Johnson & Phung LLCFree Consultation

Intellectual Property Frequently Asked Questions

PATENT F.A.Q.
Provisional Patent Applications F.A.Q.
Trademark F.A.Q.

Do I need a patent, trademark, or copyright?

In general patents are used to protect an idea, apparatus, or invention. Trademarks are used to protect a banding name or the name that a seller or manufacture uses for the product. Copyrights are used to protect work of art such as music, books, painting, and artistic designs.

What is a patent?

By definition a patent is a government authority or license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention.

What types of patents are there?

There are generally 3 types of patents, name utility/apparatus/device patents, design patents and the rare plant pants.

Utility patents protect and cover an apparatus or device and/or a method of either making  the apparatus or device. Design patents cover the ornamental features of an invention, i.e. what it looks like. Plants patents protect and cover newly created plants.

How long is a patent in effect?

For utility patents and plant patents
Generally speaking, for utility patents and plant patents their full life term is measured 20 years from the earliest non-provisional application filing date.

In order for the patent to extend to the full 20-year term, all of the maintenance fees must be paid during the life of a utility patent. The utility patent maintenance fee periods are at the 3-year anniversary, at the 7-year anniversary, and at the 11-year anniversary of the patent issuance or grant date.

If the maintenance fees are not paid on time the patent will expire earlier than the maximum 20-year-from-filing term. After the patent expires, the invention becomes public domain and is available to all to make and sell as they please.

For Design Patents

For design patents granted before May 13, 2015, their life term are 14 years from the issue date or grant date. For design patents granted after May 13, 2015, their life term are 15 years from the issue date or grant date. No maintenance fees are required for design patents.

Can a patent be renewed?

No, once a patent expires, the invention becomes public domain and is available to all to  make and sell as they please.

What can be patented?

For utility patents there are four main categories of patentable subject matter, namely Machines, Articles of manufacture, Composition of Matter, and Process. Generally speaking machine are defined as a functional item that comprises of interacting moving parts. Articles of manufacture can be defined as an object that might lack moving parts but provides a function. Composition of Matter can be defined as a combination of chemicals, ingredients or cell lines. Process can be defined as a set of steps for doing an application such as methods of manufacturing, business methods and computer software.

Design patents cover the ornamental features of an invention, i.e. what it looks like.

Plants patents protect and cover newly created plants.

What cannot be patented?

Abstract Ideas, Mathematical Formulas, Physical Law of Nature, Natural Phenomena, Naturally-occurring products, and Printed Matter are all non-patentable subject matter.

The old guideline for refusing to protect Abstract ideas were that they were not patentable since they are neither a process, machine, manufacture, nor composition of matter and thus lack utility because they have no particular use. However, there has been a shift in the landscape for the patentability of software, computer-based inventions, and business methods inventions based on some recent court holdings against the patentability of software, computer-based inventions, and business methods inventions.

What makes an invention patentable?

There are three major requirements for patentability, namely the invention must be novel, useful and not obvious.

Novelty
The criteria for novelty is that the invention covered by the patent application must be substantially different from anything else that is known to the public. Public knowledge includes (1) anything that has been previously patented, (2) anything that has been written about in a publication, and/or (3) anything that has been sold in the open market.

Useful
Must have some sort of practical utility to accomplish a useful purpose such as a solution to an existing problem or concern.

Nonobvious
Even if an invention is new, a patent may not be obtained “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains”, which is also known as being non-obvious.

What this means is that during the patent application review process even if the Patent
Examiner cannot find a prior art that is identical to the invention that is being covered in
the patent application, the Patent Examiner may still issue a refusal office action citing
several prior art references that, while not being individually identical to the invention
being covered in the patent application, contains elements or parts which would have
been “obvious” for the Patent Examiner to “combine” to make the invention being
covered in the patent application.

How can I tell if my invention is patentable?

The best way to determine whether your invention is patentable is to talk to a patent  attorney. Most patent attorney will give you a free initial consultation/meeting to give you a general idea whether your inventions may be patentable.

In order to determine whether your invention is novel (or has been already invented) you could have a novelty search performed. Patent attorneys usually perform novelty searches through the US Patent and Trademark Office’s database for issued patents and published applications.

