Frequently Asked Questions

 


Select a category below to display its FAQs.

 

PATENT BASICS

Please check out our two minute(+) introductory video tutorials.  We have tried to keep them informative and entertaining.

A patent is a right, for a set period of time, to prevent others from making, using, or selling an invention. A patent does not grant you the right to brand your goods, and should not be confused with a Trademark.

Not all ideas are patentable. Please read this post: Can I protect my idea?

A provisional patent application is a patent application that is not examined by the patent office, but has the effect of reserving your filing date (also known as the priority date). A provisional application needs to be followed up by a non-provisional filing (within one year), which is examined by the patent office. A provisional application has no formal filing requirements, but still needs to be in as much detail as possible.

While there are no formal requirements to file a provisional patent application,it is important that a patent attorney strategizes and plans before filing drafting the application. The advantage of a correctly filed provisional application is that the non-provisional application (when filed) can piggyback to the filing date of the previously filed provisional application. Be aware: a mediocre provisional patent application filing can do more harm than good and can even cause invalidation of a patent if one is granted (see New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 Fed.Cir.2002).


 

You’ll need to provide as much information as you reasonably can.

Step 1. Identify the unique aspect of your invention

As an inventor you should always proceed methodically. First write down what is the unique character of your invention — the feature that deserves a patent.

Step 2. How is the identified aspect implemented — that is, how are you implementing the invention?

Your answer will need to include all relevant details, including flow charts, diagrams, etc.

Outputs/ results, black-box implementations, or presuming a computer or device can automatically do this because you commanded it to do so, have no meaning. Naturally, if you don’t know how to implement the invention, at least in theory, then it is a mere idea, and ideas by themselves are not patentable.

Step 3. Have you explained in enough detail so that your invention can be replicated by reading your disclosure WITHOUT needing any guess work or decision making?

If your answer is YES — Stop; send it to your attorney.

If your answer is NO — go back to question 2 and flesh out more details.

A utility application can be filed as a provisional or a non-provisional patent application. A non-provisional patent application is the “main” application filing which is examined by the patent office. Once a non-provisional application is filed, no further substantive changes/amendments can be made to the application.

At an average, it takes 2-4 years to get a patent granted (after filing the non-provisional application), so filing the application is just the beginning of the process. Needless to say, it takes a lot of time and energy to draft a non-provisional application and selecting a qualified professional is important. Statistically, a non-provisional patent application that is not well written will most probably get abandoned during the examination phase.

The main expense in procuring a patent is legal fee. Each professional has their own hourly billing rate, which is governed by the basic principles of economics — supply and demand. “Cheaper” professionals usually have a larger failure rate than other reputable professionals. If an application is not written correctly there is no way to fix it later.

Generally, it takes 2-4 years to procure a patent, and one should never select a professional based on their initial filing fee, but on their success rate. Always ask for issued patents as samples.

A detailed answer is presented at this link: The Patent Process

While there is no “one-size-fits-all” strategy (since each matter is different), we have provided a detailed posting here: Filing a provisional or non-provisional utility patent application

It is advisable that you schedule a consultation to discuss the exact strategy that can be employed in your situation.

Yes, you may. But there are risks involved. Details can be found here: Can I refile a provisional patent application?

As soon as you are awarded an application number by the USPTO (usually immediately upon filing of your application), you should feel free to claim “patent pending.” However, please note that “patent pending” only means that you have filed an application and it does not give you any exclusive rights until a patent is actually granted.

Generally, no. Patent pending only means you have a patent application pending with an appropriate government agency. While you can place a party on notice that you have a patent pending, you cannot claim exclusivity until an actual patent is granted.

A design patent protects the ornamental aspect of an invention (it has nothing to do with functionality of the invention). A utility patent, as the name suggests, protects the utility/functionality of an invention (it has nothing to do with the aesthetics of the invention). A utility application can be filed as a provisional (temporary) application or as a non-provisional (non-temporary, that is permanent) application. Non-provisional applications are examined, provisional applications are not!

In one sentence: You get what you pay for!! We encourage you to read our posting on this subject here: Selecting a Patent Attorney.

Please visit the USPTO Patent Fee schedule of 2018. 

This has been described at our post here.

Load More

SOFTWARE BASED INVENTIONS

Yes of course! However, with recent updates in the law, patenting software has become a complicated process. They key to procure a software based patent application depends on how well the application is drafted. One mistake, and it’s game over!

We have successfully obtained numerous software based patents for our clients. Please schedule a consultation to discuss how we may be able to help you. 

In order to procure a software patent, the invention needs to be described with technical detail and process information so that a software developer can replicate your invention without having to make any substantial/meaningful decision on their own. This means your disclosure should provide a technical road-map on how to implement the invention.

You’re encouraged to read our posting about our posting on software patent applications and the Alice case.

At the current state of law, without technical details the patent office will consider your invention as an “abstract” idea; there is a good chance your application would get rejected and eventually be abandoned. But we may be able to assist in some cases — please schedule a consultation with us for an assessment of your invention.

While we understand software code and can easily fill in the blanks, it is highly advisable that you have a technical/ software developer in your team to provide us an initial disclosure.

This has been answered in detail at this post: How to successfully patent a mobile app?

