Our NEWS

Using Trademarked Names in Google Ads

• 12.18.2024

Authored by Babak Akhlaghi on December 13, 2024. In a recent trademark infringement case, the district court’s decision was upheld on appeal, favoring defendant Brown, Engstrand & Shely, LLC, known as The Accident Law Group (ALG), against Lerner & Rowe, PC. Based in Arizona, Lerner […]

Unveiling the Legal Aspects of Trade Secrets

• 11.03.2024

By Babak Akhlaghi on November 3, 2024.  Trade secrets are the lifeblood of many businesses, encompassing everything from secret recipes to unique manufacturing processes. But what happens when these secrets are at risk? How can businesses legally protect their valuable intellectual property? Understanding Trade Secrets […]

Misleading Patent Claims: Unmasking False Advertising

• 10.20.2024

Authored by Babak Akhlaghi on October 16, 2024. In a notable clash within the footwear industry, Crocs initiated a lawsuit against Dawgs, accusing them of patent infringement. This legal case took an intriguing turn when Dawgs counterclaimed. They asserted Crocs engaged in false advertising. This alleged […]

The On-Sale Bar Debate

• 10.17.2024

Authored by Babak Akhlaghi on September 6, 2024.  Celanese International Corporation recently challenged Anhui Jinhe Industrial Co., Ltd. and Jinhe USA LLC at the U.S. International Trade Commission (ITC). The dispute revolves around Celanese’s claim that these entities were importing Ace-K, an artificial sweetener, using […]

Intellectual Property Protection in the Beauty Industry

• 09.05.2024

Authored by Babak Akhlaghi on August 30, 2024, this article delves into how Lashify’s revolutionary DIY lash extension system not only transformed the beauty industry but also emerged victorious in a pivotal legal battle to protect its innovations. This compelling narrative underscores the importance of […]

Federal Circuit’s ODP Clarification: A Guide for a Patent Attorney

• 09.01.2024

Authored by Babak Akhlaghi on August 27, 2024. In the world of patent law, clarity is key. Building on my takeaways from the In re Cellect decision last year, a recent Federal Circuit case, Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. […]

Patent Litigation Spotlight in Cancer Treatment

• 08.09.2024

By Babak Akhlaghi on August 9, 2024. Patent litigation cases often read like a legal thriller, filled with twists, turns, and high-stakes drama. One recent case that exemplifies this narrative is the patent dispute between Natera and NeoGenomics. This case, decided by the U.S. Court […]

Understanding USPTO Assignment Rules and Regulations

• 07.29.2024

By Babak Akhlaghi on July 28, 2024. Navigating the complexities of intellectual property can be challenging, especially when it comes to understanding USPTO assignment rules and regulations. Whether you’re a small business owner or an individual inventor, comprehending these guidelines is crucial. This article will […]

The Future of AI Patents

• 07.26.2024

By Babak Akhlaghi on July 26, 2024. The world of artificial intelligence (AI) is evolving at a rapid pace. With this evolution, the landscape of AI patents is also changing dramatically. AI patents play a crucial role in protecting intellectual property. They safeguard the rights […]

Understanding the Importance of Freedom to Operate

• 07.19.2024

By Babak Akhlaghi on July 19, 2024.  In the realm of business and innovation, navigating the patent landscape is essential. It’s not only about securing your own patents but also ensuring you’re not infringing on others. This is where the concept of “freedom to operate” […]

Safeguarding Your Idea: Essential Pitching Tips for Success

• 07.11.2024

By Babak Akhlaghi on July 11, 2024.  Pitching an idea can be a thrilling yet daunting task. It’s a chance to share your innovation with potential investors, partners, or clients. However, there’s a risk involved: how do you ensure your idea remains yours? This article aims […]

Building a Strong Patent Portfolio Strategy

• 06.26.2024

By Babak Akhlaghi on June 25, 2024. In the competitive business landscape, a robust patent portfolio is a vital asset. It safeguards your intellectual property and fosters innovation. A well-managed patent portfolio can deter potential infringers. It can also enhance your market position and company […]

Innovative Trends in Unique Design

• 06.11.2024

By Babak Akhlaghi on June 11, 2024. In the ever-evolving world of design, staying ahead of the curve is crucial for catching the eye of consumers and making a lasting impression. Innovative design can be seen in unique concrete buildings, sparkling emerald rings, and functional […]

Design Patent Success Stories Revealed

• 06.05.2024

By Babak Akhlaghi on June 4, 2024. In the world of innovation, design patents play a crucial role. They protect the unique visual aspects of a product, giving inventors and businesses a competitive edge. But what does a successful design patent look like? How has […]

Plant Patents: A Guide for Gardeners

• 05.30.2024

By Babak Akhlaghi on May 30, 2024. In the world of gardening, innovation is key. New plant varieties can bring joy to gardeners and profits to breeders. But how can you protect your unique plant variety? The answer lies in plant patents. This guide will […]

