My Patent Lawyers

What Happens After You File A Patent Application

admin — Mon, 09 Apr 2012 15:36:38 +0000

Once you file a patent application, you can claim that you have a patent pending on your invention. You will generally get a filing receipt with a serial number for your patent application. One important thing to note with the filing receipt is your license to file a foreign patent application, which can be important if filing a PCT or an international patent application is part of your plan.

The USPTO will generally review your patent application for completeness. If anything is missing, the USPTO may send you a notice to file missing parts or a notice of omitted items. Common things that may be missed include declarations or oaths of inventorship, certain pages of the patent application, drawings, or certain fees that have not been paid.

Once the missing items are provided, the patent application waits in line for its turn to be examined. Typically, it takes about two and a half to three years to hear from the USPTO, unless the application qualifies for accelerated examination or the application is submitted under the fast track examination program.

The application may be scheduled to be published 18 months from the filing of the application or from the filing of the first patent application, such as a parent application or a provisional application.

Once the examiner examines the application, the examiner’s decision is typically reported on a correspondence to the applicant called a “non-final office action.” The non-final office action will typically list the claims that are pending and indicate which of the claims have been allowed or approved, if any, and which of the claims have been rejected. Most of the time, patent claims are rejected in the first round of examination.

The applicant will be given three months from the mailing date of the non-final office action to respond. The applicant may be given to up to three months’ extension to respond, but the applicant has to pay extension of time fees when the response is submitted. The applicant has to address every rejection either by making changes to the rejected claims, by providing legal arguments why the rejection is not valid, or both.

After the applicant responds to the non-final office action, the examiner goes through the applicant’s response and determines whether the applicant has overcome the rejections. If the examiner is not convinced with the applicant’s response, the Examiner will issue a final office action.

The applicant will again be given three months from the mailing date of the final office action to respond. The deadline can be extended up to three months with the payment extension of time fees. The examiner may give an advisory opinion indicating whether the applicant’s response to the final office action has overcome all the rejections. If any of the rejections have not been overcome, the applicant can file an appeal or a request for continued examination.

By filing a request for continued examination, the applicant may get one or more rounds of examination. If the examiner finds that the applicant has overcome the rejections, the examiner will issue a notice of allowance. The applicant will be given up to six months to pay the issue fee. One issue fee is received, the certificate of patent will be granted and mailed to the applicant.

Patenting an invention can be a very complicated process without an experienced patent attorney on your side.

If you are considering filing for a patent or are seeking some guidance on patent law matters, please call Roland Tong at 888-350-6265 or email him at roland@rtlawoffices.com. Mr. Tong provides every client with a Client Service Guarantee, in which he guarantees the high quality of personal services provided in protecting your invention. Mr. Tong represents clients in various technical fields nationwide.

What to Do if Someone Steals Your Invention

admin — Fri, 27 Jan 2012 16:48:00 +0000

As an innovator and patent holder, you are in charge of protecting your own patented work. While the U.S. Patent Trademark Office (PTO) issues the patent, they take no responsibility in enforcement. Instead, you must identify and enforce the patent.

This article identifies the three types of potential patent infringement claims and explains what to do (and when to do it) if you think someone is stealing your invention.

Three Types of Patent Infringement

1. Direct – a single individual or company carries out “each and every element” of the patent infringement. For example, Pharmaceutical Company A copies, without permission, a patented formula for a new cancer drug that is patented by Pharmaceutical Company B.

2. Indirect – An individual or company supplies a product to another individual or company that can only be used in a manner that would infringe upon a patent.

For example, Electric Parts Company A sells a part 1 that can only be used in conjunction with Company B’s part 2. If the parts were sold together, a direct infringement of Company C’s patent would result. There is no other use for the part 1.

3. Induced – like a captain of a ship, an individual or company is responsible for the patent infringement of all those he/she or it controls. For example, Company A hires Company B to make steam irons that Company A knows violates a valid patent.

What to Do if Your Patent is Being Infringed

It is imperative to consult with a patent (i.e. intellectual property) attorney to get good advice, relevant to your individual situation. You’ve, likely, worked long and hard not only to develop your invention, but also to document it and have the patent issued. You are in charge of enforcing your own patent, with the help of legal counsel.

