Patent Matters

A patent is the right to exclude — the right to stop someone else from making, using, selling, offering to sell, or importing your invention, for a limited time, in exchange for publicly disclosing how it works. Enforcing that right, or defending against someone else’s, can run through federal district court, through the International Trade Commission, or through one of five distinct administrative proceedings before the USPTO’s Patent Trial and Appeal Board — and choosing the right forum is often the single most consequential decision in a patent dispute. And long before any dispute begins, two questions determine whether a patent is worth pursuing and whether it is worth asserting: is the invention actually patentable over the prior art, and does a competitor’s product actually fall within the claims of the patent that was granted?

Our Miami patent attorneys conduct patentability searches and render written patentability opinions before an application is filed; prosecute, license, enforce, and defend patents in Florida and nationally; prepare post-issuance infringement studies and claim charts evaluating whether a third party’s product infringes a granted patent; and litigate validity and infringement disputes in federal court and before the PTAB.

Patent Protection Overview

Novel, non-obvious, useful — and worth defending

A utility patent protects a new and useful process, machine, article of manufacture, or composition of matter — or a new and useful improvement of one — for 20 years from the filing date, provided the invention is novel and non-obvious over the prior art. A design patent protects the ornamental appearance of an article of manufacture for 15 years from grant. In both cases, the patent’s value is defined entirely by its claims — the numbered sentences at the end of the patent that mark the legal boundary of what the owner can exclude others from doing.

That boundary gets tested in two very different arenas: federal district court, where an owner sues an accused infringer (or an accused infringer sues for a declaration of non-infringement or invalidity), and the Patent Trial and Appeal Board (PTAB), where the patent’s validity itself can be challenged administratively, often faster and at lower cost than in court. A well-run patent strategy accounts for both from the outset — because a patent that can’t survive a validity challenge isn’t worth enforcing, and an infringement suit that ignores the possibility of a PTAB counter-attack is missing half the board.

Pre-Application Patentability Searches

Know what the examiner will find — before you file

Every patent application is examined against the prior art — everything that was patented, published, publicly used, on sale, or otherwise available to the public before the application’s effective filing date. Under the first-inventor-to-file system that has governed U.S. patents since March 16, 2013, that body of prior art is fixed the moment the application is filed, and the examiner’s job is to find it. A pre-application patentability search is the applicant’s opportunity to find it first — on the applicant’s own timetable, and before the money is spent drafting and filing.

A properly scoped search goes well beyond a keyword query of issued U.S. patents. Our Miami patent attorneys design each search around the invention’s core technical concept and its most likely claim language, then run it across U.S. patents and published applications, foreign patent collections such as the European Patent Office and WIPO databases, and the non-patent literature — journal articles, conference papers, standards documents, product manuals, and prior commercial products — that examiners increasingly rely on and that a patent-only search will miss. Because the classification schemes used by the USPTO and its foreign counterparts are frequently more reliable than keywords for locating art that describes the same concept in different vocabulary, we search by classification as well as by text.

The output is not a raw list of references. It is a curated set of the closest art, each reference annotated as to which features of the invention it discloses and which it does not, so that the client and the drafting attorney can see at a glance where the invention’s novelty actually lies. That map drives everything that follows: whether to file at all, whether a provisional application should be filed immediately to secure a filing date, how broadly the independent claims can realistically be drawn, and which fallback positions belong in the dependent claims. Art located during the search that is material to patentability is disclosed to the USPTO in an Information Disclosure Statement, satisfying the duty of candor under 37 C.F.R. § 1.56 and building a stronger, more litigation-resistant record of examination.

Patentability Opinions

A written legal assessment under 35 U.S.C. §§ 101, 102, 103 and 112

A patentability search identifies the art; a patentability opinion applies the law to it. In a written opinion, a registered patent attorney compares the invention — as the inventor has described it and as it would most likely be claimed — against the closest references located in the search and against the statutory requirements for a patent, and reaches a reasoned conclusion as to whether one or more claims of meaningful commercial scope are likely to be allowed.

The core of the analysis is novelty under 35 U.S.C. § 102 and non-obviousness under § 103. A claim is anticipated, and therefore unpatentable, if a single prior art reference discloses every element of the claim, arranged as in the claim. A claim is obvious if the differences between it and the prior art are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the art at the time of filing — an inquiry framed by the Supreme Court’s Graham v. John Deere factors and its later decision in KSR v. Teleflex, which cautioned against rigid tests and allowed examiners to draw on common sense and predictable combinations of known elements. Our opinions walk through that analysis element by element, identify the specific features that distinguish the invention from the closest art, and assess how persuasively those features can be defended against an obviousness rejection. Where relevant, the opinion also addresses subject-matter eligibility under § 101 — a threshold issue for software, business-method, and diagnostic inventions — and the written-description and enablement requirements of § 112 that determine how much of the invention the specification must actually teach.

