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Hi.  My name is Mark Trenner.  I’m a patent attorney here in Colorado.  I started my law firm, the Trenner Law Firm, in 2004. I’ve been helping individual inventors, entrepreneurs, start-ups and small businesses now for over 10 years write patent applications for their inventions.

Today I’m here to answer your question, what does the opening of the patent office mean to me as an inventor.  Well, at first, I’d like to say, I was really excited to hear that the patent office opened several satellite patent offices in the past couple of years.  They opened one out in Silicon Valley.  That makes sense, right.  There is a lot of tech going on out there, a lot of patent applications being filed.  They also opened a patent office here in Denver.  I believe the third one they opened was in Detroit, Michigan.  I’m most excited about the one that they opened here in Denver.  Why am I excited about it?  It brings a lot of attention to the patent system.  It brings a lot of attention to patents here in the State of Colorado, and the City of Denver and to the whole surrounding areas.  There is a lot of tech going on here in Colorado.  So, we are all really excited to see that.  What does it mean practically?  I’ll have people talk to me and say now that there is a patent office in Denver, should I go there to file my patent application or should I go there to do a search of the patent records?  If I file a patent application, can I go in to talk to the examiner about it.  The answer is yes and no.  Yes, you can go to the patent office to file, although they prefer that you do it online. You can also go there to search the patent databases, although that all can be done online too.  They may have some special events there you might want to look into.  Check out the patent office website at uspto.gov.  But, what does it mean practically?  Can you do down there and talk to an examiner and hopefully get them to issue your patent? Yes and no.  You could do that today.  You can make an appointment with an examiner and go to the office in D.C. and meet with them in person, you can also talk to them on the phone.  So, practically, does it mean anything that there is a patent office here in Denver?  Practically, it doesn’t change anything.  You’re still able to do exactly what you were able to do before.  But, it may help if your patent happens to be examined by an examiner here in Denver and you’re in Denver to schedule an appointment and go sit down with them and talk to them about your invention, talk to them about what is new and unique about it.  Just like you were able to do in the past, except now you don’t have the travel expenses to go to D.C.  So, practically, did anything change?  No, it’s not like new doors have opened.  You used to be able to go in and talk to the examiner and you still can.  You might save some travel expenses.  That is a benefit to having it here in Denver.  I think, from my perspective, the biggest benefit to having the patent office open here in Denver is just the attention that the patent office brings to the State of Colorado, and to Denver and to the surrounding areas and the tech environment that’s going on here. 

My name is Mark Trenner.  I’m a patent attorney.    I hope that I answered your question of what does the new satellite patent office here in Denver mean to me as an inventor.

Hi.  My name is Mark Trenner.  I’m a patent attorney.  I started my own law firm, the Trenner Law Firm, in 2004, that is over 10 years now that I’ve been helping individuals,  start-ups, entrepreneurs and small businesses to file patent applications to protect their invention.  I’ve been practicing now for over fifteen years and during that time, I’ve written hundreds of patent applications.

Today I’m here to answer your question, how can a patent attorney or a patent lawyer help an inventor.  First of all, what’s the difference between a patent lawyer and a patent attorney?  There is no difference.  It’s just some people like to be called a patent lawyer and some people like to be called a patent attorney.  It’s the same thing.  They’re going to be registered to practice before the patent office and registered as an attorney in one state or more states.  I’m registered, for example, in the State of Colorado as an attorney and before the patent office as a patent attorney. How can a patent attorney help you?  A patent attorney’s expertise is usually going to be in preparing and writing patent applications and working with the examiners in the patent office to hopefully get a patent issued for your invention.  I can’t make any guarantees that we’ll be able to do that for you but that’s our job. 

Inventors, a lot of the time, will say can you help me market this.  No, I’m not a marketing expert.  Maybe some patent attorneys are.  It’s been my experience that most patent attorneys are good at writing patent applications and working with the patent office but not marketing products.  You’ll need to find a marketing expert for that.  Can I help you make a prototype?  No, I can’t help you make a prototype.  Again, I’m not a prototyper, I’m a patent attorney.  You may need to find someone to help you make a prototype.  In fact, I usually recommend that you get a prototype made, especially if you want to take this to market and if you want to sell it to companies. They’re going to want to see more than just a patent application from you. 

But, what can a patent attorney help you with?  We can help you file a patent application, we can help advise you whether to do a patent search, what type of patent application to file, whether it’s a plant, utility, design, provisional patent.  We can help you with foreign filing (filing outside of the United States).  We can help you negotiate a license.  We can write a license agreement for you, we can help you assign a patent.  Basically, a patent attorney’s going to be able to help you do anything in the legal world as it relates to patents but not in the business or marketing world.  