Please refer to our recent post titled, How to patent software (2019)

Load More

TRADEMARKS

Only the filing of the initial trademark filing. Please request a quote to learn more about our flat fee initial trademark filing service. Please note, trademark searches and/or opinions are optional and are not performed unless separately requested (for a fee).

A trademark is a insignia, logo, or any sign that represents your goods or services that are offered in the “stream of commerce.” That means, a trademark represents your “brand” under which you are selling goods or services. If you are not selling (and do not intend to sell) a good or service under the brand, you cannot file a trademark application.

While you may initiate the process by simply letting us know the desired trademark and a category (also known as a class) where it is being used (e.g., shoes, website, t-shirts, etc.), to successfully register the trademark you’ll need to provide proof that your product or service is being offered for sale.

A class is a category under which your trademark will be registered. If your product is related to clothing, the trademark will be registered under International Class (IC) 25. If you are in the business of providing advertising services, IC 35 may be appropriate for you. Similarly, education and entertainment services are registered under IC 41.

You can register a trademark under one or more classes as well. For example, if you provide advertising services under a trade name, and also provide promotional T-shirts, you may register the mark under IC 25 and 35. Fees are calculated based on number of classes. Please request a quote to learn more about our fees.

This question has been answered in our blog post, Patent vs. Trademark.

Load More

COPYRIGHT

A copyright protects original works of authorship. This includes literal and artistic works, such as poetry, novels, movies, songs, compositions, skits, logos, computer software, etc.

Usually, titles, names, slogans cannot be copyrighted since they cannot be classified as a literal work of art. For that you may file a trademark application.

Ingredients or contents cannot be copyrighted, but a recipe with instructions can be considered as artistic, and thus copyrightable.

Ideas, procedures, methods, systems, can be patented but not copyrighted. 

 

Yes, software code can be copyrighted. Copyrighting only protects the literal work of art, and copyrighting software would thus only protect your code “as-is.” That means, if someone steals your exact code (as in copy-paste) to make it part of their own then you may have rights to sue the infringer of your copyright.

However, if you want to generally protect your idea (regardless of how you wrote the code), you should consider augmenting your protection with a software patent application. A software patent application can be filed in conjunction with a copyright.

Symbols designed or typographic ornamentation, fonts, typeface, do not qualify as copyrightable by itself (however, the font software itself can be copyrighted). However, the font or typeface may qualify as an artistic expression of a logo when combined with other lettering or spacing (e.g., Coca Cola has a copyright on its logo typeface). 

However, a typeface or font may be able to qualify for a design patent, which is perhaps the strongest protection available to a font or typeface.

Load More

LITIGATION

Sorry, we do not provide ‘no win no fee’ arrangements, unless you have litigation insurance. However, if you do not want to purchase litigation insurance, we can provide a partial contingency agreement later on in the case, once it proceeds through the initial phases. This means you will have to retain us and bear the costs of initial stages of the litigation. Further, we urge you to reconsider your decision to sign up with a no win no fee lawyer. Such fee arrangements generally benefit the attorney at your expense.  We encourage you to read our posting about the problem with no win no fee lawyers.

 

Please watch our short video on Patent/Trademark Cease & Desist Letters.

Usually, the first step would be to attempt to contact the publisher/author if s/he would retract the posting. Most often this is done in the form of a cease and desist letter. If that fails, you may initiate a legal proceeding.

SLAPP Lawsuits

A Strategic Lawsuit Against Public Participation (SLAPP) means that a lawsuit has been filed to  silence a person from publicly expressing their opinion. What is considered an opinion is a complicated legal issue and you should seek legal advice from your attorney. Nonetheless, SLAPP lawsuits, by statute, are illegal and result in the plaintiff paying the legal bills of the defendant — if the defendant prevails on an anti-SLAPP motion. 

Opinion Statements

Generally speaking, opinions are statements are not defamatory.  This includes statements that are very subjective in nature. For example, if someone does not like the food or service of a restaurant, that is considered as an opinion. One person’s statements may differ from that of another and therefore a subjective interpretation can never be considered defamatory. However, an opinion statement may be defamatory when the underlying justification of the opinion is false. For example, if a person opines that no one should go to a particular restaurant that is, in itself, a non-defamatory opinion. However, if the person states that no one should go to the particular restaurant because they got sick after eating food there, then the opinion can be defamatory if the person lied and did not get sick or got sick because they ate something else. This is because now it can be proven whether eating at the particular restaurant made them sick. 

While negative reviews can hurt a business, not all statements are defamatory. People are allowed to express their opinion, their likes or dislikes, as long as they are truthful in explaining the basis of their opinion. While selecting an internet defamation attorney, one should always ask them whether the potentially defamatory statement by defendant can be considered as an opinion.

Rhetoric Hyperbole

 Often judges, and attorneys alike, come to a conclusion that a potentially defamatory statement is “rhetoric hyperbole.” It means the statement is a colloquial exaggeration that no reasonable person would consider for its literal meaning. For example, if Joe calls Bob “garbage,” this signifies that Joe does not like Bob, for some reason– this is an opinion. No one would reasonably interpret that Joe meant to call Bob trash found in a dumpster! Thus, statements or phrases that are not considered for their literal meaning are determined to be rhetoric hyperbole.

 

 

We understand your plight and sympathize with you. While negative reviews are never appreciated you can only sue the reviewer if the statements in the review are not truthful. We explain this further in our blog post titled, Can a Review Online Defame a Business?

Load More