Omid Khalifeh, Author at Omni Legal Group Blog

Do patents or trade secrets better protect artificial intelligence?

The Interplay between Patents and Trade Secrets for Utilizing Artificial Intelligence

When it comes to effectively protecting valuable technology and products based on artificial intelligence (“AI”), it is important to understand the complex interplay between patent law and trade secret law. There are advantages and potential pitfalls related to both patents and trade secret law. For example, trade secret law can offer protection where patent law does not, and vice versa.

The Challenge is Securing an AI-based Patent

It is commonly said that an invention is only as valuable as the patent that protects the invention. However, this old adage becomes moot if you are unable to secure a patent. When it comes to inventors seeking a patent for a product that utilizes AI technology, the hurdles are quite challenging to overcome in the journey to obtain a USPTO-approved patent.

The difficulties associated with securing a patent for a product predicated on AI goes to the heart of the legal definition for a patent. For example, according to 35 U.S.C. § 101, a patentable subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The difficulty associated with AI technology and a patent application is that many patent examiners with the USPTO often consider this type of technology to be more of abstract ideas. In an effort to address this issue, the USPTO established multiple categories to refine the definition, but the overarching theme amongst the categories set forth by the USPTO is that if a human mind can accomplish the task, then it is likely an abstract idea.

Trade Secret Law

If an inventor of an AI product or technology is rebuffed by USPTO when applying for a patent, it may be worthwhile to review relevant trade secret laws. Why? Because the protections afforded to trade secrets were bolstered by the enactment of the Defend Trade Secrets Act (DTSA). This federal law was passed in 2016 and contains an array of features focused on reinvigorating what had become a set of stale and ineffective laws that were not very effective in protecting trade secrets.

According to the DTSA, specifically 18 U.S.C. § 1839(3)(B), a secret only needs to have “actual or potential” value derived from the secrecy to be deemed a trade secret for a business. As a result, a trade secret can now cover a plethora of potential subjects, as long as the trade secret meets this new legal standard.

**Navigating the Patent Application Process is Not Easy. Take Action by Contacting an Experienced Patent Attorney in Los Angeles Today**

Securing a patent for an invention is extremely important. Nevertheless, the patent application process is complex and can be intimidating to navigate. This is where Omni Legal Group comes in. Whether you are looking for a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, you can always count on the professionals at Omni Legal Group to give you and your invention the care and attention it deserves. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How to Reduce the Risk of Engaging in an Illegal Trademark Assignment

Owning a trademark is widely viewed as one of the most valuable and important assets for any business. Hence, it is so important not to be cavalier about engaging in a trademark assignment. When a business owner mishandles or violates the law while engaging in a trademark assignment, it could completely negate the enforceability of the trademark, thereby torpedoing its value.

When an illegal trademark assignment occurs, it is typically the product of carelessness and neglect, or it could very well be deemed an assignment-in-gross.

What is an Assignment-in-Gross?

An assignment-in-gross occurs when a business owner assigns their trademark without including the underlying goodwill (i.e. the inherent value and name recognition associated with the mark) and any other accompanying assets. When a business owner commits an assignment-in-gross, the ramifications are severe since a court could invalidate the assignment and would result in the trademark being deemed abandoned. As a result, both parties (i.e. the owner of the mark and party attempting to secure the mark) will lose any rights to the trademark.

To prevent such circumstances, an assignment must include (i) other related business assets and (ii) must be completed with genuine goodwill.

Assets that are deemed eligible to accompany a trademark assignment include:

Company shares;
Trade secrets; and/or
Management or other financial assets

Analyzing whether a trademark assignment was completed with genuine goodwill can be extremely difficult to measure. Courts tackle this issue by using the “substantial similarity” test. This test assesses both the quality and description of the goods and/or services prior to, and after, the transfer of the trademark.

When a business owner attempts to simply assign their trademark without any accompanying business assets or without sufficient evidence of genuine goodwill, it is a violation of federal law since a trademark, in and of itself, does not possess actual value. When a trademark transfer occurs without meeting the two-part standard described above, it is an illegal trademark transfer under the Lanham Trademark Act, which is codified under 15 U.S.C. § 1060.

**Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today**

It is incredibly important to protect your brand identity; hence it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive right to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark assignment the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Landlord May be Held Liable for Trademark Infringement

If you are a landlord renting a property to a tenant who is found to be selling counterfeit goods, you may be held liable for trademark infringement. However, a landlord can only be held liable if there is evidence that the landlord had actual knowledge that the tenant was engaged in infringing acts, or they were willfully negligent to the infringing activities.

Court Decision in Eleventh Circuit Highlights Landlord Liability

An actual case of a landlord being held liable for a tenant’s trademark infringing activities can be found in Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019). In this case, a subsidiary corporation Oakley, Inc. and its parent company Luxottica Group filed a civil lawsuit against the owners of a shopping mall in Georgia. The basis for the lawsuit was alleging the shopping mall owners were liable based on contributory trademark infringement under a federal law known as the Lanham Act.

The infringing activities involved high-end luxury sunglasses. The lawsuit alleged that Luxottica and Oakley, Inc. sold luxury sunglasses using Ray-Ban and Oakley trademarks. The owners of the shopping mall also managed the interior of the mall and were the landlords for businesses within the mall. The lawsuit revealed that the shopping mall owners were aware of three separate raids by law enforcement officials of businesses within the mall that were actively selling counterfeit sunglasses.

The shopping mall owners reportedly gained actual knowledge of the infringing activities since they received copies of search warrants from law enforcement and knew which businesses were the focus of the raids. In addition, there is evidence of correspondence sent from Luxottica to the shopping mall owners informing them that some of their subtenants were engaged in selling counterfeit sunglasses that infringed upon the trademarks owned by Ray-Ban and Oakley.

Another key factor is that the shopping mall owners apparently failed to take any action to remedy or halt the subtenants from engaging in the sale of counterfeit products within their property. For example, the shopping mall owners never even attempted to evict the subtenants or terminate their leases.

The lawsuit went to trial and a jury found the shopping mall owners liable for contributory trademark infringement. The jury awarded $1.9 million in damages to Luxottica as a result. The shopping mall owners appealed the jury verdict. Nevertheless, the Eleventh Circuit Court of Appeals affirmed the nearly-two-million-dollar jury verdict.

The Lanham Act

The Lanham Act is a federal law that establishes a defendant can be held liable for contributory infringement when the defendant induces or knowingly facilitates the trademark infringement.

In order to establish contributory trademark infringement under the Lanham Act, a plaintiff bears the burden of establishing the following during a lawsuit:

There was direct trademark infringement by someone; and
A defendant intentionally induces the infringer, or supplied a product to the infringer, with either actual knowledge or constructive knowledge of the infringing acts.

If you are wondering, “what is constructive knowledge? Well, a prime example is willful blindness, which occurs when a defendant suspects a wrongful act but deliberately fails to investigate the act.

Have Questions About How to Protect Your Trademark? Contact the Highly Reputable Trademark Lawyer in Los Angeles

If you have a trademark that you suspect is being infringed, or you want to ensure proper protection, the trademark lawyers at Omni Legal Group is here to help. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

The Federal Government Can Be Held Liable for Patent Infringement

If you have ever asked yourself, “can the U.S. government be held liable in a civil action for patent infringement?” Here is the answer – Yes. This is because the federal government has effectively waived sovereign immunity when it comes to civil claims alleging patent infringement. As a result, the federal government can be the named defendant in a civil action alleging patent infringement, in certain circumstances.

Legal Basis to File a Civil Action against the Government

The legal basis to file a civil lawsuit against the U.S. government for patent infringement is 28 U.S.C. § 1498. This federal statute states that whenever an invention is protected by a registered patent and is used or manufactured by or for the United States without license of the patent owner, then the patent owner is afforded a civil remedy by filing a civil action against the federal government in the United States Court of Federal Claims. A civil claim can demand recovery of reasonable compensatory damages associated with the government’s use and manufacture of a patent-protected product.

Court of Federal Claims Maintains Jurisdiction over Patent Infringement

If a patent owner is looking to file a patent infringement lawsuit against the federal government, it is important to understand that you cannot simply file a lawsuit in any federal court. The civil action must be filed specifically within the U.S. Court of Federal Claims. Why? Because this is a unique court established to adjudicate civil claims based upon “the Constitution, federal statutes, executive regulations, or contracts, express or implied in fact, with the United States.”