Real-Life Utility Patent Examples Unveiled

• 05.23.2024

By Babak Akhlaghi on May 23, 2024. Navigating the world of patents can be a daunting task for inventors and startups. Understanding utility patents, in particular, is crucial. These patents protect the functional aspects of your invention, safeguarding your intellectual property rights. In this article, […]

Understanding the Basics of Utility Patents

• 05.10.2024

By Babak Akhlaghi on May 10, 2024. Navigating the world of patents can be complex. Especially when it comes to understanding the specifics of utility patents. This article aims to simplify the concept. We’ll delve into what utility patents are, how they differ from design […]

Maximizing Your Business with IP Strategy

• 05.03.2024

By Babak Akhlaghi on May 3, 2024. In the competitive business landscape, an effective IP strategy is crucial. It safeguards your innovations and gives you a competitive edge. But what exactly is an IP strategy? It’s a plan that helps manage and leverage your intellectual […]

Understanding the Purpose of Office Actions

• 04.27.2024

By Babak Akhlaghi on April 26, 2024. Navigating the patent application process can be complex. One term you will likely encounter is “office action.”  An office action is a formal document issued by the United States Patent and Trademark Office (USPTO). It communicates issues or concerns […]

Common Mistakes to Avoid in Provisional Patent Applications

• 04.12.2024

By Babak Akhlaghi on April 11, 2024. Navigating the world of patents can be daunting, especially for first-time inventors and entrepreneurs.  One common route is filing a provisional patent application. This offers temporary protection while you consider a full patent application.  However, the process is not without […]

Understanding Patent Marking under 35 U.S.C. § 287

• 04.07.2024

By Babak Akhlaghi on April 4, 2024 Under 35 U.S.C. § 287, often referred to as the patent marking statute, there exists a critical framework for patent owners in the United States regarding the marking of patented products. This statute outlines the patent marking requirements, […]

Tips for Filing a Successful Patent Application

• 04.01.2024

By Babak Akhlaghi on April 2, 2024. Filing a patent application can be a complex and daunting process, but it is essential for protecting your invention and ensuring that you have the exclusive rights to it. A successful patent application can also be a valuable […]

Navigating the USPTO Patent Assignment Search: A Comprehensive Guide

• 03.29.2024

By Babak Akhlaghi on March 28, 2024. The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands […]

Understanding Provisional vs. Non-Provisional Patent Applications: A Comprehensive Guide

• 03.26.2024

By Babak Akhlaghi on March 25, 2024. When it comes to securing your intellectual property rights, navigating the patent application process effectively is crucial. Two primary options for filing patents in the United States are provisional and non-provisional patent applications. In this guide, we will […]

The Frontier of Innovation: Navigating Blockchain Patents

• 03.22.2024

By Babak Akhlaghi on March 21, 2024. In the rapidly evolving world of technology, blockchain stands out as a revolutionary force, reshaping industries with its decentralized, secure, and transparent nature. From cryptocurrency to smart contracts, and Decentralized Autonomous Organizations (DAOs) to Non-Fungible Tokens (NFTs), blockchain […]

Navigating the World of Patent Auctions

• 03.21.2024

In today’s fast-paced and competitive business world, patents are more valuable than ever. They protect a company’s intellectual property and give them a competitive edge in the market. However, not all patents are created equal, and sometimes companies may find themselves with patents that are […]

Unlocking Opportunities: Your Complete Guide to Buying and Selling Patents Online

• 03.15.2024

In today’s dynamic marketplace, the buying and selling of patents represent a pivotal avenue for individuals and companies to unlock value from their intellectual property assets. With the advent of online platforms dedicated to patent transactions, navigating this process has become more accessible and efficient […]

Can You Patent an Algorithm? Understanding the Complexities of Algorithm Patents

• 03.15.2024

By Babak Akhlaghi on March 14, 2024. In today’s digital age, algorithms play a crucial role in powering various technologies, from search engines and social media platforms to self-driving cars and medical devices. As algorithms become increasingly integral to innovation and business success, the question […]

What Happens If You Don’t Patent Your Idea?

• 03.08.2024

In the world of innovation and invention, the question of whether to patent an idea is a crucial one. At the core of this decision is the need to protect your intellectual property and ensure that your hard work and creativity are safeguarded. But what […]

USPTO Updates Guidance on Obviousness Rejection: Flexibility is Key

• 03.05.2024

By Babak Akhlaghi on March 4, 2024. To secure a patent, an invention must be both novel and non-obvious. While demonstrating novelty is relatively straightforward—simply proving that the invention doesn’t exist in any previous patents or publications—the test for obviousness presents a greater challenge. Applicants […]

In the World of AI-assisted Innovation, the Human Touch Remains Paramount

• 02.17.2024

By Babak Akhlaghi on February 17, 2024. On October 30, 2023, an Executive Order by President Biden mandated the USPTO to, within 120 days, publish comprehensive guidance for both patent examiners and applicants on the subject of inventorship and the use of AI, including generative […]

“Pre-Prosecution Pilot”

