IP Law America

First off, what is a provisional patent application? When an inventor files for a patent, he is typically filing a nonprovisional patent application. If all goes well, the nonprovisional application goes through the USPTO filing system and eventually comes out as a patent.  The USPTO also allows inventors to file provisional applications. A provisional application is essentially a place holder that lasts for one year. The theory is that the inventor can file the provisional and use the intervening year to develop and market the invention. Many patent practitioners and inventors seem to like them because they are cheaper to create and theoretically give the inventor a year to try the invention out and see if it is marketable. The theory is that the inventor can later decide not to pursue unprofitable inventions and save the costs associated with preparing a more expensive nonprovisional application. However, in my experience, the use of these applications can be extremely dangerous to the unwary inventor. Read the rest of this entry »

As a patent and trademark attorney, I tend to get a lot of my client’s junk mail. Most of it is harmless enough, but occasionally I get something that I find disturbing. One of the scams I see on a fairly regular basis takes the form of an official looking letter from a patent and/or trademark registry. Here is how the scam works. The applicant files an application with Patent and Trademark Office. The PTO publishes all applications eventually both online and in various circulars. The fraudulent company watches these publications and sends invoices to applicants that appear. The invoices are designed to look like they are from the PTO or from some international version of the PTO. The invoice specifically references the application and requests payment to complete the registration.  If the applicant mistakenly pays the invoice, the money will never be returned.  Read the rest of this entry »

I see two issues on a regular basis when it comes to working with more than one inventor on the same project. The first issue is that it is very important that both of the inventors agree as to how much of the patent they will own up front. As a matter of human nature, people tend to give extra weight to their accomplishments. This happens more and more over time as people memory’s become less objective. Two people that may agree as to percentages today may be very disagreeable five years from now. On a valuable product, this could turn into serious litigation between former friends.  The best way to handle this is to have an agreement between the inventors as soon as possible.

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This is the fourth post of the case study of patent application 20030122379.  As mentioned in my previous posts, it is my hope that these posts will be utilized by my readers to learn from the mistakes of others and hopefully avoid the perpetuation of those mistakes. Read the rest of this entry »

Companies that operate on the technological edge will invariably run into patent law at some point. Many companies only view the patent law from the stand point of their own rights. The usual question is whether or not to patent. However, the rights of others should also be considered. According to the US Patent Office, there were about 7.5 million utility patents on file as of January of 2009.  Almost 3 million of these were issued since 1989 and therefore still potentially enforceable, maintenance fee payment problems notwithstanding. The chances are good that some portion of any given high tech device is related to one or even several of the active and enforceable patents.

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Many part time inventors work on their ideas slowly over time.  This often results in an invention taking many years to complete. Also, most inventors enjoy their work and wish to explain their ideas to others. These two factors lead to one of the biggest hidden pitfalls in the patent system. Read the rest of this entry »

One common problem faced by new businesses is the choosing of a business name. Often the business wishes to use the business name to create a consistent brand image for use when marketing their products or services. This brand image, or trademark, often embodies the owner’s perception of what the business is or what the owner wants the business to be.  Additionally, the trademark may become quite valuable when advertising dollars are spent promoting the trademark and customers begin to associate the business, the trademark, and quality services or products. Read the rest of this entry »

This is the third post of the case study of patent application 20030122379.  As mentioned in my previous posts, it is my hope that these posts will be utilized by my readers to learn from the mistakes of others and hopefully avoid the perpetuation of those mistakes. Read the rest of this entry »

This is the second post of the case study of patent application 20030122379.  As mentioned in my previous post, it is my hope that these posts will be utilized by my readers to learn from the mistakes of others and hopefully avoid the perpetuation of those mistakes. Read the rest of this entry »