Fish IP Law LLP

Can I rely on the designation of assignment shown on a patent? A: No. One should never rely upon the designation of assignee as set forth on the face of a patent. First, the patent office obtains the assignment information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct. The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee... transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment. Second, the patent is never altered after it is published. Information that was correct at one point in time may well be superseded down the road. Third, even if the assignee information is correct, one cannot know from the face of the patent what rights were assigned. It might well be that only licensed rights were assigned, or that such rights are subject to a reversion. Learn more at https://buff.ly/2ZKL3Vq

Q: Should I record my assignments in foreign countries? A: Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office. Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages. Learn more at https://buff.ly/2ZKL3Vq

Williamson v. Citrix Online (Fed. Cir. 2015) A "distributed learning control module" is a nonce phrase (a wastebasket term that doesn't designate specific structure), and therefore should be interpreted narrowly as means-plusfunction language. https://buff.ly/2YpMwAJ #MuseumofPatentArt #FishIPLaw

Have a safe and merry Christmas, from your friends at Fish IP Law! https://buff.ly/2qcyhmF

Can I rely on the designation of assignment shown on a patent? A: No. One should never rely upon the designation of assignee as set forth on the face of a patent. First, the patent office obtains the assignment information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct. The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee... transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment. Second, the patent is never altered after it is published. Information that was correct at one point in time may well be superseded down the road. Third, even if the assignee information is correct, one cannot know from the face of the patent what rights were assigned. It might well be that only licensed rights were assigned, or that such rights are subject to a reversion. Learn more at https://buff.ly/2ZKL3Vq

Visit our website to browse our full collection of Patent Beast comics https://buff.ly/2UOJvec #Costs6 #PatentBeast

For an invention to be patentable, it has to be both new and what’s known as ‘non-obvious’. Watch our recent FishFAQ video and learn about what makes an invention patentable! https://buff.ly/2rumP6O

Q: What happens if the name of the assignee changes? A: One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form. In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees). https://buff.ly/2ZKL3Vq

Ariosa v. Sequenom, Inc. (Fed. Cir. 2015) Tests based on presence of fetal DNA in maternal blood are not patent-eligible subject matter. DNA in maternal blood is a natural phenomenon, and creating the assay is routine. https://buff.ly/2GBrlVx

Teva v. Sandoz (2015) Appeals courts should review claim construction de novo. https://buff.ly/2YpMwAJ #MuseumofPatentArt #FishIPLaw

Q: Where can I look up assignment records? A: Assignments records at the USPTO are available for public inspection, but only for patents and published applications. One can search by reel/frame number, patent or publication number, and assignor or assignee name. The underlying documents are not available for download, but can be ordered from the assignment branch. Paper mail requests can take months, but faxed requests are usually filled within a day or two. https://buff.ly/2ZKL3Vq

We're celebrating that #FridayFeeling with another round of the Patent Beast! #Costs4 https://buff.ly/38lzV71#PatentBeast #FishIPLaw

While patenting an idea isn’t free, Fish IP Law can guarantee that we will work with you to help keep your costs down and your inventions thriving! https://buff.ly/2N6YsE3 #PatentBeast

Q: Should I record my assignments in foreign countries? A: Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office. Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages. Learn more at https://buff.ly/2ZKL3Vq

Q: What happens if I can't get a signature from the inventor? A: The Patent office will proceed as if the signature, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached. Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights. In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished. Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact. https://buff.ly/2ZKL3Vq

Kimble v. Marvel (US 2015) A patent holder cannot extend patent license fees beyond the life of the patent. #MuseumofPatentArt #FishIPLaw https://buff.ly/2GBrlVx

Don’t waste your money with patent firms like BOMB that are just out for your money and have no interest in the viability of your patent! https://buff.ly/2qcyhmF #PatentBeast

Have a safe and merry Christmas, from your friends at Fish IP Law! https://buff.ly/2qcyhmF

Working with a new patent is all about patience! #Costs3 https://buff.ly/38lzV71

Teva v. Sandoz (2015) Absent clear error, appeals courts should not review findings of fact de novo. #MuseumofPatentArt https://buff.ly/2YpMwAJ

As an innovator looking to improve the world, you deserve an IP firm that cares about your projects and isn’t out to overcharge its clients https://buff.ly/2pcrrgb #FishIPLaw

