PATENTS
“Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” United States Constitution., Article. I, § 8, clause 8.

The Pinkert Law Firm combines salient expertise in the Medical, Technology and Legal fields as they relate to the practice of patent law. 

• Medical Devices both internal and external
• Pharmaceuticals
• Biotechnology
• Computer Software and Hardware
• Genetics
• Mechanical Engineering

Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the United States Patent and Trademark Office (PTO) was established in 1836. Since then, the PTO has examined every patent applications to decide whether they meet the requirements of the applicable patent laws.

A. Applications
To obtain patent protection in the United States, an inventor must file a patent application with the PTO. This application has three parts: (1) the specification, which gives a general description of the invention; (2) the claims, which provide more detailed statements explaining exactly how the invention works or is assembled; and (3) drawings that illustrate the invention. A specially-trained official, called a patent examiner, reviews the application to determine if it qualifies for a patent. The applicant receives no patent rights until the PTO approves and issues the patent. During the patent examination process, the patent examiner will likely ask the applicant various questions about the invention. The law requires the patent applicant to disclose all information in his or her possession that is relevant to whether the patent should be issued. Because this process often goes back and forth several times between the applicant and the examiner, a patent examination can be very time-consuming and the legal fees can be considerable.

B. Qualifications
To qualify for a patent, the invention must meet three basic tests. First, it must be "novel," meaning that the invention did not previously exist. If the patent examiner finds that the proposed invention has already been described in previous patents or written about in scientific magazines, the PTO will declare that the invention has been "anticipated." In such a case, the patent will be denied. Second, the invention must be "non-obvious," which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be "useful." Legal experts commonly interpret this to mean that no patent will be granted for inventions that can only be used for an illegal or immoral purpose.

C. Disputes
Occasionally, several people apply for a patent for the same invention. Under U.S. law, the person who first invented the item receives the patent. If it is unclear who invented the item first, the PTO decides who gets the patent in a proceeding known as an “interference.” The losing party may appeal the PTO's decision at the Court of Appeals for the Federal Circuit, a specialized court in Washington, D.C. established to deal with patent matters. Most other countries follow a different rule, granting the patent to the first person to file the patent application. In these countries, if the first inventor delays and the second inventor files the application first, the second inventor will obtain the protection.

D. Terms
If the patent examiner finds that the invention meets the three basic legal tests described above, the PTO will grant a patent. Under current U.S. law, a patent is valid for 20 years from the date the patent application is filed. If that inventor is an employee who did the work as part of a job, however, the employer has a right to use the invention as well.
A patent only grants rights within the jurisdiction that issued it. Therefore, a U.S. patent will not provide any rights in other countries. Inventors must take out a patent in every country where they desire protection. Most nations of the world have adopted patent laws, but often the requirements in foreign countries differ greatly from requirements in the United States.

E. Infringement
Anyone who makes, uses, or sells a patented invention without the permission of the patent holder is guilty of infringement. The person holding the patent (the “patentee”) may sue the infringer in federal court to recover damages. The patentee may also obtain an injunction requiring the infringer to refrain from committing future acts of infringement. The accused infringer is permitted to argue in court that the patent should never have been granted in the first place. If the accused infringer raises this argument, the court will determine whether the patent is valid or invalid. Another important defense against claims of infringement is the “first sale” doctrine. Under this principle, once the patentee sells a particular item, the purchaser of that item may use it or resell it without being considered an infringer. This is why people can use computers, which have many patented parts, without being considered patent infringers.

Patent lawsuits can be filed in any federal court in the United States. Appeals in patent cases all go to the same court, the Court of Appeals for the Federal Circuit, in Washington, D.C. This helps ensure that patent law is uniform throughout the United States.
"Patent." Microsoft® Encarta® Encyclopedia © 1993-2000 Microsoft Corporation.
It is important to note that not just anyone can file a patent application.  The law states that only the inventor themselves, or a Registered Patent Attorney (or agent) may file a patent application.  General practice attorneys are not permitted to file a patent application unless they have a sufficient engineering or scientific background and pass an exam given by the PTO. 

Before beginning the patent registration process, it is important to do a full patent search to ensure that the patent is not already in use by another individual, or ‘confusingly similar’ to another patent.  The Pinkert Law Firm is fully prepared to search patent protections already in place before submitting the patent for formal registration.  This saves considerable time and expense, rather than first submitting the patent to the PTO and only then learning whether the device can be patented.

At the Pinkert Law Firm, our teams of Registered Patent Attorneys, along with our experienced staff, are ready to assist you during this complicated, and often lengthy, process.  We are also able to assist with the various aspects of patent litigation, whether you believe someone is infringing on your patent, or someone has accused you of infringing on the patent of another, the Pinkert Law Firm has the resources and experience to help.

Trademarks

A trademark is a similar, but fundamentally different concept from a Patent.  A trademark can be any name, word, phrase, logo, slogan, symbol, design, or image used in trade with goods and services to indicate their source, and to distinguish them from the goods and services of another.  A trademark right can be used to prevent others from using a confusingly similar name, but does not prevent another from offering similar goods and services under a different name.  

Much like a patent, applications for federal trademark protection go through the Patent and Trademark Office (PTO).  While some protection arises from the first use of a trademark, much greater protection is afforded to a user which registers the trademark with the state or federal government.  Even if a trademark is registered, the extent of protection can vary greatly.  It is possible to receive an official trademark registration with little or no practical trademark protection.  That is why it is important to have a knowledgeable trademark attorney assist you through this complicated process.  

Before beginning the trademark registration process, it is important to do a full trademark search to ensure that the desired mark is not already in use by another.  The Pinkert Law Firm is fully prepared to search trademark protections already in place before submitting the trademark for formal registration.  This saves considerable time and expense, rather than first submitting the trademark to the PTO or state trademark office and allowing them to run the search.  

It is also important to maintain lawful use of the trademark even after properly registered.  Trademark protections may be lost if the mark is not actively used for a period of time.  Protection can also be lost by failing to take enforcement action against certain types of infringement.  Failing to take the proper steps to protect your trademark can result not only in the loss of trademark protection, but the trademark can actually be re-registered by someone else.  In other words, you can actually be prevented from using your own trademark if you are not careful.

At the Pinkert Law Firm, our teams of Trademark Attorneys, along with our experienced staff, are ready to assist you during this complicated, and often lengthy, process.  We are also able to assist with the various aspects of trademark litigation, whether you believe someone is infringing on your trademark, or someone has accused you of infringing on the trademark of another, the Pinkert Law Firm has the resources and experience to help.

 Attorney Contact: Steven Pinkert or Calrie Marsh