You can also person perform novelty searches through the internet on search engine sites such as Google ™, Bing ™, and Yahoo ™.

Can I do my own patent search on the Internet?

The answer is yes and we often tell potential client to use and one of the search engine  sites such as Google ™, Bing ™, and Yahoo ™. It is our understanding that Google ™ actually may have incorporated some of the US Patent and Trademark Office’s database into their search engine. You can do a preliminary search of your invention on the U.S. Patent and Trademark Office’s web site.

As a disclaimer performing patent searches, whether through internet search engines or through the US Patent and Trademark Office’s database requires the use of keyword searching, which is an art that takes a lot of experience to do well. As such result and accuracy will vary with the experience of the searcher.

If I get my invention patented, I am free to build and sell my invention?

The answer is: it depends.
A patent is the right to prevent others from making, using or selling your invention. However, having a patent does not necessarily mean you have the right to make, use or sell your invention if an earlier filed and still alive patent encompasses your invention.

Can I still get a patent even if I've been selling it for some time?

The answer is: it depends.
Under current US Patent Rules, you must file a patent application (either provisional or regular/non-provisional) within one year of the first
publication date, the first date of public use, the first date of public disclosure, or the first date of sale. If the time period of the first publication date, the first date of public use, the first date of public disclosure, or the first date of sale is over one year then the invention becomes public domain and is available to all to make and sell as they please.

Should I file for a patent application if I intend on making and selling the device myself?

If you intend on making and selling the invention yourself, it is vital that you try and patent your device or else risk someone else copying and selling your device, especially if you obtain economic success from your device. Once you obtain patent protection the very thought of legal action will scare most people away from potentially copying and selling your device.

Can people make changes to my invention to get around my patent?

It depends on the scope or breath of your patent and the various restrictions that were placed on your patent during the patent application review process or patent prosecution stage.

Do I need a model or prototype before I can file a patent?

You do not need a model or prototype to file for a patent application but instead only need to have enough information in order to be able to explain your invention to someone such as a manufacture that is capable of making it. As a rule of thumb if you’re able to explain to use how to make your invention and/or how your invention works then you should be able to file for a patent application.

Should I file for a patent application if I intend on making and selling the device myself?

If you intend on licensing your idea, you will generally need a patent or you have no property to license. In addition, most companies will not talk to you unless you have some sort of patent protection on file as it is often their policy not to sign non-disclosure/confidentiality documents.

Am I protected by mailing a description of my invention to myself?

The answer is no. As of March 16, 2013, the US Patent law changed from “first to invent” to “first inventor to file” which means that the inventor who files first is deemed by the US Patent Office as the owner of the invention.

This makes it vital to file at the very least a provisional application at the earliest possible date, so as to be that “first to file.

Does my U.S. patent protect me in foreign countries?

Your US Patent does not protect you in any foreign countries and there is currently no worldwide patent available. While there are laws in place which provide
easier filing in other countries, in order to be protected in foreign countries you will have to file a separate patent application in each of the countries that you want patent protection in.

Can I get a patent on my invention but keep the most important parts secret?

No. As an exchange for the patent giving you an exclusive right to your invention you must disclose fully disclose the best mode of your invention.

What is the process of getting a patent?

Generally speaking a patent application is prepared and filed with the US Patent and Trademark Office. The patent application is then assigned to an Examiner for review.

If the US Patent and Trademark Office allows the patent application on the first Office Action (which is unlikely), then a governmental issue fee and publication fee will have to be paid in order for the patent application to issue into a patent. If the US Patent and Trademark Office rejects the application on the first Office Action, which is the usual case, amendments and arguments can then be made to the US Patent and Trademark Office Examiner in an effort to persuade the Examiner to grant the patent. If these amendments and arguments are successful, then the US Patent and Trademark Office will issue a notice of allowance and governmental issue fee and publication fee will have to be paid in order for the patent application to issue into a patent.

However, if the arguments are not successful, your application will be finally rejected and the recourse is to either pay the US Patent and Trademark a fee to further argue the your case or Appeal to the US Patent Board of Appeals. Sometimes a personal interview with the Examiner can be arranged preferably before entering the Appeal process to verbally argue your case.

What are patent publication applications?

