Recent Posts

21

Patent Questions and Advice / Use of a part of a competitor patent claim

« Last post by Mariem on May 24, 2021, 11:19:39 AM »

If one patent claim is composed of multiple technical details, can I use one of those details (not the whole claim, just a part of it) in my patent application, knowing that both are in the same business field (I am referring to my competito patent)?

If no, can I use the technical detail by adding other different technical details (related to my invention) to it?

PS: Please note that I am talking about a part of a patent CLAIM, not of a part of a whole patent application.

Thank you.

22

Patent Questions and Advice / Re: Where should I patent my international mobile app?

« Last post by Brad on April 28, 2021, 11:36:13 AM »

There are a couple of items here:

1) Having a patent does not mean you are free and clear to make or sell the app.  Here is a post I wrote on this:
https://patentfile.org/your-patent-is-not-a-green-light-to-sell-a-product/

2) If your goal is to just prevent others from patenting the same thing, the cheapest way to do that is to publish your app and details about it (for example you could blog about it on medium.com or github).   Your public work could then be used to reject anyone else's patent if they later tried to patent the same thing.

3) I really only know about US patent strategy but my understanding is that apps are just about impossible to patent outside of the US and even in the US they are extremely hard to get approved (usually less than 30% chance of approval unless the app solves a very technical problem).

23

Patent Questions and Advice / Where should I patent my international mobile app?

« Last post by Mariem on April 28, 2021, 10:05:38 AM »

Where should I patent my international mobile app?
My objective is to patent it in at least one country to make sure that my idea is new (so that my already existing competitors don't sue me), and to prevent others from patenting it in the future.
Should I aim for a country where IP is well developed (like the US, EPO, Japan, etc.), or should I aim for the less expensive one?

In addition, how could I know if the designated country patents mobile apps? I heard that for example, EPO patents are harder to get than US patents when it comes to inventions related to technology.

Thank you very much in advance,
Your advice has always been very useful.

24

Patent Questions and Advice / Re: Is the prior art search national or international?

« Last post by Brad on April 22, 2021, 09:08:14 AM »

Prior art searching should always be international.   In order to get a patent you must be the first one in the entire world to invent that and any foreign documents the patent examiner can find can and will be used to reject your patent.

If you file a patent in one country you only have one year (12 months) to file in other countries.  If you miss that window it would be too late to try and later file in different countries. 

25

Patent Questions and Advice / Is the prior art search national or international?

« Last post by Mariem on April 22, 2021, 02:28:47 AM »

When the USPTO makes a search for prior art, does it only concern prior art in the USA or globally?

In other words, when I patent my invention in a random country today, can I patent it in the USA after few years. The criteria of novelty may be in question.


Thank you

26

Patent Questions and Advice / Re: Patent for a mobile/website application (App)

« Last post by Brad on March 17, 2021, 02:01:18 PM »

No.  In fact, many successful apps and software programs don't have any patents at all. 

Ideally you should identify the core 2-3 unique processes your software app does and that would be the focus of your patent.  If you had a patent budget of $500,000+ per year which is probably what Tinder has then you can most certainly file a new patent on every little tweak you think of but that is not practical for most of us.


Software Patent Warnings:
You first need to determine why you think you need a patent.  Do you really think you are going to get a broad and strong patent approved in the social media space right now?  That is doubtful.   

If you do get your app approved, do you have the $100,000 it will likely cost to defend your app if it gets challenged?  If your app still makes it through that challenge, do you have the $1 million+ to spend enforcing your software app against companies like Tinder? 

After you add up all the costs and risk for filing a patent, what is your return on investment and how are your going to justify the expense of filing and defending your patent?

I am not trying to scare you away from filing a patent, rather, people should look at it from a cost-benefit perspective and often times the costs are greater than the perceived benefits when it comes to certain types of mobile app type patents.

27

Patent Questions and Advice / Re: Improvement of a patent in force

« Last post by Brad on March 17, 2021, 01:55:06 PM »

It is impossible to say without spending a lot of time and money researching their patents and your idea in detail.  Even after spending all that time and money it would still just be a "guess" or estimate on how likely you may be infringing their work.

In general you cannot make or sell a product that is still using a patented process or component even if you think are are improving on it.

*The type of opinion you are looking for is called a "freedom to operate" legal opinion and is not something we provide.  You should really speak with a patent attorney with this type of experience and registered in your area.

28

Patent Questions and Advice / Improvement of a patent in force

« Last post by Mariem on March 17, 2021, 09:07:56 AM »

Can I improve an invention that is currently patented (patent in force)?
For example, I am creating a dating mobile/website app, so I base it on certain features that are currently patented by another dating app. However, I add improvements and changes to these protected features.
Is that legal or would it be considered as an infringement of the patent?
Thank you in advance.

29

Patent Questions and Advice / Patent for a mobile/website application (App)

« Last post by Mariem on March 17, 2021, 08:34:23 AM »

Does every part of a mobile/website app need to be protected separately by a patent? For example, the app Tinder has several patents.

30

Marketing, Licensing, and Selling an Invention / Re: Question about joint patent ownership

« Last post by Brad on February 28, 2021, 06:19:36 PM »

I have seen agreements where universities sometimes say they will pay inventors from another university but usually that is only if there is a federal (US) grant.

Otherwise, it is most common for each university or company to only pay their own inventors.