Category: Online Patent Attorney

In general, you should not use a trademark belonging to another company. Besides avoiding conflict, it is bad marketing to promote the brand of another for free – which is what you are doing. That’s why TV shows have started blacking out logos on vehicles unless they’ve paid to advertise on the show.

If you must use someone else’s trademark, it is best to do so only with their permission. Permission should be in writing, and they should provide you with specific guidelines for using their marks in your marketing materials.

If it is impossible to get permission, and you absolutely have to use someone else’s trademark in order to explain that your product works with their product, you are allowed to use it in a limited manner to describe that your product fits on the XYZ(R) product Manufactured by XYZ Corporation. You MUST use their mark properly (typically setting it apart and noting that it is a registered trademark). It is extremely important that you do not use their mark to promote your product or imply any sort of endorsement/partnership/etc.

Typically, using someone else’s trademark should be in small print (not prominently displayed) and reference would be made that “XYZ(R) is a registered trademark of XYZ Corporation and XYZ Corporation is not associated with and does not endorse our product line in any manner”. Even then, if you don’t disclaim it exactly the way they want you to, you can expect to receive a letter from their attorney.

General Information Only. Not Legal Advice. Seek the counsel of an attorney in your area for further assistance.

A provisional patent application automatically goes abandoned after one year from the date of filing. Here are a few things to consider before converting a provisional patent application to the full utility patent application.

You have one (1) year from the filing date of the provisional application to convert a provisional patent application. You can file the full utility patent application at any time before this. But the provisional patent application provides Patent Pending or “Pat. Pend.” status for your invention for the full year. So there is no rush to file the full utility patent application before the end of the one year anniversary. That is, there is not a legal reason to file early. Of course, you may have a business reason for doing so.

Learn more about Should I file a Provisional Patent Application

If you have made changes/improvements, you may even want to consider filing a follow-on provisional patent application. You can then combine both of those into a single full utility patent application. You may want to do this closer to the deadline (near the end of the year).

Once you file a full utility application, you cannot make any changes without filing another full utility patent application. This can get expensive. So if you think you may make any changes in the near term, you would be better to hold off. That way when you file the full utility application you can incorporate those changes into the full utility patent application.

Keep in mind too, that the patent, if granted, is valid for 20 years from the date of filing the full utility application. Not the filing date of the provisional patent application. The 1-year patent pending period of the provisional does not count against this 20 year term. So again, you may want to hold off before converting the provisional patent application.

I’m not trying to convince you not to convert a provisional patent application early. I just want to make sure you are able to make an informed decision on the timing.

What should I consider when it’s time to file the utility patent application?

Whenever you are ready to proceed to the full utility application, be sure to include any updates. You can also add more technical detail that you want to include. You will want to be sure to include as much detail as possible for the broadest protection. For example, even if you are not planning to implement features, you may want to consider including those in your patent application. That way you may be able to block a competitor from offering these features. Or you may be able to license those features of your invention to a competitor someday.

Be sure to talk to your patent attorney. A patent attorney can help answer any questions you might have about when to convert a provisional patent application.

The question of inventorship is a legal question. The law requires all inventors who made an inventive contribution to the invention to be named in a patent application. Routine testing of an invention does not meet this criteria. Inventor(s) are the people with the “Ah ha!” moment in their mind.

Find out about Proof Of Concept.

Often, people want to add their friend, co-worker, supervisor, etc. as a “courtesy”. However, it is improper and actually illegal to do this under the Patent Law. 

However, failing to name an inventor who made an inventive contribution can lead to ownership issues down the line. For example, someone who was not named as an inventor on a patent application can challenge ownership of the patent. It doesn’t matter if the inventor was left off purposefully or left off by mistake.

Naming an inventor is a legal determination. Inventorship can only be determined once you know what the claimed invention is.

Who Own Rights To The Invention?

Be careful if you are working with someone else on product development. You will want to make sure to have an agreement in place with that person that “in the event” they do come up with anything patentable. The agreement should specify that they are required to assign all patent rights to you or your company.

Typically independent contractors own the rights to anything they invent absent a prior written agreement obligating them to assign the rights. Even employees may own rights to an invention, except under particular circumstances. So it is best to have an employment agreement with all employees. The employment agreement should require that inventions be assigned to their employer.

Find out Does My Employer Own My Invention?

A Patent Attorney can help you determine who should be named an inventor and help keep it from becoming an ownership issue down the road. While the Patent Office allows corrections to naming inventors if a mistake was made, the Patent Office may not allow a correction where an inventor was intentionally left off of the patent application. Read more about Improper Naming Of Inventors at the US Patent Office Website.

The U.S. Patent and Trademark Office (USPTO) requires applicants to submit drawings of their invention to help the examiner understand its workings.  This applies to all types of patents, including utility patents, which are the most common.   The majority of patent applications do contain drawings. You are probably wondering where should I get the drawings for my patent.  

Patent drawings are often very technical and just the idea of preparing them yourself can be very intimidating.  One question you might be thinking of is can you do the drawings yourself and not have to hire a professional draftsman, engineer or talented artist and the answer is usually yes and there are books you could read to help you along the way.   There are several advantages of doing the drawings yourself including cutting significant costs and having more control over your timeline and product.