• 01.29.2024

By Babak Akhlaghi on January 5, 2024. On December 21, 2023, The United States Patent and Trademark Office launched a new program called the “Pre-Prosecution Pilot” to assist first-time inventors. This program aims to help these inventors to assess the strength of their invention and […]

Fast-Track Your Semiconductor Innovations with USPTO’s Pilot Program

• 12.08.2023

By Babak Akhlaghi on December 8, 2023. In my previous post, I walked you through the typical journey of a patent application, from its inception to the examination phase. As I mentioned, due to a backlog at the USPTO, it can take a couple of […]

Decoding Reasonable Expectation of Success in Obviousness Determination

• 11.10.2023

By Babak Akhlaghi on November 9, 2023. The Journey of Patentability – Novelty, Non-Obviousness, and the Quest for Uniqueness In order for an invention to be patentable under the US patent regime, it must be both novel and non-obvious.  Novelty, in this context, refers to […]

The Patent Term Adjustment Dilemma in an Obviousness-Type Double Patenting Analysis

• 10.26.2023

By Babak Akhlaghi on October 25, 2023. In In re Cellect, LLC, No. 2022-1293 (Fed. Cir. Aug. 28, 2023), the Federal Circuit held that an obviousness-type double patenting (“ODP”) analysis should be based on the expiration date of a patent with any granted PTA added. […]

Patent Eligibility and Automation of Manual Processes

• 10.16.2023

By Babak Akhlaghi on October 16, 2023. In PersonalWeb Techs. LLC v. Google LLC, YouTube, LLC, Case No. 20-1543 (Fed. Cir. Aug. 12, 2021), the Federal Circuit held claims directed to data-processing systems that assign unique names to each data item based on its content […]

When is an Idea too Abstract to Pass the Patent Eligibility Test?

• 10.04.2023

By Babak Akhlaghi on October 4, 2023. In Free Stream Media Corp. v. Alphonso Inc., Case No. 19-1506 (Fed. Cir. May 11, 2021) (Reyna, J.), the Federal Circuit held claims toward a system for delivering relevant advertisements to a mobile phone user based on data […]

No Magic Word Needed To Determine If The Prior Art And The Patent Are In The Same Field

• 10.02.2023

By Babak Akhlaghi on October 2, 2023. In Netflix, Inc. v. DivX, LLC, Case No. 22-1138 (Fed. Cir. Sept. 11, 2023) (Stoll, Hughes, and Stark, JJ.), the Federal Circuit held no magic word is required to determine if the prior art and the patent are […]

Get Your Motorboat Running with this Case regarding Obviousness

• 09.25.2023

By Babak Akhlaghi on September 24, 2023. In Volvo Penta of the Americas, LLC v. Brunswick Corp., Case No. 22-1765 (Fed. Cir. Aug. 24, 2023) (Moore, Lourie, Cunningham, JJ.), the Federal Circuit reversed the Board’s obviousness rejection, finding that there was insufficient evidence to support […]

Unraveling the Puzzle of Obviousness: Exploring the Raytheon Techs. Corp. v. General Electric Co. Case

• 09.01.2023

By Babak Akhlaghi on September 1, 2023. In a typical case involving obviousness rejection under 35 U.S.C. § 103, the key issue often revolves around whether a prior art reference teaches a specific claim limitation or if a skilled artisan would have been motivated to […]

Data Compression Claims Deemed Ineligible by Federal Circuit: Impact on Software-Based Inventions

• 08.28.2023

By Babak Akhlaghi on August 28, 20223. The Federal Circuit held that claims directed to digital data compression are not patent eligible.  Realtime Data LLC v. Array Networks Inc., Case No. 2021-2251 (Fed. Cir. Aug. 2, 2023).  Realtime filed suit alleging infringement of seven patents […]

Unveiling the Impact of Optional Language “May” in a Patent Application

• 08.17.2023

By Babak Akhlaghi on August 17, 2023. A Brief Legal History: Understanding Reissue Patents Patent owners have the option to seek a broader scope of coverage for their invention by filing a continuation application with the United States Patent and Trademark Office while their original […]

Cracking the Code: Understanding Obviousness Challenges and the Motivation to Combine Prior Art

• 08.09.2023

By Babak Akhlaghi on August 8, 2023. The Federal Circuit reversed the Board’s non-obviousness finding, holding that the key question in obviousness determination is whether a skilled artisan would be motivated to combine different references to achieve the claimed invention not the references.  Axonics, Inc. […]

Transcend Abstract Concepts: A Comprehensive Understanding of Patent Eligibility

• 07.28.2023

By Babak Akhlaghi on July 28, 2023. The Federal Circuit upheld a decision of the district court that claims directed to poll based networking system are not patent eligible. Trinity Info Media, LLC v. Covalent, Inc., Case No. 22-1308 (Fed. Cir. July 14, 2023) (Stoll, […]

Co-Inventor’s Triumph: Federal Circuit Affirms Contribution to Hose Patents

• 07.20.2023

By Babak Akhlaghi on July 20, 2023. The Federal Circuit upheld a decision of the district court to amend inventorship, determining that the alleged co-inventor made significant contributions to the conception of at least one claim in each contested patent. Blue Gentian, LLC v. Tristar […]