The opinion also addresses timing. Under the AIA, an inventor’s own public disclosure, sale, or offer for sale more than one year before the effective filing date is an absolute bar to a U.S. patent, and most foreign jurisdictions provide no grace period at all. When an invention has already been shown to customers, presented at a trade show, offered for sale, or described in a publication, the opinion identifies the deadlines that those activities have set in motion and whether foreign rights remain available.

A patentability opinion is a business tool as much as a legal one. For an individual inventor or a start-up, it answers whether the invention justifies the investment in a full utility application and years of prosecution, or whether a provisional filing, a design patent, or trade-secret protection is the better fit. For a company with an active portfolio, it supports an informed decision on which of several candidate inventions merits filing, and in what order. For investors and licensees, a written opinion from independent patent counsel is frequently a condition of funding or a term of the deal. In every case, the opinion’s value lies in its candor: an opinion that identifies a serious obstacle before filing saves the client the cost of learning the same thing from an examiner two years later.

Post-Issuance Patent Infringement Studies

Is a competitor’s product actually within the claims? — 35 U.S.C. § 271

A granted patent is only as valuable as the claims it contains and the products those claims actually cover. Under 35 U.S.C. § 271(a), whoever without authority makes, uses, offers to sell, or sells a patented invention within the United States, or imports it into the United States, infringes the patent; § 271(b) and (c) extend liability to those who actively induce infringement or contribute to it by supplying a material component especially adapted for infringing use. Whether any of those provisions is triggered by a specific third-party product is a question of law and fact that turns on a disciplined, claim-by-claim comparison — and that comparison is what a post-issuance infringement study delivers.

The study begins where every infringement case begins: with the meaning of the claims. Claim terms are construed according to the framework the Federal Circuit set out in Phillips v. AWH — giving each term its ordinary meaning to a person of ordinary skill in the art, read in light of the specification and the prosecution history, and, where necessary, informed by extrinsic evidence such as dictionaries and technical treatises. The prosecution history is especially important, because arguments and amendments made to obtain allowance can narrow a term well below its plain meaning. With the claims construed, we obtain and analyze the accused product — through publicly available product literature, teardowns, reverse engineering, source code where it can be lawfully obtained, or the product itself — and map each claim element to the corresponding structure, step, or feature of the product.

Infringement is assessed under two doctrines. Literal infringement requires that every element of the claim be found in the accused product exactly as claimed; under the all-elements rule, the absence of a single element defeats literal infringement of that claim. Where an element is not literally present, the study asks whether the accused product nonetheless infringes under the doctrine of equivalents, which reaches a substitute that performs substantially the same function, in substantially the same way, to achieve substantially the same result, or whose differences from the claimed element are otherwise insubstantial. The reach of that doctrine is limited by prosecution history estoppel under the Supreme Court’s Festo decision — a narrowing amendment made during prosecution generally surrenders equivalents for the amended element — and by the rule that equivalents cannot vitiate a claim limitation entirely or capture what was already in the prior art. For design patents, the study applies the ordinary-observer test of Egyptian Goddess v. Swisa, asking whether an ordinary purchaser, familiar with the prior art designs, would be deceived into believing the accused design is the patented one.

The deliverable is a written opinion supported by claim charts — tables that set each claim element alongside the specific evidence showing whether and how the accused product meets it. Those charts serve several purposes at once. For a patent owner considering enforcement, they form the factual foundation for the pre-suit investigation that Rule 11 of the Federal Rules of Civil Procedure requires before an infringement complaint can be filed, and they become the backbone of any infringement contentions served in litigation. For licensing, a well-documented infringement position is what turns a demand into a negotiation. And because an infringement study exposes the strengths and weaknesses of each asserted claim, it guides the decision of which claims to assert, against which products, and in which forum — and flags where a defendant’s most likely response will be a validity challenge at the PTAB, so that the owner can prepare for it, or address it through supplemental examination, before filing suit.

Infringement studies also answer questions that arise after a patent has been asserted: whether a redesigned product still infringes, whether a component supplier faces contributory liability, whether the six-year damages window of § 286 and the marking requirements of § 287 limit the recoverable period, and whether the accused product was imported such that an exclusion order at the International Trade Commission is available. Each of those questions turns on the same element-by-element discipline, and each is best answered before positions are taken in correspondence or in court.

Post-Grant Proceedings Before the PTAB

Five distinct paths to challenging — or defending — a patent’s validity

The Leahy-Smith America Invents Act created the Patent Trial and Appeal Board (PTAB) and, with it, a set of administrative alternatives to challenging a patent’s validity in federal district court. Each proceeding has its own filer, grounds, deadline, and standard, and picking the right one — or combination — can be as important to the outcome of a dispute as anything argued in court.

The sections below walk through each proceeding in more detail.

