The Patent Process

Today, we want to discuss with you how to patent your idea and the patent process and, in particular, the patent search.

Many people tell me they have an idea, but just don’t know what to do after that. I usually commend them on at least taking the step of coming to see a patent attorney. Many people are, for some reason, too intimidated to do that. We don’t bite and many of us don’t charge for the initial consultation, which is completely confidential, so there is really nothing to worry about.

During our initial meeting, I will ask many questions so that I am sure I fully understand what the invention is, how it works, and all the alternatives of making and using it. Once I have a full understanding of what you have invented I will usually recommend that, before we spend the money on filing a formal patent application, we begin with a patent search. We, of course want to make sure that you are the first to have invented this.
To do the search, after our meeting, I will communicate the details I learned about your invention to the searcher. Several days later, I will get the results back from the search and will review those in great detail. I will usually ask you to do the same and then we will have a follow-up meeting so I can express to you my thoughts on what was found during the search and ask you your thoughts.

By knowing what already exists, we can accurately determine the precise scope of your contribution to the technology and I can predict, with pretty good accuracy, the probability of us being able to get a patent allowed for you.

The Role of a Patent Attorney

Patent lawyers specialize in the area of law protecting the property rights of inventors. Applying for a patent is a complicated procedure that requires the expertise of a lawyer who is trained to interpret the rules and regulations of the patent process, negotiate contracts, file documents and provide legal representation to inventors.

Patent lawyers are involved in all aspects of law covering patents and the intellectual property rights of inventors. Conducting searches to ensure that an invention has not been previously represented in the public domain and is patentable is the first responsibility of a patent lawyer; following that, he or she drafts, files and prosecutes patent applications on behalf of inventors before the U.S. Patent and Trademark Office (USPTO). Patent attorneys also provide legal representation in cases of patent infringement, challenges to the license of an invention and appeals to the USPTO.

What is a provisional patent?

Today, I want to discuss with you provisional patent applications. Many people refer to this as a provisional patent, but that term is incorrect. There is no such thing as a provisional patent. There is only a provisional patent application. This will never turn into an actual patent unless you take another major step to turn it to a non-provisional application.

But let me step back for a second. The patent application process is extremely technical and forces the applicant to comply with many requirements. To draft a proper patent application, you need to find someone with experience in drafting patent applications and you have to give them a considerable amount of time, usually several weeks, for them to complete the job. Often times, clients don’t have the time or money to create such a formal document. For these cases, the patent laws allow you to file what is called a “provisional” application, which does not have all of the technical requirements of a non-provisional application. In fact, no one at the patent office of or even looks at your provisional application. It simply serves as a placeholder allowing you more time to work on your non-provisional patent application.

Now because there are no formal requirements for the provisional application and because no one actually looked at it, I don’t want you to think it doesn’t matter what is included in that document. If you convert your provisional application to a non-provisional application the content of your provisional application can be very damaging to you later on. Also, because the United States, the patent goes to the first inventor to file his application NOT the first inventor the think of it, your provisional must have sufficient disclosure to show you actually were the first inventor to file the details of that invention. Gone are the days when we could file a photocopy of a cocktail napkin as a provisional.

So you really want to have a conversation with your patent attorney and explain to him or her your goals and budget. The flexibility of the provisional usually means you will be able to reach both.

I have been drafting patents for over 15 years and have been teaching patent drafting skills at the law school level for almost 10 years. I have also litigated many patent infringement cases. I, and the attorneys at The Concept Law Group, know how to draft provisional patent applications that will meet any budget.

The Concept Law Group is ready to help you get started. Call us today for your free confidential consultation.

What is a patent and why you need one.

Today, I want to discuss with you what a patent is and why you might want one.

I encounter many people that believe they need a patent in order to sell a product. That is simply not true. There is no law that says you need a patent to sell a product and, in fact, most products you find for sale today, are not covered by a patent.

The reason you want a patent is to stop others from copying your idea. In a sense, once you obtain a patent, you can use it as a weapon against your competitors. Specifically, when you see someone copying your invention, which we call “infringing,” the patent allows you to take that person to court and ask the judge to order them to stop infringing and, hopefully, to pay you for that infringement and the legal fees and costs you had to spend suing them.

For more information call us today at 954-PATENTS

The Concept Law Group is ready to help you get started. Call us today for your free confidential consultation.

