PATENT SERVICES AT GRAHAM IP

Patent Basics

The US patent system is designed to incentivize rapid development and early public disclosure of "patentable" technologies in exchange for the promise of exclusivity of the patented subject matter for up to 20 years from the filing date.  The patent owner gets what is, in effect, a substantial "head start" in commercial exploitation of the subject matter.

 

The scope or breadth of a patent is defined by its "claims."  These are specially worded, numbered paragraphs at the end of the patent, the broadest of which define the outermost scope or "metes and bounds" of the patent.  They carry a legal presumption of validity upon issuance of the patent.   

 

To be deemed patentable, the subject matter, as claimed, must be new (i.e., "novel").  And it must arise in the mind(s) of the named inventor(s).  This means, among other things, that one cannot validly patent things one sees on the market or developed by others just because they look like they would be a "good idea."  But don't misunderstand this.  A great many valid, commercially valuable patents issue for patentable "improvements" made to existing products or processes.  A chemical formula or reaction known for 100 years can be patently improved upon by what are sometimes very slight, albeit "novel," changes in the structure of the formula or reaction conditions.  Even a "new use" of an old product such as a known drug compound can be patentable if disclosed and claimed as a novel method or as part of a novel process.

 

Similarly, one cannot validly patent discoveries of laws of nature, inherent biological/chemical processes, or conception of abstract ideas like mathematical algorithms, no matter how earth-shaking they may be, although application of these discoveries in the form of new products, materials, processes, and methods can be and often are the subject of validly issued patents. See Mayo Collaborative Services, LLC v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. v. CLS Bank, 573 U.S. 208 (2014).  Although named as an inventor on many important patents, including a basic patent on refrigeration, Einstein would not have been able to validly appropriate, via an issued patent, his world-changing discovery that E=mc2.

 

A further key limitation on patentability is that the claimed subject matter, even if novel, still must advance the art in a way that would not have been "obvious" to a person of ordinary skill in the relevant art.  This limitation against patenting "obvious" differences compared to the prior art is intended to reserve the grant of patent rights to significant, nontrivial technological advancements. 

 

Apart from the above limitations, one can indeed validly patent applied science that sufficiently advances the "useful arts," so long as the patent application discloses one or more physical "embodiments" of the claimed invention in sufficient detail to enable persons of ordinary skill to practice the scope of the invention, as claimed, without "undue experimentation."  An ideal patent claim would therefore have a scope adequately supported by the underlying specification (detailed written description and any necessary drawings) and which also patentably distinguishes from the closest prior art with the fewest possible limitations.

 

With the advent of the America Invents Act ("AIA"), effective March 16, 2013, the US patent system transitioned to a "first to file" as opposed to a "first to invent" system.  Accordingly, for all new patent applications filed in the US after March 16, 2013, the first inventor to file a patent application is entitled to priority.  This change has added greatly to the sense of urgency in filing patent applications to protect new technology in the US.  If we had a "first to file" system at the time of Alexander Graham Bell, the mammoth companies called "Bell Telephone,""Bell Laboratories," and other "Bell" and AT&T entities that arose from the invention of the telephone could well have been called "Gray Telephone," etc.

  

Another major impetus for urgency in filing a patent application is the aforementioned requirement that the subject matter to be patented must be novel.  In many countries, public disclosure, use, or commercial exploitation of the claimed subject matter by anyone before the earliest effective filing date of the patent application can inject the subject matter into the public domain ("prior art"), therefore defeating novelty for all claimants. 

 

However, the law in the US (35 U.S.C. § 102) and in many other countries affords the applicant a pre-filing "grace period" (one year in the US) within which certain disclosures can be made without sacrificing novelty. During this time, many disclosures or offers for sale to third parties, whether done publicly or confidentially, or public uses, of the subject matter by the inventor within a year of the earliest effective filing date will not be deemed to be "prior art" against the claimed subject matter.  See Helsinn Healthcare S.A. v. Pharmaceutical Industries, Ltd., 139 S. Ct. 628 (2019);  see also Patent Law: A Handbook for Congress, September 16, 2020, at https://fas.org/sgp/crs/misc/R46525.pdf

While a patent is in force, the owner is entitled to exclude others from making, using, selling, or offering to sell anything in the issuing jurisdiction that falls within the scope of at least one of its valid claims. This helps protect the market of the owner and/or its licensees in the jurisdiction for authorized products, methods, processes and designs that fall under the patent.  Once the patent expires, the information it discloses is available for everyone to use, and to form the basis for other improved or entirely new patentable ideas.

 

This "exchange" or quid pro quo is the genius behind our patent system.  It affords the patent owner with the opportunity for a head start in the race to commercially exploit the scope of the patent, at least in countries in which the patent is issued.  This system has had an incalculable net positive impact on civilization as a whole.

