Patent Pending Made Simple

Outlier Patent Attorneys

Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process read less
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Episodes

3. Patentability vs. Infringement
Aug 24 2023
3. Patentability vs. Infringement
For transcript and show notes, visit: https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes/3 In this episode of Patent Pending Made Simple Podcast, Jamie and Samar discuss the differences between patentability opinions and patent infringement opinions. What is the difference, and when should you think about these concepts in your patent journey. Introduction to the podcast (00:02) Hosted by Samar Shah and Jamie Brophy Catching Up (00:08-00:50) Topic: Differences between patentability and patent infringement (00:51) Initial discussion of the two concepts (01:13-02:41) Just because you get a patent on something does not mean that you're not infringing on something, so you could still be infringing on somebody else's patent. Is having a patent a good defense to infringement? ⁠4:02⁠ A client has a patent and they can still infringe on somebody else's patent, both of which can happen simultaneously. Having a patent is not a good defense to patent infringement. Courts may not allow you to present that kind of evidence to a jury. The different types of opinions that practitioners can draft: patentability, non-infringement, and freedom to operate. Patentability opinions are straightforward, while infringement opinions are more complicated. The importance of a patentability opinion. 7:57 Patentability analysis gives a good idea of whether a patent application will be rejected or not. It also gives an idea of what elements to focus on in the application to get a patent. Litigation can cost upwards of $100,000 on the search itself. The patentability opinion and the infringement opinions are very very different. In infringement, you have to interpret the claim language and determine what is meant by each of those terms in the claims and that is kind of complicated. The importance of non-infringement opinions. 12:09 When writing a non-infringement opinion letter, the quality of the opinion letter becomes very important, and the level of analysis that has been done is very important. What to recommend to clients who want to know if they are infringing on something, and how to handle it. Advice to those who want to do an initial search to see if they infringe someone else's patent before launching something. Information disclosure statements ⁠16:50⁠ Software patents are written often in a way that is indecipherable to clients. It is hard for the client to make a decision on whether the disclosure is relevant to their invention. Information Disclosure Statements: The information disclosure statement is an ethical obligation to tell the patent office about references to the invention. Cost considerations and ethical obligation to disclose relevant references (17:49-18:12) Working with an attorney to establish search parameters and track references (19:01-19:23) Conclusion and Closing Remarks (19:40) Recap of key points discussed (19:49-19:57) Disclaimer about legal advice and opinions expressed (20:27-20:44) --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message
2. Patent Process from Start to Finish
Aug 3 2023
2. Patent Process from Start to Finish
Are you curious about what the patent process looks like from start to finish? What happens after you file your patent application? What deadlines and expectations should you have? Join us on on this episode of Patent Pending Made Simple as Jamie and Samar walk you through the lifecycle of a patent. Visit our show notes page for a transcript and resources: https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes/2 Topics we cover: • The provisional application is an informal application that acts as a placeholder to secure an early filing date. It gives inventors up to 1 year to decide if they want to pursue a full patent application. • Within 1 year of filing the provisional, inventors must file a non-provisional or PCT application to claim priority to the provisional filing date. • After filing a non-provisional application, the patent office will typically issue a rejection within 18-24 months. This is a normal part of the patent prosecution process. • Inventors can respond to rejections, amend claims, and make arguments to try and overcome the rejections. This can go back and forth multiple times until the application is either abandoned or allowed. • International filings via the PCT route can allow inventors to enter national phase in countries like Europe and Canada. However, international filings are expensive and the US is often the most lucrative market. --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message
1. Intro & Patent Frameworks
Jul 18 2023
1. Intro & Patent Frameworks
Episode 1: Intro to the Patent Pending Made Simple Podcast, and its hosts: Jamie Brophy and Samar Shah. In this episode, Jamie and Samar discuss frameworks that you (the inventor) should use when you think about your patent application as well as frameworks for protecting your innovations. Episode 1 - What is a good patent application Introduction to the podcast. 0:00 Welcome to the Patent Pending Made Simple Podcast. Jamie's background and goals for the podcast. Samar's background. What makes for a good patent application? 3:03 What makes for a good patent application. Working with a small boutique firm. The benefits of working with an inventor focused patent practitioner. The first step to getting a patent 6:33 What are the physical characteristics of your invention? Benefits and advantages of an invention. Conceptual framework for a patent application 8:37 Layers of abstraction What aspects of the invention are essential? The importance of clarity in a patent application. 11:17 Importance of being as clear as possible. Clarity, precision, and best mode. Writing to different audiences ⁠16:33 Patent litigation in the US. How Inventors should review patent applications 19:17 Patent documents are difficult to read. Collaboration with clients leads to better patent documents. Make sure the claims are right. 21:43 Having a strategic perspective to the claims. Big picture perspective on a patent application. Next time on patent pending made simple. --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message