Emory Legal offers end-to-end patent services, from patent prosecution, strategic patent counseling, to full-service patent litigation. Emory Legal’s patent services span multiple industries, including medical devices, biotech, consumer goods, consumer electronics, mechanical, electrical, and computer-implemented devices, and a host of others.

Identification and protection of technological innovations is critical for companies to maintain a competitive advantage in this technologically advanced marketplace. Properly crafted patents can be the most prized and sought after assets of a new venture, which can then be leveraged to secure venture capital funding or litigation war chests. A diversified patent portfolio can be a significant game changer and part of a corporation’s overall valuation.

Offensive patenting includes drafting focused applications that target competitors in order to assert them against such competitors that use the patented technology and to seek licensing revenue. Defensive patenting includes protecting specific products, product features, and/or future technologies of interest in order to give yourself a protected position in the marketplace.

Emory Legal is adept in all facets of patent law, and offers a thorough collection of patent services, including:

  • Prior art searches.
  • Freedom to practice searches and opinions.
  • Due diligence prior to patent acquisition.
  • Strategic patent portfolio counseling, development and mining.
  • Patent application preparation, filing, prosecution (e.g. office action responses) services for U.S. and international patents.
  • Patent licensing agreements.
  • Patent validity and infringement opinions.
  • Reverse engineering counseling.
  • Patent post-grant proceedings.
  • Patent litigation in federal courts.
  • Patent maintenance services.
  • Design patent services.

The attorneys of Emory Legal know the significance of developing and deploying a strong diversified patent portfolio, in order to maintain a competitive edge. Among other things, an effective patent strategy incorporates creating, developing and managing a patent portfolio, which includes:

  • Patent Auditing: What patents do you have? Which technologies are covered? Strengths and weaknesses of your patents;
  • Competitor Analysis: Who are your competitors? Which technologies are covered? Strengths and weaknesses of competitors patents;
  • Portfolio Development & Acquisition: Build on your core technology and new areas of interest; Patent acquisition; Technology in-licensing; and
  • Portfolio Streamlining: Technology out-licensing; Patent sale; and Patent lapse.

When enforcing patent rights is vital or defending against charges of patent infringement are looming, the experienced attorneys at Emory Legal are there for its clients. Our initial approach to patent litigation is early case assessment and effective use of alternative dispute resolution means through arbitration, mediation, and post-grant proceedings, such as ex-parte reexamination, inter-partes review, and post-grant review proceedings. We also utilizes are technical acumen to understand and navigate complex issues that are encountered throughout the course of a typical patent litigation.

To talk with an experience patent attorney about your patent needs, please contact Emory Legal at 619-752-0249.

What is a patent?

A patent is a property right granted to an inventor to exclude others from making, using, offering for sale, or selling the invention in the United States, or importing the invention into the United States.

Who can apply for a patent?

A patent may be applied for only in the name(s) of the actual inventor(s), or a person to whom the inventor has assigned or is under an obligation to assign the invention, with some exceptions.

If the inventor is deceased, the application may be made by their legal representatives. If the inventor is legally incapacitated, the application for patent may be made by his legal representative, e.g., guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they 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.

What is patentable?

This basic question is actually quite complicated.

Per 35 U.S.C. 101 regarding patentable inventions. “Whoever 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 therefor, subject to the conditions and requirements of this title.” Additional conditions for obtaining a patent require that the invention be new (i.e. novel) under 35 U.S.C. 102, which means that an invention cannot be patented if: (1) “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or “(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.” An exception to the above, if the “disclosure [is] made 1 year or less before the effective filing date of the claimed invention,” but only if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed… from the inventor or a joint inventor.”

“Effective filing date of the claimed invention,” with respect to U.S. non-provisional patent applications, and which is the first application containing the claimed subject matter, means the actual filing date of the application. However, for a U.S. non-provisional application that claims the benefit of a prior-filed U.S. provisional application, U.S. continuation or divisional application, or a prior-filed foreign patent application to which foreign priority is claimed, the “effective filing date of the claimed invention” can mean the filing date of the prior-filed application provided a sufficient disclosure is contained in the prior filed application.

Furthermore, even if the subject matter sought to be patented is novel, a patent may still be refused if the claimed subject matter is obvious under 35 U.S.C. 103, i.e. the claimed subject matter is not different from what has been done before such that it is non-obvious to a person having ordinary skill in the area of technology related to the invention.

A design patent may be obtained for an ornamental design of an article of manufacture.

A plant patent may be obtained by anyone who invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

What is not patentable?

Laws of nature; physical phenomena; abstract ideas, and inventions that not useful or offensive to public morality.

How long is a patent valid (i.e. length of time your patent exist)?

Generally, for issued patents filed on or after June 8, 1995 (i.e. utility and plant patents), the term is 20 years from the date that the patent was filed. Patents filed before or in force on June 8, 1995 have a term that is the greater of the twenty-year term discussed above or seventeen years from the patent issue date. For design patents, pursuant to 35 U.S.C. 173, “[p]atents issued from design applications filed on or after May 13, 2015 shall be granted for the term of fifteen years from the date of grant. Patents issued from design applications filed before May 13, 2015 shall be granted for the term of fourteen years from the date of grant.”

What is a provisional patent?

A provisional patent is not a full blown utility patent application and is not examined by the USPTO. Rather a provisional patent application serves as a placeholder for the effective filing date and permits the term “Patent Pending” to be applied in connection with the invention disclosed in application. After a provisional is filed the applicant has up to 12 months from the filing date to file a regular non-provisional utility patent application, otherwise the provisional patent expires.

What is a non-provisional (utility) patent?

A non-provisional patent is full blown patent application that is examined by the USPTO, and if granted, provides the holder a property right to exclude others from making, using, offering for sale, or selling the claimed invention. U.S. patent grants are effective only within the United States, its territories and possessions.

What is a design patent?

A design patent may be granted to any person who has invented any new and non-obvious ornamental design for an article of manufacture.

What does a design patent protect?

Design patents protect the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent may relate to the configuration or shape of an article of manufacture, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. Generally, design patent protection is sought for a product because it has a novel and valuable appearance, although nonfunctional; for example, you may have improved upon an already existing product by giving it a unique look, shape, or form.

What is capable of design patent protection?

In order to be eligible for design patent protection, the subject matter must satisfy the ornamental standards and be novel (i.e. original). A design for an article of manufacture cannot be dictated primarily by the function of the article. Specifically, if at the time the applied-for design was created, there is no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and fails for lack patentable subject matter. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality fails for lack of patentable subject matter.