My name is Mark Trenner.  I’m a patent attorney.    I hope that I answered your question today of what can a patent attorney help me do.

Hi.  My name is Mark Trenner.  I’m a patent attorney.  I started my law firm, the Trenner Law Firm, in 2004, that is over 10 years now that I’ve been practicing in my own law firm, helping individual inventors, small businesses, entrepreneurs and start-ups protect their inventions with patent applications.  In the over fifteen years that I’ve been registered with the Patent office, I’ve written hundreds of patent applications.

But, today I’m here to answer the question, should I work with a patent agent or with a patent attorney. The answer to that is, it depends.  Now there are a couple of things that a patent attorney can do that a patent agent cannot do.  A patent agent has a technical degree, like an engineering degree or science degree, and they passed the patent bar and hopefully they have some experience writing patent applications and working with the examiners at the patent office.  The same thing goes for patent attorneys but patent attorneys have also gone to law school and passed a bar exam in at least one of the states.  For example, I’ve passed the Colorado bar exam.  I was a patent agent in 1998 while I was in law school because I passed the patent bar exam.  Then I became a patent attorney when I passed the Colorado bar exam in 1999.  Now, who should you work with?  It depends.  Sometimes patent agents can be less expensive, all though that it is not always the case.  Patent agents cannot practice law, they cannot give you legal advice.  They cannot say whether you will infringe on someone else’s patent.  They can’t negotiate a license, they can’t write an assignment of your patent application for you.  So, if you think that you’re going to do any of those things, you might want to work with a patent attorney.  A lot of patent attorneys can also help you with a copyright registration or a trademark application.  So, if you think you might need a trademark for the name of your invention, you might want to just start off working with a patent attorney.  For example, I help inventors all the time with patents, trademarks and copyrights whereas a patent agent can only practice before the patent office.  So, whether you want to work with a patent agent or a patent attorney, it’s up to you. Just understand there are some restrictions on things that patent agents can’t do that patent attorneys may be able to help you with.

My name is Mark Trenner.  I’m a patent attorney.    I hope that I answered your question of should I work with a patent agent or a patent attorney.

Today I’m here to answer your question, what is a patent agent.  Is there a difference between a patent agent and a patent attorney?  There is a difference.   There is actually a big difference.  Patent agents and patent attorneys are both licensed by the US Patent office.  You are either licensed as a patent agent or you’re licensed as a patent attorney.  Way back in 1998, I was registered with the patent office as a patent agent.  Why?  Because I have an engineering degree, I have the technical background and I took and passed the patent bar exam so they admitted me to practice at the patent office as a patent agent. 

I was at law school at the time and then when I graduated law school I took the state bar exam here in Colorado, I passed and became an attorney, but because I was also licensed with the patent office, then they registered me as a patent attorney.  You can practice as a patent agent without a law degree but now what that means is, as a patent agent, you can’t practice law.  What’s practicing law and what’s writing patent applications?  You can write patent applications and file them in the patent office.  You can even work with the examiners toward issuing it is as a patent.  That’s not practicing law. But you can’t give legal advice as a patent agent.  So, you can’t do an infringement or a non-infringement opinion as a patent agent.  You can’t file trademark applications, you can’t negotiate or write licenses or assignments of those patents. 

So, if you’re a small business and think you might want to do any of those things or even if you’re an individual inventor and think you might want to license your invention, you might consider working with a patent attorney right from the start because a patent attorney can do everything an agent can do plus give you legal advice.  A patent agent can only practice before the patent office.  They cannot give you any legal advice. 

My name is Mark Trenner.  I’m a registered patent attorney.  I have been registered as an attorney now since 1999. 

I started my law firm, the Trenner Law Firm, in 2004, that is over 10 years now that I’ve been helping individual inventors, small businesses, start-ups and entrepreneurs protect their inventions by filing patent applications.  In the over fifteen years now that I’ve been registered with the US Patent office, I’ve written hundreds of patent applications.

I hope that I answered your question today of what is a patent agent and what’s the difference between an agent and an attorney.

Hi.  My name is Mark Trenner and I’m a patent attorney.  I started my law firm in 2004, that is over 10 years now that I’ve been helping individual inventors, start-ups, entrepreneurs and small businesses.  I’ve written hundreds of patent applications in the over 15 years I’ve been registered as a patent attorney with the patent office.