You have two options when it comes to preparing the patent drawings.  You can hire a professional draftsperson or drafting company or you can prepare them yourself.   Many inventors do hire a draftsperson to prepare the drawings and such firms are easily found online.  The advantages of using a professional are: these individuals or firms usually know what must be included in the drawings and how to describe the inventions visually in a way that the USPTO will accept; and they would save you time and effort of undertaking this task on yourself.  There are also disadvantages of using a professional.  It can be very costly to hire a professional. Prices vary significantly depending on how complex your invention is.  Another disadvantage is that you will lose control over the drafting process and could pay additional money to go through many edits and changes.

If you can write the patent application yourself or at least help your attorney write it, you can probably also do the drawings yourself. You will need to make sure you know the rules of the USPTO for the drawings. 

Your attorney could help you decide if you should do your drawings yourself or hire a professional.  

There are three types of patent research that should be done by you or your attorney.  These types of research are patent infringement, patentability, and idea generation.

Patent infringement is a very common reason to research patents.  This type of patent search is done and patents are examined to determine if the invention infringes on the claims of another patent.  You would do this by examining similar patents to your own and comparing them.  It is important to look at what has already been patented.  If your idea infringes on a particular patent, you should check to see what the issue date is.  Patents expire in 20 years so if it has been more than 20 years, you could use the patented material from the invention. If the patent is still existing and you decide to take your product to market you could be opening yourself up to many legal issues.  If you find that your patent does infringe on another patent you could: change your invention by designing around the patent claims that could be infringed upon; get a license from the inventory; or just give up the idea altogether.  Most attorneys would probably recommend to change your idea or just abandon the concept.

Another type of research inventors should do is a patentability search. It is a tough standard for a patent to be patentable. Your invention should be novel, non-obvious and useful.  Inventions ideas are usually useful but being non obvious and novel seem to be the cause of most patent rejections. This is the reason why patentability searches should be done by professionals. 

Patent research is also a great way to find new ideas.  You can look at what other people have done for solutions and then apply that solution to your situation.   This is a great technique to use to build on initial thoughts and to solve problems.

Always consider hiring an attorney to help you do your research or do the research for you. 

Do you wonder what licensing a patent is?  It simply means that you, as the patent owner, grants permission to an individual or organization to make, use or sell your patented invention. Licensing takes place according to agreed terms and conditions, for a specific purpose, in a defined territory, and for an agreed period of time.  In other words, licensing the patent is a mutual agreement between an individual or companies or a company which you choose to make, use and sell your product in the market. As you are the patent holder, your ownership for the invention is retained and you enjoy royalty payment on the product.  It is always best and recommended to license your patent to a company that is one of the top players in capturing market interest already in the subject of your invention. In that way, your patent would fit the product gap.

Why would you want to license your patent? You may not have the necessary manufacturing facilities, for example, and therefore you now have the option to allow others to make and sell your patented invention in return for “royalty” payments. Another possible reason is you may wish to concentrate on one geographic market and therefore you may choose to grant a license to another individual or organization that has interests in other geographical markets.  Entering into a licensing agreement can help build a mutually-beneficial business relationship. Licensing also is a very convenient and easy method to convert your idea into reality without having to invest any resources but ensuring a lifetime of royalty. In this case, the lifetime refers to the patent and not the patent owner or inventor. Also, you would have no manufacturing or distribution costs if the product is licensed to an individual or company. This would leave you free of liability but you could still enjoy royalties.  If you license your patent to a  well-known company, your product is more likely to enter the market in a faster and shorter period of time.
An attorney can help you get a simplified patent licensing strategy and write a license agreement with the terms and conditions that you desire.

Has your patent been repeatedly rejected?  If so, you could consider filing an appeal and this might be your only reasonable option.  It is probably the right time for an appeal if you have tried to compromise with the patent examiner and tried using easier options.  The appeals are decided by the Patent Trial and Appeal Board of the United States Patent office.

How do you begin the process of an appeal?  The first thing you must file is a Notice of Appeal.  At the latest, this needs to be filed within six months of the final rejection with payment of the appropriate extension fees.  This filing begins a two-month deadline to file an Appeal Brief.  Since you are in control of the deadline for the Appeal Brief, you could hold off on filing the Notice of Appeal if there are additional arguments or pieces of evidence you want to introduce into the record if you wish.

After the Appeal Brief is filed, the Examiner will meet with the supervisor and another examiner to discuss the rejection, your appeal brief and whether they want to send the appeal to the Board.  At this stage, they can either withdraw the rejection, which would end the appeal process, or move forward with the appeal.  If they decide to move forward with the appeal, they would file an Examiner’s Answer.  You would then be required to pay a forwarding fee to the United States Patent Office within two months of the date of the Examiner’s Answer in order to send the appeal case to the Board.

The applicant can then file a Reply Brief in response to the arguments in the Examiner’s Answer.  This Reply Brief should not consist of the arguments that were already made in the Appeal Brief and is due two months from the date of the Examiner’s Answer.

You may also request an oral hearing but the attorneys’ fees vary widely and can be very expensive.