Q: Are assignments in the U.S. effective in foreign countries? A: It depends on the wording of the assignment and the recordation laws of the foreign countries. Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications. Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country. Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments. https://buff.ly/2ZKL3Vq

Q: How do I record an assignment? A: Preparing assignments is usually a simple matter of filling in the blanks of a form. Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in Strategic Patenting. Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document. The recording branch does not generally read the documents to verify the content. https://buff.ly/2ZKL3Vq

While patent searches aren’t free, Fish IP Law guarantees that your money will be put to work in the most efficient and friendly manner! https://buff.ly/2N6YsE3 #COSTS

In our recent FishFAQs video, we explain the ins and outs of performing a patent search! https://buff.ly/2NvWvAe #FishFAQs

Commil v. Cisco (2015) A "good faith belief" in invalidity of a patent is not a valid defense against a charge of willful infringement. https://buff.ly/2GBrlVx

Find an IP firm like Fish IP Law that will treat you with honesty and integrity! https://buff.ly/2pcrrgb #PatentBeast

Q: Do I need to record the assignment? A: Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so. https://buff.ly/2ZKL3Vq

Medtronic, Inc. v. Mirowski Family Ventures, LLC (2014) A patent holder suing a licensee of the patent for infringement must still bear the burden of proving infringement. https://buff.ly/2YpMwAJ

Q: How much does it cost to assign a patent application? A: Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office. Note that the office charges US$ 40 for each patent or patent application listed on the recordation form. Thus, if an assignment references a family of 5 patent applications, the recordation fee is US$ 200. Of course, paralegal charges would also apply, and possibly attorney time. https://buff.ly/2ZKL3Vq

Back at it again with another episode of the Patent Beast, featuring the infamous BOMB IP Law Firm! https://buff.ly/2pcrrgb

Q: Can I assign a patent after it has already issued? A: Absolutely. Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues. https://buff.ly/2ZKL3Vq

Halo Electronics, Inc. v. Pulse Electronics, Inc. (2016) Culpable behavior must be egregious to justify enhanced damages. Requiring a finding of objective recklessness is too narrow, and merely basing enhanced damages on behavior that stands out from the rest is too broad. https://buff.ly/2YpMwAJ

Q: Do I need to re-assign when filing divisionals, CIPs? A: It is not technically necessary to re-file assignments for divisional or straight continuation applications. A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications. In the case of a substitute or continuation-in-part application, a... prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee. https://buff.ly/2ZKL3Vq See more

Looking for a patent attorney that can expertly draft patents and can creatively brainstorm the white space? Fish IP Law has you covered! https://buff.ly/2NQqOU0

In the most recent FishFAQ video, Robert Fish discusses the many rights and limitations of owning a patent! https://buff.ly/2p3rKdl

Akamai v. Limelight (2014) Indirect infringement can only exist if there is at least one entity that directly infringes by satisfying all of the elements of a claim. https://buff.ly/2YpMwAJ

Q: Do investors commonly assign provisional applications? A: Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications. See the previous FAQ. Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications. That is a dangerous strategy. In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company. https://buff.ly/2ZKL3Vq

It doesn’t take a PhD to write you patent application! Just an experienced and knowledgeable patent professional that has your success in mind! https://buff.ly/2NQqOU0

Dr. Kaori Watanabe is a registered patent agent who recently began working with Fish IP Law, LLP. Drawing on her extensive background in biomedical research, Kaori regularly assists senior attorneys and patent agents prosecute patent applications in the pharmaceutical and biotech fields, as well as the fields of medical devices. Kaori conducts research and prior art searches, and assists senior attorneys and agents drafting responses to Office actions from the USPTO. Click here to read more about Dr. Wantanabe https://buff.ly/2UFOOuB

Alice v. CLS Bank (2014) Regardless of how cleverly patent applicants wordsmith the claims, the language cannot be so broad as to disproportionately tie up the use of the underlying ideas. To promote the arts and sciences there must be proportionality between the scope of the claims and the scope of the contribution to technology. https://buff.ly/2YpMwAJ

Q: Do I need to assign my patent application? A: An important corrolary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name. Investors are usually unhappy with that arrangement, but there can be signifcant advantages. One major advantage is that the patent holder is a necessary and indispensable to any litigation over patent validity. Any competitor trying to invalidate the patent must file the action in the district where the inventor resides. https://buff.ly/2ZKL3Vq

