Category: Patent Attorney Questions and Answers

Colorado Patent Attorney Mark Trenner answers questions regarding the Apple’s patent issues in China.

Watch 8 minute Video of Interview With Denver Patent Attorney Mark Trenner

Interviewer: What are some considerations a business owner should consider when seeking to protect their invention outside of the United States with patents?

Patent Attorney: Budget is always the biggest consideration. For individual inventors, start-ups, and small businesses, the money saved by not filing international patent applications may be better used to develop and market the invention in the United States. It is important to think seriously about the ability to effectively advance an invention outside of the United States, and the impact foreign filing will have on your budget.

Interviewer: Is there anything business owners should keep in mind if they are considering foreign protection for their inventions?

Patent Attorney: Most foreign countries have a strict standard – the invention cannot have been publicly disclosed to filing a patent application. There are exceptions, so be sure to discuss this with a patent attorney if you are interested in foreign filing.

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

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Interviewer: And what about trade secret?

Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication request so that the Patent Office does not publish the patent. As such, the information can be maintained as trade secret. If the patent does not issue, or the applicant wishes to maintain the information as trade secret, the patent application is abandoned and therefore never publicly disclosed. Or when the patent does issue, it is protected by the patent (albeit no longer a trade secret).

Interviewer: So you’re not required to publish your patent application.

Patent Attorney: Generally, the Patent Office will publish your patent application 18 months after the filing date. But for those first 18 months, the patent application is maintained in confidence and cannot be accessed by the public. In addition, an applicant can file a request for non-publication, in which case the Patent Office will not publish the patent application unless and until a patent is issued. But an applicant cannot file such a request if the patent application is being filed outside the United States. Then, the application must be published.

Interviewer: I see, that’s kind of confusing.

Patent Attorney: Yes, and the article correctly explains that these are very important business decisions that should be discussed with a qualified attorney to determine what is best given a particular situation.

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Interviewer: And what about trade secret?

Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication request so that the Patent Office does not publish the patent. As such, the information can be maintained as trade secret. If the patent does not issue, or the applicant wishes to maintain the information as trade secret, the patent application is abandoned and therefore never publicly disclosed. Or when the patent does issue, it is protected by the patent (albeit no longer a trade secret).

Interviewer: So you’re not required to publish your patent application.

Patent Attorney: Generally, the Patent Office will publish your patent application 18 months after the filing date. But for those first 18 months, the patent application is maintained in confidence and cannot be accessed by the public. In addition, an applicant can file a request for non-publication, in which case the Patent Office will not publish the patent application unless and until a patent is issued. But an applicant cannot file such a request if the patent application is being filed outside the United States. Then, the application must be published.

Interviewer: I see, that’s kind of confusing.

Patent Attorney: Yes, and the article correctly explains that these are very important business decisions that should be discussed with a qualified attorney to determine what is best given a particular situation.

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

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

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Interviewer: And what about trade secret?

Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication request so that the Patent Office does not publish the patent. As such, the information can be maintained as trade secret. If the patent does not issue, or the applicant wishes to maintain the information as trade secret, the patent application is abandoned and therefore never publicly disclosed. Or when the patent does issue, it is protected by the patent (albeit no longer a trade secret).

Interviewer: So you’re not required to publish your patent application.

Patent Attorney: Generally, the Patent Office will publish your patent application 18 months after the filing date. But for those first 18 months, the patent application is maintained in confidence and cannot be accessed by the public. In addition, an applicant can file a request for non-publication, in which case the Patent Office will not publish the patent application unless and until a patent is issued. But an applicant cannot file such a request if the patent application is being filed outside the United States. Then, the application must be published.

Interviewer: I see, that’s kind of confusing.

Patent Attorney: Yes, and the article correctly explains that these are very important business decisions that should be discussed with a qualified attorney to determine what is best given a particular situation.

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

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

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Interviewer: And what about trade secret?

Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication request so that the Patent Office does not publish the patent. As such, the information can be maintained as trade secret. If the patent does not issue, or the applicant wishes to maintain the information as trade secret, the patent application is abandoned and therefore never publicly disclosed. Or when the patent does issue, it is protected by the patent (albeit no longer a trade secret).

Interviewer: So you’re not required to publish your patent application.

Patent Attorney: Generally, the Patent Office will publish your patent application 18 months after the filing date. But for those first 18 months, the patent application is maintained in confidence and cannot be accessed by the public. In addition, an applicant can file a request for non-publication, in which case the Patent Office will not publish the patent application unless and until a patent is issued. But an applicant cannot file such a request if the patent application is being filed outside the United States. Then, the application must be published.

Interviewer: I see, that’s kind of confusing.

Patent Attorney: Yes, and the article correctly explains that these are very important business decisions that should be discussed with a qualified attorney to determine what is best given a particular situation.

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

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

Attorney In Colorado Discusses Patents vs Trade Secrets – Part 3 of 3

Interviewer: And what about trade secret?

Patent Attorney: The article offers a strategy, where the applicant for a patent files a non-publication request so that the Patent Office does not publish the patent. As such, the information can be maintained as trade secret. If the patent does not issue, or the applicant wishes to maintain the information as trade secret, the patent application is abandoned and therefore never publicly disclosed. Or when the patent does issue, it is protected by the patent (albeit no longer a trade secret).

Interviewer: So you’re not required to publish your patent application.

Patent Attorney: Generally, the Patent Office will publish your patent application 18 months after the filing date. But for those first 18 months, the patent application is maintained in confidence and cannot be accessed by the public. In addition, an applicant can file a request for non-publication, in which case the Patent Office will not publish the patent application unless and until a patent is issued. But an applicant cannot file such a request if the patent application is being filed outside the United States. Then, the application must be published.

Interviewer: I see, that’s kind of confusing.

Patent Attorney: Yes, and the article correctly explains that these are very important business decisions that should be discussed with a qualified attorney to determine what is best given a particular situation.

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

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 Mark Trenner is on the radio today. Tune in and listen to KHOW – Denver 630AM. Mark answers callers questions on intellectual property – including patents, trademarks, and copyrights.

Question 1: Should you do a prior art search?

I typically recommend doing a prior art search for an invention. There are times when it is a good idea to file first, even before doing a search. For example, if you are up against a bar date (a filing deadline), or if you are concerned someone else may file before you. The US Patent System is now first to file – to getting a filing date as soon as possible is important.

Question 2: Does an employer own copyright to your work?

Generally, an employer is going to own the copyright in any work that an employer does for their employer. But if the work is unrelated to the employment, then the employer may not own the copyright. For example, if you work the counter at a fast food restaurant, and write a fiction work on your own time, then the restaurant probably won’t own the copyright to the fiction work. But if you are charged with updating an employer’s website, the employer will likely own the copy you put on their website.

The question gets trickier when you distinguish between independent contractor and employer. Independent contractors are generally going to own copyright to their work – absent a written agreement to the contrary.

Best practice is to get everything in writing. If you’re an employee and want to specifically exclude your work from the employer owning the copyright, then ask them to put that in a signed writing. If you hire an independent contractor and want to own copyright in their work, then get that in a signed writing.

Learn more at the University of Texas Copyright Crash Course.

Question 3: What is a trademark?

A trademark is any word, logo, or combination of word and logo, that designates a source of goods or services. Examples of famous trademarks include NIKE (TM), the NIKE (TM) “swoosh”, and Starbucks. While you may be able to use the same or similar mark to designate entirely different products or services – you cannot use a famous trademark. For example, you likely could not put NIKE (TM) on any product because of the high likelihood for confusion. That is, the ordinary consumer would likely believe the shoe company is behind that product.

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 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 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

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?

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