(1) Do I Have to Build it Before I Patent it?
No. This is a common misconception. To file a patent application,
in most countries, the inventors must describe the invention with
enough specificity to enable someone in their field to build or
practice the invention. Physically constructing the invention is
(2) Who Gets the Patent - the First to Apply or the First to
Generally, the first to apply. Most countries operate on a
"first to file" basis. The U.S. used to be a "first
to invent" system, but changed to "first to file"
(except for applications with a filing date before March 16,
(3) What Rights do Patents Provide?
Patents provide exclusionary rights. They exclude, or block, others
from doing what is defined by the patent's claims. This also
means that a patent is only as good as its claims: narrow claims
block less, and broader claims block more.
(4) Why Not Always Draft the Broadest Imaginable Claims?
Validity. Patent laws require inventions to be new and not obvious.
The broader a claim, the easier for a patent examiner or court to
say "someone has already invented that." In that case, a
patent application will be rejected (or an issued patent will be
(5) What is Better, Quality or Quantity?
Both, but quality matters more for most companies. Having a
mountain of patents too numerous to defend against is expensive and
unobtainable for most companies. For the great majority of
companies, quality patents are necessary to deliver real value.
(6) What About Patents Generates Value?
Having the "sweet spot" of claim scope: broad enough to
cover infringement, but narrow enough to avoid validity attacks.
Also, having easily perceivable infringement, rather than
hard-to-detect infringement. Perhaps most important, having patent
claims that align with and support a business strategy.
(7) Aren't Software Patents "Dead"?
In the U.S., certain types of software-based inventions received
increased scrutiny in recent years. But the situation has recently
improved for patentees. While "business method"
inventions are often difficult to patent, software-based inventions
in countless fields remain obtainable.
(8) Do I Want "Method" Claims or "Product"
Often, both. Consider who the likely infringer will be. Will they
be practicing a method, or making or selling a product? Tailor the
claims to capture the likely infringing acts. Frequently, this
requires claims of both types.
(9) Patent Litigation Prohibitively Expensive, So Why
Remember, without a patent, competitors can freely take your
technology. That can be more costly. One of the best ways to
minimize cost is to obtain quality patents. The stronger the
patent, the less likely competitors will risk infringing—and
if they do, enforcement is cheaper and quicker. Strong patents can
also persuade law firms to take a case on contingency.
Originally printed in StartIsrael on September 11,
The content of this article is intended to provide a
general guide to the subject matter. Specialist advice should be
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In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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