Patents Legal Questions

Reverse engineering, meaning examining an article or apparatus to determine how it is made and how it works, is never illegal in the U.S., regardless of whether or not there are patents on the object.  What you do with the knowledge obtained by reverse engineering, however, can potentially give rise to infringement issues. Suppose, for example, the product has a patented aspect A, and based on your knowledge obtained by reverse engineering the product, you conceive of an additional aspect B which when combined with A improves the product.  A product practicing a combination of A and B could infringe the patent on aspect A, even though it is an improvement on a product that practices A alone. Consult a patent attorney for advice and counsel regarding potential infringement issues when improving a patented product.... Read More

You may file either a new PPA or a new non-provisional utility patent application.  You will not be able to claim the priority date of your earlier filed PPA if you file a non-provisional application. For a micro entity,  USPTO the filing fee for a PPA is $75 and the filing fees for a non-provisional utility patent application (basic application + search + examination) total $455. As the inventor, you may prepare and file your own non-provisional application.  Because patenting formalities and procedures are quite complex, pro-se applicants very rarely obtain an issued patent from their applications.  If your invention is valuable, you owe it to yourself to obtain the funds to hire a registered patent practitioner so that you have a good chance of actually obtaining an issued patent. Many patent practitioners provide a free initial consultation, and many of these will provide a firm fixed fee quote for preparing and filing your non-provisional application.  You are not limited to patent attorneys in your geographic area.  A registered patent attorney can represent a client anywhere.  Call around to find a patent attorney who can provide you with guidance. See https://oedci.uspto.gov/OEDCI/practitionerSearchEntry to search for registered patent attorneys and agents.... Read More

An inventor is entitled to a patent for their invention if the invention is new, useful and non-obvious.  Most recipes, even highly creative ones, are combinations of known ingredients using known cooking processes.  As such, when a recipe is examined for patenting, it is usually found to be "obvious".  Obviousness in patent law has a very precise meaning: it means that a person of ordinary skill in the art, having before them references to processes and components in the invention from the past, would find the combination of the processes and components in the invention to be obvious. Sometimes a totally new process applied to food can result in a non-obvious patentable invention.  Consider U.S. patent number 548,086, granted to Henry Perky in 1890 for shredded wheat cereal.  But usually a recipe, even a very great and gastronomically artistic recipe, is unpatentable because of obviousness. I suggest your friend engage a patent attorney for a short consultation (it needn't be very expensive) specific to the facts of the recipe.  Note that registration as a patent attorney is a nationwide license.  You are not limited to patent attorneys in your local area.  Your friend can contact a patent attorney anywhere for advice.... Read More

A applicant may revive an application that was unintentionally abandoned for failure to respond to an office action by providing a petition to revive along with 1) the submission that was required required and was not timely filed (the repsonse to the office action); 2) a petition fee ($1,700); 3) a statement that the delay between the due date for submission and the filing of the petition to revive was unintentional. A terminal disclaimer and fee may also be required if you are prosecuting or have obtained a patent for a related application. If the office action in question was a final rejection, the only submission that you can make is a Request for Continued Examination.  If, on the other hand, the office action was a non-final rejection, the submission is simply a full and complete response to that office action. Whether you file in-paper or via the Electronic Filing System is not outcome-determinative. These requirements are generally set forth in 37 CFR 1.137 and MPEP 711.03(c).  My strong recommendation is not to try to revive on your own, but rather to hire a registered patent attorney or agent to prepare the petition for you. For a free initial consultation and firm quote, contact me at 425-533-6132, Claiborne Patent Law Services.  ... Read More

The standard for finding obviousness is "would a person of ordinary skill in the art, having the references before them, find it obvious to combine the references to create the claimed invention?" Very few patented inventions are the result of totally novel discoveries.  The vast majority are non-obvious combinations of things already existing in technology.  The non-obvious combination may be a synthesis of findings from seemingly unrelated technological fields.  Or the combination may be one that others before had thought would be inoperative.  A determination of "obviousness" is a question of both fact and law. Progress in technology depends more upon the combination of things that already exist by a person who is beyond the level of ordinary skill in the art, than it does upon truly novel discoveries.... Read More