Joint Inventorship – Understanding the Meat and Potatoes of Invention Contributions

• 07.17.2023

In a reversal of the district court’s decision, the Federal Circuit determined that an alleged inventor, who was not named in the patent application, did not qualify as a joint inventor. This was due to the alleged inventor’s contribution being deemed too insignificant when considered […]

From Lightbulbs to Billions: The Incredible Power of Patents

• 07.07.2023

By Babak Akhlaghi on July 7, 2023. Are you curious about the power of patents? In this video, we’ll explore how patent damage awards can reach jaw-dropping amounts. Take a look at the five largest patent damage awards in 2022: you won’t believe what they […]

Making Sense of the Patent Eligibility Restoration Act of 2023

• 06.30.2023

By Babak Akhlaghi on June 30, 2023. The Patent Eligibility Restoration Act of 2023 proposes several findings by Congress. Among these is the assertion that the U.S. Supreme Court and other courts have established judicial exceptions to the language of the existing patent eligibility section […]

Analogous References: the Same Field or Problem Domain as the Invention

• 06.16.2023

By Babak Akhlaghi on June 16, 2023 The US Court of Appeals for the Federal Circuit has overturned the Patent Trial & Appeal Board’s determination of obviousness, stating that a prior art reference concerning automotive engine parts is not analogous to the challenged patent, which […]

Unruly Distribution: Meeting 101 Conditions in Computer-related Claims

• 05.22.2023

In Sanderling Management Ltd. vs. Snap, Inc., the Federal Circuit held that a method for using distribution rules to load digital image branding functions to users when certain conditions are met are not patent eligible under 101.  The claim in question recited: 1. A computerized […]

The Grammar Secret: the Article “a” Still Signifies ‘One or More,’ but Requires a Single Component Executing All Functions”

• 05.02.2023

In Salazar v. AT&T Mobility LLC, the Federal Circuit held that the wording “a microprocessor” does not require there to be only one microprocessor in an open ended claim; however, subsequent limitations referring to “said microprocessor” require at least one microprocessor to be capable of […]

Federal Circuit Affirms Dismissal of Patent Claims Failing Alice Two-Step Test

• 04.15.2023

Hawk Technology Systems, LLC sued Castle Retail, LLC for patent infringement based on Castle Retail’s use of security surveillance video operations in its grocery stores. Hawk Tech. Sys., LLC v. Castle Retail, LLC, Case No. 22-1222 (Fed. Cir. Feb. 17, 2023) (Reyna, Hughes, Cunningham, JJ.) […]

If TikTok Is Banned in the U.S., What Happens to Its Patents?

• 03.28.2023

In this video, we’re going to take a look at what would happen if TikTok was banned in the U.S. and how its patents would be affected.

USPTO Launches CI2 First-Time Filer Expedited Examination Pilot Program

• 03.08.2023

The U.S. Patent and Trademark Office (USPTO) has introduced a new initiative called the Council for Inclusive Innovation (CI2) First-Time Filer Expedited Examination Pilot Program. The program aims to promote innovation across communities in America by providing expedited initial feedback on patent applications filed by […]

Going Green: USPTO Embraces Electronic Patent Grants to Save Paper and Costs

• 03.04.2023

Starting April 18, 2023, the U.S. Patent and Trademark Office (USPTO) will start giving out electronic patent grants that save paper instead of printed ones. They will still give a paper copy for a little while and then you can buy it for a small […]

Navigating Uncharted Waters: Evaluating Patentability in Multiple Dependent Claims

• 02.24.2023

Nested Bean, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1-18 of U.S. Patent No. 9,179,711 B2 (Ex. 1001, “the ‘711 patent”). Claims 1 and 2 of the ‘711 patent are independent, and claims 3-16 are multiple dependent claims […]

IBM Sues Home Search Giant Zillow for Patent Infringement

• 02.21.2023

IBM’s Patent Battle with Zillow: Mapping Out the Limits of Eligible Subject Matter

• 02.17.2023

Executive Summary IBM owns a patent (“‘789 patent”) for a method of selecting an area on a map by drawing a shape and limiting the displayed information to the selected area of the map. IBM also owns a patent (“‘389 patent”) for methods of displaying […]

Inventors Under the Patent Act

• 02.06.2023

In Thaler v. United States Patent and Trademark Office, the Federal Circuit affirmed the lower court’s ruling that the Patent Act requires an “inventor” to be a natural person. The sole issue on appeal was whether an AI software system can be an inventor under […]

USPTO Eliminates Voluntary CLE Certification for Patent Practitioners – What You Need to Know

• 02.03.2023

The United States Patent and Trademark Office (USPTO) has announced a final rule that eliminates the existing provisions of 37 CFR part 11 relating to continuing legal education (CLE) certification and recognition for patent practitioners. This means that 37 CFR 11.11(a)(3), which provided registered patent […]

Unlock the Power of Your Intellectual Property with the USPTO’s New IP Identifier Tool