Exception for Federal Contractors

There is an important exception you need to be aware of if you are looking to file a civil action against the federal government for patent infringement. The exception is that a patent owner is prohibited from suing a federal contractor who produced the allegedly infringing product or performed the allegedly infringing method. Instead, any civil action must be filed against the federal government. Though, it is worth noting that the federal government’s contract with the allegedly infringing contractor may require the contractor to indemnify the government for liability and costs associated with the litigation.

**Have Questions About Securing a Patent or Protecting Your Current Patent? Take Action by Contacting a Patent Attorney in Los Angeles Today**

If you have a registered patent that you suspect is being infringed, whether by a private competitor or federal government, one of the most important things you can do is take proactive steps to assess your legal options and determine what can be done to protect your patent. Thus, it is in your best interest to retain the services of a reputable patent in attorney Los Angeles such as the lawyers at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Filing an Information Disclosure Statement (IDS)

When filing a patent application, you have a legal obligation to disclose all information known to you that is material to the “patentability” of your device, product, idea, etc. These disclosures must be formally conveyed to the U.S. Patent and Trademark Office (USPTO) in accordance with 35 C.F.R. §1.56. You may be asking, “what exactly constitutes material information for my patent application?” Well, the governing standard is that any information that a reasonable patent application examiner would consider important in assessing whether to grant the application is deemed to be material. It is also important to understand that this disclosure duty is ongoing from the moment you file the application all the way to the issuance of the U.S. Patent.

Limitation of Disclosure Requirement

It is worth noting that the disclosure requirement set forth in 35 C.F.R. §1.56 only obligates an applicant to disclose material information that is “actually known” to the applicant and does not require a search to be conducted. This is an important, and necessary, limitation since the USPTO wants to avoid disclosures that are based purely on conjecture or speculation.

Satisfying the Duty to Disclose

The duty of disclosure is satisfied when you submit an Information Disclosure Statement (IDS) to the USPTO listing relevant patents, patent applications, and other published documents or information. Depending on the nature of the disclosure, a copy of the document may also need to be provided to the USPTO.

Ramifications Associated with Failing to Disclose Material Information

The ramifications from failing to comply with the duty of disclose can be quite severe. For example, if it is determined that you willfully failed to provide material information to the USPTO, it can result in a later ruling of “unequitable conduct” that ultimately renders your issued patent unenforceable. If that was not bad enough, when there is evidence of willful failure to disclose, it exposes you to being sued for damages in federal court.

Supplemental Examination

If you are applying for a patent or currently own a patent and, at some point, you discover material information that should have been disclosed to the USPTO, you can request a “supplemental examination” which affords the opportunity to consider, reconsider, or correct information believed to be relevant to the patent. The ability to request a supplemental examination is available at any point during the period of enforceability for the patent.

There are various benefits associated with a request for supplemental examination. Once your supplemental examination materials are filed with the USPTO, a review will be undertaken, and you will usually get a response from the federal agency within three months. The response will typically come in the form of a certificate indicating whether the information you provided raises a “substantial new question of patentability.” If that is the case, an ex parte, re-examination of the patent will be required. If not, the request ends there. Another benefit associated with a request for supplemental examination is that a patent cannot be deemed unenforceable based solely on information that was considered, reconsidered, or corrected during a supplemental examination, so you can have a level of confidence during this process that you will not, sua sponte, lose your patent protections.

**Contact an Experienced Patent Attorney in Los Angeles Today**

As you can see, the process of applying for a patent is complex, time-intensive, and involves an array of different rules and regulations. Hence, it is in your best interest to retain the services of a patent in attorney Los Angeles such as the highly reputable professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Helpful Tips for Drafting a Licensing Agreement

When you register a trademark for your business, there is a crucial next step you need to be prepared to address – licensing the rights to that trademark so other individuals and companies collaborating with you to manufacture or sell your product featuring that mark are legally compliant. It is important to understand the impact of a trademark license agreement. If this agreement is detailed and well-crafted, it can play a big role in determining how much you, the owner of the trademark, will benefit financially from the commercial success of the product. A trademark license agreement will also help in protecting both your registered trademark and the resources you invested into building goodwill and a positive affiliation with the consuming public.