The Patent Trial and Appeal Board usually issues a decision about 30 months from when the start of the appeal begins.  The possible outcomes could be a remand, new grounds of rejection, reversal or affirmation of the Examiner’s rejection.  If the appeal is determined in the Examiner’s favor, you must file a request for continued examination within 63 days or the application will go abandoned.

You are probably wondering what could happen if you do not patent your invention.  Here are some examples of what could happen and that you should consider when you are deciding if you should patent your invention.

If you don’t patent your invention, competitors will probably take advantage of this and could be tempted to make the same product by using your invention without even asking for your permission.  for their inventione fact that you did not patent your invention.  Larger companies may try to produce the product cheaper and compete at a more favorable price which could reduce your company’s market share for the product.

Also, the possibilities to license, sell or transfer the technology behind your invention could be reduced if you don’t patent your invention.  Without patent protection, all sides could be very suspicious of disclosing their inventions during talks about selling it with the fear that the other side might “run away with the invention”.

You also have to consider the possibility that someone might patent your invention first.  The first person or company to file the patent has the right to the patent.  This could mean that the employees of your company or someone else, who may have developed the same or similar invention, may apply for a patent. They could legitimately exclude your enterprise from market, limit your continuation of prior use and/or ask your company to pay a licensing fee for using the invention, if they have it patented before you. 

If you do not want to file a patent application, one way to ensure that no one is able to patent your invention is by disclosing the invention to the public so that it becomes prior art for any prior application filed after you make it public knowledge.  This is known as placing it in public domain. Later filed patent applications containing the same or similar invention will be refused by the patent office on the grounds of the lack of novelty or inventive step because of the existence of prior art.  It is also important to realize that disclosure of your invention before filing a patent application could severely limit the possibility of obtaining patent protection for that invention.

You should hire a patent attorney who can help you decide if your invention is considered patentable or not.    

Are you wondering what you need to be a successful inventor?  You will find tips below to help you.

Most inventions are improvements and/or solutions that have been made to known devices. An inventor who focuses on improvements can be quite successful. A well known inventor, Thomas Edison, rarely came up with pioneering inventions.  He usually just took something someone had already come up with and made it much better.  For commercial success, by focusing on improvements you already know a market for the underlying product already exists and this is one of the largest hurdles for you to overcome.  If you are inventing something that is the first of its kind, you will need to spend time and financial resources to educate the public so that they know why they might need this product or invention that never existed.  Knowing that creating a market is not easy, many successful inventors tend to stick to improvements. 

You should also just keep layering on specifics to your invention.  This will even make the most critical patent examiner say that you have a non-obvious invention, which you want.  It is also very critical that a patent search is done.  It is important to have some sense of what is already out there before you start investing money to move forward with patent applications, prototypes, manufacturing and models.

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It is also very important for you to be honest with yourself.  Is your improvement better from other improvements or solutions? Since you will have many expenses, your invention should be great enough to buy and great enough to pay a premium for.  This premium is what will help compensate you for the expenditures of the patent.

Would you pay good money for your invention?  Of course you would, but would others pay good money for it?  Be honest with yourself when you are thinking about this.  Just remember, you are about to or already have spent a great amount of money and if you are wrong, you will not be getting your money back.  Also, if you are a creative inventor, this means you will have other inventions and pursuing an invention that has no marketability means fewer resources for your next invention. 

When pursuing a patent, it is always good to talk to a lawyer about the best approach.

Computers are a big part of our lives so it would not be unheard of for anyone to question whether or not software-related inventions can be patented?  The answer to this is laws and practices regarding this can differ from one country or region to another. For example, in some countries, “inventions” must have a “technical character” when it involves the meaning in patent law.  In other countries, this requirement does not exist, which means software is generally patentable in these countries. 

In order to obtain a software patent, the software invention must not fall under other non-patentable subject matter.  It also has to fulfill other patentable criteria and industrial applicability. For example, abstract ideas or mathematical theories are not allowed in software-related patents but the patent has to be novel, non-obvious and useful.

Therefore, it is recommended that you check with a practicing lawyer that specializes in intellectual property or check with intellectual property offices in the country in which you are interested in obtaining a software patent.

If you have a piece of software you would like to patent, you should ask yourself the following questions: what is unique about my software, what is the desired function of my software, how does the software handle information, what is the user interface like, what problems does my software solve, and what parts of my software program would I like to protect with my patent?  You should also look at your software patent from different viewpoints.  You should look at it from the user’s point of view and also from the computer’s point of view.

There is an alternative if your patent is not a viable option for your software invention.  You could try to copyright it.  Usually, computer programs are protected under copyright under literary works.  Copyright protection starts with creation or fixation of the work, such as software or a webpage and you do not have to deposit copies of the work to obtain copyright protection. But, copyright protection only includes expressions, not ideas, procedures, methods of operations or mathematical concepts. In other words, the “concept” is not protected.  Many companies tend to protect the object code of computer programs as a copyright and the source code is kept as a trade secret.

You should always hire a patent lawyer to discuss with you whether your software invention is patentable and he/she can walk you through the necessary steps to determine this and to help you file the patent application.