• 01.26.2023

The United States Patent and Trademark Office (USPTO) recently announced the launch of its new Intellectual Property (IP) Identifier tool. This virtual resource is designed to help those who are less familiar with IP to identify whether they have IP and the IP protections they […]

Disclaimer Don’t Stick in an IPR

• 01.04.2023

CUPP Computing AS (“CUPP”) appeals three inter partes review (“IPR”) decisions of the Patent Trial and Appeal Board (“Board”) concluding that petitioner Trend Micro Inc. had shown challenged claims in CUPP’s U.S. Patents Nos. 8,631,488 (“’488 patent”), 9,106,683 (“’683 patent”), and 9,843,595 (“’595 patent”) unpatentable […]

Common Law Collateral Estoppel Applies to Board’s decisions

• 03.08.2021

In SYNQOR, INC., v. VICOR CORPORATION, No. 19-1704 (Feb. 22, 2021), the Court held that common law collateral estoppel, also know as issue preclusion, applies to Board’s decisions in inter partes reexaminations. The ‘190 patent issued July 4, 2006, with a family of patents that […]

The Sole Test for Anticipation in Design Patents is the “Ordinary Observer Test”

• 02.25.2021

In MOJAVE DESERT HOLDINGS, LLC, v. CROCS, INC., No. 20-1167 (Feb. 18, 2021), the Court upheld the Board’s finding that the prior art reference failing to show key surfaces in the asserted design patent cannot anticipate it. Crocs owned U.S. Patent No. D517,789 (the ‘798 […]

Happy New Year!

• 12.31.2020

Wishing you all happy holidays and a healthy new year!

Introduction to Intellectual Property Rights – Part 1

• 12.16.2020

In this video, we’re going to provide a brief introduction to intellectual property rights with a particular focus on copyrights. Please make sure you stay until the end of this video, where we’ll share a tip on how to protect your copyright.

Hats off to the American inventor, Mr. Garrett Brown

• 12.08.2020

Hats off to the American inventor, Mr. Garrett Brown, for inventing Steadicam (below left) more than 40 years ago, which revolutionized the movie making industry. It allowed a camera operator to run with the camera while the camera remained completely stabilized – something that was […]

USPS Seeks a Patent for a Blockchain-Based Mail-in Voting System

• 12.03.2020

The United States Postal Service (“USPS”) is seeking a patent protection for a more secure vote by mail system. In its recent patent publication, the USPS describes that its voting system is secured by using a blockchain to record data regarding the mailed in votes […]

$1.9 Billion Patent Judgment

• 11.13.2020

In Centripetal Networks, Inc.  v. Cisco Systems, Inc., No. 2:18cv94 (District Ct., October 5, 2020), the US District Court for the Eastern District of Virginia awarded to a cybersecurity startup, Centripetal Networks, one of the largest patent damages in history, $1.9 billion, for willful and […]

One Key Lesson from Dropbox Losing on 3 Key Patents

• 10.08.2020

In Dropbox Inc., Ornicus Holdings, LLC v. Synchronoss Technologies, Inc., No. 19-1765 (Fed. Cir., Jun 19, 2020), the US Court of Appeals for the Federal Circuit heard an appeal on patent eligibility of three patents, providing a non-precedential but insightful opinion on proper construction of […]

Congratulations to 2020 Patents for Humanity Winners!

• 08.26.2020

Today, the United States Patent and Trademark Office announced the 2020 Patents for Humanity winners. These are innovators who invented groundbreaking technologies to meet global humanitarian crises.  And, the winners are:  “Global Vision 2020 (Maryland), for developing the USee Vision Kit, used to provide prescription […]

Claims Directed to a Network Packet Monitor Held Patent Eligible

• 08.14.2020

In Packet Intelligence LLC v. Netscout Systems, Inc., No. 19-2041 (Fed. Cir., July 14, 2020) the U.S. Court of Appeals for the Federal Circuit upheld the patent-eligibility of a network packet monitor, finding its claims directed to non-abstract subject matter in light of details included […]

An Artificial Intelligence (AI) System Is Not Eligible to be an Inventor

• 08.07.2020

On April 22, 2020 the US Patent and Trademark Office ruled that Artificial Intelligence (AI) systems are not eligible to be an Inventor, which the USPTO rules is limited to natural persons. Let’s get into it.  On July 29, 2019, an Artificial Inventor Project (AIP, […]

A Broad Claim Directed to an Addition of a Data Field to a Communication Message Held Patent Eligible

• 08.05.2020

In Uniloc USA, INC. v. LG Electronics USA, INC., No. 19-1835 (Fed. Cir., April 30, 2020), the U.S. Court of Appeals for the Federal Circuit held patent eligible a claim directed a communications system including a primary station (e.g., personal computer 100) and a secondary […]

My Chat with the Board – “Fast-Track Appeals Pilot Program”

• 08.03.2020

The “Fast-Track Appeals Pilot Program” (“the Program”) became effective on July 2, 2020.  I had a chat with the Board about the program last month and have reproduced my takeaways about the Program below. What is it: Under the Program, patent applicants can have their […]

Assignment of Intellectual Property From Employee (“Assignor”) To Employer (“Assignee”)

• 07.28.2020

One of the most important assets of a business is its intellectual property (“IP”).  As a business owner, you should make sure all your agreements include an IP clause protecting the IP that is generated by your company.  This may include trademark, trade secrets, copyrights, […]

USPTO Report: Increasing Participation of Women in the U.S. Innovation Ecosystem

• 07.21.2020

Today’s USPTO report provides insights into the participation of women in the U.S. innovation ecosystem.  It specifically shows the women-inventor-rate is increasing in the U.S. It is wonderful to see that the partnership between the USPTO and the private sector and academia to increase diversity […]

Wishing you all a very happy 4th of July!

