Deepak Malhotra, JD, BSEE
Inventor and US Patent Attorney
Are you looking for a partner to help protect your ideas?
Let me introduce myself. I am Deepak Malhotra. I have over 20 years experience in patent preparation and prosecution, and have successfully prosecuted hundreds of patent applications to allowance. I have worked on large portfolios for many Fortune 500 companies. Importantly, I am dedicated to strong customer service. That’s not something you experience much in the legal world – but I believe you deserve timeliness as well as quality.
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Software Patent Lawyer, Electronics Patent Attorney
Deepak Malhotra, JD, BSEE has worked extensively with various technologies including software, RF communications, sensors, smart cards, ESD protection, tape drivers, servo systems, printers, static memory cells, dynamic memory cells, database, publishing systems, virtual reality, wafer production methods, wafer polishing, antenna diversity systems, RF collision arbitration systems, marketing systems, electron multipliers, microwave electronics, digital clock recovery loops, secure network authentication systems, user interfaces, and more. Malhotra Law Firm, PLLC was a minority certified patent law firm, certified by the Northwest Mountain Minority Supplier Development Council.
Malhotra Law Firm, PLLC has experience in:
- Protecting electrical, electronics, and mechanical inventions
- Assisting venture-capital funded start ups & Fortune 500 companies
- Helping foreign companies secure intellectual property protection in the U.S.
- Protecting software inventions with software patents
- International protection of inventions
Patents
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent,” subject to the conditions and requirements of the law. These classes of subject matter taken together include practically everything made by man and the processes for making them.
Trademarks
The primary function of a trademark is to indicate origin. However, trademarks also serve to guarantee the quality of the goods or services and, through advertising, serve to create and maintain demand. Rights in a trademark are acquired by use or applying for a federal trademark registration before use.
Business Method Patent Considerations
Attitudes towards business method patents have swung back and forth like a pendulum but recently the Supreme Court has refused to deem business methods patent ineligible. Business methods are generally eligible for patent protection if they pass a “Mayo/Alice” test. The first part of the test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. Many inventions that are thought to be business method inventions are really what I consider to be software inventions.
Software Patents
Like it or not, software patents are here to stay! Instead of hoping that they go away, your best defense against future potential infringement threats by others is to have an arsenal of your own. The U.S. Supreme Court, in a case known as Alice v. CLS, held that using a computer to automate a well known financial method is an unpatentable abstract idea. So what types of software inventions are patent-eligible?
How to Protect Phone Apps
Are you a smart phone app developer? If so, you will want to know what forms of intellectual property are available for protecting smart phone apps.
Provisional Patent Applications
The United States has a form of patent application called a Provisional Patent Application. Some people feel that these are an easy and inexpensive way to obtain a filing date and some patent rights, but they are usually unaware of the risks and downside.
Important Changes to U.S. Patent Law: America Invents Act (AIA)
The United States switched from a First-to-Invent system to a First-to-File system. That makes it important to file patent applications sooner rather than later.
Conducting A Patent Novelty Search
A thorough patent search is an enormous undertaking. However, you can start with a novelty search that covers the most likely languages and places.
The History of Software Patents Blog
USC IP PARTNERSHIP V META , FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
USC brought suit for infringement against Facebook, Inc. (now Meta Platforms, Inc.), asserting that its “News Feed” feature infringes claims 1–17 of U.S. Patent No. 8,645,300. The software patent relates to a search engine software method for predicting which webpages to recommend to a web visitor based on inferences of…
TRINITY INFO MEDIA, LLC V. COVALENT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
Trinity Info Media, LLC sued Covalent, Inc. for infringement of U.S. Patent Nos. 9,087,321 and 10,936,685 relating to methods and systems for connecting users based on their answers to polling questions. U.S. Patent No. 9,087,321 teaches that its claimed invention is “directed to a poll-based networking system that connects users…
HANTZ SOFTWARE, LLC, V SAGE INTACCT, INC., FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
Any ineligibility judgment should apply to only claims asserted in a complaint if held patent-ineligible after a motion to dismiss for failure to state a claim. Hantz sued Sage alleging that Sage infringed U.S. Patent Nos. 8,055,559 and 8,055,560. Sage moved to dismiss the complaint for failure to state a…
HAWK TECHNOLOGY SYSTEMS, LLC, V CASTLE RETAIL, LLC, FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
A multi-format digital video product system capable of maintaining full-bandwidth resolution while providing professional quality editing and manipulation of images, which is capable of conserving bandwidth while preserving data is not patent-eligible. Appellant Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC in the Western District of Tennessee for patent…
IN RE CERTAIN POLYCRYSTALLINE DIAMOND COMPACTS AND ARTICLES CONTAINING SAME, INTERNATIONAL TRADE COMMISSION 2022 (SUBJECT MATTER ELIGIBILITY)
The ITC took 35 U.S.C. § 101 to its logical extreme in this case, finding that diamond drill bits with certain physical measures are not patent-eligible. The U.S. International Trade Commission conducts unfair import investigations that, most often, involve claims regarding intellectual property rights. US Synthetic Corporation filed an ITC…
Latest News
Guest post by Profs. Chien and Grennan: Unpacking the Innovator-Inventor Gap: Evidence from Engineers
By: Colleen V. Chien, Professor of Law at the University of California, Berkeley School of Law and co-director of the Berkeley Center for Law and Technology, and Jillian Grennan, Associate Professor of Finance and Sustainability at the University of California, Berkeley Haas School of Business. This post is part of a series by the Diversity Pilots Initiative. The Initiative will be hosting its second conference at Emory University Law School in Atlanta on Friday, September 20, 2024. Indicate your interest by signing up here.)