Your question has several facets.  In general, you may add improvements to technology and, if that techology is no longer patented, then you may practice the technology with the improvements.  Enforcement of patents is limited to the jurisdiction in which the patent is granted.  While inventions that have foreign patents may obtain U.S. counterpart patents, the foreign patents themselves are enforceable only within their geographic/political boundaries. However, a definitive answer to your question turns on the specific facts for your situation.   I provide a free initial consultation opn patent matters. If you wish, you may contact me for further consultation at no obligation at 425-533-6132. Anthony Claiborne Claiborne Patent Law Services... Read More

Yes, you can if your combination itself is a patentable invention.  An invention is patentable if it is useful, new and non-obvious.  Almost all inventions that work in any way are useful.  An invention is new if someone has not done or described that exact invention before you did.  An invention is non-obvious if it would not have been obvious to a person of ordinary skill in the pertinent technology to combine the elements that make the invention do what it does. Even if your invention is patented, though, you may not be able to practice it if you must practice technology belonging to another in order to do so.  Example: there is a patent for a device for sitting, having a substantially horizontal platform for sitting and a plurality of substantially vertical legs distending from the platform.  This invention encompasses almost any furniture on which you can sit.  Suppose now I apply for a patent for a device for sitting comprising a substantially horizontal platform for sitting, a substantially vertical surface extending upward therefrom and four legs distending substantially horizontal below.  Suppose the patent examiner found this improvement in furniture new and non-obvious over what had been done before and issued a patent to me for my invention of a chair.  I still cannot practice my chair invention without a license from the earlier invention, which is said to "dominate" my invention. I strongly recommend you hire a patent professional for consultation on this matter.... Read More

An invention is the concept of a new, useful and non-obvious article of manufacture, apparatus (machine or system), composition of matter, or process.  An invention is ready for patenting when it has been "reduced to practice". There are two ways to reduce an invention to practice. The first is "actual reduction to practice", which occurs when a working prototype has been made and can be used for the purpose for which the invention is intended. The second way to reduce an invention to practice is "constructive reduction to practice."  This occurs when an inventor has worked out enough details conceptually so that they can describe in detail, to a person of ordinary skill in the art to which the invention pertains, how to make and use the invention. If your invention is ready for patenting, I advise you to consult with a registered patent practitioner (either a patent attorney or a patent agent).  Only registered patent practitioners may represent clients in patent matters before the U.S. Patent Office.  A registration to practice patent law is a nationwide license, so you do not need to be limited to consulting with attorneys in your jurisdiction.  Many of us offer an initial consultaiton at no charge.  You can check around online for a registered practitioner offering such consultations, or you can  check with the Patent Office at https://www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/finding-patent-practitioner. Anthony Claiborne Registered Patent Attorney 425-533-6132... Read More

When a patent is filed, it is eventually routed to a patent examiner, who will review the claims in the application and make a first pass determination as to whether the invention as claimed is useful, new and non-obvious, which are the requirements for the application to result in an issued patent.  MOST of the time, on this first pass, the examiner rejects the application, either on the grounds that the application does not clearly and concisely describe the invention in question, or that the claimed invention is either not useful, not new, or is obvious.  The examiner will report their findings in an "office action" letter, to which the applicant must respond within 6 months or the application becomes abandoned. A proper response to the office action either amends the claims to meet the rejections or objections of the patent examiner, or it offers valid legal argument as to why the examiner's rejection or objection is not proper, or both. Drafting an effective response requires expertise.  You will be well advised at this point to engage a registered patent professional, either a patent attorney or a patent agent, to assist you in this matter.  The incidence of non-professionals successfully responding and overcoming office action rejections and objections is quite low.... Read More

The USPTO itself provides guidance on the patenting process at: https://www.uspto.gov/patents-getting-started/patent-process-overview. I strongly recommend you NOT to commit to paying any money to ANY invention promotion firm.  Instead, I recommend you investigate obtaining the advice from a registered patent professional (a patent attorney or a patent agent).  Many (myself included) provide extensive free initial consultations and can explain the steps required in applying for and obtaining a patent.  Note that a patent registration is a nationwide license, so you are not limited to consulting with patent professionals in your immediate area. The U.S. Patent and Trademark Office provides a list of registered practitioners at: https://www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/finding-patent-practitioner For cautions about invention promotion firms, please see my web page at: https://claibornepatent.com/prototype.htm.   If you wish to discuss this matter with me, you may contact me at the number below. In any case, I wish you the best in this endeavor. Anthony Claiborne Claiborne Patent Law Services 425-533-6132... Read More

