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 featured on Denver KHOW Radio 630AM

Tune in to 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 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.

Inventors: Basics You Need To Understand About Provisional Patent Applications

Inventors: Basics You Need To Understand About Provisional Patent Applications

A provisional patent application automatically goes abandoned after one year from the date of filing. Therefore, inventors must file a regular patent application claiming priority to their provisional patent application before the one year expires.
Inventors often ask “Then why should I file a provisional patent application if it goes abandoned after one year?” Denver patent attorney Mark Trenner offers these four very good reasons for filing a provisional patent application:

  1. Filing a provisional patent application may be a good idea if you are watching your budget. As you will see below, provisional patent applications can be filed relatively inexpensively. After you file a provisional patent application, you can mark your invention (and any marketing materials describing your invention) as “Patent Pending.” This shows customers, competitors, and potential investors that you are serious about your invention.
  2. You have up to one year to test-market your invention before investing in a regular patent application. If your invention is a success, you can file a regular patent application and claim priority to your provisional patent application. If after 9 or 10 months you realize that your invention just isn’t being received that well, you can drop it and you haven’t spent that much money yet.
  3. If you will be making changes to your invention, the provisional patent application at least identifies those aspects of your invention that belong to you at the time of filing. Any changes and improvements can then be added to the regular patent application without having to file a separate application.
  4. A provisional patent application can also be evidence that the invention belonged to you if someone you share your invention with later claims that the invention is theirs.

 

Denver Patent Lawyer Q & A Part 8 of 8

denver patent lawyer

Denver Patent Lawyer Q & A Part 8 of 8

What is a Response to an Office Action?

A Response to an Office Action typically includes either or both an amendment and remarks.

What is an Amendment?

In an amendment, you agree to make changes to the claims. You might also make changes to the written description of your invention (for example, to correct typographical errors). Sometimes you also have to make changes to the drawings (for example, to show an aspect of your invention more clearly).

What are the Remarks?

In a response, you present arguments or reasoning explaining why your invention should be patentable and why the Examiner’s rejections are incorrect. If the Examiner agrees, the next action you receive from the US Patent Office may be a Notice of Allowance – meaning your patent application will issue as a patent if you pay the fees and tend to any formalities the Examiner requires.

But how do you file a Response to an Office Action?

The mechanics of preparing and filing a Response are best left to a patent attorney. There are specific requirements, including important deadlines, that must be met in order to file a proper Response with the US Patent Office. Failing to file a proper response in a timely manner may result in a loss of legal rights to your invention.

Ask about my blog over at ipatentattorney.org – packed with free information about patents, copyrights, and trademarks.

Ask about my new online law firm option, where I can help clients all over the country without them ever having to meet with me in person. It’s a great option for people who are running a side business and only have time to work on their inventions outside of their day job, in the evenings and weekends. For more information about my online law firm, they can visit us-patentattorney.com

Ask about my package pricing. Why pay high hourly rates? I tell my clients what it will cost up front, with no hidden fees. All my package pricing includes free phone support, where they can speak directly with me.

Denver Patent Attorney

Patent Attorney Colorado Q & A Part 7

Patent Attorney Colorado Q & A Part 7

It sounds like a provisional patent application is the way to go.

Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss the pros and cons with your patent attorney so that you can make an informed decision.

So what happens after I file a patent application?

You applied for your patent application 1-2 years ago. You thought you were done, right? Wrong. Now it’s starting to come back to you. When you filed your patent application, you remember your patent attorney mentioning something about the claims having to be examined by the Examiner at the US Patent Office, and that it would take 1-2 years, maybe even longer. It seemed so far in the future that maybe you didn’t really think about what this meant.

What is an Office Action?

An Office Action is the Examiner’s assessment of your invention. an Office Action may include objections or rejections, with reasons why the Examiner doesn’t believe your patent application should be allowed to issue as a patent.

What if my patent application is rejected?

When you read the rejections, none of it makes any sense. Certainly your invention is different than these other references the Examiner is citing. The Examiner just doesn’t understand your invention, right? Maybe. More likely, the Examiner has some basis for the rejections. But don’t give up. You can file a Response to the Office Action.

Looking for a Patent Attorney?Colorado patent attorney Mark Trenner is the patent attorney you can trust to help you save time and money on your patent needs.

For for more information on Patent Attorney:Denver Colorado, including information on our clients & customer reviews visit our About Us page, or get started with our Patent Attorney Client Application.

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