 

An almost infinite variety of extraordinary advances in medicine, food, pharmaceuticals, chemicals, processes, products, machines, computers, biology, and in virtually every other aspect of life stem largely from information brought forward in patent disclosures fueled by the lure of this exclusivity.  Millions have done so after substantive examination of properly submitted patent applications.  People like Edison, Einstein, Westinghouse, Bell, Morse, Ford. the Wright Bothers, Eastman, Salk, Jobs, Turing, Gates, Diesel, Pasteur, Szilard, Nobel, and thousands of others like them have, by their efforts in advancing technology through "useful" application of scientific principles, changed the world in extraordinarily beneficial ways through their patent disclosures.

Our Patent Services

We are definitely "pro patent."  We help clients use the US and overseas patent systems to secure patent protection for their new products, processes and other technologies, and to navigate potential patent issues with respect commercially important products or processes in use or under development.

 

Well-conceived and properly executed patent strategies can help you secure and maintain exclusivity in commercially important markets for those key innovative concepts embodied in your company's most profitable products or processes. Patents can also help leverage your investment in new, commercially valuable technologies and innovations through licensing, even in countries where you company's patented products/processes are not sold, made, or used . 

 

For patent application work, a pre-filing search may be recommended in conjunction with an initial US filing of a disclosure as a provisional patent application.  It can be effective way to secure an early effective filing date in the US for confidential disclosure of potentially patentable technology to the USPTO.  This offers significant advantages under US law, so long as a follow-on utility or non-provisional application (and/or a PCT application (a/k/a "international patent application) is filed within 12 months of the filing of the provisional patent application with a claim of priority to the same.  In some cases, an effective strategy for attaining patent protection in multiple countries can be to file the disclosure as a PCT application in parallel with the US provisional.  

 

However, a provisional patent application is not a short cut or an inexpensive way to secure patent protection in the US.  It is critical to realize that any claim prosecuted in any ensuing US utility or PCT application must find adequate support in the disclosure of the first-filed provisional and/or PCT application in order to be entitled to its filing date.  Accordingly, it is very important to ensure adequate and timely disclosure in the earliest-filed patent application of all subject matter one intends to ultimately claim.  This helps ensure the earliest possible priority date and that claimed subject matter will satisfy the novelty requirements in those countries in which a patent is to be sought.  Therefore, new patent applications must be filed with a sense of great urgency!

 

Besides searching and writing/filing patents, we provide many other patent-related services.  These include, for example, infringement opinions, validity opinions, patent subject matter audits, patent valuations, due diligence, license and other agreements involving patents, and a host of other patent-related matters. We also have extensive experience handling patent litigation, including enforcement of patents against infringement, defense of parties charged with infringement, and ex parte/inter partes matters before the USPTO's PTAB.  Costs for these services vary, and typical ranges of fees/expenses for these and other matters can be provided upon request.

 

Below is a small sampling of the hundreds of US patents we have drafted and/or prosecuted, broken down in various arts:

 

CHEMICAL/BIO (patent no., title, issue date)

4,879,351 Isomerized Terpene Tackifier Resins Nov. 7, 1989

4,938,785 Gas-Liquid Separation Jul. 3, 1990

5,057,294 Recovery and Regeneration of Spent MHD Seed Material by the

Formate Process Oct. 15, 1991

5,457,175 Low Softening Point Terpene-Phenol Resins Oct. 10, 1995

5,597,650 Conjugate carpet face yarn Jan 28, 1997

5,693,731 Polymerization of Dicyclopentadiene Dec. 2, 1997

5,840,581 Process for Somatic Embryogenesis of Sweetgum Nov. 24, 1998

5,844,071 Ink Compositions Dec. 1, 1998

5,959,010 Particleized Resin Having Improved Properties and Method of

Producing Same Sep. 28,, 1999

6,072,009 Methods for Vulcanizing Elastomers Using Monomeric Distillate By-

Product Jun. 6, 2000

6,252,135 Production of Syringyl Lignin In Gymnosperms Jun. 26, 2001

6,297,327 Elastomeric composition using monomeric distillate by-product Oct. 02, 2001

 

ENVIRONMENTAL (patent no., title, issue date)

4,727,031 Nutrient for Stimulating Aerobic Bacteria Feb. 23, 1988

4,747,728 Method for Distributing an Aqueous Solution Containing A Peroxygen

in Clay May 31, 1988

4,751,063 Process for Treating Spent Catalyst Including Antimony Halides From

Chlorofluorocarbon Production Jun. 14, 1988

4,925,389 Method and Apparatus for Treating Waste Containing Organic

Contaminants May 15, 1990

5,059,406 Desulfurization Process Oct. 22, 1991

6,146,104 Groundwater Recovery System Incorporating A Combination of

Pressure and Vacuum to Accomplish Removal of Groundwater Fluids

From a Downhole Pump Nov. 14, 2000

6,561,733 Method and Apparatus for Treating Landfills May 13, 2003

8,173,743 Silicone Resin Composition May 8, 2012

 