 

Hip Hip Hooray!!! Supreme Court Says Cheerleader Uniforms are Protectable under Copyright Law

In what can only be considered good news for fashion designers, the Supreme Court, by a 6-2 vote, held last week that the decorative elements of a cheerleading uniform are protectable under Copyright Law.  The decision marks a change of direction that has been advocated by fashion companies and designers for years.  The case involved Varsity Brands Inc., the largest cheerleading apparel supplier in the United States, and its competitor, Star Athletica, who Varsity Brands accused of copying its uniform design.  Specifically, Star Athletica was selling a copy of Varsity Brands’ cheerleading uniforms with similar stripes, chevrons, zigzags, and color blocks in the outfits.  Previously, the 6th Circuit Court of appeals found the elements to be more than just aesthetic touches, but, in fact, are what made the outfit a cheerleading uniform.

 

Varsity Brands Design

Star Athletica

 

Proponents of copyright protection for fashion argue that apparel has developed from its original merely useful purpose (covering up a naked body) to more complex articles, including separable concepts. According to fashion designers, these separable concepts are capable of producing protectable expressions of ideas, which is precisely the realm of copyrights protection. As a result of the decision, the Supreme Court chose to side with fashion designers. Justice Thomas explained that the appropriate test for determining whether an article of clothing can be protected via copyright is whether the decorative elements could be separated from the usefulness of the article of clothing.  To be clear, only these separable elements, e.g., stripes, chevrons, zigzags, etc., can be protected.  Therefore, while Varsity’s designs now enjoy some protection under copyright law, the protection is limited.  For example, Varsity cannot prevent a third party from manufacturing a cheerleading uniform of similar size and shape (without the decorations).  But, Varsity can prevent a third party from reproducing its decorative elements, such as its unique arrangement of graphics, stripes, colors, etc. The Council of Fashion Designers of America, a very vocal group on the issue, had advised the Court about the danger of ruling against Varsity.  According to the Council, ruling for Athletica would leave designers incapable of defending their businesses against infringers making copies of unique designs.

Since the Court ruled in favor of Varsity, however, fashion designers now have a route for the protection of some of their design elements. The holding did not come without its critics, however, who argued that useful items, such as clothing, should only be protectable under patent law, due to the limitations on terms of protection and strict requirements for eligibility of protection. There is still a long way to go before this issue of copyright protection for apparel is completely clear; however, at least for now, fashion designers appear to have at least some limited remedies under copyright law. To learn more, contact the attorneys at The Concept Law Group:  www.conceptlaw.com To read the full decision, go to: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf

Attention ROOR Glass Lawsuit Recipients…

As recent news in Florida indicates, even the makers and sellers of bongs—water pipes—aren’t exempt from falling victim to trademark infringement. South Florida courts have seen an influx of lawsuits in recent months relating to small-business owners being sued in federal court for allegedly selling cheap knockoff bongs resembling the ROOR Glass brand. The ROOR brand, an affiliation of Sream, Inc., is a renown German line of hand-blown glass bongs and hookahs that has garnered a significant following around the world mostly because many customers consider them to be works of art. Thus, a growing number of counterfeit knockoffs are being imported and sold at a fraction of the cost. According to the complaint filed in the UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK, here are some of the non-defaulting Defendants listed in a previous lawsuit:

  • Smoke Scene Inc. a/k/a Smoke Zone
  • Mega News Inc.,
  • City Smoke Shop Inc.

In January 2015, Sream, Inc. hired an investigator who purchased a bong bearing a ROOR trademark from one of the defendants listed in the complaint. Upon further inspection, the pipe was deemed to be counterfeit and sold without authorization from Sream, Inc. The complaint also alleges that the investigator spotted many other pipes in the store with the ROOR Glass logo. The investigator testified that after conducting up to 350 inspections at different retail shops around the New York area, over 100 of the shops were selling counterfeit products. The presiding judge recommended awarding Sream, Inc. damages in the amount of $50,000 per the The Lanham Act. According to the Legal Information Institute, The Lanham Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks. https://www.law.cornell.edu/wex/lanham_actMany of the South Florida business owners claim that the lawsuits are unjustified based on the fact that it’s too difficult to determine a ROOR brand bong from any other brand on the market. This is what Abu Mansoor, the owner of two South Florida convenience stores being sued, had to say:” We feel that we are being picked on, and it feels very unfair that we were sued without first getting the chance to fix the problem. I’m not a connoisseur of these products, I’m a layman. If they had told us we were doing something wrong, we would have stopped.” But, the ROOR brand claims that there are several elements that they add to their products in an effort to ensure their authenticity including unique signatures and logos. Genuine ROOR Glass bongs can cost anywhere from $150 for smaller models up to $1000 for larger models. Some of the store owners opted for confidential settlements out of court. One established Miami intellectual property attorney who is representing some of the store owners alluded to the fact that these lawsuits are atypical, because the manufacturer of the counterfeit products is the one that is commonly sued by a trademark owner. The Concept Law Group is also representing recipients of these suits and would be happy to talk to you about your options. Call us now at (754) 300-1495.