Today I’m here to answer your question, what is a design patent.  A design patent protects what’s called the unique ornamental appearance of an invention. A utility patent, which is what most people think of when they think of a patent, protects the function, regardless of what it looks like.  If it functions the same as what is claimed in the patent, then it is an infringing device.  A designed patent protects what something looks like.  The best example I can give is for example, the electric lightbulbs have been out there for over a hundred of years and there is nothing patentable about the basic electric lightbulb but you may still be able to get a patent for the light.  And, what you would do is apply for a design patent for the way that light looks.  Think about it, if you’ve ever walked into the lamp section of a hardware store, there are hundreds of different styles of lights.  If you have a new and unique light, you can actually apply for a design patent.  Now, design patents are fairly narrow.  They just cover the one look and it isn’t going to prevent someone from making another light.  That is why you see so many of them in the hardware store but it will prevent somebody from copying your design of the light.  A design patent will cover what something looks like.  The utility patent covers how it functions and you can actually apply for both a utility patent and a design patent for the same invention if it has a unique function, even though that is probably not the case with the basic light but some inventions, the function is new and what it looks like is new, so you could apply for both the utility patent to protect the function and a design patent to protect what it looks like. 

My name is Mark Trenner.  I am a patent attorney and I hope that I’ve answered your question of what is a design patent.

Hi.  My name is Mark Trenner.  I’m a patent attorney.  I started my law firm, the Trenner Law Firm, in 2004, that is over 10 years ago, and ever since, I’ve been helping individual inventors, start-ups, small businesses and entrepreneurs protect their inventions by writing patent applications.  In the over 15 years that I’ve been registered with the Patent Office, I’ve written hundreds of patent applications.

Today I’m here to answer the question, what are the claims in a patent.  The claims are the most important part of the issued patent and the most important part of the patent application.  The claims are what you’ll find at the end of the patent, if you’ve ever looked at a patent.  If not, go download one off the patent office website and you’ll see what I mean. There’s all this description of the invention.  There is a background section, brief description of the drawings, and then a whole write-up of all these different things.  And then there are the drawings but that is not what the claims are.  The claims will usually say Claim, or what the claim is or we claim and will start no. 1, no. 2 or no. 3 and that’s actually defining what the invention is, what your property right is, what somebody would be infringing.  If it’s not in the claims, they’re not going to infringe it.  You can only infringe the claims of a patent.  The claims are really the most important part of the patent and you’re going to have both independent claims, those are claims that stand by themselves, and then dependent claims.  The dependent claims are the claims that say, for example, Claim No. 2 says the method of the claim no. 1 further comprising, in other words that’s dependent on claim no. 1 because it claims back to claim no. 1.  You have both independent and dependent claims. 

How many claims can you have?  Most patent applications have about 20 claims because 20 total number of claims is the number of claims you can have for the basic filing fee. You can file more than that, but you will have a higher filing fee that the patent office charges.  You’re usually going to see three independent claims, those are the stand alone claims and that’s because the patent office will give you three independent claims for the basic filing fee.  Again, you can have more than that if you pay a higher fee.  You can certainly have less.  You could have one claim if you want but that’s really not a good strategy.  You want to have as many claims as possible to cover the invention from all different aspects.

My name is Mark Trenner.  I am a patent attorney and I hope that today I answered your question what are the claims of a patent.

Hi.  My name is Mark Trenner.  I’m a patent attorney.  I started my law firm, the Trenner Law Firm, in 2004, that is over 10 years ago, and I’ve been helping individual inventors, entrepreneurs, start-ups and small businesses, ever since, to protect their inventions with patent applications.  In the over 15 years that I’ve been registered with the US Patent Office, I’ve written hundreds of patent applications and we’ve had a lot of those issued.

Today I’m here to answer your question, what is a PCT patent application.  Let’s start off by defining what PCT is.  PCT is a Patent Cooperation Treaty.  So, when you hear PCT you will know you are talking about Patent Cooperation Treaty patent application, a PCT patent application.  The PCT came about because of the Paris Convention, which is an international treaty that tells you which countries have agreed to recognize the patent rights and the patent filings in various countries in their own country.  For example, the European patent office will recognize the filing date in the US patent office as long as you file in the European patent office within one year of filing in the US patent office or you can file a PCT patent application.  So as long as you file a PCT patent application within one year of your US filing then you can go into any of these other countries within 30 months of your earliest filing date.  A PCT patent application is a good way to preserve your right in a lot of different countries throughout the world, but not all countries.  Not all countries are members. For example, Taiwan is not a member.   Most industrialized countries are members.  China, Japan and Europe are all members of the Paris Convention and you can file a PCT.  Now, in those countries that are not, like Taiwan, you have to file directly in those countries, and you need to file before any public disclosure.  You will need to file in those countries when you file your first patent application.

The PCT is a good way, if you do want to protect internationally.  Please keep in mind it is very expensive.  The government filing fee alone is $3,000.00 and then within that 30 months your going to have to file in the individual countries, for example you might have to file in the European patent office.  And then you are going to start incurring attorney fees and patent office filing fees in each of those countries.  Talk to your patent attorney to find out if it is a good idea and whether it makes sense from a business strategy to file a PCT patent application for your invention.