To help ensure your trademark licensing agreement is valid and detailed, here are some helpful tips to consider when drafting a licensing agreement.

No. 1 – Clearly Establish the Licensee Requirements

In a trademark license agreement, you, the owner of the registered trademark, are known as the licensor. The party that pays you money in exchange for the right to market or manufacture products bearing your trademark is known as the licensee. In the trademark license agreement, you should be as specific as possible about what trademark rights you are licensing and what the licensee is and is not allowed to do with your trademark. If, for example, you own the trademark to a children’s character, and you want to preserve their child-friendly image, say so. Don’t want your trademark adorning beer bottles? Specify this in the agreement. Don’t want your character hawking weight loss supplements? Put it in writing.

No. 2 – Ensure All Key Pieces of Information are Included in the Agreement

Relying on a cookie-cutter printout of a license agreement you found online, or hastily drafting an agreement, is often a recipe for disaster and heightens the risk that vitally important pieces of information are not included in the final agreement. Do not make this mistake. You need to ensure the license agreement clearly addresses the following issues:

Who owns any new intellectual property that the licensee creates incorporating your trademark;
The geographic region where the licensee may sell the licensed products; and
Which state will have jurisdiction to decide legal disputes that may arise from the trademark license agreement (this is often referred to as a “choice of law” provision).

No. 3 – Be Transparent About Duration of the Agreement and the Timetable for Payments

Mistakes and oversights regarding the duration and payment terms in a trademark licensing agreement can lead to costly disputes and glaring loopholes. Hence, it is imperative to not gloss over these sections of the agreement or merely state, in broad terms, how long the agreement lasts. You need to provide specific details about what happens at the end of the established license period. For example, you should address what happens if the parties take no further action. Does the licensing agreement automatically terminate, or does it automatically renew? Likewise, does the licensee pay a fixed amount or a share of their sales? Do they pay a lump sum at the beginning of the contract period, or do they pay you in monthly or quarterly installments? These are critically important questions and issues that need to be fully fleshed out in the licensing agreement.

Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today

It is extremely important to draft a detailed, airtight trademark license agreement to help safeguard your financial and brand interests, as well as the interests of the licensee, or licensees. Hence, it is in your best interest to retain the services of a skilled and knowledgeable trademark lawyer in Los Angeles such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles, California. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Different Types of Patent Searches

When an individual or business is looking to apply for a patent, they are usually surprised to discover the array of options that need to be analyzed in order to conduct a proper patent search. The reason there are multiple patent search options is because the scope of the search will be determined by the overarching reason for the search.

Generally, there are four types of patent searches that can be conducted:

Novelty (patentability) search
Freedom to Operate (FTO) search
Non-infringement search; and
Validity search

Let’s take a look at each…

Novelty Search

The most common type of patent search is the novelty search. Why? Because this type of search is initiated to help determine the likelihood of successfully getting a patent application through the United States Patent and Trademark Office (USPTO). Most startup companies engage in a novelty search to help assess whether a particular invention is actually patentable and worth the time and money to pursue a patent with the USPTO. Another benefit is that a novelty search routinely provides valuable information to inventors. For example, it can provide context and insight into other businesses competing in the same sector.

To complete a novelty search, you will need to clearly identify the invention and itemize each element and key aspect that you believe makes your invention novel and unique. Once this is done, a comprehensive search can be conducted through the USPTO database for patents and publications, Google, and other databases to assess whether any aspect of your invention has already been patented or would be considered “obvious” to the point where filing a patent application would not be worth the time, money, and energy.

Freedom to Operate Search

A Freedom to Operate (FTO) search (also known as a Clearance search), helps determine whether it would be prudent to commercialize a particular product in light of current products that have enforceable patent rights. The FTO search would determine whether you have the freedom to operate and commercialize an invention without a major risk of getting sued for patent infringement. If, for example, a Freedom to Operate search locates information that indicates a risk of patent litigation, you can assess whether to abandon the commercialization of the proposed invention, engage in a redesign, or possibly reach out to the owner of the patent and negotiate a licensing agreement.