When to Contact a Patent Attorney

Get good legal advice right away because otherwise, your claim may be barred.

For example, under the legal doctrine of laches, if you don’t act right away, the law says that you “slept on your rights.” The competitor will claim that they relied on your failure to act, spending, time, money, and man-power on the product. This means that you can’t get financial compensation for any infringement.

In addition, every legal case (whether patent, or otherwise) has a statute of limitations. This means that you must bring suit within a specific period of time or you won’t be entitled to compensation for any infringement.

Bottom line, you must be your own advocate, in identifying and enforcing patent infringement. If you think that your patent has been infringed, consult with a qualified patent law attorney. Roland Tong has helped many companies enforce their patent rights against infringers. He can be reached by phone at 888-350-6265 or by email at roland@rtlawoffices.com. Mr. Tong provides every client with a Client Service Guarantee, in which he guarantees the high quality of personal services provided in protecting your invention. Mr. Tong represents clients in various technical fields nationwide.

How to Protect Your Company’s Trademark (and Brand Names) on the Internet

admin — Tue, 24 Jan 2012 22:25:21 +0000

Did you know that your competitor can purchase and use your company’s trademark (and brand names) for use on the internet, without your consent and with the sanction of American courts? In this article, we’ll show you how to protect your company’s trademark on the Internet.

Here’s How Your Competitors Use Your Own Trademark Against You

• A competitor buys your trademark from Google Adwords (or other similar Internet advertising companies.)

• Then, a potential customer has had positive experiences or has heard good things about your company, so he or she “Googles” the name of your company.

• Google (or whatever search engine that was used) returns the results of the Google search, with your competitor listed.

Plead “Foul” to Google

• Good News: If you see your company’s trademark as a domain name or actually on another company’s website, call Google. Historically, they have been helpful in such situations. They may investigate and remove your trademarked name from the competitor’s site.

• Bad News: if your company’s trademark is not obviously used, but is in your competitor website’s Meta data, help from Google is unlikely, with one caveat. If the Metadata usage is in a country with stricter trademark protection laws than the United States, Google may assist.

Such countries include Australia, Brazil, China, Hong Kong, Macau, New Zealand, North Korea, South Korea, and Taiwan. Non-authorized usage of your trademark in these countries is legally trademark infringement.

Be Your Own Investigator

Because it’s important to work quickly if a competitor is using your company trademark, you must be your own investigator. It’s pretty simple to do so.

• Use an RSS feed of all company trade and branded names.
• Google these names once a week.

If you discover inappropriate usage, consider sending a cease and desist letter to the offending competitor. Sometimes a letter from an attorney is all it takes. Sending a cease and desist letter has its inherent risks and should be discussed with an experienced trademark or intellectual property attorney. If the competitor fails to comply, contact your attorney.

If stronger action is needed, your attorney will know what to do in your specific case. If you have any questions or concerns about trademarks or your competitor’s use of your trademark and brand names on the Internet, be sure to ask Roland Tong. He can be reached at 888-350-6265or via email at roland@rtlawoffices.com. Mr. Tong provides every client with a Client Service Guarantee, in which he guarantees the high quality of personal services provided in protecting your intellectual property.

Is Your Invention Patentable?

admin — Fri, 20 Jan 2012 22:58:39 +0000

Remember the inventor, Professor Potts, in the movie classic, Chitty Chitty Bang Bang? Professor Potts was played by the talented, Dick Van Dyke. He loved to tinker and hoped that one of his inventions would strike it rich, so he could better provide for his family.

If you’re like Professor Potts and you’ve invented something like his flying car, egg and sausage preparer, or vacuum cleaner, you may be wondering whether your invention can be patented.

In this article, we are providing you with a basic description of the three types of patents. A single innovation may be protected by one or more types of patents (i.e. both utility and design patents.)

• Utility Patents – Protects how something is used or how it works
• Design Patents – Protects how something looks
• Plant Patents – Protects new plants

Utility Patents

Approximately, 90% of all patents fall into the “utility patent” category. It’s appropriate for both improvements on existing inventions as well as brand new inventions. So long as you pay the mandatory maintenance fees, such protection lasts for twenty years.