The American Inventor’s Protection Act of 1999 requires the publication of all non-provisional patent applications filed after November 29, 2000. This is done eighteen (18) months after the earliest filing date in the application.

What will it cost to get a patent?

It really depends on the complexity of your invention and how extensive the review process is in the US Patent and Trademark Office.

What does 'Patent Pending' mean?

“Patent Pending” means that you have a patent application filed with the US Patent and Trademark Office covering your invention.

I am not a U.S. Citizen or Resident. Can I get a U.S. Patent?

Yes, if your home country extends the same privilege to U.S. citizens.

Should I file a Provisional Application or a 'regular' application?

This is question that we get asked a lot and our response is that it’s a business decision that you’ll have to make based on your circumstances.

Reasons to file a provisional application over a regular application
Some of the benefits of Provisional Applications are that they are much cheaper than regular applications (usually costing about 1/3 as much) and faster to prepare than regular applications which will allow you establish your priority at the patent office faster and at a lower cost so that you can go out and discuss, build, market, sell your invention to others and/or determine whether it’s worth the investment to file the full utility/regular patent application. In short, similar to the regular application you’ll enjoy the “Patent Pending” Status & Secure your invention with the filing of the Provisional Applications.

Reasons to file a regular application over a provisional application
Some of the benefits of proceeding with a regular application over filing a provisional application are that if you know that you’re eventually going to file for a regular application filing for a provisional application first results in just added cost and further delays in the examining and hopefully in the issuance of your patent.

What are the government fees associated with filing patents applications?

The governmental filing fee for initially filing a utility patent application is around $500 for micro entities (applicants who make less than $150,000 and have filed 4 or less patent application), around $1,000 for small entities (most people and companies with less than 500 employees), and $2,000 for large entities (companies with more than 500 employees.

What is a Provisional Application?

A Provisional Patent Application (or also referred to as a Provisional Application for Patent) is considered a stepping stone patent application filed in the US Patent and Trademark Office whose main purpose is to establish priority for the owner of the invention.

Some of the characteristics of a provisional patent application is that unlike a regular or non-provisional patent applications, a provisional patent application (1) does not get assigned and examined by a patent examiner, (2) automatically expires or becomes abandoned after 1 year from the date of filing, and (3) cannot claim priority or benefit from any other application.

What do I need to include in a Provisional Application?

Although there are no formal requirements for a provisional patent application, under the current rules provisional patent applications must be written correctly for effective protection.

If you file a regular or non-provisional patent application within one year of filing the provisional application and make a claim of priority to the earlier filed provisional patent application, you’ll get the benefit of priority to the filing date of the provisional patent application. But in order to enjoy the benefit of priority to the earlier filed provisional patent application, the provisional patent application must contain enough information to “carry-over” to the non-provisional patent application or else you may lose the benefit of priority to the filing date of the provisional patent application.

Is there a form for a provisional patent application?

Although some legal site such as Legalzoom™ or some patent submission companies may have proprietary “provisional application form”, you should be aware that there technically is no such thing as a standard provisional application form since similar to a regular or non-provisional patent application, a provisional application needs to be written up from scratch.

What forms do I need to file with my Provisional Application?

Although some legal site such as Legalzoom™ or some patent submission companies may have proprietary “provisional application form”, you should be aware that there technically is no such thing.

For filing a paper copy to the US Patent and Trademark Office you’ll only need a Provisional Cover Sheet and a Fee Transmittal form. For electronic filing through the US Patent and Trademark Office EFS-Web system you will need to file an Application Data Sheet.

Although not required we usually include a Provisional Cover Sheet with the electronic filing. g as a standard provisional application form since similar to a regular or non-provisional patent application, a provisional application needs to be written up from scratch.

How do I turn my Provisional Application into a patent?

First off, a provisional patent application technically never becomes a patent as it becomes abandoned or expires at the one-year anniversary of the filing date. However it you file a regular or non-provisional patent application within one-year of the filing date of the provisional patent application and make a claim of priority to the provisional patent application then your non-provisional patent application will benefit from the filing date of the provisional patent application

What is a trademark?

Legally speaking a trademark can be a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the manufacturer and/or seller as the source of the goods or services.

What is federal trademark registration?

