Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

 
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Entries in patent (14)

Tuesday
Jan282014

Blocking patents? Cross License!

Blocking patents occur when a first business owns a patent for an underlying technology and a second company owns a patent for an improvement to the underlying technology.  In such situations, neither company can practice the improvement without infringing.  The patents block each other from using the invention: hence the term, "Blocking Patents." 

The common resolution of the situation is to enter a cross-license for the improved technology.

The New York Times article titled, "Google and Samsung Sign Broad Cross-Licensing Agreement," discussed an example of a cross-license agreement between two competitors who found a mutually beneficial agreement to proceed.

 

Tuesday
Jun042013

Good Patent/Bad Patent?

Judging the quality of a patent application is very difficult, even for an expert.  For non-patent attorneys, discerning a good patent from a bad patent is probably impossible--at least unitl its too late.

In my opinion, a good patent describes the kernel of the invention.  That is, the core or the seed, the must fundamental part of the invention.  When the patent claims focus on the kernel, the invention will be clear to the examiner and the resulting patent will exclude competitors.

But isn't claiming the kernel obvious?  Don't all patent attorney write patent applications like this?

No.  Many patent attorneys take asimpler route.  A patent application can be written more quickly by simply listing the parts of a device, describing their connections and interoperation, and then writing a claim that describes the preferred embodiment.  However, such a patent application may not capture the fundamental principals (i.e. the invention) that is embodied by the device.  As a result, the kernel may be unprotected and competitors will be able to create alternate embodiments that rely on the underlying invention.

That sounded too much like lawyer speak.  Let me use an example.  Say, your invention is a better mousetrap.  The device is a foam block covered with adhesive and a piece of cheese to which the mouse get glued.  A superficial patent claim might read, "I claim: 1.  A block, adhesive applied to said block, and bait disposed on said adhesive for attracting a pest."  The problem is that a competitor might avoid that claim by placing an intervening layer of material, for example a paper label) between the block and the adhesive.  A better patent attorney would try to find the kernel of the invention.   The invention at its most basic may be using adhesive (not a spring loaded mechanism) for capturing a pest.  So, a better claim might be "I claim: 1. A method of trapping pests, which comprises: applying an adhesive to a surface, and adding bait for a pest to the surface."  This claim would prevent the label alternative discussed above.

The point is a good patent attorney should  be working with you to isolate the kernel of your invention.  If the attorney says, just give me a prototype and I will bang it out, you may be headed for trouble.

For similar tips for patenting your invention and chooding the right attorney, use the subscribe link in the header of this page.

 

 

Tuesday
May142013

Dilbert Comic--Patent Juries

I read a Dilbert comic from February 26, 2013, about patent juries that I thought was worth sharing.  The link is below:

Dilbert.com

Issues of infringement and damages are usually decided by a jury in a patent infringement lawsuit.  The cartoon demonstrates how important it is to have a lawyer that can explain to a jury the nuances of an invention involving cutting-edge technology.

Dan Weiss forwarded this comic to me.  Dan practices in the area of municipal law, including property tax appeals.

Friday
May102013

Divorce and Patents

In Taylor v. Taylor Made Plastics, 2013 WL 1798964 (USDC MD FL, 2013), Judge Kovachevich dismissed the plaintiff's patent infringement lawsuit because the plaintiff, one of the joint owners Mr. Taylor, failed to join all other co-owners (i.e. Mr. Taylor's ex-wife, Ms. Taylor).

Two things to take from this case:

  1. Before bringing suit for patent infringement or answering a complaint, investigate if all of the owners have been joined, , especially when the plaintiff is an individual and may be divorced; and
  2. When drafting a divorce settlement (or any other redistribution of property) involving a patent as marital property, address the issue of ownership of patents and other IP explicitly and consider the distributions affect on standing;  compare Enovsys LLC v. Nextel Communications, Inc., 614 F.3d at 1335-36.

by Loren Pearson

Friday
May102013

USPTO Offers 75% Discount to Micro Entities

The United States Patent and Trademark Office (USPTO) enacted rules establishing a 75% discount of some patent fees for qualifying patent applicants on March 19, 2013.  The USPTO published the final rules in the Federal Register at 77 Fed. Reg. 75019  Micro-entity status is meant to reduce the cost to inventors who are not affiliated with business and that do not yet have access to capital.

To qualify, a patent applicant must meet the following criteria:

  1. Does the applicant qualify as a small entity?   (i.e. an individual, business with no more than 500 employees, or nonprofit).
  2. Has applicant or any joint inventor filed no more than four US non-provisional patent applications? An exception exists if prior-application were assigned to a past employer.
  3. Did all applicants and listed inventor make no more than $150,000 in the past year?  $150,000 is the number for income in 2012.  The amount is adjusted annually.
  4. Are no rights in the application promised or licensed to a non-micro-entity?

If you have a pending application or patent and qualify, contact Loren Pearson via email or phone at (305)567-5576 to update the status of your application.