Tag: patent application

Patentable vs. Infringing: What’s the Difference?

The patent system is intended to spur innovation, incentivize inventors, and protect against infringement. One of the big challenges innovators face in this realm is understanding patentability and what constitutes infringement.

Criteria for Patentability

Patentability requires consideration of three key criteria: novelty, non-obviousness, and usefulness (or utility). The requirement of utility is a de minimus requirement and is met if any use can be had from the claimed invention. To be patentable, an invention must be novel meaning it cannot be part of the existing body of knowledge known as “prior art.” It must also be non-obvious meaning it cannot be an obvious extension of existing technologies or solutions when viewed by a person of ordinary skill in the art.

The scope of patentable material is wide, encompassing everything from new chemical compounds to software methods, and from mechanical devices to biotechnological processes. However, there are limitations. For instance, abstract ideas, natural phenomena, and artistic creations are in the public domain and are ineligible subject matter.

Patent Infringement

Patent infringement occurs when an individual or entity makes, uses, sells, or imports a patented invention without permission from the patent holder. While this may sound straightforward, it’s not; determining infringement is often a complex matter requiring detailed legal analysis.

There are several forms of infringement to be aware of:

    • Direct Infringement: The infringing product or process directly falls under the scope of the patented claims. The doctrine of equivalents is also direct infringement in which a product or process contain elements identical or equivalent to each claim element of the patented invention.
    • Indirect Infringement: Where a third party contributes to or induces others to infringe.

Distinguishing Between Patentable and Infringing

The distinction between what is patentable and what is infringing is defined by the scope of the patent claims. For instance, a new invention that improves upon a patented product may still be patentable even though the envisioned product itself may infringe on the patented claims. On the other hand, a product that is not patentable may also infringe granted patents.

Legal Consequences and Remedies

The consequences for infringing on a patent can be severe, ranging from monetary damages to injunctive relief.

    • Monetary Damages: Courts can award significant damages to the patent holder, often based on the what the court determines to be a “reasonable royalty” but may also consider profits lost due to the infringement. In cases of willful infringement, these damages can be trebled.
    • Injunctive Relief: In some cases, courts may issue an injunction to prevent further infringement. This can halt the production or sale of the infringing product, having a substantial impact on the infringer’s business.
    • Legal Costs: The cost of litigation in patent cases can be substantial, adding another layer of consequence for the infringer.

Given the stakes involved in patent infringement, it’s crucial for companies and individuals to take proactive steps to avoid it, including consulting with experienced legal counsel.

Conclusion

Understanding the difference between patentable inventions and infringing actions is critical in our innovation-driven economy. By grasping the distinctions, you can harness the power of intellectual property while avoiding the pitfalls of infringement.

If you or your business is interested in intellectual property services, such as drafting patent applications, conducting freedom to operate opinions, analyzing patentability, or determining infringement risks, contact Andrew G. Martin or your Fraser Trebilcock attorney.

This alert serves as a general summary and does not constitute legal guidance. Please contact us with any specific questions.

Andrew G. Martin is an experienced registered patent attorney with history working in the automotive, electrical, and agricultural industries. He regularly advises startups and small businesses on the patent and trademark prosecution process, assisting clients from start to finish. You can reach him at 517.377.0834 or at amartin@fraserlawfirm.com.

Five Stories That Matter in Michigan This Week – October 27, 2023

  1. EEOC Publishes Proposed Harassment Guidance

The U.S. Equal Employment Opportunity Commission (EEOC) recently published its long-anticipated proposed guidance on “Enforcement Guidance of Harassment in the Workplace.” Among other things, the guidance reflects the U.S. Supreme Court’s 2020 Bostock decision, which extends the meaning of “sex” in Title VII to sexual orientation and gender identity; provides that sex-based discrimination includes harassment based on pregnancy, childbirth, and other related medical conditions, such as conception or abortion; and addresses how electronic communication (including social media) can create a hostile work environment.

