statutory, regulatory, and policy requirements.

Specific types of petitions include:

  • Petitions to permit filing when an inventor refuses or cannot be reached to sign the oath or declaration
  • Petitions to correct inventorship in applications
  • Petitions to obtain or correct a filing date
  • Petitions to revive abandoned applications or lapsed patents
  • Petitions to correct of the Patent Term Adjustment
  • Petitions to withdraw the holding of abandonment
  • Petitions to expunge papers
  • Petitions to withdraw an allowed application from issue, defer issuance, or recognize a priority claim
  • Petitions for access
  • Petitions seeking to abandon an application to avoid publication of the application
  • Petitions relating to maintenance fees
  • Petitions relating to reexamination practice

Our firm understands the intricacies of petitions practice and has the depth of experience to assist our clients in navigating this process. Contact us for additional information or to schedule a consultation.



Patent Reissues and Reexaminations

Reissue and reexamination proceedings are a key component of patent protection and an indispensable tool to correct and confirm the patentability of claims. These proceedings have gained in popularity in recent years for a number of reasons, including a U.S. Supreme Court opinion establishing a new obviousness rubric. See KSR v. Teleflex, 550 U.S. 398 (U.S. 2007)

The law provides mechanism for the patentee to apply for a reissue patent when a patent is defective in certain respects. The nature of the changes that can be made by reissue are quite limited. Ex parte reexamination allows anyone, patent owners or third parties, to inform the United States Patent and Trademark Office about new prior art issues that might affect a patent’s validity. Inter partes reexamination is also available for patents filed after a specific date. Both ex parte and inter partes reexamination begin with a request for reexamination. The reexamination process can be a useful way for third parties to limit infringement risks and to benefit from the potential advantages that an administrative forum may bring over the federal courts. Reexamination proceedings may also reduce the cost and time required for litigation in the federal courts.

These proceedings are important adjuncts or alternatives to litigation and may better position a client’s patent portfolio. McHale | Slavin’s attorneys handle all aspects of post issuance proceedings. We have the expertise to advise our clients on the advantages of post-grant strategies and prosecute such actions to successful conclusions as enforcement efforts or defensively. Contact us for additional information or to schedule a consultation.



Post Grant Review

The America Invents Act (AIA) created three new proceedings for reviewing a patent after issuance:  the inter parties review (IPR), the covered business method (CBM) and the post grant review (PGR) before the Patent Trial and Appeal Board (PTAB) at the USPTO.  In many infringement cases in federal court a strategy of filing a concurrent proceeding before the PTAB to challenge the validity of a patent is employed.  Alternatively, filing an IPR or CBM is often a cost-effective way to avoid patent infringement litigation in federal court.  McHale & Slavin has experience in advising its clients in all aspects of PTAB proceedings.



Design Patents

Design patents are useful in protecting the non-functional ornamental shape of an article of commerce. A design patent relies primarily upon drawings and a single claim to communicate what is protected. The claim generally refers to the drawings as a standard of what is protected. The United States Patent and Trademark Office has defined the design of an object to be the visual characteristics or aspects displayed by the object.

A design patent may be directed to ornamental configuration, surface decoration, or both. To qualify for a design patent, the ornamental shape must be new in the sense that no single, identical design exists in the known prior art and the device must satisfy certain ornamental standards. It must also be unobvious on the basis of any previously existing design or combination of designs when viewed through the eyes of a hypothetical designer skilled in the art. Design patents cannot be obtained for ornamental features that are not visible when the product is in use.

A design patent is subjected to an examination in the U.S. Patent and Trademark Office, which includes a prior-art search. The design patent has a term of 14 years from the date it is granted. In many circumstances, one may obtain a design patent in addition to a utility patent for the same invention if the standards for each patent category are satisfied.

The design patent gives the owner the right to prevent others from making, using, or selling a product that so resembles the patented product that an ordinary observer might purchase the infringing article, thinking it was the patented product. The ordinary observer is generally deemed to be the retail purchaser of goods of that particular type rather than an expert, who would be less likely to be fooled.

Comparison of a patented design and an accused design involves satisfying the “Ordinary Observer” test to find infringement. The “ordinary observer” test was first enunciated by the United States Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) in a case involving an ornamental design for silverware handles, which held that:

If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

In the case of Egyptian Goddess Inc.  vs. Swisa, Inc.  543 F. 3d 665  (Fed. Cir. 2008) (en banc) the entire court rejected earlier case law which had increased the burden for establishing design patent infringement.  As a result, the Federal Circuit has put real teeth back into the enforcement of design patents.

An industrial design patent can also be obtained in other countries. For instance, in Japan, South Korea and Hungary, industrial designs are registered after performing an official novelty search. In Europe, one needs to only pay an official fee and meet other the formal requirements for registration (e.g. Community design at OHIM, Germany, France, Spain). For the member states of WIPO, registration is afforded by application to WIPO and examination by designated member states in accordance with the Geneva Act of the Hague Agreement.

 McHale & Slavin has extensive experience in advising clients as to the prosecution and protection of both U.S. and foreign design patents. Contact us for additional information or to schedule a consultation.

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