Patent Attorney Discusses Patent Ownership For Employees – Part 3 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3

Interviewer: Should inventors take their ideas to the company they are working for?

Patent Attorney: Many companies have procedures in place for evaluating intellectual property internally. Sometimes the company may release rights to an invention if it has no value to the company.

Interviewer: So even if I am required to assign my invention to my employer, they might let me keep it?

Patent Attorney: Every company is going to have their own policy, but it’s certainly a possibility.

Interviewer: Any other tips?

Patent Attorney: Check the Employee Handbook, the company intra-net, and any other materials the company may have given you to determine if there is a procedure in place for dealing with intellectual property. If there is, determine whether you are required to assign over rights to you invention.

Interviewer: So even if I’m required to sign over some types of inventions to my employer, I may not be required to assign over other types of inventions?

Patent Attorney: That’s right. An employer may have no interest in your invention if it is unrelated to the business of the employer. Or an inventor’s position with a company may not require that they assign over rights to their invention.

Interviewer: And I suppose you’re going to say to talk to a patent attorney for specific advice?

Patent Attorney: Of course – the law governing assignment of ownership rights in inventions is going to depend on the specific circumstances, whether there is a written agreement, and the laws may even vary by state.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

Patent Attorney Discusses Patent Ownership For Employees – Part 2 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3

Interviewer: Really, so even though I’m not being paid to develop products for my employer, if I do, my employer may own the invention?

Patent Attorney: It’s going to depend on the circumstances. For example, inventors should check whether they signed an Employment Agreement with their employer. If so, they should carefully read the terms and conditions, particularly any intellectual property provisions. Often, the Employment Agreement will state what types of inventions must be assigned over to the company. Examples might include anything developed using company property or developed on the company clock. But many Employment Agreements go further than this. It is best to have a patent attorney review the Employment Agreement and give specific advice.

Interviewer: What if I didn’t sign an Employment Agreement?

Patent Attorney: There are other circumstances in which an inventor may have to sign over rights to their invention to a company they work for. For example, the inventor may have an independent contractor or other agreement with the company they work for, which includes intellectual property provisions similar to those we just discussed for the Employment Agreement. Or the inventor may have a fiduciary duty to the company, for example, if the inventor sits on the board or is a major investor in a company.

Interviewer: So practically speaking, how does this affect the typical individual inventor?
Patent Attorney: It’s common to get ideas when you’re at work, or as a result of work you are doing. Often, the inventor believes that because the idea was their own, that they should own any patent or other intellectual property rights to that invention. But before paying a patent attorney to prepare and file a patent application, inventors should first make sure that they don’t have any prior obligations which might require the invention be assigned over to the company they are working for.

For Part 3 o 3, Follow This Link: Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 3 of 3

Patent Attorney Discusses Patent Ownership For Employees – Part 1 of 3

Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 1 of 3

Introduction: This morning we are interviewing Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The National Law Review recently published an article titled “Patent Ownership in Germany: Employers v Employees.” Why should our listeners be interested in German patent law?

Patent Attorney: First let me remind everyone that I am only licensed to practice before the United States Patent and Trademark Office, and I am only licensed to practice law in the state of Colorado. That disclaimer aside, this article makes some good points that inventors here in the United States should also be aware of. The article starts of explaining that “The requirements of Germany’s Act on Employees’ Inventions (ArbEG), which governs how employees’ inventions are assigned to their employers, may be unknown by international companies with employees in Germany.”

Interviewer: So if I’m not an international company with employees in Germany, should I stop the video?

Patent Attorney: Not at all. While there is no uniform law in the United States governing assignment of inventions, that is, each state has its own law, any inventor who is also an employee should be aware that their company may require that they assign over rights in any invention they make to their employer.

For Part 2 of 3, follow this link: Patent Attorney In Denver Discusses Patent Ownership For Employees – Part 2 of 3

New Patent Law Q & A – Part 4 of 4

Patent Attorney Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: And how did the America Invents Act change that?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: As the article points out, the America Invents Act changed to “a race to the patent office.” That is, whoever files their patent application first will get the patent, regardless of who invented first.

Interviewer: Why did the America Invents Act make this change?

Patent Attorney: As the article explains, this part of the law was intended to bring the United States in line with patent practices of most of the rest of the world.

Interviewer: This doesn’t seem like a good change, though, does it?

Patent Attorney: That’s what many are saying, including in this article, that the law seems to disadvantage the individual inventor and small businesses, who don’t have a patent attorney on staff that can file patent applications at the drop of a hat.

Interviewer: Thank you, those are good points. But I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at www.us-patentattorney.com and Mark Trenner’s blog over at www.ipatentattorney.org

 

New Patent Law Q & A – Part 3 of 4

Patent Lawyer Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: Even under the “old” patent law?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: Yes, because most foreign countries have a stricter standard, and have required inventors file a patent application prior to any public disclosure of their invention.

Interviewer: So it has always been good practice to keep your invention confidential until a patent has been filed.

Patent Attorney: Yes, and now it can be even more important given the new patent laws in the United States.

Interviewer: Back to the article. I see that they also discuss the cost of applying for a patent, and that many inventors are foregoing the patent process and just taking their product to market.

Patent Attorney: Right, and the article also points out that under the “old” patent law there wasn’t necessarily a need to hurry to the patent office, the America Invents Act also introduced the “first-to-file” in the United States.

Interviewer: What is “first-to-file”?

