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. 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.
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.
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 meet a “machine or transformation” test. Many inventions that are thought to be business method inventions are really what I consider to be software inventions.
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 Bilski v. Kappos, held that the concept of hedging, described in Bilski’s claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea. So what types of software inventions are patent-eligible?
Challenging Business Method Patents
The America Invents Act (AIA) created a new special transitional procedure for challenging business method patents, which are apparently considered to be more suspect than other patents. The procedure is called the Covered Business Method review procedure. An issued business method patent, that has gone through a complete review by the U.S. Patent and Trademark Office and that has been allowed by an examiner, and litigated in court, can be reviewed again by the Patent Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office under this procedure if it is a covered business method patent.
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.
Why Non-U.S. Software Developers Should File U.S. Patent Applications
I recommend that companies in the UK, China, Japan, Brazil, and India, and elsewhere routinely file software patent applications and business method patent applications in the USA.
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 new first-to-file system takes effect for patent applications filed March 16 and thereafter. If claiming priority to an application filed before March 16, take care not to claim any new matter or you will be in the new system.
Latest blog posts
Intellectual Ventures I LLC v. Symantec Corp., Trend Micro Incorporated, Bipolar Federal Circuit 2016
It is bad enough that the Supreme Court doesn’t know what it is doing when it comes to software patents. In Alice v CLS, they…
McRo, Inc., dba Planet Blue v. Bandai Namco Games America, post-Alice decision finding computer-implemented invention patentable, Federal Circuit 2016
This was an appeal from a grant of judgment on the pleadings that the asserted claims of U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and…
BASCOM Global Internet Services v AT&T Mobility, post-Alice decision finding computer-implemented invention patentable, Federal Circuit 2016
This was an appeal against a district court decision that the claims of U.S. Patent No. 5,987,606 are invalid as a matter of law under…
How PTO Submissions Can Waive Privilege to Future Communications – Even for Trial Counsel and Subsequent Patent Owners
In re OptiumInsight (Federal Circuit 2017) The Federal Circuit has denied OptumInsight’s petition for writ of mandamus on privilege waiver. In the underlying litigation, OptumInsight has sued Cave Consulting for infringement of several healthcare analytics patents. One of the originally asserted patents – U.S. Patent No. 5,835,897 – was developed by Symmetry Health Data Systems who later merged with Optum. (In […]
by Dennis Crouch In NobelBiz v. Global Connect, a jury sided with the patentee-finding that global connect infringed the caller ID modifying patents. On appeal however the Federal Circuit has reversed on claim construction – in a non-precedential opinion. The claimed invention is associated with telemarketing, and the idea is to “provide a callback number […]
Steve Brachmann: Report Shows Drug Patents Fare Better In IPR Proceedings At PTAB Jo Dale Carothers: Offensive Trademarks Are Protected Free Speech Under The First Amendment Andrew Chung: Supreme Court And Top Patent Court Rarely See Eye To Eye Devin Salmon: A Brief Look At The Trend Of Patent Cases Before The US Supreme Court […]
Software Patent Lawyer, and Business Method Patent Attorney
Deepak Malhotra, JD, BSEE resolves business method patent litigation: he 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, and digital clock recovery loops.
Deepak has experience in:
- Protecting mechanical inventions
- Venture-capital funded start ups & Fortune 500 companies
- Securing foreign companies and law firms intellectual property protection in the U.S.
- Software related inventions, software and business method patents
- International protection of inventions
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. He has developed relationships with litigators and have assisted clients with aggressive enforcement of intellectual property. Software patents, business method patents, electrical patents, and mechanical patents are his specialty.
Deepak Malhotra Is Not Just A Patent Attorney,
He Is An Inventor Too, With Two U.S. Patents In His Name.