Non-infringement Search

A non-infringement search, much like a Freedom to Operate search, is generally pursued to help determine if a proposed invention could infringe on an already-active patent. However, this search is unique in that it focuses on a specific patent, or set of patents, that have been previously identified as relevant to your invention. Engaging in a non-infringement search is generally recommended when a new product, process, or technology is created but is known to be similar to an existing patented product, process, or technology. This is especially true when there are known and recognized competitors with enforceable patent rights.

Validity Search

The validity search is considered to be the rarest form of patent searches. It is typically only pursued in the context of patent litigation where a defendant, or potential defendant, in a patent infringement lawsuit is seeking information that could be used to invalidate a particular patent thereby nullifying that patent owner’s legal rights.

Need Help with Conducting a Proper Patent Search? Contact an Experienced and Respected Patent Attorney in Los Angeles Today

As noted above, there is an inherent level of complexity associated with even attempting a patent search. To help ensure the search is done correctly and thoroughly, contact the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Cannabis-Based Businesses and Trademark Law

Despite marijuana being legal in some form in 43 States and territories, there continues to be a prohibition on securing a federal trademark registration for any marijuana-based products. Why? Because marijuana remains a Schedule I drug under federal law. The conflict between the ever-growing number of state laws legalizing the sale and use of marijuana and cannabis-based products, and the archaic federal prohibition have created major issues for CBD business owners. This is because CBD products typically contain a certain amount of THC (the active ingredient in marijuana). As a result, a business selling CBD products is generally prohibited from securing a trademark under law.

Steps Toward Progress

Congress recently passed legislation that was intended to help ease the restrictions on trademarks for certain types of CBD products. The legislation was part of the massive 2018 Farm Bill. Specifically, the Farm Bill removed hemp and hemp-derived products from the Controlled Substances Act (CSA).

After the Farm Bill was signed into law, the U.S. Patent and Trademark Office (USPTO) issued a memo emphasizing that it would not register trademarks for applicants selling any goods and services that violate federal law. Nevertheless, the USPTO officially stated that applications for trademarks related to products that meet the definition of hemp will now be reviewed and accepted by the federal agency, subject to certain exceptions.

The new regulations stipulate that you can now pursue federal trademark registration for a hemp-based product if it meets the following standards:

The product contains less than 0.3% THC (dry weight);
The product is derived from hemp;
The product is NOT an oil;
The product is NOT a food or beverage;
The product is NOT a dietary supplement; and
The product is NOT a pet treat.

Many CBD business owners have raised legitimate complaints about the narrow and rigid the current regulations are to secure a federal trademark. If a business is unable to trademark a CBD-based oil, food, beverage, pet treat, etc. there is not much left that can be trademarked.

If you own a business selling CBD products, do not throw your hands up in despair. There are ways to protect the trademark of your CBD business. For example, there is a Trademark Registration System within each state. This means a CBD business can legally secure a state trademark registration in those states where CBD products are legally offered for sale.

Once you secure the State-level trademark, you will be empowered with the legal right to prevent competitors from using the trademark of your CBD business.

**Have Questions? Contact an Experienced Trademark Attorney in Los Angeles Today**

As you can see, the rules and regulations related to securing a trademark are complex and vary greatly at both the state and federal level. Hence, it is in your best interest to retain the services of a reputable and experienced trademark attorney such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How do you effectively protect your trademark?

How to Effectively Protect Your Trademark

If you are a business with a registered trademark, it is important to understand that the trademark has value, both intrinsic and explicit. The trademark is a representation of your company’s brand and can help distinguish you from the competition. This is why you need to be proactive and protect your trademark.

There are specific legal rights inherent with a trademark that is registered with the U.S. Patent & Trademark Office. Here are some strategies to consider in order to effectively protect your trademark:

1. Register Your Trademark Internationally

The protections afforded to trademark owners in the United States do not extend beyond our borders. As a result, if you want to ensure you have the strongest and broadest protection possible, it may make sense to register your trademark internationally. You may be thinking, “do I really need to spend the time and resources to register my trademark in multiple foreign countries?” Well, you should consider the fact that counterfeiting is a multi-billion dollar business in countries like China and Hong Kong. In addition, some countries (e.g., China), have laws in place that grant trademarks on a first-to-file basis. This means the first person to register the mark in that particular country will likely be granted the legal rights inherent with a registered mark. Basically, if you do not have international trademark protections, you are exposing your business to being taken advantage of by foreign counterfeiters.