A federal trademark registration is an official acknowledgement from the US Patent and Trademark Office of ownership of a mark based on the US Patent and Trademark Office’s review process and the mark owner’s actual use of the mark on particular goods or services in US interstate commerce

What type of protection does a federal trademark registration provide?

Some of the protections of a federally registered trademark include:

(a) official acknowledgement that you are the deemed by the US government as the presumed owner of the mark,
(b) motivate competitors to try an avoid copying or incorporating the same or a similar mark as yours,
(c) makes it easier for you to stop infringers in court,
(d) allows you the ability to use U.S. Customs to Enforce to prevent the importing of infringing products or services,
(e) allows you the ability to use Registration Symbol ® next to your mark.

What kinds of things can be trademarked?

Almost anything that serves to that identifies and distinguishes a manufacturer and/or seller as the source of the goods or services can be trademarked. Trademarks may include any word, name, phrase, slogan, a way or presenting or spelling a word, symbol, shape, or drawing, details of packaging, design of store (trade dress), sound, smell or device, or any combination.

What are the steps for registering a trademark?

The general steps for registering a trademark include:

1. Determining if a mark is available for use and potential registration in connection with your goods or services. This is usually done through a trademark-screening search.

2. Once you have determined that the mark is available for use and potential registration, you can either apply for the mark through an “intent-to-use” trademark application or else use the mark in interstate commerce and then file for a “use”
trademark application.

3. Receive a certificate of registration and use the ® next to the mark to put people on notice.

How do to choose a trademark?

The general rule for choosing a trademark is to:

1. pick a mark that you like,

2. pick a mark that is unique (such as the word “target” for a store)

3. pick a mark that does not suggest or describe your product or services (such as the word “turbo powered” for an automobile that has a turbo engine), and

4. pick a mark that is not generic (such as the word water for bottled water).

How can I tell if I can use a mark?

To determine if you can use a trademark you should perform a trademark-screening search (also known as a preliminary search). This can be done by either by (1) searching for the mark that you want to use through the internet on search engine sites such as Google ™, Bing ™, and Yahoo ™ or (2) on the U.S. Patent and Trademark Office’s web site, or both. If you want further assurances you can also have one of our attorneys perform the search for a pretty low fee.

Can I use my business name that I incorporate through my state as a trademark?

Incorporating or registering a business name through a state is unrelated a trademark filing and does not mean that you are clear to use the name as a trademark. Most state’s business name review process are done only to ensure that there are no identical company/business names in that state.

If I register my mark in one class, can someone else register the mark in another class?

The answer is it depends on how well know your mark becomes and how close the products or services in the other class are to your products or services. The general test for how close the products or services in the other class are to your products or services is the legal principle of “Likelihood of Confusion” which include a number of factors such as trade channels.

How long is do trademark last?

Under common law rights trademark last as long as you use and maintain control of the mark. Similarly Federal trademark registrations can also last as long as you use and maintain control of the mark. However, Federal Trademark Rule require that you actively maintain your Federal Trademark Registration through a renewal process which occurs between the 9th and 10 anniversary of the grant date of the Federal Trademark Registration

What does registration cost?

The cost of registration depends on a number of factors including the amount of different types of goods or services that you are using in association with your mark and how difficult the examination process is through the Patent and Trademark Office has any problems with the application. You should expect to spend $1,000-$2,000 to register a single mark in a single class of goods or services.

What information do I need to apply for a federal trademark application?

Generally speaking, in order to prepare and file for a Federal Trademark

Application you will need:

1. the mark that you want to apply for,
2. a description of the goods or services that will be associated with the
trademark,
3. the name of the person or business entity that will own the trademark,
4. the legal entity of the person or business that will own the trademark (i.e., individual citizen, Corporation, Limited Liability Company) and where they live or the state that the business is incorporated in,
5. the principal place of business,
6. the first date that you used the trademark, andwhether you have used the trademark in interstate commerce.

Does my US registration protect my trademark in any foreign countries?

Your US registration does not protect you in any foreign countries and there is currently no worldwide trademark registration available. While there are laws in place which provide easier filing in other countries, in order to be protected in foreign countries you will have to file a separate trademark application in each of the countries that you want patent protection in or if applicable, a community trademark covering group of countries such as through the “Madrid Protocol.”
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