Why it Matters: The proposed guidance seeks to clarify and address uncertainties and open questions for employers. The opportunity for public comment is available until November 1, 2023.

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  1. Provisional Patent Application Overview

While deciding whether to file a patent application, it is important to consider both your short- and long-term goals in view of your finances and the current state of your idea. Depending on these factors you may be deciding between filing a provisional or non-provisional application.

Why it Matters: A provisional patent application is a type of patent application that serves as a placeholder for a non-provisional patent application, providing the applicant with a priority date for their invention and a one-year window to follow up and file a non-provisional application. Learn more from your Fraser Trebilcock attorney.

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  1. Governor Whitmer Signs Bills Permitting State and Tribal Cannabis Businesses to Engage in Commerce with Each Other

The landscape of the cannabis industry in Michigan continues to evolve as new legislative efforts in Michigan aim to bridge the operational divide between state-licensed cannabis enterprises and tribal cannabis businesses. Two pivotal bills, Senate Bill 179 and Senate Bill 180, were signed by Governor Whitmer on October 19, 2023, creating a collaborative business environment for these formerly siloed entities.

Why it Matters: Prior to the legislation being enacted, state-licensed and tribal cannabis operations in Michigan functioned independently, restrained from mutual commerce and collaboration, including prohibitions on cannabis products being sold between these businesses. The new legislation allows these two distinct parts of the cannabis industry to interact.

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  1. UAW and Ford Announce Tentative Deal

It was announced earlier this week that the United Auto Workers (UAW) and Ford Motor Company reached a tentative deal.

Why it Matters: The tentative deal would give workers an immediate 11% raise, a 25% increase in wages over the next four years, a reinstatement of cost-of-living adjustments, and additional benefits.

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  1. Client Update: Corporate Transparency Act Report of Beneficial Ownership Information

Pursuant to the Corporate Transparency Act of 2021, beginning on January 1, 2024, most newly formed entities will be required to report to the Financial Crimes Enforcement Network information (FinCEN) about the identity of the entity’s beneficial owners and senior officers. And by the end of 2024, nearly all companies will have to report.

Why it Matters: There are roughly 1 million entities in good standing in the State of Michigan and at some time in 2024, most will need to make a beneficial ownership report to FinCEN. While there are numerous exemptions available, their application is limited to large enterprises and businesses that operate in industries that are already highly regulated. Therefore, it is important to remember that the reporting requirement will extend hundreds of thousands of entities. Learn more.

Related Practice Groups and Professionals

Labor, Employment & Civil Rights | David Houston
Intellectual Property | Andrew Martin
Cannabis Law | Sean Gallagher
Business & Tax | Robert Burgee

Five Stories That Matter in Michigan This Week – October 20, 2023

  1. Cannabis Regulatory Agency Seeks to Update Michigan’s Marihuana Rules

The Michigan Cannabis Regulatory Agency (“CRA”) recently filed a Request for Rulemaking to begin the process of updating Michigan’s Marihuana Rules. The CRA is asking for feedback—comments or suggestions can be sent to CRA-AdminRules@michigan.gov.

Why it Matters: The proposed updates, a summary of which can be found here, would impact licensing, social equity, financial compliance, and a host of other issues.

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  1. Provisional Patent Application Overview

While deciding whether to file a patent application, it is important to consider both your short- and long-term goals in view of your finances and the current state of your idea. Depending on these factors you may be deciding between filing a provisional or non-provisional application.

Why it Matters: A provisional patent application is a type of patent application that serves as a placeholder for a non-provisional patent application, providing the applicant with a priority date for their invention and a one-year window to follow up and file a non-provisional application. Learn more from your Fraser Trebilcock attorney.

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  1. CRA Publishes September 2023 Data: Average Price Increases

Per data released by the Cannabis Regulatory Agency, the average retail price for adult-use sales of an ounce of cannabis in September was $100.14, an increase from $94.16 in August. This is still a decrease from September 2022, where the average price was $109.88.