If you are buying the patented products from lawful manufacturers (the patent owner or licensee), then there is a legal doctrine called "patent exhaustion" that applies.  This doctrine holds that, once a patent owner has sold a patented product for the first time, they no longer have control over it: the buyer can use, sell, license or destroy the product as they wish. If you have decisions that turn on this question, I recommend you retain an intellectual property law attorney for a brief consultation and a professional opinion on which you can rely. Anthony Claiborne Claiborne Patent Law Services 425-533-6132... Read More

There are several ways you can protect your proprietary interest in your idea. First, understand that you do not need to build an actual physical product to be eligible to apply for a patent.  What you need to have done is to have conceived of the invention and to have worked out the details of the invention so that you can adequately describe how to make and use the invention to a person of ordinary skill in the art to which the invention pertains. If you have developed your idea to that point, you have enough of an invention to evaluate whether your invention is new and non-obvious in light of prior developments in the art.  Many people hire a patent professional (a  registered patent agent or patane attorney) to perform this task.  If a patent search indicates that your invention is new and non-obvious over the prior art, then applying for a patent may be justified. So, even though you have not yet produced a product, your invention may even now be eligible for patenting.  Only an inventor (or someone authorized by the inventor) can claim ownership of the invention claimed in a patent, so certainly patenting will protect your proprietary interest. Second, if you do not apply for a patent now, you can protect the confidential nature of your discovery by requiring those who work with you on the creation of the product, and anyone else to whom ou disclose your invention, to enter into enforceable non-disclosure agreements, binding them not to use or disclose your proprietary information without your express consent.  An intellectual property attorney can draft up a good template agreement for you to use for this purpose. As I do for anyone whose business depends on their intellectual property, I recomend that you engage the services of a patent professional to provide you guidance in this matter.  Many patent professionals (myself included) provide an initial consultation at no charge.  A registration to practice patent law is a nationwide license, so you are not limited to hiring only counsel in your local area. If you are interested in obtaining a free, no obligation initial consultation on this matter, please contact me at 425-533-6132 at your convenience. Anthony Claiborne... Read More

Patent law would not prohibit your reselling the article even if covered under a design patent or utility patent. You would not infringe the copyright by reselling the shirt. However, you could not, without permission, make copies of the logo separate from the shirt. The main goal of trademark law is to prevent customer confusion as to the source of the trademarked goods, i.e., am I buying from the company or from someone else? Redecorating the shirt and yet retaining the company logo would likely constitute creating customer confusion. Thus, you would want to remove the logo. Likewise as to customer confusion, if, for example, the shirt itself has a distinctive configuration or shape (such as a feature of the sleeves) that consumers have come to associate with the company logo, then reselling the redecorated shirt might  create customer confusion and thereby infringe upon the trademark. Also, be careful in your advertising not to say anything that might mislead consumers, e.g., regarding the origin of the shirt itself. To avoid trademark dilution if applicable, I would hesitate to, without permission from the company, mention in your advertisement that company as the source of your shirts. Provided the shirt itself does not have the above-mentioned distinctive configuration or shape that consumers have come to associate with the company logo, you are free to remove the trademark (design and words if any) from a shirt you have purchased, to redecorate the shirt, and to then resell the shirt.  ... Read More

A patent search is an examination of patent databases for patents similar to the technology that is the subject of the search.  The purpose of the patent search is to locate related art that might be prior art to the invention.   In your case, you are interested in a freedom-to-practice search.   If prior art is found in a valid and enforceable patent that fully anticipates the invention in question, you will not be able to practice the invention without a license from the patent owner.   If prior art is found that might render the invention obvious, it is often worthwhile for the inventor to determine whether the owners of that prior art may assert a claim against practicing the invention in question.   Determinations of novelty and non-obviousness are made based on law applied to the facts of the invention and the prior art.  To be of value to the inventor, the results of a patent search should be accompanied by a written opinion of their significance by a registered patent professional (attorney or agent).   Please contact our firm is you wish to retain us to conduct a patent search for your invention.  abc@claibornepatent.com  ... Read More

