Business Patent Law, PLLC

Frequently Asked Questions

Frequently Asked Questions about Intellectual Property and PatentsCan I apply to get a Patent myself?

Yes, you can. The question is should you?

Many creatives who want to patent their invention pursue their own Patent Application to save money. Some creative Applicants are concerned about legal expenses associated with securing their intellectual property rights, but cost is only one of many factors to be considered.

The lowest priced alternative regarding Patent rights is to represent one’s self. However, more often than not, any Patent generated in this manner is of such limited scope as to be unenforceable against a potential infringer.

You do not develop a new patentable product by merely adding something onto an existing Patent, unless it is different enough to be demonstrably unique.

The art of drafting patent applications is developed over time, and only a skilled patent attorney can be informed of the many nuances of securing a broad scope of intellectual property rights. I am an experienced patent attorney, licensed to practice before the US Patent and Trademark Office (USPTO). The USPTO recommends that anyone applying for a Patent seek the services of a registered agent or a registered patent attorney.

What’s the difference between a Service Mark and a Trademark?

In the most basic terms, Trademarks are attached to goods and Service Marks are associated with services. Pursuant to Title 15 of the United State Code, both are related to use of these goods or services in commerce. Learn more on the Trademark and Service Marks page.

Is my material copyrighted if I mail a copy to myself?

A copyright affixes as soon as the work is completed. However, as a general rule, if you want to go to court and collect damages (in the case that someone swipes your work), you need to secure a Copyright Registration. This requires you to file an Application for Copyright Registration which will be filed in the Copyright Office of The Library of Congress. Having a Copyright Registration makes it easier for you to go to court and enforce your rights.

Does the issuance of Patent mean that the issued Patent does not infringe someone else’s Patent?

No. The USPTO determines whether the claims of a Patent are novel and non-obvious. A federal court determines the issue of patent infringement. These matters can be similar, but patentability and infringement are different legal issues.

When is a Patent infringed?

Patents are granted for novel and unique creations. A Patent is infringed when the claims of the Patent read on the “accused device or process.” For example, if you develop a chair with 5 legs, and the Patent claims a chair which has 4 legs, the 5-legged chair infringes the Patent claiming the 4-legged chair.

That is a simplified description, but Patents usually result from physical or chemical structures or processes of doing or not doing something.  Infringement is not a “cut and dried” topic. For more information on your particular situation, call me (859) 239-8999.

Should I, as the inventor/owner, ask someone to sign a confidential disclosure agreement before discussing my invention or idea with them?

Yes. More preferably, both a non-competition and confidential disclosure agreement should be in place to protect your intellectual property more completely before revealing it to third parties.

Is there a one year “grace period” to file a Patent Application after the invention has been disclosed publicly, sold or offered for sale?

Pursuant to the 2011 America Invents Act, probably not. An Application for a Provisional Application at this point is recommended, if your idea or product is to be discussed or made public to better protect your intellectual property at home and in foreign countries.

If the goods are only sold within the confines of a single state in the United States, can a federal Trademark Registration be procured?

No. Pursuant to Title 15 of the United States Code, the goods must be sold in interstate or international commerce to procure a federal Trademark Registration.

Can all or some of the rights associated with a federal Trademark or Service Mark be licensed?

Yes. To illustrate, licenses of a federal Registration are generally associated with many franchise agreements. Franchise agreements are the cornerstone for many different types of businesses.

Can all or some of the rights associated with a federal Trademark or Service Mark be assigned?

Yes. Trademarks and Service Marks are intellectual properties. Like real estate, intellectual properties can subdivided into subsections. In most jurisdictions, an assignment of all rights associated with a federal Registration must also include the goodwill to be a valid transfer of all the rights of the federal Registration.

Can all or some of the rights associated with a Patent or Patent Application be assigned?

Yes. A wise employer mandates that all employees assign all right, title and interest (including worldwide rights) to any invention associated with the employer’s business to the employer.

Can all or some of the rights associated with a Patent or Patent Application be licensed?

Yes. Exclusive or non-exclusive licenses of Patent rights can be a basis for royalty agreements. Some companies generate multi-millions of US dollars from royalty payments associated with Patent and Trademark portfolios.

Can a US Provisional Application be the basis for a Patent Application in a foreign jurisdiction?