Fish IP Law attorneys are cost effective and truly care about the success of your patent process, very much unlike the #BOMB firm here. https://buff.ly/2NQqOU0

Justin Jimenez is a Law Clerk who focuses primarily on patent prosecution, and specializes in all matters related to computer science and software technologies. He also served at the United States Patent and Trademark Office, where he drafted final and non-final office actions for both AIA and Pre-AIA patent applications. https://buff.ly/31wN7BN

Nautilus v. BioSig (2014) Claim language is no longer sufficiently definite if it is "possible" for a #court to construe the claim. The #claims must "clearly indicate" to a competitor what the scope of the claim is. #FishArt #MOPA https://buff.ly/2YpMwAJ

Q: What are the differences between license and assignment? A: A license is a grant (assignment) to the licensee of various licensed rights...the first recordation of a license may be recorded as a license, while the assignment of those same licensed rights to another entity may be recorded as an assignment. https://buff.ly/2Ly3klz

Fish IP Law is dedicated to providing our clients and supporters with comics, Q&As, informative videos and symbolic art to help explain the messy and complicated world of Patent Art. Beat that Bomb Firm! #PatentBeast #Bomb https://buff.ly/2FMHoPE

Invenn by Loci is #revolutionizing the way #inventors move through the patent process! Click on the link to learn how Invenn can help you identify your own #patent using a compounding search process.

Jennifer Shih is a litigation associate in the firm’s Silicon Valley office. She represents clients in an array of litigation matters, including district court and post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Her many accomplishments include her being the second chair in a 5 day jury trial that resulted in a $7.1 million judgment, being selected as a 2017 Northern California Rising Star, Intellectual Property Litigation, and achieving the prestigious American Bar Association Young Lawyers Division Scholarship in 2014. https://buff.ly/332JW6v

Ass'n for Mol. Pathology v. Myriad (2013) Tests based on breast cancer mutations are not #patentable because the mutations were merely natural phenomena, and creating an assay based on that principal is routine. https://buff.ly/2GBrlVx

Q: What is the MPEP? A: The MPEP is the Manual of #Patent Examining Procedure, which is a compendium of all of the patent statutes, rules and regulations. Click here to ask your own question https://buff.ly/2OtLB1K

Unlike the Bomb Patent firm, Fish IP Law provides its clients with relevant information and tools needed to start creating their first patent. https://buff.ly/2FMHoPE

In this month’s FishFAQ video, we dive into the complicated topic of divisionals in patentlaw! https://buff.ly/2Mrv9wk

Chris Novak joined Fish IP Law as a Patent Agent in 2017. With nearly twenty years of experience preparing and prosecuting patent applications for high-value startups, and mid-to-large size companies. Chris’ expertise provides him the inherent ability to serve the needs of Fish IP’s wide range of clients. In his free time, Chris enjoys cycling, missionary work, and studying Mandarin. https://buff.ly/2LAnX0t

Mayo v. Prometheus (2012): Claims reciting a natural phenomenon, without something more, fail to recite patent eligible subject matter. https://buff.ly/2YpMwAJ

Q: Should I use a patent agent? A: Patent agents are licensed to practice before the patent office. In many cases, agents are every bit as good as the typical patent attorney, and in some cases, they are far superior. Issues do sometimes arise with respect to the purpose for which a patent agent is performing a particular task. ... https://buff.ly/2Ly3klz

Forget about providing their customers with valuable information and advice! It’s all about the money for the BOMB firm! https://buff.ly/2FMHoPE

When Bob came to China for the first time in early 2018, he saw roads, airports, patent folks, and his old friend Uny Cao that’s me, a client for more than a decade and an intellectual pal. My career arc from a technologist to someone who holds a job in the intellectual property industry, was largely because I met Bob and learned patenting as a technologist. These days with China’s deepening appreciation of intellectual property, I very much look forward to learning more from and working more with Bob and Fish IP Law, with an enlarging circle in China of patent agents, attorneys, technologists, startups and investors. - Uny Cao, Vice President, Zhejiang Intellectual Property Exchange Center Co., Ltd. https://buff.ly/325CvL2

Brittany Nobles. J.D. is a Law Clerk leveraging over fifteen years of market, investigative, legal, and scholarly research experience applied across various industries and interests. At Fish IP Law, Brittany works primarily with the litigation team conducting legal research, pre-suit investigations, and investigative research. Outside the office, Brittany shoots archery and participates in Orange County Bowhunting League. She also enjoys rugby, outdoor activities, and working on art projects. https://buff.ly/2FJeTlY

