Determining the Difference Between Ornamentality and Functionality The fundamental difference between design patents and utility patents is that design patents protect how an article looks; whereas, utility patents protect the way an article is used and works. In other words, design patents protect the purely ornamental characteristics of an article. Simple enough, right? Wrong. Sometimes […]

Establishing Patent Infringement Venue Today and in the “New Normal” In 2017, The United States Supreme Court decided that a 1957 opinion is still valid and still limits venue choices for patent infringement actions under 28 U.S.C. § 1400. See TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ (2017) (citing Fourco […]

A Brief Summary of the Patent Process Whenever we meet with a new client who has not gone through the patent process before (and even when they have), we make sure to give them a brief summary of what they can expect. The patenting process involves multiple steps. Depending on the invention, the prior art […]

The Importance of Stepping Into the Shoes of the Person of Ordinary Skill in the Art (POSITA) All too often patent examiners and patent practitioners give lip service to the importance of the “person of ordinary skill in the art” (“POSITA”) when discussing issues such as obviousness rejections, the meaning of claim terms in litigation, […]

One particularly frustrating rejection that patent applicants can be faced with is a rejection alleging obviousness based on “design choice.” These rejections arise when one or more elements of an invention are not disclosed in the prior art, but the examiner nonetheless alleges that there are only “minor” differences between the claims and the prior […]

In many cases, when patent examiners cannot establish a prima facie case of obviousness using existing prior art, they will turn to “intended use” as a catch-all to try to complete their rejections. Intended use-based rejections can be quite subjective, and as such are subject to abuse. However, with proper arguments, these rejections can be […]