Trademark Infringement News: Counterfeit Goods

In other Florida intellectual property news, the French boutique company Hermes International and Hermes of Paris Inc. recently filed a complaint against several e-commerce stores alleging trademark infringement. The company is claiming that the sites are benefiting financially from selling counterfeit versions of its goods online.   The complaint also claims that the French company’s reputation was damaged due to inferior products bearing the Hermes marks being sold to customers.

The following lawsuit seeks to hold the following domains accountable for selling counterfeit products online: cheaphermesbraceletreplica.top, cheaphandbags.club and designermens.club.   The plaintiffs filed the lawsuit via the U.S. District Court for the Southern District of Florida, and are seeking treble damages, statutory damages in the amount of $2 million per each counterfeit trademark used, statutory damages in the amount of $100,000 per cyber-squatted domain name used, all legal fees and any additional relief award by the court.   If you want to learn more about trademark infringement, then The Concept Law Group offers all potential clients a free 30-minute consultation so that we can fully understand your business, how and where you are using your trade or service mark, and can explain your options for protecting the same.

During the initial consultation, we will explain in great detail the steps necessary to protect your trade or service mark and the expected costs associated therewith.  For instance, in many circumstances, we will recommend you start with a trademark search to see what exists that might be an obstruction to obtaining a trademark or service mark registration.  Our firm has a flat-fee $295 trademark search model that covers the searcher’s time and pays for an attorney’s time reviewing the results and consulting with you to make the proper decision on whether to move forward with a trademark application.

IP News | Investigating the IP Landscape of Miniaturized Gas Sensors

In recent IP news: According to a recent report, efforts to reduce cost, power consumption, and size are driving the development of new gas sensors. The market for gas sensors for consumer applications has been predicted to grow from $12M in 2015 to more than $95M in 2021. Fueling this growth is the increasing gap between the number of patent applicants as compared to the number of current market leaders. There are currently 440+ patent applicants, 760+ granted patents, and 510+ pending patent applications related to MEMS (Micro Electro Mechanical System) gas sensor technologies. Bosch, one of the world’s premier providers of measuring tools, is the chief patent holder of gas sensors around the world. Further, companies such as Siemens, Honeywell, and General Electric have strong patent portfolios with viable IP blocking potential. Despite this crowded patent field, market leaders, such as Honeywell, MSA, NGK, and Figaro, are experiencing challenges from recent patent applications owned by companies like Bosch, Siemens, Micronas, and CCMOS. These new patent applications focus on improvements in gas sensor technologies that could lead to a disruption in the gas sensor market.

Such a disruption could open the door for new companies, developing improved technologies, to challenge the current market leaders. For companies that hope to enter into this promising field, a strong intellectual property (IP) portfolio is paramount. Stay tuned for future developments related to this report, and other current events related to the IP news and patent landscapes of miniaturized gas sensor technologies. If you are interested in learning more about the gas sensor patent protection, or have any questions regarding the filing and prosecution of your Patent, Trademark, or Copyright application, then you are encouraged to contact the Intellectual Property Law Attorneys at The Concept Law Group. Our attorneys have recovered over $60M in IP Litigation damages for our clients and will work diligently on your behalf to ensure that every part of your intellectual property is protected.

Who Owns the Streaming Rights to Prince’s Music?

Roc Nation, a full-service entertainment company founded by American rap artist Shawn “Jay Z” Carter, is being sued for copyright infringement by NPG Records and NPG Music Publishing, companies that were founded by Prince. The lawsuit alleges that, without receiving permission, Roc Nation uploaded 15 Prince albums on Tidal, a music streaming platform that is also owned and operated by Jay Z.

Although Prince and Jay Z struck a deal in 2015 regarding particular streaming rights of Prince’s music on Tidal, the NPG complaint alleges that the deal only included the exclusive streaming rights to Prince’s album “Hit N Run: Phase One” for a 90-day term. Roc Nation filed a response to the complaint, alleging that Prince granted Roc Nation with the worldwide digital streaming rights to the entire catalogue of Prince’s music, including previously unreleased recordings, in 2015. Roc Nation has not, however, produced any documentation or evidence of any such agreement between it and Prince or NPG.