Inter Partes Review (IPR)

35 U.S.C. §§ 311–319 — the workhorse of PTAB practice

Inter partes review is the most heavily used PTAB proceeding, and for a defendant facing an infringement suit, often the most important strategic option available outside the courtroom. A third party petitions the PTAB to cancel one or more claims as anticipated or obvious, based solely on prior art patents and printed publications — the same narrow grounds available in an ex parte reexamination, but decided by a panel of Administrative Patent Judges in an adversarial, trial-like proceeding rather than by a single examiner.

A petition cannot be filed until 9 months after the patent issues (or, if a post-grant review was filed, not until that PGR terminates), and it is time-barred if the petitioner was served with an infringement complaint on that patent more than a year earlier — a deadline that makes early IPR strategy essential for any defendant who wants to preserve the option. The PTAB institutes review only if it finds a reasonable likelihood the petitioner would prevail on at least one challenged claim, and the Board also retains discretion to deny institution even where that standard is met — most notably under the Fintiv factors, which weigh the proximity and status of a parallel district court trial date against the efficiency of proceeding at the PTAB.

If instituted, the PTAB issues a final written decision within 12 months (extendable up to 6 months for good cause), and the losing party may appeal directly to the U.S. Court of Appeals for the Federal Circuit. A petitioner who receives a final written decision is estopped from later raising, in district court or before the International Trade Commission, any ground it raised or reasonably could have raised in the IPR — a real trade-off that has to be weighed against the speed and cost advantages of the proceeding.

Post-Grant Review (PGR)

35 U.S.C. §§ 321–329 — broader grounds, a narrow window

Post-grant review opens a wider door than IPR — a petitioner can challenge a patent on any ground of invalidity, including patent-eligible subject matter under § 101, lack of written description or enablement under § 112, and the same novelty and obviousness grounds available in an IPR — but only during a 9-month window starting on the date the patent grants, and only against patents examined under the AIA’s first-inventor-to-file regime (patents with an effective filing date on or after March 16, 2013).

The PTAB institutes a PGR if it’s more likely than not that at least one challenged claim is unpatentable, or if the petition raises a novel or unsettled legal question that is important to other patents or applications. Once instituted, PGR runs on largely the same 12-month (+6 month) timeline as IPR, before the same panel structure, with the same broad estoppel effect against the petitioner in later district court or ITC proceedings. Because the 9-month window closes quickly, a business that wants to keep PGR available against a competitor’s newly issued patent needs to be watching the issuance date, not waiting for an infringement threat to materialize.

Ex Parte Reexamination

35 U.S.C. §§ 302–307 — the oldest tool in the box, and still useful

Ex parte reexamination predates the PTAB itself and remains available for anyone — including the patent owner — to request at any time during a patent’s enforceability, based on patents or printed publications that raise a substantial new question of patentability. Unlike IPR and PGR, reexamination is conducted by a patent examiner in the USPTO’s Central Reexamination Unit, not by an Administrative Patent Judge panel, and it proceeds largely like original examination: after the initial request, the requester (if it was a third party) has no further right to participate — there’s no discovery, no depositions, and no oral hearing for that requester, which is what makes the proceeding “ex parte.”

That more limited process cuts both ways. A third-party requester faces no estoppel from a later district court challenge on the same grounds, which makes reexamination attractive where a party wants to raise prior art without giving up its ability to litigate validity again later — but it also means less control over the proceeding once it’s underway, and no statutory deadline, so a reexamination can take considerably longer than an IPR or PGR to reach a final result. Patent owners also use reexamination offensively, to have their own patent’s claims reconsidered and strengthened against art they’re aware of, before asserting the patent against an infringer.

Derivation Proceedings

35 U.S.C. § 135 — the AIA’s replacement for interference practice

When the America Invents Act moved the United States from a first-to-invent to a first-inventor-to-file system, it eliminated the old interference proceeding (which resolved disputes over who invented first) and replaced it with the derivation proceeding, which asks a narrower question: did an earlier-filing applicant or patentee derive the claimed invention from the petitioner, without authorization, and then file on it without the petitioner’s consent?

A derivation petition must be filed within one year of the first publication of a claim to the same or substantially the same invention, and it’s decided by a PTAB panel based on substantial evidence that derivation occurred — corroborated evidence of communication between the parties and prior conception by the petitioner are typically central to the case. Derivation proceedings are far less common than IPR or PGR; most priority and inventorship disputes today are resolved by the first-to-file rule itself, but derivation remains the mechanism for the narrower, and serious, allegation that an application was filed on someone else’s invention.

Supplemental Examination

35 U.S.C. § 257 — the patent owner’s own tool, not an adversary’s

Supplemental examination is the one PTAB-adjacent proceeding that only the patent owner can initiate, and it isn’t adversarial at all. A patent owner asks the USPTO to consider, reconsider, or correct information believed to be relevant to the patent — often information the owner is concerned it should have disclosed to the examiner during original prosecution, but didn’t.

Because of that inequitable-conduct shield, supplemental examination is frequently used as a proactive cleanup step before enforcing a patent — closing off a defense an accused infringer might otherwise raise, before the patent is ever asserted in court.

Full Capability

Our Patent Services Include