My name is Mark Trenner.  I hope that this has answered your question of what is a PCT patent application. 

Hi.  My name is Mark Trenner.  I’m a patent attorney.  I started my law firm, the Trenner Firm, in 2004, that is over 10 years ago and I’ve been helping individual inventors, small businesses, start-ups and entrepreneurs protect their inventions with patent applications.  In the past 15 years that I’ve been practicing, I’ve written hundreds of patent applications.

Today I’m here to answer your question, does a United States patent application protect my invention worldwide.  The answer is no.  It is a US patent application, after all.  It’s going to protect your invention in the US.  What do you do if you want to protect your invention outside of the US?  Well, there are a couple of different options but I just want to warn you up front, they are all very costly. 

Probably the most common way to protect your invention outside of the US is to file what is called a PCT or Patent Cooperation Treaty patent application.  We can actually file that at the same time that you file your US patent application. We can file the PCT out of the US Patent office.  What the PCT patent application does is it gives you a priority to protect your invention in all these other countries, not all countries, but most countries that are members of what is called the Paris Convention, which is a patent treaty.  You can do that within 30 months of your original or your priority filing date.  Now, keep in mind, if you file a provisional application, that’s going to be your priority date so the 30 months may start counting when you file the PCT or it may go back 12 months or sometime before that when you file the provisional or regular patent.  But, that is the most common. 

You can also file in foreign countries directly.  And, some countries, for example, Taiwan, is not a member of the Paris Convention.  You will have to file directly in those countries.  The PCT won’t help you in those countries.  You can file directly in those countries but like I said it is very expensive. 

The government filing fee for filing a PCT application in the US is right around $3,000.00 and this does not include the attorney’s fees.  If you want to file in a foreign country, you will have to pay foreign attorney’s fees, any monetary exchange rates and if you go into a foreign language country, a non-English speaking country, you will also have to pay for translation.  The costs add up real fast. So, you will want to sit down with your patent attorney and talk to them about whether filing internationally or whether even filing a PCT application will be worth it in the long run for you, for your product and for your business goals.  A lot of the time, for most individual inventors and start-up companies, unless you have a market somewhere else, you’re going to want to focus primarily on the US and your US patent.  Now, the US patent is going to protect infringing imports.  If you have an issued patent, you’re going to be able to stop someone from making it in China or Mexico and bringing into the US.  Keep that in mind.

I hope I answered your question does my US patent application protect my invention world-wide.

Hi.  My name is Mark Trenner.  I’m a patent attorney.  I’ve been writing patent applications for over 15 years now.  I first started my own law firm, the Trenner Law Firm, in 2004 and I like to help individual inventors, start up small businesses and entrepreneurs protect their inventions with patents. 

Today I’m here to answer the question can Inventors patent software.  The short answer is yes, you can patent software, at least as of today.  The law is always changing and this year, 2014, actually last year, there have been a lot of different court opinions, Even the US Supreme Court weighed in on this.  Actually, a couple of times in the past decade they have issued some really important decisions, since 2014, and they really restricted the ability to get a software patent.  Does that mean you shouldn’t apply?  No it doesn’t.  What it means is you should talk to a patent attorney who can guide you through the process and help you decide whether your invention for software can be patented.  I always say there are a lot of software companies out there, some big name brand software companies, and you know who I’m talking about, that file patent applications for their software every day. They are still filing patent applications for their software, they have patent applications pending and they have patents that have issued and they are not stopping.  They may be writing them a little different but they are still filing patent applications for their software.  So, if anybody tells you that you can’t patent software, go talk to a patent attorney about it.  You can’t patent software that already exists.  You also can’t patent something that has been done manually and all you are doing is running it on the computer now.  That probably won’t make it through the patent office.  The examiners are really cracking down on that and it’s going to be really hard to get something issued.  But if you have something new and unique, you should certainly talk to a patent attorney about it. 

People always ask can I get a patent for my phone app.  The answer is yes you can.  That is just software.  It’s just software that’s developed to run on a mobile device, on a phone or a tablet, and that falls under the same category as software, any software. So, again if you have a new idea for a phone app., go talk to a patent attorney.  They may or might not be able to guarantee you will get a patent issued.  And, even if you get a patent through, who knows what’s going to happen in the Court, in the coming years. But, you definitely don’t want to just give up because someone said you can’t patent software.

And then, people ask me too, what if I apply for a software patent and the examiner rejects it? Well, it’s like with any patent application you file.  The examiner is going to go out there and find other prior art and they may make a rejection. They may make a rejection that it is a software patent and it can’t be patented.  Those are all things you can talk to with your patent attorney about.  Today I was just here to answer the question can you patent software.  The answer is yes, maybe, but go talk to your patent attorney.