Why it Matters: While the prices of cannabis and cannabis-related products continue to decrease and make consumers happy, growers on the other hand are seeing profits decrease resulting in them seeking ways to halt new licenses to be granted in an effort to steady prices. Contact our cannabis law attorneys if you have any questions.

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  1. Fraser Trebilcock Shareholder Ryan Kauffman Participates in Arguments in Michigan Supreme Court

On Thursday, October 5, Fraser Trebilcock Shareholder Ryan Kauffman participated in arguments in the Michigan Supreme Court on cases brought against higher education universities related to the COVID-19 issue.

Why it Matters: You can view the entirety of the argument by going to the Michigan Supreme Court’s YouTube page, or by clicking here (Mr. Kauffman’s argument starts at 43:40). Read more.

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  1. Business Education Series – Maximizing Productivity: Strategies for More Effective Workdays

Productivity is a habit and it’s something you can become better at every day by choosing the methods and tricks that work for you.

Why it Matters: In the October Business Education Series program, Emmie Musser, Future of Work Strategist with TechSmith, is going to discuss some tried-and-true strategies for more productive and effective workdays. Learn more.

Related Practice Groups and Professionals

Intellectual Property | Andrew Martin
Cannabis Law | Sean Gallagher
Higher Education | Ryan Kauffman

Provisional Patent Application Overview

While deciding whether to file a patent application, it is important to consider both your short- and long-term goals in view of your finances and the current state of your idea. Depending on these factors you may be deciding between filing a provisional or non-provisional application. A provisional patent application is a type of patent application that serves as a placeholder for a non-provisional patent application, providing the applicant with a priority date for their invention and a one-year window to follow up and file a non-provisional application.

Whereas, a non-provisional patent application is the formal patent application submitted to the United States Patent and Trademark Office, which offers the opportunity for patent rights. While a provisional patent application does not guarantee patent protection, it can be a valuable tool for inventors and businesses to “get their foot in the door” and begin the patent process.

Here are some reasons why provisional patent applications are important:

  1. Establishing priority – A provisional patent application establishes a priority date for your invention, which can be important in establishing your ownership of the invention in case of a legal dispute. This priority date also gives you a one-year window to file a non-provisional patent application and claim priority over any subsequent applications.
  2. Delaying expenses – Filing a provisional patent application can be less expensive than filing a full patent application. It also allows you to delay some of the costs associated with a full patent application, such as paying for a formal patent search or hiring a patent attorney.
  3. Protecting intellectual property – A provisional patent application allows you to disclose your invention to potential investors, partners, and customers without risking the loss of your patent rights. This is because provisional patent applications are not published, which means that the details of your invention remain confidential until you file a non-provisional patent application.
  4. Providing time to refine your invention – A provisional patent application gives you a year to refine and develop your invention before filing a full patent application. This extra time can be useful for making improvements to your invention, testing it in the market, or exploring potential partnerships.
  5. Enhancing marketability – A provisional patent application can enhance the marketability of your invention by demonstrating that you have taken steps to protect your intellectual property. This can make your invention more attractive to investors and potential partners. Additionally, once a provisional or non-provisional application is filed, you may advertise that your invention is “patent pending.”

It’s important to note that a provisional patent application is not a substitute for a full patent application. A provisional application does not result in a granted patent and must be followed by a non-provisional application within one year to maintain priority. However, a provisional patent application can provide valuable benefits and should be considered as part of an overall intellectual property strategy.

If you or your business is interested in intellectual property services, such as drafting patent applications, contact Andrew G. Martin or your Fraser Trebilcock attorney.

This alert serves as a general summary and does not constitute legal guidance. Please contact us with any specific questions.

Andrew G. Martin is an experienced registered patent attorney with history working in the automotive, electrical, and agricultural industries. He regularly advises startups and small businesses on the patent and trademark prosecution process, assisting clients from start to finish. You can reach him at 517.377.0834 or at amartin@fraserlawfirm.com.