Patent Attorney: The patent law used to be a “first-to-invent” system in the US. In other words, before the America Invents Act, if two people filed a patent application for the same invention, the US Patent Office would grant the patent to the inventor that could prove they invented first. Like the article says, inventors could take time to explore marketing opportunities and would be protected.

For Part 4, see New Patent Law Wisconsin Q & A – Part 4 of 4

 

New Patent Law Q & A – Part 2 of 4

Patent Attorney Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: That’s a good point. The United States patent law used to afford inventors one year from any public disclosure or public use, sale or offer for sale, or publication of their invention, in which to file a patent application without any loss of right.

Interviewer: Right, so why the caution about discussing your invention now?

Patent Attorney: The patent law in the United States changed recently. The new patent law, known as the America Invents Act, took effect in stages, with many of the important provisions taking effect in March 2013. While the law will need to be clarified by the courts, it appears that at least some of these grace periods are no longer available.

Interviewer: What are you advising your clients under the new patent law – the America Invents Act?

Patent Attorney: Well I have always advised my clients not to publicly disclose or use, publish, or sell their invention prior to filing a patent application. While inventors may initially think only about US patents, there are times when filing outside of the US makes good business sense.

For Part 3, see New Patent Law Wisconsin Q & A – Part 3 of 4

 

New Patent Law Q & A – Part 1 of 4

Patent Lawyer Mark Trenner answers questions about  “Where do I go with my bright idea.”

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Introduction: We are here in Colorado to interview Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The Kenosha News in Wisconsin recently published an article titled “Where do I go with my bright idea.” It looks like they are talking to a local inventors and entrepreneurs club. What’s your take?

Patent Attorney: Colorado has an inventor club too, as do many regions. These clubs can be a good place to meet other inventors, find out about local businesses that offer inventor services, such as prototyping, marketing, and funding. Just be careful not to talk about your invention at these or any other type of open meetings.

Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?

For Part 2, see New Patent Law Wisconsin Q & A – Part 2 of 4

 

Patent Attorney Answers From Denver's Mark Trenner…

Will a patent attorney steal my idea?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Many inventors are very protective of their ideas – as well they should be. There are a lot of unscrupulous people and even some unscrupulous businesses. While I can’t speak for other patent attorneys, I can speak for myself.
I make a living helping inventors protect their invention. I take my duties as a registered patent attorney very seriously. And this includes the duty of confidentiality. I would never violate an attorney-client confidence. And I would certainly never steal an inventor’s idea.
That being said, however, it is important to remember that you should never discuss your invention in detail with an attorney  until you have formed an attorney-client relationship with that attorney. An attorney-client relationship is typically established by signing a Fee Agreement with the attorney. You should never email details of your invention to a patent attorney before both you and the attorney have signed the Fee Agreement. That way, there can be no misunderstanding that attorney-client confidentiality will apply.

Can I change my patent application after it is filed?

Clients often ask me if they can change their patent application after it has been filed with the Patent Office? Yes, but there are certain restrictions to be aware of.

The most common mechanism for changing a patent application is by amendment. However, there may be times when it is necessary, or desirable, to file a divisional application, a continuation application, or a continuation-in-part application. What is the difference between a divisional patent application, a continuation patent application, and a continuation-in-part patent application? There are subtle, but important differences.

A divisional patent application is typically filed when the Examiner issues a restriction requirement (saying that you have tried to claim more than one invention), and makes you withdraw the claims. You can file a divisional patent application including the withdrawn claims. A continuation patent application is typically filed when you want to file another application with claims which were described and enabled by the specification (and/or drawings), but not claimed.

Because no new matter is added in either the divisional or the continuation, these patent applications will have the same filing date as the parent application, provided the parent application (or a child application) is still pending. Therefore, it is important to discuss the possibility of filing divisional or continuation applications before your patent application issues or goes abandoned.

A continuation-in-part (CIP) may be filed to add new material to the specification, drawings, and/or claims. CIP applications are typically considered when the inventor makes a change or addition to his or her invention. Anything which was previously described in the parent application specification and drawings, receives the filing date of the parent application. But any new material receives the filing date of the CIP application. Therefore, the bar dates apply to any new material. That is, if the new material was publicly disclosed or publicly used, sold/offered for sale, or published, the CIP application must be filed within one year of such an event or the new material is considered to be in the public domain. Just as with the divisional and continuation patent applications, a CIP application also must be filed before issuance or abandonment of the parent application (or a child in the chain of applications if there is more than one patent application).

Changes with the new patent legislation which was enacted in 2011 may also affect your filing strategy. Therefore, it is important to discuss any changes or new aspects of your invention with your patent attorney as soon as possible to avoid losing important legal rights to your invention.

Colorado Patent Attorney Mark Trenner to be featured on Tom Martino's Troubleshooter Show on Denver's KHOW Radio 630AM

Tune in to Tom Martino’s Troubleshooter radio show on Denver’s KHOW Radio Station (630AM) on Thursday, April 19 from 9am-12 noon. Colorado Patent Attorney Mark Trenner will be featured in the Help Center, answering your questions about inventions, patent applications, and the patent process.

Mark Trenner has previously been featured on Martino TV and was also a guest of Tom Martino’s radio show.

Mark Trenner is registered as a patent attorney before the US Patent Office and to practice law in the state of Colorado. Mark Trenner works with individual inventors, and businesses of all sizes, to protect their inventions and other intellectual property (including trademarks and copyrights) in the United States and throughout the world.