A joint development agreement (JDA) sets the terms for two or more parties working together to develop a particular product or technology. The JDA is typically negotiated before or during the working relationship. IP is often a key issue in a JDA, so the agreement should clearly state who owns what. Some key issues to look out […]
Each co-owner of a jointly held patent can make, use, sell and license the patented invention. Licensing is the main concern with a jointly owned patent since each co-owner can grant non-exclusive licenses without having to obtain the consent of other joint owners. Joint patent ownership can create a messy situation where no single patent owner has the […]
What is a parent application? A parent application is typically the first non-provisional patent application filed for an invention. It is possible that a parent application may disclose multiple inventions. What is a child application? A child patent application is filed while a parent application is still pending (i.e., not issued or abandoned). By linking a child to […]
“Intended use” refers to language in a patent claim that arguably describes a purpose or function of the thing being claimed. It is, therefore, not given any patentable weight by a patent examiner who has deemed a claim limitation to constitute intended use. By regarding certain claim language as intended use, the examiner can generally disregard the […]
On May 13, 2015, the U.S. became a participant in the Hague Agreement on international registration of design patents. U.S. applicants can now file a single design patent application and seek protection in multiple member countries of the Hague Union, similar to the streamlined patent protection afforded by the Patent Cooperation Treaty (PCT) for utility patent applications and that […]
Before deciding whether or not to keep your U.S. non-provisional patent application secret, you must first determine whether you wish to pursue any foreign patent filings assuming your concept is eligible (i.e., absolute novelty bar). If eligible and foreign patent protection is desired, then keeping your U.S. non-provisional application from being published is not an […]
What prior art documents should be included in an Information Disclosure Statement (IDS) to be filed with the USPTO?
Every patent applicant has a duty under U.S. patent law to disclose to the US Patent and Trademark Office any known prior art documents that are material to the invention claimed in the patent application. Since the duty applies only to known prior art references, the applicant does not have an obligation to search for prior art. However, […]
What are minimum USPTO fees that must be paid at the initial filing of US national stage patent application?
Bare Minimum Fee for Entering US National Stage The bare minimum official fee due upon filing a U.S. national phase patent application is the basic national fee. As of the date of this post, the basic filing fee is $280 for a large entity and $140 for a small entity. What if the PCT application contains excess claims or multiple […]
Different types of patent searches There are 3 main types of patent searches: patentability search (aka novelty search); freedom-to-operate (FTO) search (aka right-to-use or infringement search); and patent validity search. What is a patentability search? The main distinction between these patent searches relate to the difference between what is patentable vs. what infringes. Also known as a novelty […]
When a U.S. national stage patent application or direct filing claims priority to a foreign application, a certified copy of the foreign priority document is required. The USPTO and certain foreign patent offices – European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), China Patent Office (SIPO which stands for State Intellectual […]