Yes. The filing date of the US Provisional will become the priority date for the Paris Convention nonprovisional application. As a general rule, PCT Applicants have at least 30 months from the priorty date to enter the national stage of the United States or a foreign jurisdiction.

Can a US Nonprovisional Application be the basis for a patent application in a foreign jurisdiction?

Yes. If no Provisional Application was filed and the US Nonprovisional Application was initially filed in the USPTO the filing date of that Nonprovisional Application is the priority date for any subsequent Paris Convention (PCTor Patent Cooperation Treaty) Application.

Is litigation associated with the infringement of US Patents always in the federal court system?

Yes. Title 35 of the United States Code requires jurisdiction and venue for patent infringement cases in the federal court system.

Is litigation associated with the infringement of a federal Trademark/Service Mark Registration always in the federal court system?

Yes. Title 15 of the United States Code requires jurisdiction and venue for Trademark/Service Mark cases in the federal court system.

Should a corporation, business entity, partnership, business owner or other business entity, have non-competition, nondisclosure and ownership of intellectual properties agreements for employees, agents and independent contractors?

Yes. The wisdom of such agreements clarifies any potential future disputes.  By way of illustration, such agreements give the corporation, business entity, partnership, business owner or other business entity the option of seeking injunctive relief in a court of competent jurisdiction.

Like the bylaws for corporations, should partnerships, LLCs or PLLCs have operating agreements in place with formation of the business entity?

Yes. Human memories are faulty and operating agreements dictate how the LLC or the PLLC is to be managed and operated in day to day operations as well as when unexpected events occur.

Are there different tax consequences for corporations and partnerships, LLCs or PLLCs?

Most likely, yes. However Business Patent Law, PLLC does not provide counsel for tax law issues.  It is wise to seek the counsel of a tax attorney or a tax professional regarding taxation issues.

Can insurance be purchased for the litigation issues of Patent enforcement or defense of Patent infringement?

Yes.  Business Patent Law, PLLC is a consultant for Intellectual Property Insurance Services Corporation and can provide contact information to discuss potential intellectual property insurances with the appropriate personnel at Intellectual Property Insurance Services Corporation.

Is an invention patentable when the invention is made of parts or steps that are already patented?

Provided the legal requirements of Title 35 of the United States code are met, yes.

If a federal Trademark/Service Mark Registration cannot be obtained, can a State law Trademark/Service Mark Registration be procured?

Possibly – with a caveat that the State Registration is limited by the geographical boundaries of the State that granted the State Registration.

Company A believes that company B is infringing Company A’s Patent.  Should Company A sue Company B for infringement of Company’s A Patent?

Whether to sue or not to sue is a business judgment.  Depending on the amount in controversy and any potential provable damages for infringement, a simple patent infringement case can easily cost the Plaintiff more than one million US dollars ($1,000,000.00) to try the patent infringement case before a federal district court.

Can intellectual property provide collateral for a company’s commercial loans or line of credit?

Yes – depending on the bank selected. And what I have seen is that that the larger the intellectual property portfolio, the more likely a bank will consider the intellectual property credit worthy.

Are the US and State Securities Laws applicable to ownership interests in corporations, partnerships or LLCs formed to buy and sell intellectual properties?

Yes, unless the ownership interests fall under one or more exemptions from the US and State Securities Laws.

Does the 2010’s Affordable Care Act’s CMS’s Open Payments data collection apply to physician ownership’s interests in privately held corporations, partnerships, LLCs and PLLCs?

Yes, with few exceptions.

When selling an intellectual property asset, how is the value of the intellectual property asset determined?

As a general rule, what the market will bear determines the value of the intellectual property asset.

Company A has an engineering department that monitors its competitor’s intellectual property and products. Can a Patent Application be filed without the benefit of a patentability search?

Yes.

Company A is currently developing its product. Should company A file a Provisional Patent Application or should Company A wait and file a Nonprovisional Patent Application?

As a general rule, pursuant to the 2011 America Invents Act, it is wise to file the Provisional Patent Application in the United States Patent and Trademark Office, since the United States is now a “first to file” rather than “first to invention” jurisdiction.

Should a secured creditor holding a security interest in a Patent or Patent Application record the security interest in the United States Patent and Trademark Office?

Yes.

Should a secured creditor holding a security interest in a Patent or Patent Application record the security interest under the provisions of the relevant State’s “Uniform Commercial Laws?”

Yes.

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