Patenting for Inventors

You cannot get a design patent or a trademark registered for something that is considered "functional" -- but here's the tricky part: what counts as "functional" depends on whether you're talking about trademark law or patent law. Kason Industries Inc. recently learned this the hard way when it was denied trademark registration, but received a design patent for its same metal leg product. Learn why the difference in the definition of "functional" can make your break your ability to get a trademark registered or a design patent issued.   Connect with Adam Diament E-mail: [email protected]   Website: https://www.nolanheimann.com/legal-team/adam-diament   Phone/Text: (424)281-0162   YouTube: https://www.youtube.com/channel/UC5cTADZzJfPoyQMjnW-rtRw Instagram: https://www.instagram.com/trademarkpatentlaw/   LinkedIn: https://www.linkedin.com/in/adam-diament-j-d-ph-d-180a005/   Amazon Book Page: https://www.amazon.com/stores/author/B005SV2RZC/allbooks?ingress=0&visitId=831aff71-513b-4158-ad73-386ede491e93

There are many ways to write patent claims. One way is called a Jepson-style patent claim, where you explicitly admit what is not inventive about your claim, and then state the part or parts that are inventive. It's not named after the singer named Carly Rae Jepsen, but what if Carly Rae Jepsen wanted to patent a method to get a crush to fall in love with her by using the techniques used in her hit song from 2011, "Call Me Maybe"? How would she go about writing her patent claims in the Jepson style of claim drafting? And how would those Jepson-style claims be different compared to the traditional way that patent claims are written in the United States? Listen to this episode to find out!   Connect with Adam Diament E-mail: [email protected]   Website: https://www.nolanheimann.com/legal-team/adam-diament   Phone/Text: (424)281-0162   YouTube: https://www.youtube.com/channel/UC5cTADZzJfPoyQMjnW-rtRw   Instagram:  https://www.instagram.com/trademarkpatentlaw/   LinkedIn: https://www.linkedin.com/in/adam-diament-j-d-ph-d-180a005/   Amazon Book Page: https://www.amazon.com/stores/author/B005SV2RZC/allbooks?ingress=0&visitId=831aff71-513b-4158-ad73-386ede491e93

You cannot get a patent if your invention is obvious. This can be tricky to determine for biotech and pharmaceutical patents. There are competing standards for how this is determined. One is the "reasonable expectation of success" standard, which is a lower threshold than the "predictable results" standard. The Supreme Court refused to hear a case that would have settled this, so we're left with the Federal Circuit's ruling in the case of Vanda Pharmaceuticals vs. Teva Pharmaceuticals. Listen to this episode to learn how these tests can give different results for patentability and what it means for the future biotech and drug patents!

The Patent Office is raising its fees for patents starting on January 19, 2025! To figure out what you actually need to pay for various things can be quite confusing as there are 471 lines of fees that you could potentially owe. I go over some of the main ones that you'll encounter. I think you'll agree that this is probably the most exciting episode of "Patenting for Inventors"!   Connect with Adam Diament E-mail: [email protected]   Website: https://www.nolanheimann.com/legal-team/adam-diament   Phone/Text: (424)281-0162   YouTube: https://www.youtube.com/channel/UC5cTADZzJfPoyQMjnW-rtRw Instagram: https://www.instagram.com/trademarkpatentlaw/   LinkedIn: https://www.linkedin.com/in/adam-diament-j-d-ph-d-180a005/   Amazon Book Page: https://www.amazon.com/stores/author/B005SV2RZC/allbooks?ingress=0&visitId=831aff71-513b-4158-ad73-386ede491e93    

What is a patent post-grant supplemental reexamination? Once your patent has been issued, sometimes you might want to have the Patent Office take a second a look to see if it really should have been issued in the first place. Why would you want to do this? One reason is that it can make invalidating your patent harder to do by others, and second, you can avoid the dreaded "Fraud on the Patent Office." Listen to the episide to find out more!   Connect with Adam Diament E-mail: [email protected]   Website: https://www.nolanheimann.com/legal-team/adam-diament   Phone/Text: (424)281-0162   YouTube: https://www.youtube.com/channel/UC5cTADZzJfPoyQMjnW-rtRw Instagram: https://www.instagram.com/trademarkpatentlaw/   LinkedIn: https://www.linkedin.com/in/adam-diament-j-d-ph-d-180a005/   Amazon Book Page: https://www.amazon.com/stores/author/B005SV2RZC/allbooks?ingress=0&visitId=831aff71-513b-4158-ad73-386ede491e93

There are some tricky situations when it comes to the absolute final time for you to submit a document to the Patent Office. Is the final deadline based on the time zone you're in? Based on the time zone of the Patent Office? Based on whether you submit electronically or mail from the post office? Do international patent applications have different rules from U.S. patent applications? Learn all of this and more with this week's episode!    Connect with Adam Diament E-mail: [email protected] Website: https://www.nolanheimann.com/legal-team/adam-diament Phone/Text: (424)281-0162 YouTube Channel LinkedIn Instagram

If you disclose your product or sell it before you have a patent application on file, you may be barred from getting a patent due to the on-sale bar doctrine. But what if you have a secret METHOD, like a secret way to age steaks to make them more delicious, and you never disclosed or sold that that METHOD even though you sold the steaks? Does the on-sale bar apply to getting a patent for your secret METHOD or just apply to the physical steaks? A new case just cleared up this grey area. Listen to the episode and find out the answer! Connect with Adam Diament E-mail: [email protected] Website: https://www.nolanheimann.com/legal-team/adam-diament Phone/Text: (424)281-0162 YouTube Channel LinkedIn

In this episode I go over Standard Essential Patents (SEPs) are FRAND (Fair, Reasonable, and Non-Discriminatory) terms.   If someone comes up with a patent for a technology, and that technology because a standard for an industry, then the company that owns the patent MUST adhere to FRAND principals by licensing it on a "Fair, Reasonable, and Non-Discriminary" basis. Listen to the episode for more details and examples!   Connect with Adam Diament E-mail: [email protected] Website: https://www.nolanheimann.com/legal-team/adam-diament Phone/Text: (424)281-0162 YouTube Channel LinkedIn

A new treaty was adopted by the World Intellectual Property Organization about using knowledge and resources from indigenous people. This may have an effect on drug patents, where the initial knowledge of the drug comes from indigenous cultures, and the plants they use to treat ailments.  Listen to this episode to learn more about the treaty and how it affects disclosure requirements when you file a patent application. ----------------- Connect with Adam Diament E-mail: [email protected] Website: https://www.nolanheimann.com/legal-team/adam-diament Phone/Text: (424)281-0162 YouTube Channel LinkedIn  

There is a new standard for determining whether a design is obvious (and not patentable).  The "old" rigid test called the Rosen-Durling test has been supplanted by a more flexible approach under the recently decided case of LKQ Corporation vs GM Global Technology Operations LLC. In this episode, learn how this new test is applied and why more of your design patent applications might get rejected for obviousness. ------- E-mail: [email protected] Website: https://www.nolanheimann.com/legal-team/adam-diament Phone/Text: (424)281-0162 YouTube Channel LinkedIn