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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Deepak Malhotra, JD, BSEE

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Martindale-Hubbell

5 out of 5-Preeminent
Peer Review Rated for Highest Level of Professional Excellence

ThreeBest Rated

Listed as one of the Top 3 Patent attorneys in Spokane, WA by ThreeBest Rated.

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.

 

 

Top Patent Prosecutor

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

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

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

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

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

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

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)

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

IOENGINE, LLC v INGENICO INC., FEDERAL CIRCUIT 2024
June 29, 2024
By Deepak Malhotra

IOENGINE, LLC appealed decisions of the U.S. Patent and Trademark Office Office’s Patent Trial and Appeals Board that found unpatentable certain claims of U.S. Patent Nos. 8,539,047; 9,059,969; and 9,774,703. The patents relate to a tunneling client access point (TCAP) that is a “highly secure, portable, power efficient storage and…

USC IP PARTNERSHIP V META , FEDERAL CIRCUIT 2023 (SOFTWARE PATENTS)
December 12, 2023
By Deepak Malhotra

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)
September 5, 2023
By Deepak Malhotra

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)
April 29, 2023
By Deepak Malhotra

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)
March 24, 2023
By Deepak Malhotra

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…

Latest News

Allergan: En Banc Support for Stronger ODP Rules
15 October 2024 | 12:53 pm

We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context.  In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long as the extended term is in a first-filed, first-issued patent. Allergan USA, Inc. v. MSN Laboratories Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  Sun Pharma has petitioned for en banc rehearing – hoping to invalidate Allergan’s protected patent.

Prior posts:

  • En Banc Review in Allergan: Rehearing Petition Tackles ODP Safe Harbor and WD Essential Elements
  • Family Planning Patent Style: Allergan, Cellect, and the ODP Maze

Two amicus briefs were recently filed supporting the petition – One by the Association for Accessible Medicines (AAM) and the other by a corporate group led by Alvogen PB.

  • AAM Amicus
  • Alvogen PB and Inari Agrig Amicus

As I discussed in my prior post on the en banc petition, the panel majority held that “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.”  The panel also reversed the district court’s finding of lack of written description for claims reciting optional glidants.

Continue reading this post on Patently-O.

USPTO Tweaks PTAB AIA-Trial Counsel Rules; NO Major Overhaul
14 October 2024 | 3:52 pm

by Dennis Crouch

The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far as some had proposed in allowing non-registered practitioners to take lead roles.  In other words, lead counsel must be a registered patent practitioner.

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Continue reading this post on Patently-O.

The Substance of OpenAI’s Patent Pledge?
14 October 2024 | 2:50 pm

by Dennis Crouch

OpenAI’s new patent pledge promises to use their patents only for defensive purposes, as long as other parties do not assert claims against them or engage in harmful activities. The move echoes Tesla CEO Elon Musk’s 2014 declaration that “all our patent … belong to you” – a pledge that garnered significant attention but left many questions unanswered. OpenAI’s pledge suffers from similar ambiguities and limitations that may ultimately render it more of a PR move than a meaningful commitment to open innovation.

OpenAI’s pledge states in part: “We support the efforts of others in the use and development of AI model technology. We pledge to only use our patents defensively, so long as a party does not threaten or assert a claim, initiate a proceeding, help someone else in such activities against us, or engage in activities that harm us or our users.”

At first glance, this may seem like a significant commitment. However, various scholars have noted in their analyses of patent pledges, the devil is in the details – or in this case, the lack thereof. See Jorge Contreras, Patent Pledges, 47 Ariz.

Continue reading this post on Patently-O.

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.