Patent Strategy

February 14, 2017

FC Determines Use of Xpresspost(TM) is Delivery to a Designated Establishment

2016 FC 517 - The FC held that patent applicants and holders using Xpresspost(TM) need only submit correspondence for CIPO to a Canada Post location by the deadline, rather than ensure physical delivery is completed by the deadline. The decision saved Biogen’s response to a requisition in a conflict proceeding from being deemed abandoned.
October 24, 2016

3D Printing Will Rock the World of IP: The ITC Admits Defeat and Allows the Importation of Digital 3D Models

The ITC finally dropped its investigation against the dental equipment manufacturer ClearCorrect. The move comes long after the ITC lost a legal battle that decided that the ITC does not have the power to police the importation of digital data, even where that digital data is being used to 3D-print a patented product in the United States.
August 24, 2016

PCK StartIP Series: 2 – Patent Grace Periods; A Way for a Lean Startup to Defer Patent Filing Costs

Provisional patent applications are the traditional way that a lean startup can obtain some preliminary patent protection at reasonable cost while they accelerate product development and […]
April 26, 2016

PCK StartIP Series: 1 – Patent Budgeting for Lean Startups

We have prepared a guide that outlines the timelines and major spend points for two common patent filing strategies: a global patent filing and US-only patent filing.
February 22, 2016

Intellectual Property Services Buyer’s Guide

There are a lot of IP service providers out there. In this post I attempt to provide some guidelines for helping companies to assess IP counsel and choose the right one.
October 2, 2015

United States adopts Divided Infringement Test

Akamai Technologies, Inc, v Limelight Networks, Inc, 09-1372 - The CAFC held that where more than one actor is involved in infringing the steps in a patent, one of the actors can be held liable for the entirety of the infringement if that actor “directs or controls the other’s performance.”
September 22, 2015

Crafting a Suitable IP Strategy – Tips from the Pros!

Many startups are basing their business plans and valuations on their innovation; patents and industrial designs can be the most valuable asset of the company. One of the best strategies to secure protection for your innovation involves the filing of a self-written provisional patent application. On October 21, beginning at 5 p.m., PCK will be providing a hands-on session in which founders can learn the basics of patents from Andrew Currier.
August 10, 2015

Patent Royalties Restricted to Term of the Patent by SCOTUS

Kimble et al v Marvel Entertainment, LLC, 576 U.S. ____ (2015) - The U.S. Supreme Court upheld the 50 year old rule from Brulotte v Thys Co, 379 US 29, that prohibits royalties from being charged on formerly patented products after the patent has expired.
June 30, 2015

Writing Provisional Software Patent Applications

In the age of the “Lean Startup” $100,000 can be enough to get a startup well off the ground. However, with such tight budgets and limited funding there is often not much room left to pay a professional patent agent several thousand dollars to draft your patent application. This article provides some pointers on how to draft your own provisional software patent application.
May 12, 2015

The Oft Missed Synergy: Patents and SRED

Flat-out ignoring patents and SRED can result in leaving a lot of value on the table. Whatever one may think of patents, it is a fact that they can provide enormous value to a technology company if they are done correctly. By the same token, a successful SRED claim can lead to a significant short term financial boost for cash conscious companies.