• 07.04.2020

Patent Alert: USPTO announces Fast-Track Appeals Pilot Program

• 07.01.2020

By: Babak Akhlaghi – The United States Patent and Trademark Office (“USPTO”) today announced plans for the Patent Trial and Appeal Board (“PTAB”) to begin accepting petitions for expedited resolution of ex parte appeals.   The “Fast-Track Appeals Pilot Program” (“the Program”) becomes effective tomorrow, July […]

Patent Alert: Revised Manual of Patent Examining Procedure

• 06.30.2020

By: Babak AkhlaghiJune 30, 2020 On June 30, the USPTO revised the ninth edition of the Manual of Patent Examining Procedure (MPEP) to include updated information on patent examination relating to a number of issues, including subject matter eligibility and examination of computer-implemented functional claim […]

How to Patent an Idea?

• 06.29.2020

By: Babak AkhlaghiJune 29, 2020 In this article, we will focus on how to patent an idea. The goal of the patent law is to promote progress of science.  Its basis is found in the U.S. Constitution, Article 1, Section 8.   Patent  law encourages inventors […]

June 25: Free webinar on oral advocacy before the PTAB

• 06.24.2020

Interested in fine tuning your oral advocacy skills before the PTAB? The webinar tomorrow looks like a great way to do this. In my 15 years of practice, I have had to only go once before the Board for an oral argument. It was an […]

COVID-19 Prioritized Examination Pilot Program

• 05.19.2020

On May 18, 2020, the United States Patent and Trademark Office (USPTO) provided additional guidelines for using the COVID-19 Prioritized Examination Pilot Program (“COVID-19 Program”) for COVID-19 related innovations.  Under the COVID-19 Program, the USPTO will expedite the examination of up to 500 eligible patent […]

Patent Applications Handbook, 2020 Edition

• 05.12.2020

The long wait is over!  2020 Edition of our Patent Applications Handbook is out.  This handbook provides guidance for drafting and prosecuting patent applications.  It emphasizes practice, not theory! It’s perfect for both novice and more seasoned patent practitioners.   If nothing else, it can also […]

Patent Alert: USPTO launches a web-based marketplace platform to enable commercialization of US issued patents

• 05.07.2020

On May 4, 2020, the United States Patent and Trademark Office (USPTO) launched a web-based marketplace platform, Patents 4 Partnerships, to enable patent owners who wish to license their US issued patents to connect with companies and individuals who wish to license those patents.  The […]

Computer System Including Dedicated Hardware for Advertising Held Patent Ineligible

• 05.04.2020

On March 6, 2020 the US Court of Appeals upheld a USPTO Patent Trial and Appeal Board finding that a data delivery system including the allocation of dedicated hardware for targeted advertising did not constitute patent-eligible subject matter under 35 U.S.C. §101. (Nos. 2018-2239, 2019-1000, […]

Does licensing of your invention trigger an on-sale bar?

• 04.26.2020

April 26, 2020 Does licensing of your invention trigger an on-sale bar?  The short answer is no.  The licensing agreement covering the invention normally does not trigger the on-sale bar.  On-sale bar is limitation on patentability.  It provides that the invention cannot be patented if […]

USPTO releases report on patent examination outcomes after the Supreme Court’s Alice decision

• 04.23.2020

Today, USPTO released a report showing the outcome of its 2019 patent eligibility guidelines. The report shows a 44% decrease in uncertainty of patent subject matter eligibility in the relevant technologies.  This shows more predictably is coming back to the USPTO in this very uncertain […]

USPTO Clarifies Relief Provided under CARE Act

• 04.10.2020

USPTO provides additional guidance for taking advantage of the patent related deadline extension available under CARE Act.  To seek the extension, the patent applicants will need to submit a statement explaining that the delay in filing or making a payment was due to the COVID-19 […]

NovoTech Cares: We’re Supporting Small Businesses During COVID-19

• 04.03.2020

Small businesses are suffering significantly, but should not be forced to compromise their intellectual property as a result of this virus.  To do our part in supporting innovators and small businesses during this difficult time, from now until the end of 2020, we are offering […]

USPTO announces extension of certain patent deadlines under CARE Act

• 04.03.2020

USPTO is providing much needed relief to the patent applicants affected by the coronavirus. The relief includes extension of various patent related deadlines falling between March 27, 2020 and April 30, 2020. For now, the extension is only for 30 days.