Bilski v. Kappos (2010): The machine or transformation test is not the only test that can be used to determine subject matter eligibility. Reading between the lines of the decision, patent eligible claims must recite some real-world effect, not just pushing bits around a computer. https://buff.ly/2YpMwAJ

Q: Should I go through an invention company? A: Probably not. The invention companies we have seen charge way too much for way too little. The same goes for the various law office firm mills that file hundreds of applications each year. You are much better off with a smaller firm who will really take an interest in your case. https://buff.ly/2Ly3klz

Earlier this month, Bob Fish attended the IP Counsel Café in Palo Alto, CA. The conference focused on the increasingly connected yet foreign world of intellectual property. Click on the link to learn more! https://buff.ly/2FHUVrF

Like many other patent firms out there, BOMB’s claim to fame is their size and power, rather than their quality of work!

We met Robert several years ago at INTA annual meeting and have been working with him since then. We have found Robert and his team to be very responsive and flexible to our client’s needs.We hope to work mutually on many more assignments. - Dr Niti Dewan, Patent & Trade Mark Attorney https://buff.ly/325CvL2

Brian Kim is an associate attorney who focuses his practice on high quality patent prosecution. Brian’s knowledge and experience spans a variety of technological fields, including artificial intelligence, data cryptography, biomedical devices and robotics. Brian’s extensive experience with major computer technology companies and large law firms provide him the skills and perspective to skillfully service Fish IP’s wide variety of clients. In his free time, Brian enjoys outdoo...r activities such as hiking, golfing, and snowboarding. He also likes to cook and travel. https://buff.ly/2YprFxp

KSR v. Teleflex (2007): A Person Of Ordinary Skill In The Art (PHOSITA) is considered to have an ordinary level of creativity. Where there are a relatively small number of permutations, a PHOSITA would have thought of them all. https://buff.ly/2YpMwAJ

Q: What if my idea was patented, but the patent expired? A: Once a patent expires, the claimed subject matter falls into the public domain, and neither the inventor nor anyone else can recapture the lost patent rights. This goes back to the concept that old ideas are not patentable. If an inventor wants to extend his patent protection, he must devise a new twist to the old idea, and then try to patent that new twist. In practice, this is very common. Inventors and compani...es often hold multiple patents covering many different aspects of the subject matter. Patent attorneys often refer to this as a patent portfolio or a patent thicket. https://buff.ly/2Ly3klz

For this #FridayFeature we are happy to feature Steven Castaneda! Steven Castaneda is an associate attorney who specializes in domestic and foreign patent prosecution in a variety of technical disciplines, including chemical and mechanical engineering. He also provides needed support to senior attorneys and partners on other IP-related matters, with a focus on patent and trademark law. He offers strategic and targeted solutions that align with clients’ individual goals and portfolio needs. https://fish-ip.com/steven-castaneda-esq/

Not every IP Law firm operates with integrity and care like Fish IP Law! Check out our latest Patent Beast comic as the boys at BOMB Firm discuss unethical rebranding! http://patentbeast.com/category/bomb/

As with most technology businesses today our IP portfolio is one of our most critical assets. This is exactly why we work with Fish IP Law they hit all the marks in respect to experience, knowledge, professionalism and innovation. Where they really excel however is the extensive background knowledge they have beyond the law physics, engineering, applied materials you name it this is one smart group of people. They can relate and understand our innovations at a level that you don’t always find in an IP firm and that makes them more than just a resource it makes them an invaluable part of our team. - Chris Almida, Chief Operating Officer of Torus Tech https://fish-ip.com/testimonials/

Burroughs patented the first practical adding and listing machine in 1885. This was his second patent, focusing on independence between movement of the indicators and movement of the keys. Click on the link to view our full FishArt collection!

Q: What if my idea is old but no one ever patented it? A: Old ideas are not patentable. It makes no difference whether the idea was previously patented, or whether the idea was patented and the patent expired. Nor does it make any difference whether the idea was ever embodied in a product on the market. To the extent that an idea is old, it is not patentable. On the other hand, inventors often devise some new twist to an old idea, and that extra little bit is what results in a successful product in the marketplace. In those instances, the new twist can be patented. https://fish-ip.com/before-filing-faqs/