Hansen IP Law PLLC

01/27/2025

In our January newsletter, we discuss our new series of patent videos on TikTok and YouTube Shorts as well as strategies for patenting web-based systems that involve multiple actors given the "divided infringement" problem they sometimes present.

01/01/2025

We started a series of Tik Tok videos on patent. Check it out!

35 likes, 23 comments. “Introduction to Tik Tok series on patent law for start-ups and entrepreneurs.”

12/23/2024

Happy Holidays from Hansen IP Law! This month we have some tips for developing your invention so it is ready for patenting.

https://conta.cc/4fsHDO0

Email from Hansen IP Law PLLC News and IP Info from Hansen IP Law     December 2024 NEWSLETTER Happy Holidays! December 23, 2024 – We hope you all have a happy and healthy holiday season and look forw

12/21/2023

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News and IP Info from Hansen IP Law     December 2023 NEWSLETTER Happy Holidays! December 21, 2023 – We just want to take this time to wish all of you a very happy holiday season. We are very grateful

12/20/2023

I've had clients complain about their competitors getting patents that are "overly broad" or which shouldn't have been issued at all. This video explains some key features of the patent examination process which can cause this to occur.

Patent Attorney Steve Hansen explains how overly broad patents sometimes get issued by the US Patent and Trademark Office

10/11/2023

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News and IP Info from Hansen IP Law     October 2023 NEWSLETTER Steve Hansen named Michigan “Super Lawyer” in Intellectual Property for 2023 October 11, 2023 – Hansen IP Law is pleased to announce tha

06/28/2023

Although we do not litigate patent cases, we do partner up with firms that do. One thing we have not seen very often is patent litigators who challenge the validity of a patent because its claims encompass embodiments that are not enabled or sufficiently described to indicate that they were within the scope of what is invented.

Patent drafters often claim an invention "as broadly as the prior art will allow." That means the claims can cover vast numbers of embodiments that are not specifically discussed in the patent. In general, there is nothing wrong that. Patent claims almost always go beyond the specific embodiments in the patent, and in our experience, almost all patent cases involve claims that encompass an embodiment or example that was not specifically disclosed.

However, there is a limit to all of this, and the Supreme Court (in an 8-0 decision) reinforced it recently in Amgen v. Sanofi (Slip Op., Case No. 21-757 May 18, 2023), . A patent must enable the full scope of what is claimed. It is not sufficient to simply teach a few examples IF that claims cover many other examples that could not be practiced without "undue experimentation."

The problem of claiming non-enabled embodiments is particularly acute in the life sciences and chemical arts which tend to be more unpredictable than the chemical and electrical arts, but the law is the same regardless of technology.

So, if you are defending a case involving broad claims that seem to go well beyond what someone could actually practice based on what the patent teaches, consider asserting invalidity under the enablement and/or written description sections of the Patent Statute. One strategy would be to identify as large a number of examples that are covered by the claims but not disclosed in the patent and then try go figure out what it would take to practice those examples. This may identify "holes" in the patent's teachings. You would likely do this in consultation with your expert witnesses, and it would give you a roadmap for deposing the inventors and the patent holder's experts and building a case that the full scope of the claims is not enabled.

A written description attack would be similar but not identical. More about that in another post.

06/27/2023

Importance of filing for a patent BEFORE meeting with potential partners/investors

A trial that started in Houston this week between Phillips 66 and a Houston company called Magema Technology underscores how important it is to file a patent application before you disclose your technology to anybody.

According to the patent holder, a scientist and engineer developed a technique for refining marine oil to meet upcoming sulfur content restrictions. They met with Phillips to see if there was any interest in partnering with them. After learning the technology and declining to work with them, Phillips allegedly implemented the technology and garnered over $100 million in profit.

Luckily, the scientist and engineer filed patent applications before meeting with Phillips. So, now they were able to sue Phillips for patent infringement . Had they not done so, and unless Phillips signed a non-disclosure agreement, there would have been no legal claim to sue on.

I don't know if Phillips signed an NDA, but a company of that size likely would have refused to do so to avoid, you guessed it, litigation!

Before disclosing your invention to anyone, file a patent application on it first and have the other party sign an NDA. This is your best protection against having your idea stolen.

06/15/2023

Hansen IP Law's June Newsletter:

News and IP Info from Hansen IP Law     JUNE 2023 NEWSLETTER Are Your Products Marked with Their Patent Numbers? June 15, 2023– Are you periodically checking to make sure that your patent marking is

04/06/2023

"Anything you say can and will be used against you in a court of law"

You probably recognize this quote from the "Miranda Warning" which is frequently given to criminal suspects in police TV shows (and we suspect less frequently in real life). However, it applies equally in the world of patent law.

When an Examiner asserts a piece of "prior art" to reject the claims of your patent application, your options are to amend your claims and/or argue against the against the rejection. It is important to understand that those arguments and amendments may be used against you in court to limit the scope of your patent protection in two key ways.

First, such arguments and amendments may be relevant to the meaning of claim terms. A defendant may argue that they show a claim term is narrower in meaning and, therefore, that the defendants products are non-infringing.

In addition, such arguments may limit or preclude your use of the "doctrine of equivalents.' Under the doctrine of equivalents, if a claim element is not literally found in the accused product, the patent holder can argue that the product is still infringing because the differences between that claim element and the corresponding feature in the accused product are "insubstantial." However, you may be foreclosed from or limited in your use of the doctrine of equivalents if you have made arguments or amendments related to the claim element at issue in order to convince the examiner to grant you a patent. Thus, it is important to be selective with your arguments and claim amendments. It is especially important not to rely on unclaimed features in your specification to distinguish the prior art. That is exactly the kind of thing an infringer looks for as evidence that patent claims should be construed more narrowly than they otherwise would be.

04/06/2023

This month's newsletter discusses some strategic considerations for protecting software-implemented inventions:

News and IP Info from Hansen IP Law     APRIL 2023 NEWSLETTER Hansen IP Law Returns to Virtual Operations April 5, 2023– During the pandemic, lawyers across the country began working remotely out of n

09/17/2020

Hansen IP Law Newsletter September 2020