Licenses - Introduction

Posted on January 29, 2010 by Richard Gearhart

One of the most common ways an inventor can take advantage of their patent is through licensing. A license gives another rights to make, use or sell an invention. However, the patent holder retains ownership of the patent.   A license is a bit like a renting a piece of real property. The owner still owns it, but lets another use it, usually for a profit. When it’s a real property license, the payment is called “rent”. If it’s a patent that’s being licensed, the property is called a “royalty”.

Licenses allow the inventor to share in the profits of the manufacturer or producer of the invention. Often, the license will be based on the number of units sold by the producer. This arrangement is advantageous for the producer, since the producer only pays the licensor based on the producer’s sales. 

 

The license can take many different forms and can be tailored to the needs of the parties to the transaction. For example, the license can be exclusive or non-exclusive to the party receiving the license. If the license is exclusive, then only the party receiving the license can make, user or sell the invention, and nobody else. If the license is non-exclusive, then the owner of the patent can license it many different parties.

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Patent Infringement

Posted on January 25, 2010 by Richard Gearhart

 

What happens if someone infringes on another person’s patent? The inventor who holds the patent can sue in court for damages. If a judge finds that patent infringement has occurred, the court may rule that the infringing party discontinue production and sales of the product. The court may also award damages to the person whose patent was infringed.  Often the cases are settled by the patent attorneys without going to trial and the infringing party pays the other a royalty for the use of the technology.

If you are accused of infringement, or if you find someone infringing your patent, a patent attorney can help you decide how to proceed.

A patent is only valuable if it is enforceable and can withstand the rigors of litigation. Likewise, the patent professional you choose for your patent needs should have an understanding of what can happen to your patent if it ends up in court. There is no substitute for an understanding of how your patent will be challenged by an alleged infringer.

At Gearhart Law, we have many years of litigation management experience, and have learned first hand how your competitors will seek to avoid or invalidate your patent in court. This experience is invaluable in helping you to achieve the best possible protection for your invention.

 

 

 

For example, in the case of Wesley Jessen v. Bausch & Lomb, Richard Gearhart, Esq. was involved in every aspect of the case, including discovery, motions, trial, and appeals, and with the help of other attorneys obtained an injunction preventing Bausch & Lomb from selling it’s product for the life of the patent.

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How do I File a Patent?

Posted on January 22, 2010 by Richard Gearhart

 

Many of my clients in New Jersey ask about the steps for filing a patent. There are three main steps to patenting an invention.

*       First, a global or US patent search is conducted to make sure your invention is original.

*       Second, the patent must be drafted and filed with the patent office.

*       The final step is to prosecute the patent.

There are many databases, including the US Patent and Trademark Office (USPTO) website which list published patents. Searching the USPTO site for patents on inventions similar to yours (prior art) is the first step. In order to get an invention patent, your invention must be unique enough to be allowed by the patent office. An examiner at the patent office looks at all the prior art when determining whether to allow your patent. Experienced patent attorneys will make a judgment on what they think the USPTO will allow when evaluating your patent application. The patent attorney will then write your application in a way to maximize your chance of success and, after your review, will file it with the USPTO.

The next step in getting an invention patent is prosecution. The USPTO does not grant a patent just because the paperwork has been filed; the patent attorney must argue the points of the patent with the patent examiner and convince him or her that the invention meets all of the USPTO requirements. Your chances of success in this step are increased if you use an experienced patent attorney who has dealt with the USPTO on patent inventions and is familiar with their requirements.

Need to get an invention patented or conduct a US patent search? Call Gearhart Law today.

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