Introduction to the U.S. Patent System

• 04.01.2020

This article provides a brief introduction to the U.S. patent system. It covers various stages involved in obtaining a U.S. patent including filing of a patent application, publication of the application, substantive examination of the application, and grant of the application. This article will also identify […]

USPTO Clarifies Rules for Reviving Abandoned Patent Applications

• 03.31.2020

A patent application may go abandoned for failure to timely respond to a communication from the United States Patent and Trademark Office (USPTO). This is not the end of the road for the application. The patent application may be revived by filing a petition under […]

Patent Alert: USPTO Coronavirus Relief

• 03.23.2020

The #USPTO has provided relief for #patent applicants affected by the Coronavirus outbreak.  The relief includes a waiver of the petition fee reviving abandoned patent #applications.  To qualify, you should promptly file the revival petition under 37 CPR 1. 137(a) and include with the petition […]

Patent Alert

• 03.05.2020

Effective 3/1 USPTO PCT International search fee increases from $1,016 to $1,036

Patent Procurement in 2019: Observations by an Outside Counsel

• 03.02.2020

The foregoing are my takeaways from 2019.  I hope you find them helpful. 101 Rejections post 2019 USPTO Revised Patent Subject Matter Eligibility Guidelines:  I had an Interesting discussion with an OPLA attorney regarding patent eligibility of AI and machine learning.  It appears that many […]

PTAB on Patent-Eligible Subject Matter

• 03.01.2020

Practice Note:  For patent-eligible subject matter, when drafting claims focus on the technical element achieving the technical solution.  Specifically, you should recite how the technical element/solution improves the prior art systems.  Additionally, you should describe in the specification the technical problems associated with the prior […]

Software patent claims directed towards data transmission error checking are patent-eligible

• 02.26.2020

On Nov. 15, 2019, the Federal Circuit reversed the decision of the District Court in Koninklijke KPN N.V. v. Gemalto M2M GMBH et al., addressing 35 USC § 101, ruling that the software patent claims directed towards data transmission error checking were patent-eligible. KPN sued […]

Patent Typos Can be Fatal!

• 12.04.2019

Practice Note: This case goes on to show that everything we say in a patent application can and will be used against us in a litigation. Therefore, even a small typo can be fatal!

Persian Women in Tech Austin

• 11.30.2019

Congrats to our colleague and friend Mrs. Azadeh Khadem on having been selected to be among the esteemed panelist of Persian Women in Tech Austin. She is a fantastic patent attorney!

My takeaways from the USPTO’s Forum on Brand Protection and Anti-Counterfeiting Strategies

• 06.14.2019

The Forum on Brand Protection and Anti-Counterfeiting Strategies held last week at the USPTO  was an eye-opening event for me personally.  Below is a quick summary of my takeaways, followed by a longer version of the discussion.  Summary During the forum, there were two main […]

A conversation with Vint Cerf – May 23, 2019

• 05.14.2019

“One of the ‘fathers of the internet,’ Vinton G. Cerf is the co-designer of the TCP/IP protocols and the original architecture of the online world. Currently vice president and chief internet evangelist for Google, he contributes to global policy development and the continued spread of […]

Firm’s Director, Babak Akhlaghi, Nominated to Super Lawyers for 2019

• 05.10.2019

USPTO Welcomes Back Software Innovations with its New 101 Guidelines.

• 02.20.2019

The new guidelines are very favorable to patent applicants. In my practice, I am seeing many Examiners withdrawing their 101 rejections. It appears that the Patent Trial and Appeal Board (PTAB) is following suit and increasingly reversing previously issued 101 rejections based on the new […]

Recent Treatments of 101 by Examiners

• 02.15.2019

I am pleased with the results I am seeing from the Examiners at the USPTO on dealing with Section 101 issues in view of the USPTO new guidance on this topic and I too hope that Section 101 stabilizes by 2020.

2019 Revised Patent Subject Matter Eligibility Test

• 02.04.2019

The United States patent system was established by the U.S. Constitution (Article 1, Section 8).  The laws governing the patent system are described in Statutes (35 USC) issued by our congress, procedures for obtaining patents, termed Rules of Practice, are found in Regulations (37 CFR) […]

“SECRET SALES” CAN INVALIDATE A PATENT

• 01.23.2019

After a U.S. patent application is filed, it will be evaluated by an administrator for classification of the invention claimed in the application.  From there the application is forwarded to an appropriate examination group for assignment to an examiner who is selected based on the […]

NovoTech Patent Firm Snags Stephen Becker as a new Director

• 02.06.2018

We are excited to announce that Stephen (Steve) Becker has joined NovoTech Patent Firm as of January 1, 2018! Law360, New York (January 24, 2018, 6:06 PM EST) — Washington, D.C.-based NovoTech Patent Firm has snagged former McDermott Will & Emery partner Stephen Becker as a director […]

