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Our Dallas Patent Lawyers Provide National and International Patent Services
A patent provides its owner with the right to exclude others from making, using or selling the claimed invention. The Dallas patent lawyers at Carstens, Allen & Gourley, LLP have extensive experience in obtaining patents for inventions in fields as diverse as computer hardware and software, food technology, oil field equipment, medical devices, business methods, telecommunications and aviation. The firm’s experience extends beyond practicing before the U.S. Patent and Trademark Office to include navigating the numerous requirements for obtaining patent protection internationally.
Our Dallas Patent Attorneys Can Help You Protect Your Invention
As an individual or a business, you want to protect your intellectual assets. You can use a patent to protect your ideas and inventions. Patent prosecution is the process of obtaining these patent rights. Our Dallas patent attorneys pride themselves in obtaining meaningful patent protection for our clients. If you have questions about getting a patent, please reach out to us at 972-367-2001 or online.
Without a patent, you have no legal protection over your invention or idea. Generally, if you bring your product to market without filing a patent application, anyone can copy your invention without your permission. Our patent attorneys in Dallas highly recommend that you file for patent protection before any type of public disclosure. This helps ensure that a competitor does not obtain an earlier filing date and keeps open the possibility of obtaining patent protection in other countries. A patent gives you a limited monopoly over your invention for a specific number of years, depending on the type of patent. It gives you the right to prevent others from:
- Making your invention
- Using your invention
- Selling your invention
- Offering to sell your invention
- Importing your invention
- Ornamental designs
If you would like to patent your idea, speak with a Dallas patent lawyer from our firm. We can help you determine which type of intellectual property prosecution is right for you. The United States Patent and Trademark Office (USPTO) offers three main types of patents. These patents include:
- Utility patents. Utility patents are most commonly used for inventions. Utility patents may be used for new machinery, software, compositions of matter, or processes.
- Design patents. Design patents are issued for ornamental designs for articles of manufacture.
- Plant patents. Plant patents are used for the discovery or invention of asexually reproduced plants or plant varieties.
The invention or design that you want to patent will be compared with prior inventions or designs to ensure it is novel and not obvious in view of the prior art. Our lawyers can help you understand the risks associated with your invention. We can also conduct a prior art search to determine if there are any prior patents or patent applications that could cause a patent application on your invention to be rejected by the USPTO.
- Search for any prior patents or applications that could cause issues
- Draft claims that appropriately define your idea or invention without being too narrow
- Prepare formal drawings for your application
- Prepare the filing documents, including assignments as may be necessary
While there is no such thing as an “international patent,” a single patent application can be filed through the Patent Cooperation Treaty (PCT) within one year of the filing date of the U.S. application to reserve the right to obtain patents in the individual PCT member countries. Our lawyers have connections around the world to help you obtain foreign patent protection. We are adept at using the PCT to obtain patent protection in member countries. We also have a network of agents that we can use when entering the national phase of a patent application under the treaty. We can also help you determine whether you may be eligible for the Patent Prosecution Highway. We have used the Patent Prosecution Highway to speed the issuance of patents for our clients in various countries.
Contact Our Dallas Patent Attorneys Today to Discuss Your Intellectual Property
If you have questions about obtaining a patent or are considering patent prosecution, please contact the Dallas patent attorneys at Carstens, Allen & Gourley, LLP. We work with individuals and businesses to obtain national and international patent protection. We are happy to discuss your legal options based on your objectives during a consultation. Call us at 972-367-2001 or fill out our confidential online contact form and we will be in touch with you soon.
Inter Partes Review
An IPR is an administrative trial at the USPTO limited to the issue of the validity of patent in view of two specific types of prior art: patents, and printed publications. IPR stands for “Inter Partes Review.” The process starts with the filing of a detailed “Petition” with the USPTO to set out how the cited prior art demonstrates that the claims of the patent at issue are invalid based on anticipation or obviousness. The Petition is usually supported by the declaration of an expert. The Patent Owner then has 3 months to file an optional preliminary response, and then the USPTO will either grant the petition and institute the trial as to at least one claim, or deny the petition. If the petition is granted, then the trial process shown in the diagram below is generally completed in one year from the granting of the petition, culminating in oral argument before a panel of three Administrative Patent Judges within the newly created Patent Trial and Appeal Board (“PTAB”): The America Invents Act actually created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (“IPR”); and two additional procedings: post-grant review (“PGR”) which must be filed within 9 months of the issuance of a patent and may challenge the validity of a patent on any available statutory ground; and the transitional post-grant review for covered business method patents (“CBM”) which is directed primarily to “computer implemented” business method patents in the financial industry. In addition, the former “interference” proceeding to determine priority of inventorship was transitioned to the “First-to-File” patent regime and became a “Derivation Proceeding” to determine whether a patent applicant had derived the invention from another person, and therefore is not entitled to the patent, even if the patent applicant was “first-to-file” an application for the claimed invention at the USPTO.
As of the end of 2014 and into early 2015, statistics were that roughly 75% of Petitions to institute an IPR trial had been granted as to at least one claim of the target patent. Additional statics recently issued by the USPTO are as follows:
- As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
- Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
- Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
- Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable. Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
The IPR procedure differs from Federal Court litigation in significant ways. One of the most important is that, unlike Federal Court litigation, the Petitioner must present its primary evidence and legal arguments at the very beginning of the proceeding in the Petition itself, including the expert declaration. Two key strategies can lead to success: (1) before the Petition is even filed, make the maximum effort through prior art searches to identify and analyze the very best prior art available; and (2) identify and retain the best possible expert to prepare the expert declaration to increase the persuasive force of the Petition in the eyes of the PTAB Administrative Patent Judges who will generally have technical backgrounds. The page limit for the Petition is 60 pages, and this is the primary vehicle used to persuade the PTAB judges to initiate the trial on at least one claim. The petition must therefore be carefully prepared with detailed reasoning to demonstrate the invalidity of at least one claim to the required standard of a “reasonable likelihood.” After the trial is initiated, the Petitioner’s efforts should be to refute the arguments raised by the Patent Owner in its response or any proposed claim amendments.
A key defense strategy is to challenge at the Preliminary Response stage whether the trial should be instituted by showing either that the patents or publications relied on by the Petitioner are either: (1) do not qualify as prior art; or (2) do not show the claim elements that the Petitioner alleges are disclosed by the cited prior art. An additional strategy involves the Patent Owner seeking to amend the patent claims at issue to avoid the prior art cited by the Petitioner, while also demonstrating the amended claims are patentable over the prior art known to the Patent Owner. The USPTO has been conducted significant recent rulemaking on the amendment issue.
IPRs can be used offensively and defensively. If a party is sued for infringement of a patent in Federal Court, a defensive strategy may include filing an IPR in a parallel proceeding at the USPTO. This forces the patent owner to fight on “two fronts,” and in some circumstances may lead to the Federal Court judge “staying” the litigation in federal court to wait for the USPTO to act on the IPR.
PTAB Trial Resources
IPR, CBM, PGR and Derivation Rules and AIA Statue
Useful PTAB Decisions and Orders
- Example Trial Hearing Order
- Example Scheduling Order
- Decisions Regarding:
Recent Decisions Blog