Patent Attorney San Francisco
U.S. patents protect inventions for any process, machine, article of manufacture, composition of matter, or any improvement to one of these categories. Provided the invention is useful, novel, and non-obvious, the U.S. Patent and Trademark Office (“PTO”) will grant a patent to the owner of the invention. The patent gives the owner the ability to prevent others from making, using, or selling the invention in the U.S. and from importing the invention into the U.S. without the owner’s permission during the life of the patent. Violation of these rights is patent infringement, giving the owner the right to sue the infringer in court for monetary damages and a court order prohibiting further infringement (i.e., an injunction).
Owens Tarabichi assists clients, including individuals, start-up companies, and established companies, with all areas of patent law, including the following:
- Patent Filing and Claim Strategy. Developing a patent filing strategy, and importantly a patent claim strategy, can be critical to protecting various aspects of your inventions and to building a robust and valuable patent portfolio. A patent filing strategy identifies those inventions for which patent protection should be sought in light of business goals. Specifically, this strategy should identify how many applications to file and what the patent claims should be in each. Further, this strategy should address seeking patent protection in countries outside of the U.S. depending upon commercial potential in such countries. We can assist you with developing a patent filing and claim strategy to maximize patent protection and, therefore, commercial potential for your inventions, regardless of whether your invention is simple or complex
- Invention Ownership and Employment Issues. Ownership of an invention initially lies with the inventor. Therefore, it is important for companies to ensure that inventions made by their employees are properly assigned to the company. Further, inventions developed by employees outside of their work environment may create confusing issues of ownership depending upon the relationship between the invention and the employee’s work responsibilities. Further, ownership of inventions created in collaboration with employees at colleges and universities or through federal funding (and in many cases with additional funding from a start-up company) can be particularly complicated. We assist both employers, such as start-up companies, as well as employees in evaluating such ownership issues and in preparing the appropriate documents to convey ownership of an invention to the desired entity. We also record assignments with the PTO, as well as patent offices around the world.
- Patentability Evaluation and Prior Art Searches. Once an invention is identified, it may be useful to evaluate the probability of obtaining a patent before expending significant funds to prepare and file a patent application. A search of existing patents and public literature (the “prior art”) in the field of the invention may provide information that can be used to assess whether the invention meets the requirements for patentability. In addition, knowledge of the prior art may allow the claims to be drafted to make it more clear that the invention is novel and non-obvious compared to the prior art. We can provide you with simple to complex prior art searches and evaluations of the patentability of your inventions.
- Patent Applications and Prosecution. The patent application process (referred to as “patent prosecution”) can be very complicated. Further, separate patent applications must be filed in the U.S. and in each country outside of the U.S. if protection is desired in such countries. Drafting a patent application and, in particular, the claims, which legally define the invention and are used to determine whether a patent is infringed, requires skill and experience. Further, responding to rejections of the application (i.e., “office actions”), whether through rebuttal arguments or claim amendments, requires knowledge and understanding of the applicable patent laws. We prepare and filing patent applications with an attention to detail, and we have experience in many different technologies. We also work closely with inventors in preparing strong responses to office actions. Further, we can handle your international patent prosecution needs, as we have significant experience in handling patent applications in many countries around the world.
- Special Proceedings at the PTO. There are a number of special proceedings conducted within the PTO relating to patent applications and issued patents. For example, a finally rejected patent application may be appealed to the Board of Patent Appeals and Interferences and beyond that to a federal court. In other situations, one patent application may claim the same invention as another application. In this case, an “interference” may be declared by the PTO to determine which of the inventors was the first to invent the claimed invention. An issued patent may also be reexamined to determine whether it was properly granted in the first place. Such a reexamination may be conducted between the patent owner and the patent office (referred to as “ex-parte reexamination) or between the patent owner, the patent office, and a third party (referred to as inter partes reexamination). Each of these proceedings is significantly complicated; however, we handle each of these special proceedings and, in fact, our attorneys handled the very first appeal of an inter partes reexamination.
- Patent Opinions: Freedom to Operate and Non-Infringement Opinions. Companies that plan to develop or introduce a new product in the marketplace or that are planning to implement a new method or process may desire to know whether such product or process infringes an existing patent. We provide you with a legal opinion that answers this question, known as a “freedom to operate” opinion. We provide a patent search of the applicable art and analyze the resulting patents to determine whether the new product or process infringes. Alternatively, a company may have knowledge of an existing patent and may want to confirm that they are not infringing that patent, or the company may have received a cease and desist letter alleging infringement of a patent. In these cases, we will review the patent of concern to determine whether a client’s product or service infringes upon that patent. In those cases where we believe there is no infringement, we will provide a legal opinion of non-infringement that can be used to rebut a claim of willful infringement in a subsequent lawsuit, which may otherwise result in an enhanced damage award. In other cases, we assist clients in developing a strategy to “design around” the patent of concern by making changes to the product or service so that it does not infringe. We can work with you to determine whether such opinions are needed and to provide you with such opinions of counsel in a cost-effective manner.
- Licensing and Transfer of Ownership. An issued patent or a pending application may be licensed or sold to others. Under a patent license, the patent owner grants the licensee certain rights that basically allow the licensee to use the invention covered by the patent without threat of a patent infringement lawsuit. Patent license agreements can be significantly complicated. For example, various patent rights may or may not be included, and the license may contain more than one patent. Further, as with any intellectual property license, many terms and conditions may be included that require a specific understanding of intellectual property law to adequately assess. In these situations, the patent owner/licensor should carefully plan its overall licensing strategy in light of its patent filing and claim strategy and business goals. Alternatively, rather than licensing, an issued patent or pending patent application may be sold to another entity. Such assignments require careful review and should be recorded with the PTO. We can assist you with patent licensing, including the development of an appropriate licensing strategy and negotiating and drafting license agreements; negotiating and drafting agreements for the purchase of a patent or patent application; and any enforcement issues or litigation regarding these types of agreements.
- Due Diligence. Often, before a company takes a license or purchases a patent application or issued patent, it is important to understand the strength of the application or patent. Typically, a detailed review of the application and all of the information passed between the applicant and the PTO (referred to as the “prosecution or file history”) is reviewed. This review or due diligence provides insights into whether the application was properly prosecuted and whether there may be validity or enforceability issues with an issued patent. We can conduct due diligence evaluations of any patent or patent family that you are considering purchasing or licensing.
- Patent Infringement Litigation. There are occasions where another entity is infringing upon your patent or you have been accused of infringing a patent. When such situations cannot be resolved through discussions, a patent infringement lawsuit is likely to be filed. Patent infringement litigation is much more complex than other types of lawsuits, primarily because it involves technology that may be difficult to understand and because esoteric patent claims must be interpreted to determine the scope of protection provided by the patent at issue (referred to as a Markman hearing). Accordingly, patent infringement litigation can be very costly. Whether you believe someone is infringing upon your patent or you have been accused of patent infringement, we can handle your patent infringement litigation case. We work to understand your desired outcome and any financial constraints that may affect the litigation to provide the best representation we can.