The importance of an IP Clause for every Startup

• 10.11.2016

Often, the most valuable asset of a startup company is its Intellectual Property (“IP”). The IP gives the startup the competitive advantage in the market place by enabling the startup to exclude competitors in the same business area as the startup. To protect its IP, […]

Post-Prosecution Pilot (P3) Program, A New Strategy for Responding to a Final Rejection of a Patent Application

• 07.25.2016

It is common for a U.S. patent application to see a Final Office Action during the course of its examination at the United States Patent and Trademark Office (“USPTO”).  Most patent applications receive a first Non-Final Office Action rejecting one or more claims.  As a […]

Enfish v. Microsoft

• 07.14.2016

Practice Note: Recent Supreme Court decisions have made patenting software related innovations more and more challenging.  It is becoming increasingly more important to describe in the application how the invention improves the functionality of the computer, rather than just an addition of conventional computer components […]

The Fate of Patents After Brexit

• 06.27.2016

The Brexit vote will have a severe impact on many treaties, thankfully, the impact on the European Patent Convention (EPC) shall be minimal.  The EPC was signed in 1973 by participating states to streamline the patent process. The terms and conditions of the EPC are […]

Supreme Court Ruling on AIA-POST Grant Proceedings

• 06.27.2016

On June 20, 2016, the Supreme Court finally put to the rest the question of whether or not the Patent Office can use a different standard from the district court in reviewing the claim constructions under the AIA-post grant proceedings.  The Court held the different […]

10 Dos & Don’ts in Negotiating a Commercial Lease for Startups

• 06.27.2016

Dos: Do identify the strength of your leverage (e.g., well-funded, good investor, low occupancy rate) before starting the negotiation Do clarify the specific conditions the premises should be placed in before having to take on the lease Do define the premises with specificity including having […]

World Bank Workshop – Structuring and Launching your Entrepreneurial Business

• 05.19.2016

Come join us at the World Bank today for the Structuring and Launching your Entrepreneurial Business workshop!   Babak Akhlaghi, our managing partner, is a panelist at the workshop today. The goal of the workshop is to help participants who are considering becoming an entrepreneur, and […]

University of Maryland 5th Annual ECEGSA Industrial Career Panel

• 05.11.2016

Mr. Akhlaghi was honored to be a panelist for the electrical and computer engineering graduate students at University of Maryland looking to enter the work force.  He was joined by esteemed colleagues from Texas Instruments, Booz Allen, Facebook and Netladonna.

Welcome Laurence Stein!

• 05.11.2016

Laurence is an intellectual property attorney at NovoTech Patent Firm and is based in the Firm’s Washington, D.C., office. Laurence provides legal counseling on a wide range of intellectual property matters, including patent and trademark infringement and validity opinions, drafting and prosecuting applications for patent […]

Invitation to Speak at the United Nations in Germany

• 11.09.2015

Congratulations to Babak Akhlaghi for being invited to the United Nations Conference Center in Berlin, Germany.  He will be presenting with his mother, Mrs. Mahnaz Mehrinfar on the Iranian International Studies of nuclear engineering, currently occurring in Tehran, Iran.   Mrs. Mehrinfar is a prominent […]

Supreme Court granted certiorari on triple damages on patent cases

• 10.22.2015

The U.S. Supreme Court agreed to consider whether a $70 million jury award that Stryker Corp. won against Zimmer Biomet Holdings Inc. for patent infringement should be tripled or not.  For more details, click here.

Welcome Azadeh Khadem!

• 09.28.2015

Azadeh Khadem joins us as an of counsel patent attorney, concentrating her practice on patent preparation and prosecution, licensing and the acquisition of intellectual property rights, opinion work and client counseling. Azadeh has represented clients in diverse technical areas, including biomedical devices, telecommunications, semiconductor devices, […]

In honor of Amazon Prime Day…

• 07.15.2015

Finger print or face recognition to unlock your smartphone?  Sure, they seem to be some of the more advanced ways to unlock your phone nowadays. However, Amazon was recently awarded a new patent in June, which would allow your smartphone to unlock by scanning your […]

Williamson v. Citrix Online

• 07.14.2015

In Williamson v. Citrix Online, LLC, the Federal Circuit found that the omission of the word “means” does not justify a “strong” presumption that a claim limitation is not subject to section 112, para. 6.   This appears to be an effort by the court to […]

Kickstarter Wins it’s First Patent Case

• 07.05.2015

Judge Katherine Failla of the Southern District of New York ruled in favor of Kickstarter that the US patent “Methods and Apparatuses for Financing and Marketing a Creative Work” granted to ArtistShare should be invalidated.   The dispute between the 2 parties started over 4 […]

Collecting Royalties for Patents After They Expire

• 07.05.2015

Patents usually expire 20 years after the date they were filed.   Why is this important to know?  Good question!  Typically, when the patent expires, the patentee’s rights expire too and it becomes part of the public domain. On June 22, 2015, the US Supreme Court […]

Our DC office has officially opened!

• 05.29.2015

NovoTech Patent Firm has officially opened our Washington, DC office.  Located blocks from the White House, we have provided a great location for our clients to engage with us!