It has been reported that Prince’s estate includes a significant cache of unreleased music potentially worth a vast sum of money, and that Jay Z was actively negotiating the purchase of the vault. Since Prince fought adamantly to protect all of his intellectual property from streaming services for much of his life, the lawsuit may seem peculiar to those familiar with the musician’s legacy. But, in 2015, Prince issued the following statement regarding his potential partnership with Jay Z: “After one meeting, it was obvious that Jay Z and the team he has assembled at TIDAL recognize and applaud the effort that real musicians put in2 their craft 2 achieve the very best they can at this pivotal time in the music industry. Tidal have honored Us with a non-restrictive arrangement that once again allows Us to continue making art in the fashion We’ve grown accustomed 2 and We’re Extremely grateful 4 their generous support.” This isn’t the first-time that Jay Z has had to defend himself against copyright infringement.

If you’re an avid follower of our blog, then you’ll remember that the descendants of the late Egyptian composer Baligh Hamdi claimed that Jay Z used a musical sample without permission for his 1999 chart-topping song “Big Pimpin’.” In 2015, after an eight-year legal battle, a federal judge dismissed the case, ruling that Hamdi’s descendants lacked the standing to pursue the copyright infringement claim.

Trade Secrets: Protecting Confidential Information

Although they generally remain unseen (by design!), trade secrets can make significant contributions to the overall value of a given company. A trade secret is typically defined as any confidential information that is secretly held by a business to gain an economic advantage over its competitors. Some common trade secret examples are designs, blueprints, formulas, machine processes, business and manufacturing methods, cost information, office techniques, customer lists, and computer programs, to name a few.   Protecting trade secrets is fundamentally different from protecting other forms intellectual property, such as patents, trademarks, and copyrights. Governed by the Uniform Trade Secrets Act (UTSA), trade secrets do not require any form of registration or procedural formalities. Instead, since trade secrets are designed to provide for the protection of secret information, they require that the trade secret owner take “efforts that are reasonable under the circumstances to maintain” the secrecy of the trade secrets.   Here are some of the most standard legal protections available to trade secret owners:

  • Non-disclosure agreements (NDAs) – NDAs are legally binding contracts between at least two parties that serve to explicitly identify confidential information and establish a confidential relationship between all parties involved. The purpose of an NDA is to not only maintain confidences, but also protect non-public information, such as sensitive government data, information regarding a new invention, or even trade secret skills learned by employees while working on certain jobs. There are many different situations that call for NDAs, including: disclosing an invention to potential investors, sharing recently developed technology with prospective buyers, and allowing employees to access proprietary information related to your business. It’s also important to note that there are two different types of NDAs: unilateral agreements and mutual agreements. In a unilateral NDA, only the party receiving confidential information is bound to protect the information. In a mutual NDA, both the receiving and transmitting parties are bound to protect confidential information.

 

  • Non-compete clauses (NCCs) – Also referred to as non-compete agreements, these clauses are recommended if you plan to share your business practices with employees, partners, and contractors, but also want to prohibit them from competing with your business for a specified period of time. Some key components of a legally binding NCC are the agreement start date, the pertinent names and addresses, the reasoning for the agreement, the designated geographic area, the terms of compensation, and the signatures of each party to the NCC.

 

  • Work for hire agreements – Typically reserved for employees or independent contractors, work for hire agreements prevent contractors from claiming ownership over the work once it is completed. Instead, the owner of the work is the person who commissioned the work to be performed by the employee or independent contractor. These agreements also set forth any job expectations for the work to be performed by the employee or independent contractor.

Even though drafting an NDA, NCC, or work for hire agreement doesn’t have to be a complicated process, the agreement, at the very least, should identify the parties involved, indicate the scope of confidentiality, declare any exclusions, determine relevant limitations, and specify any other terms of the agreement. The Concept Law Group has prepared countless agreements of these types, and can help you ascertain whether your information, design, device, process, composition, technique, or formula can be afforded protection. The Concept Law Group can also help you ascertain any possible recourse that you may have if the information subject to a trade secret has been, or will be, misappropriated in any way. In addition to enforcement, the Concept Law Group can also help in defending any person alleged to have misappropriated another’s trade secret.   If you are concerned with protecting, enforcing, or defending a trade secret, then you are encouraged to contact the intellectual property attorneys at The Concept Law Group, who will not only listen to you, but also develop a plan to accomplish your goals.