Practice Areas

Patent Infringement Issues

Patent Law: The Right to Exclude, and You

At the Law Office of Michael Blaine Brooks, P.C., our patent lawyers assist California and other US (domestic) clients appreciate and, one hopes, cost-consciously resolve, patent infringement issues and other patent rights issues in the United States. We welcome prospective California and domestic clients seeking patent rights opinions, and international clients seeking patent rights opinions pertaining to United States patent law.

Innovators and developers of new technology must remain mindful throughout the commercialization process of the adverse impact patent holders may have on them once these patent holders are made aware, perhaps via advertising, of products or processes that may fall within the scope of the claims of their patents. Awareness of issued patents and pending patent applications that have been published during the prosecution phase allow the innovators and developers some degree of notice as to the extent they may proceed with the consideration of obtaining licenses or pursuing design-arounds for their commercialized inventions. For example, an unexpired patent may claim the combination of at least the following (i.e., "comprising") parts: A, B, C and D. A basic version of the commercialized invention is planned to have parts A, B, C, and E and the luxury version is planned to have parts A, B, C, D, and E. The luxury version will clearly infringe the unexpired patent claim because, although it adds a new part E and even if the addition of new part E is itself a patentable invention, the base composition of parts for the luxury product is A, B, C and D. The basic version (A+B+C+E) of the commercialized invention may infringe (A+B+C+D) unless: (a) the prosecution history of the unexpired patent has the patentee as applicant stating D is not E in order for the patent claim to be allowed over a cited reference; or (b) there is more than an insubstantial change between part D and part E, e.g., part E does not perform the substantially same function as D, in the substantially same way as D, in order to achieve substantially the same result as D.

Might this be a Case of Patent Infringement?

If you are concerned that you are infringing or may infringe one or more unexpired patents, our office may have the knowledge, experience, and technical background to help. We may be able to assist you by performing the following:

• A patent infringement analysis - to determine if you are potentially infringing another's patent - using the prosecution history of the patent itself to construct the scope of the claim or claims of the patent;
• A patent validity opinion - to determine whether the patent at issue will stand up to prior art challenges of obviousness, using the results of a prior art search to assess the level of skill in the art of an ordinary person in the field and the state of the art at the time the patent was filed and whether these assessments support the claims at issue being indeed patentable (looking backward in time to the prosecution phase) and presently valid and assertable (For example, do the claims in question address a combination of elements or steps that include something new or produce a new function or yield an unpredictable result?);
• Prepare third party re-examination applications to challenge the non-obviousness or lack of novelty of the patent-at-issue based on prior art (i.e. filed patent applications and literature published prior to the first filing of the claimed subject matter of the patent-at-issue), particularly prior art not previously available to the Patent Examiner;
• Respond to informative letters;
• Respond to cease and desist actions while collaborating with litigation counsel; and
• Provide patent infringement defense litigation support

If you are concerned about a patent infringement, whether because of an informative letter or cease and desist action, then contact us, ask for patent infringement advice from a patent lawyer and schedule a confidential consultation or call Toll Free: 1-866-LAW-PAT1 (529-7281). Put our experience to work for you.

Is Another Party Infringing Your Patent?

Someone may introduce a product that is substantially identical to the article of your design patent and/or someone may execute a process or make a product or composition of matter that falls within the scope of at least one of the claims of your utility patent. If you are concerned or believe someone is infringing your patent, we may have the technical background and knowledge to provide you with the value-added service and advice you require. The firm is extensively versed in the background required for assessing patent infringement and performing the research regarding the prosecution history of the asserted patent, by fully appreciating and remaining current with patent laws and particularly those pertaining to claim construction and patent claim validity, and, importantly, perform these functions with the technical background necessary to research and understand the state of the art regarding the patent at issue and communicate cogently with the client. If your patent has issued less than two-years ago and you do not have a continuing application describing the claimed subject matter, you may wish to consider a re-issue application if the broadening of one or more claims appears viable. If you have become aware, after your patent issued, of prior art, i.e., literature published or patent applications filed before your invention date, that may have been pertinent to the patentability of your claims, particularly the claims you believe are being infringed, you wish to pursue the re-examination of your patent in light of the prior art before expending funds in federal litigation.

We are available to perform the following services on your behalf:

• A patent infringement analysis - to determine whether another party is infringing the claims of your patent;
• A patent validity opinion - to determine whether your patent will stand up to prior art challenges of obviousness;
• Prepare and prosecute re-issue patent applications and/or first-party (owner) re-Examinations;
• Assist your non-patent lawyer prepare an informative letter, or prepare one on your behalf;
• Assist your non-patent lawyer prepare for a cease and desist action; and
• Provide patent infringement litigation support, i.e., teaming with a patent litigation firm if legal action is necessary, both for Federal Court and the International Trade Commission. 

If you believe your patent is being infringed upon, contact our California patent infringement lawyer to schedule a confidential consultation or call Toll Free: 1-866-LAW-PAT1 (529-7281). Discover how we earned our international reputation for excellence.

US REGISTERED PATENT ATTORNEYS

Patent attorney Dr. Michael Brooks assists clients internationally (Canada, Europe & Asia), domestically (United States, from California to Washington, D.C.), and locally (California, including the cities of: Simi Valley, Los Angeles, Pasadena, Thousand Oaks, Woodland Hills, San Fernando Valley, Irvine, Newport Beach and the counties of Los Angeles County, Ventura County, Orange County, San Diego County, as well as throughout the Tech Forest of the Pacific Northwest, including Vancouver and Camas, Washington, and Portland, Oregon) with a variety of patent issues, including: utility patent prosecution, pre-patent services, patent infringement issues, and patent litigation support. If you need a patent lawyer, you need us.