GENERAL/MECHANICAL (patent no., title, issue date)

4,889,445 Expansion Joint for Settable Compositions Dec. 26, 1989

4,955,242 Conveyor Belt Cross-Stream Sampling System and Associated Method Sep. 11, 1990

4,756,392 Stainless Steel Brake Rotor for Airplane Disk Brakes Jul. 12, 1988

4,819,886 Rotary Hammer Mill for Breaking Stone and Similar Material Apr. 11, 1989

5,336,141 Exercise Machine for Stimulating Perambulatory Movement Aug. 9 ,1994

5,456,739 Process for Reclaiming Aluminum from waste Paper and Packaging Oct. 10, 1995

5,505,096 Particulate Material Sampling Apparatus Apr. 9, 1996

 

MEDICAL/PHARMACEUTICAL (patent no., title, issue date)

RE 35,070 Root Canal Filling Device Including Releasably Reusable Inserter Tool Oct. 24, 1995

4,976,717 Uterine Retractor for an Abdominal Hysterectomy and Method of its Use Dec. 11, 1990

5,067,900 Apparatus and Method for Applying Gutta-Percha to a Carrier Nov. 26, 1991

5,104,316 Endodontic Instrument Apr. 14, 1992

7,806,690 Endodontic Instrument for Performing Root Canal Therapy Oct. 5, 2010

7,553,856 Crystalline Form of Omeprazole Jun. 30, 2009

7,632,843 Treatment of Psychostimulant Addiction Dec. 15, 2009

7,655,437 Synthetic Gene Coding for Human Granulocyte-Colony Stimulating

Factor for the Expression in E-Coli Feb. 2, 2010

7,834,176 Polymorph E of Olanzapine and Preparation of Anhydrous Non- Solvated Crystalline Polymorphic Form I of 2-methyl-4(4-methyl-1-piperazinyl)-10H-thieno[2,3-b][1,5] Benzodiazepine (Olanzapine Form

I) From the Polymorphic Olanzapine Form E Nov. 16, 2010

7,875,723 S-Omeprazole Magnesium Jan. 25, 2011

7,906,109 Pharmaceutical Composition Comprising an Active Principal and Sulphobetaine Mar. 15, 2011

7,943,585 Extended Release Antibiotic Composition May 17, 2011

8,053,444 Sirolimus Formulation Nov. 8, 2011

 

PAPER/PAPERMAKING/PRINTING (patent no., title, issue date)

4,755,259 Process for Papermaking Jul. 5, 1988

4,959,124 Method of Bleaching Kraft Pulp in A DZED Sequence Sep. 25, 1990

5,012,750 Apparatus for Recovery of Constituents and Heat from Fluidized Bed

Combustion May 7, 1991

5,017,416 Paper for Use in Ion Deposition Printing May 21, 1991

5,250,348 Improved Wrapper Paper for Use in Very Low Contact Pressure Applications Oct. 5, 1993

5,338,404 Method of Forming a Lignin Reinforced Cellulosic Product Aug 16, 1994

5,382,649 Thermoplastic Polyester-Imides from Trimellitic Acid, Propanediphenol and an Aromatic Diamine which have Improved Mechanical Properties, Their Preparation and Their Use. Jan. 17, 1995

5,389,201 Bleaching of Kraft Cellulosic Pulp Employing Ozone and R educed

Consumption of Chlorine Containing Bleaching Agent Feb. 14, 1995

5,417,810 Papermachine Headbox Cleaning System May 23, 1995

5,670,020 Foam Separation Method For Reducing AOX, COD, and Color Bodies of Kraft Pulp Bleach Plant Effluents Sep. 30, 1997

5,792,316 Bleaching Process for Kraft Pulp Employing High Consistency Chlorinated Pulp Treated with Gaseous Chlorine and Ozone Aug. 11, 1998

5,911,853 Method for Treating Paper Mill Condensate to Reduce the Amount of

Sulfur Compounds Therein Jun. 15, 1999

6,221,798 Method for Producing Laminated Webs Apr. 1, 2001

6,475,447 Apparatus and Method for Treating Sesquisulfate Waste Streams Nov. 5, 2002

6,656,401 Method for Extrusion Coating Multiple Webs Dec. 2, 2003

6,802,938 Low Density Paper and Paperboard Articles Oct. 12, 2004

7,281,360 Thermal Laminates and Laminating Method of Food Packaging Films Oct. 16, 2007

7,482,046 Cut Resistant Paper and Paper Articles and Method for Making Same Jan. 27, 2009

 

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