There are two basic types of patents that could apply to an article of clothing.  The cost of obtaining a patent depends in part on which type of patent is right for your invention. The first type of patent is a utility patent.  A utility patent covers an invention that is new, non-obvious and useful.  Utility patents cover either articles of manufacture, apparatuses (machines), processes or compositions of matter.  The subject invention needs to be something whose value is in its utility, its usefulness. There are utility inventions for articles of clothing.  These could include new clasps, new zippers, new methods of manufacturing the clothing, etc.  Utility patent applications are typically fairly expensive.  My firm charges from $3,500 to $5,000 plus costs (averaging another $1,000) to prepare and file a utility patent application.  Altogether for utility application preparation and filing, total outlay using our firm ranges from about $5,000 to about $8,000 for most applications. The second type of patent is a design patent.  A design patent covers an invention that is a new, non-obvious and decorative aspect of an article of manufacture.  For these inventions, the value is in their decorativeness, the way they look. Design patent applications are much simpler, as legal instruments.  They consist mostly of the drawings of different views of the article.  Typical legal fees to prepare and file the design patent application are $1,000, plus costs.  Additional costs for the drawings can be $1,500 or more.  With filing fees and other costs, altogether for design patent application preparation and filing, total outlay using our firm is generally in the range of $2,750 to $3,000. There is also a way to secure an invention for one year, by way of a provisional patent application.  A provisional application is much less expensive than either a utility patent application or a design patent application, but a provisional application can never on its own result in an issued patent. If you file a provisional application, you must file a non-provisional application for the same invention within a year or you have wasted the money on the provisional application. Much more on these subjects is available on my web pages at: https://claibornepatent.com/Patent%20process.htm.... Read More

Your question, as best understood, is whether a different shape of a magnet for a motor would comprise a patentable invention.   An inventor is entitled to a patent for their invention if the invention is useful, new and non-obvious.   While an electric motor is certainly useful, an electric motor using a differently shaped magnet will be useful only if it works as an electric motor.   The motor invention is new if the shape of the magnet has not been used before its invention by the inventor and has not been disclosed or used in public by the inventor more than one year prior to the inventor's filing the patent application.   The motor invention is non-obvious if a person of ordinary skill in the art of constructing electric motors, having before them all the art prior to the invention of the new motor, would not find the construction of the new motor obvious. The patentability of such an invention is a mixed question of law and fact.  I recommend you consult with a registered patent professional (either a patent attorney or a patent agent) for a professional opinion as to the patentability of a motor with the particularly shaped magnet.  Note that a registration to practice patent law before the U.S. Patent and Trademark Office is a nationwide license and that you may consult a registered patent professional anywhere for the needed opinion.... Read More

A plus is a former programmer or someone with a computer science background/education. The more specific their knowledge/experience is to what you are doing, the better. One approach is to search the U.S. Patent Office roster of practitioners (attorneys and agents). To do this navigate on uspto.gov to Finding a Practitioner. You can search in your location, because you probably want to see the practitioner in person to better explain your invention. As a rule of thumb, the lower the practitioner's registration number, the more years of patent experience. Go on the practitoner's/firm's website to learn more about her/their credentials/capabilities. There is also the following to consider, which may or may not apply to your situation. Practitioners hear all the time about ideas for which the implementation details are thin or missing. Certainly the practitioner's skill comes into play and is likely one of your key considerations, but keep in mind that at the end of the day either you have a fully formed idea or not. Think of it like this. If you are explaining your idea to an ordinary telecommunications systems designer (or fill in the blank) and they still do not know how to build an implementation of your idea without putting in ingenuity of their own, then it was not a fully formed idea to begin with and was not enough to proceed with writing a patent application. Your invention mus be explained in the patent application in such clear terms that one of ordinary skill in the art would know how to make and use your invention without undue experimentation. Finding the best practitioner to write and prosecute your patent application (which is what was just discussed) is one, and an important, milestone. Other important goals are finding funding, if you need to; assessing the market for your invention; and obtaining other intellectual property such as trademarks. The same patent practitioner, or other sources, e.g., business lawyers, potential licensees, can assist you in this regard.... Read More

A linking claim could avoid continued restriction or perhaps consolidate a lot of your claims.  However, to link your claims, the linking claim might be too broad to distinguish patentably over the prior art.  You might want to conduct a pretty thorough preliminary prior art search that devotes a fair amount of attention to all the classes you mentioned.  If you do go ahead with a linking claim, take care to negotiate the potential hurdle of satisfying the written description requirement.  If your conclusion is that a satisfactory linking claim cannot be written, elect the group that seems to offer the greatest promise of patentability and greatest commercial potential.  In that case, you can pursue any non-elected group in a divisional patent application that must be filed during the pendency of your current patent application.... Read More