The function of your innovation is protected. Utility patents are appropriate for the invention or improvement on an invention of a:

• Useful Process
• Machine
• Manufacturing System, or
• Composition of Matter

There are three prongs that an invention or improvement must meet. It must be:

• Novel
• Not Obvious, and
• Useful

Examples of utility patents include:

• Professor Pott’s Flying Car (Chitty Chitty Bang Bang)
• A Bubble Gum Manufacturing System
• The iPhone
• A Coal Cleaning Process
• Microwave Oven

Design Patent

If your invention improves the appearance of an existing invention or creates a new invention, a design patent would be appropriate and would protect your invention for 14 years (no maintenance fees are required.) If the function of your invention is also new or an improvement on an existing invention, it would be appropriate to file for both the utility and design patent.

The design patent protects

• New, Original, and Ornamental Design
• Newly Configured Manufactured Item
• Improved Decorative Appearance of Manufactured Item
• Shape of Manufactured Item

Examples

• The Look (not function) of Designer Handbags
• The Look (not function) of Unique Chair
• The Look (not function) of Coca-Cola Bottles
• The Look (not function) of Star Wars Characters

Plant Patent

Love your roses? A plant patent protects new plants for 20 years. The plant must be:

• New and Distinct, Invented or Discovered Asexually Reproduced Plants.

Examples of plant patents would be:

• New and Distinct Rose
• New and Distinct African Violet
• New and Distinct Oak Tree
• New and Distinct Tulip

If you get the chance, watch Chitty Chitty Bang Bang for a good story, laughs, and some innovation inspiration. If you’ve invented or designed something or improved on an existing product, system, or design, consult with a qualified patent (intellectual property) attorney to best protect your interests. Roland Tong has helped many individuals and companies protect their inventions. He can be reached by phone at 888-350-6265 or by email at roland@rtlawoffices.com. Mr. Tong provides every client with a Client Service Guarantee, in which he guarantees the high quality of personal services provided in protecting your invention. Mr. Tong represents clients in various technical fields nationwide.

Not So Obvious Uses of Patents

admin — Wed, 18 Jan 2012 16:08:25 +0000

It is commonly known that patents help inventors and companies protect their innovative products, whether they are devices, manufacturing techniques, business methods, or software, from being copied. Patents allow patent owners to exclude others from making, selling, or importing to the US the patented product. If the patented products are infringed, patent owners may send cease and desist letters to the infringers, and if the infringers continue their infringing activities, the patent owners can go to court and enforce their rights through injunctions or seeking both compensatory and punitive or treble damages. Patents have plenty more uses besides these, including:

1. Patents can be used as collaterals to obtain loans. If you look into the patent assignment database of the US Patent and Trademark Office (USPTO), you will find that many patents are assigned to various banks. That is because patents are treated as tangible assets. They have their own values, and they can freely be transferred from one owner to another, just like any other tangible properties. Banks may use patents as collaterals on the loans they lend so that if a default occurs, they can seize the patents as a way to remedy the default.

2. Patents can be used to increase a company’s net worth. A company’s patent portfolio can be appraised, and its value can be added to the company’s total asset value. When the company is offered for sale, the value of its patents may help drive its sales price. The stock prices of public companies may also increase when they acquire patents either by pursuing their own innovations, licensing, or purchasing them.

3. Patents can be used to settle disputes or lawsuits. Small companies may think they do not need to obtain patents when they do not intend to be plaintiffs in patent infringement lawsuits. However, they do not know that patents can help get them off patent infringement disputes or litigation. This is especially common in industries where the major players own various patents. When two companies in the same industry fight in court over intellectual property infringement, the lawsuit oftentimes is resolved through cross-licensing. One cross-licensing scenario may involve Company A licensing a patented component from Company B, and Company B licensing a patented manufacturing technique for a different product from Company A.

4. Patents have defensive uses. By having patents, competitors may be discouraged from obtaining patent rights to similar ideas, which consequently reduces the risk of competitors enforcing a patent infringement action against your company. Additionally, with patents, competitors may be deterred from developing, selling or making similar items.

To find out how patents can benefit your business, please call Roland Tong at 888-350-6265 or email him at roland@rtlawoffices.com. Mr. Tong provides every client with a Client Service Guarantee, in which he guarantees the high quality of personal services provided in protecting your invention. Mr. Tong represents clients in various technical fields nationwide.