Which IP professionals ascend to partnership or top counsel roles? Which professors publish in the top journals? And which innovators become inventors? This question of who among lawyers, academics, or innovators reaches the next milestone in the progression of a career is relevant in many settings. It has been a central focus in the world of innovation since USPTO’s Director Kathi Vidal’s urgent call to ensure that we “get everyone off the bench” in order to solve world problems and foster economic prosperity.
This call is motivated by the observation that while women comprise 35% of the STEM workforce, they make up only 13% of inventors; Black professionals represent 9% of STEM workers but only 1.2% of inventors.
Guest post by Lolita Darden: PPAC’s Bold Strategy to Transform Patent Inclusion
Guest post by: Lolita Darden, Chair, U.S. Patent and Trademark Office Patent Public Advisory Committee; Managing Partner, Darden Betts Strategic Intellectual Property Counselors; Visiting Associate Professor, George Washington University Law School. This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.)
This year the Patent Public Advisory Committee, also known as PPAC, turns 25. Established in 1999, PPAC is a 9-member advisory committee appointed by the Secretary of Commerce. Each member serves a 3-year term, and I am starting my second year. The primary purpose of the Committee is to review the policies, goals, performance, budget, and user fees of the USPTO with respect to patents. The Committee is also charged, by statute, to advise the Director of the USPTO on these matters and to prepare a report to Congress on the advisory actions the Committee has undertaken during the calendar year. You can find the 2023 PPAC Annual Report
As the new Chair of PPAC, I look forward to collaborating with the Committee and Director Vidal to serve the interests of the American people and the IP community in ways that enhance national and global competitiveness, accelerate growth in GDP, and drive innovation and entrepreneurship.
SCT: False Claims Act Actions Based Upon Fraudulently Obtained Patent Rights
by Dennis Crouch
This post walks through a new petition for writ of certiorari involving claims that Valeant Pharma defrauded the U.S. government by using fraudulently obtained patent rights prop up its drug prices. [Read the Petition]
The False Claims Act (FCA), originally enacted in 1863 to combat contractor fraud during the Civil War, imposes civil liability on anyone who “knowingly presents” a “fraudulent claim for payment” to the federal government. 31 U.S.C. § 3729(a)(1)(A). The Act allows private citizens, known as “relators,” to bring qui tam actions on the government’s behalf against those who have defrauded the government. If successful, relators can recover up to 30 percent of the damages. 31 U.S.C. §§ 3730(b)(4), (d)(2).
To prevent opportunistic lawsuits, however, Congress has sought to strike a “balance between encouraging private persons to root out fraud and stifling parasitic lawsuits” through the FCA’s public disclosure bar. Graham Cnty. Soil & Water Conservation Dist. v. United States ex rel. Wilson, 559 U.S. 280 (2010). As amended in 2010, the public disclosure bar requires courts to dismiss a qui tam action “if substantially the same allegations or transactions as alleged in the action or claim were [already] publicly disclosed” in certain federal proceedings or the news media, unless the relator is an “original source” of the information.
While one of only three Electrical Engineer attorneys at his previous firm, the firm was ranked #2 in the U.S. for quality of Electrical Patents by PatentRatings, LLC. Deepak Malhotra has developed relationships with litigators and has assisted clients with aggressive enforcement of intellectual property. Software patents, business method patents, electrical patents, and mechanical patents are his specialties.
Deepak Malhotra Is Not Just A Patent Attorney,
He Is An Inventor Too, With Two U.S. Patents In His Name.