News & Info

NEW REPORT ON PROTECTING INNOVATION: Special Considerations for the Scientist Turned Entrepreneur

Part 1: Understanding the Market Potential of Scientific Innovation

Over the last five years, the U.S. Supreme Court has decided more patent cases than it has in the previous two decades combined. The impact on those making innovative discoveries in the biotech and pharma fields is that it is far more difficult now than ever before to obtain legal protection for many types of scientific innovation. READ MORE…

Part 2:  Prior Art

Scientists who launch start-ups to commercialize their work often find the already difficult challenge of obtaining patent protection even more difficult. READ MORE…

Part 3:  Patent Application Drafting

Drafting a patent application is not a trivial task. Founders/inventors in the life sciences and biotech fields who try to short-cut the process by “do it yourself” patent drafting do so at their peril. READ MORE

BIOTECHNOLOGY LAW REPORT:  Beyond the Law

Gorman IP Law Founder Susan Gorman was featured in the June 18, 2015,  issue of the Biotechnology Law Report. Her article focuses on addressing the unmet needs of biotech start-ups.  READ MORE…

ARTICLE: Bio/Patent Discoveries Face Tougher Road to Eligibility

Protecting innovation has become far more difficult in the last few years, especially in the biotech and pharma fields. Despite the challenging landscape, there are some steps that can be taken to increase the probability of success for companies who want to protect the inventions at the core of their business and stay competitive. READ MORE…

ARTICLE: The Science, Art and Strategy of Patent Claims

Once you’ve determined your idea is patentable, the first step of moving forward with the preparation of a patent application is to draft the claims. Of course everyone wants the broadest claims possible because that will provide the largest scope of protection. But for many areas of science and technology – particularly for biotech, pharma, and software-based products and applications — the United States Patent and Trademark Office will view broad claims with skepticism. READ MORE…

ARTICLE: Patentability Searches: “Nice to have” or “Need to have”?

When it comes to patent protection, the decision about whether to file for a patent is equal to if not more important than actually filing for the application itself.  Yet all too often entrepreneurs short-cut the patenting process to their peril because they are reluctant to spend precious economic resources on products or activities that they do not consider vital. They mistakenly believe that if there is nothing like their invention on the market then a patent will be standard issue. READ MORE…

ARTICLE: Moving from idea to invention

All inventions start out as an idea. Sometimes that idea is part of a concept involving a particular technology. Sometimes it is an approach to solving a problem. Sometimes it is a way to improve something that is already in the marketplace and being sold. But one thing is for certain: An idea is not an invention. So how do you know when an idea turns into an invention? Read More…

ARTICLE: Patent Application Drafting – The Written Description and Enablement Requirements

The requirement “Written Description” sounds simple, but when it comes to describing an invention in order to obtain a patent, it can be a tricky element to fulfill. In fact, many inventors fail to appreciate the significance of the Written Description requirement, as well as that of Enablement, when applying for patent protection. Read More…

ARTICLE: Patent Application Drafting — Considering Novelty and Obviousness

Most inventors understand the importance of keeping an invention secret until they have a patent application on file. So it is no surprise that once they have a complete idea of the invention or have developed a working prototype, they are eager to begin the patenting process and be at liberty to discuss the invention, initiate marketing and begin to seek funding. Yet drafting a patent application is not a trivial task. Inventors who try to short-cut the process do so at their peril. Among the common misconceptions of patent applications is the understanding of the legal terms “novelty” and “obviousness.” Read More…

ARTICLE: Patent Applications — DIY Patent Searches: Risk or Reward?

Most entrepreneurs believe that their innovation will make a contribution to the marketplace or to society. Certainly, the vast majority also expect that there will be some financial reward that will flow from their hard work to justify the time and expense associated with obtaining a patent. But while most understand the value of patent protection, many are hesitant to pay a legal expert to thoroughly search for publications that are related to the science or technology underlying the invention before they file an application. After all, why pay someone to review published literature when they are intimately familiar with what is known, understood and speculated about in their area of expertise? And yet, while it may seem counter-intuitive, getting the right legal counsel early can be a huge money-saver down the road. Before you embark on a DIY patent search and application, make sure you understand the risks. Read More…

ARTICLE: Protecting Innovation:  Patent Searches – Risk or Reward?

Most entrepreneurs believe that their innovation will make a contribution to the marketplace or to society. The the vast majority also expect that there will be some financial reward that will flow from their hard work to justify the time and expense associated with obtaining a patent. But while most understand the value of patent protection, many are hesitant to pay a legal expert to thoroughly search for publications that are related to the science or technology underlying the invention before they file an application. Before you embark on a DIY patent search and application, make sure you understand the risks. Read more . . .

ARTICLE: Protecting Innovation: Utility Patent Applications

The patent application process is far more than a legal formality. Getting it done and getting it done right have strategic consequences for how companies develop and grow their businesses. Utility patent applications are important for any business built around intellectual property. The way in which you file a utility patent application can have far reaching consequences on where your innovation receives protection. Read more . . .

ARTICLE: Protecting Innovation: Provisional Patent Applications & Apple’s Cautionary Tale

Almost everyone remembers when Steve Jobs took the stage to introduce the original iPhone to the world. Yet few people realize that during that iconic presentation, Steve Jobs also made a costly mistake. Read more . . .

ARTICLE: Protecting Innovation: Hidden Risks of Confidentiality and Non-Disclosure Agreements

Many entrepreneurs use Confidentiality or Non-Disclosure Agreements (collectively “NDAs”) when talking with consultants, investors, and potential business partners about new innovations. While NDAs are fundamental for protecting trade secrets, they can create a false sense of security if the agreements involve products or methods that fall outside of trade secret protection and that have not yet been patented. Read more . . .

ARTICLE: Protecting Innovation: You invented it, but how much do you own?

The law clearly provides owners of invention with full right, title, interest and control of the invention. But that clarity quickly blurs when multiple inventors and collaborators start working together to commercialize innovation. In such cases, inventors are well-advised to think early about their long-term objectives so they can protect their interests and maximize their ability to profit in an ongoing way. Read more . . .

ARTICLE: Protecting Innovation: The Impact of Employer-Employee Relationships on Patent Ownership

Patent ownership is a powerful competitive tool that has the potential to protect a business’ position in the marketplace and keep competitors at bay. Companies must protect the investment that they make in hiring employees to develop new technologies and solutions for problems in the marketplace. Often the answer to the question of who owns the resulting patent rests in the employment agreement. What does your employment agreement protect? Read more . . .

ARTICLE: Protecting Innovation: Are You Sure You Invented That?
What Business Lawyers and Entrepreneurs Need to Know About Protecting the Intellectual Property at the Core of their Business

Most technology-based businesses are concerned about protecting the Intellectual Property at the core of the business.  But for new entrepreneurs seeking patent protection for their inventions, figuring out what needs to be done and how to do it can be daunting. Read more. . .

PRESS RELEASE: Patent and Trademark Expert Launches Gorman IP Law, APC
New firm focused on protecting core asset of intellectual property to help business owners maximize competitive advantage

SAN DIEGO, August 13, 2013 – Dr. Susan Gorman announced today the launch of Gorman IP Law, an intellectual property firm that uses a proprietary strategic assessment process to help start-up and emerging companies leverage their intellectual property as a competitive tool and better plan for IP-related costs. Read more…