If you are interested in registering your trademark internationally, the process is found in a treaty called the Madrid Protocol. It consists of 90 member countries and offers applicants the ability to complete a simple, single trademark application in one language. While the registration process is simplified, it is important to note that the Madrid Protocol does not guarantee approval of your trademark application. Each member country will conduct its own independent review of your application and make a decision on whether to approve or deny.

2. Use Your Trademark Consistently

Registering your trademark is just the beginning. You need to take steps to maintain your registered mark so you can enjoy the protections for the foreseeable future. Hence, you need to make sure you consistently use your mark in your business ventures. For example, you should consistently try to use the same words, design, and/or logo that was registered with the USPTO. Using your trademark inconsistently will weaken its protections and could come back to haunt you in a potential trademark dispute.

3. Renew Your Trademark

Consistent use of your trademark carries another inherent benefit – the fact that your trademark does not expire, as long as you continue to use the mark for the goods and/or services listed in your initial registration application. Though, it is important to note that you need to affirmatively renew your trademark. The first renewal takes place between the fifth and sixth year of use. The second renewal typically takes place around nine or ten years after your initial registration date. After that, you will need to file a renewal of your trademark every ten years to continue to protect your mark.

**Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today**

If you want to learn more about how to effectively protect your trademark, take action by contacting the highly reputable trademark lawyers at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

Patent Due Diligence

The term “due diligence” is most often associated with mergers and acquisitions. However, there is a type of due diligence that can, and should, be conducted when it comes to patent management. Patent due diligence is considered to be the process of analyzing a patent or set of patents to support your overarching business objectives. Patent due diligence can take various forms, depending upon the circumstances in which the need for this type of analysis arises. For example, due diligence can be offensive or defensive.

Offensive Patent Due Diligence

Offensive due diligence can be done to help assess whether other individuals or companies are infringing on your patents or whether your patents could potentially be monetized through licensing or divestment to help achieve your overarching business objectives.

Defensive Patent Due Diligence

Defensive patent due diligence can be done in order to assess whether you have the ability to operate your next business venture, including whether you are infringing on the patents of another individual or company and what actions can be initiated to mitigate that risk.

Benefits of Patent Due Diligence

Conducting patent due diligence will assist in determining the value of your patent portfolio, including whether you could potentially monetize your patents through licensing, enforcement or even divestment. In addition, completing patent due diligence enables you to assess and mitigate the infringement risks associated with a competitor’s patents or the patents of another party (e.g., a Non-Practicing Entity). Another advantage to completing patent due diligence is that it can help influence your strategy when assessing how to best respond to a cease-and-desist letter from a third party and can help mitigate your damages exposure against a finding by a court of willful infringement.

Another scenario where due diligence can be helpful is when you are attempting to develop a portfolio of patents that you simply keep on your proverbial shelf. Your company may not even be looking to pursue a patent infringement lawsuit or claim, but you may still prefer to have a series of patents that can be used to assert offensively against competitors that may attempt to file a lawsuit against you.

The Process

When you decide to engage in patent due diligence, the process usually entails the following steps:

Assessing whether a target product falls within a patent claim, including an in-depth review of patent file wrappers, specifications, how certain claim terms could or should be interpreted in a patent proceeding, and an application of the patent claims to a target product.
Assessing the enforceability of a patent, including whether the patent claims are novel, whether the patent sufficiently describes the invention, and/or whether the patent claims are directed to patentable subject matter or a patent-ineligible “abstract idea.”
Determining whether there are potential ownership, chain of title or maintenance fee issues, including an assessment of the ownership, chain of title and early expiration issues related to the patent.

**Have Questions? Speak to an Experienced Patent Lawyer Today**

If you are looking to secure a patent and have questions about the process, including due diligence, take action by contacting the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.