California 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 Answer

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 Answer

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 Answer

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 Answer

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 Answer

There are several ways of getting a patent licensed.  One is to write letters to manufactureres who sell same or similar products.  Another is to try to attract investors.  That usually requires writing a detailed business plan. Still another way is to take the inventoin to invention shows.  Good Luck. ... Read Answer

Thank you for the question regarding Business Method Patents.  My firm has experience prosecuting business method patents and would love to assist.  Our Firm's fixed-fee cost $7500 and include all attorney fees, draftsman fees, and USPTO filing fees.  In addition, as we are fixed-fee we do not require a retainer or charge for phone calls.  I look forward to working with you.  Have a great day.... Read Answer

A website as a whole (exclusive of the generic concept of a website on the WW Web) is not an invention and therefore cannot be patented as such. An invention is limited to a Process, Machine, Manufacture, or Composition of Matter. A business method might be patentable, depending on a number of factors. There is no such thing as a worldwide patent, although it is possible to reserve rights to apply for a patent in a large number of jurisdictions (i.e. PCT aka patent cooperation treaty). If you feel sure your combination has substantial value that should cover the expense of investigation and/or applying for a patent, then you should engage a patent attorney to decode this situation for you and help you decide whether your method is patentable and makes economic sense.... Read Answer

You might not be able to obtain a patent on your "business idea" - since these inventions are often viewed as an "Abstract Idea." For example, on June 19, 2014, the US Supreme Court unanimously ruled that basic business methods may not be patented, even if computers are used to apply them, citing Section 101 of the Patent Law. The case involved a method for reducing the risk that the parties to a transaction will not pay what they owe. Writing for the court, Justice Clarence Thomas said that was "a patent-ineligible abstract idea." "Merely requiring generic computer implementation," he added, "fails to transform that abstract idea into a patent-eligible invention." Visit the Patent Office website - www.uspto.gov - for more information. GOOD LUCK... Read Answer

Visit a lawyer now. You need a written agreement with your partners - so the questions raised below can be addressed before any break-up. New ideas created during the partnership are likely the property of the partnership - not you; and you likely cannot use them without permission, Visit a lawyer now. You don't need to get into litigation - as only the lawyers win there.... Read Answer

It all depends on what you have been doing to protect your ideas and designs. You probably own copyrights to the designs (if they are original), but need to register those copyrights to enforce them and/or collect damages. You might have been able to apply for design and/or utility patent protection- but if you have not done so and your designs and/or patents have been public for more than one year, it is probably too late. If there is substantial value at stake, I'd suggest engaging a patent attorney to sort this out for you.... Read Answer

The attorne might suggest conducting a patent search, but is not obliged to do so particularly since a "provisional patetn" is not a patent but rather an application the merely secures a date for what it describes and must be converted into a "real" patent application within one year before the provisional "dies"... Read Answer

In order to be patentable, the invention must be new, useful, and not obvious compared with all of the technology that preceded it. The U.S. Patent Office also grants Patents for "methods of doing business" should the business methods meet the above criteria. However, there is also a concern that the programmer may acquire the Copyright to the software that he/she develops for you. If you obtain the Patent and the Programmer obtains the Copyright, you would not have control of your own technology. You must have the programmer assign the Copyright to you in the written Work Order that you issue. You may be well-advised to seek the assistance of Counsel on this to confirm that you are the first inventor, that your Patent rights are secured, and that the Work Order secures you the Copyright created. We hope that this helps and Good Luck!... Read Answer

You need a trademark lawyer. Much more information is needed to help you with this matter. Who was first to use the name commercially for clothing? If they have a registration - is it federal or state? If federal - you can download the entire file of the case - and look at how they provided proof of commercial use - with the date of first use. If you were first - you can petition to cancel their federal registration. You may have lots of options - but much more information is needed. GOOD LUCK!... Read Answer

You can register a trademark either in the state your business is in or with the U.S. Patent and Trademark Office. If you product will be sole in more than one state, register federally. Companies can have the same trademark if they are in different classes of goods and services. And different items of clothing can be included in different classes (sportswear vs. coats vs. prom dresses). Send a letter back to this company asking for proof of their registration and and a list of the products they are selling. Also ask to see how they are using the mark in commerce and how long they have been using it. If it turns out that they are using the mark, selling the same types of items as you, and have priority of use, you can always offer to buy the mark from them.... Read Answer

If they registered the mark before you did, and if they use it in commerce by the time they are required to do so (for clothing) they will likely have the right to use the mark for clothing. Be ware that there are 2 types of US trademark application. One is for things actually being used in commerce, and the other is for intent to use. Either way, the first to file will have priority. However if the application is for an intent to use, the party must actually use the mark in commerce to perfect the application. From what you say, it sounds as if the other party's application has the earliest priority date, but is unclear whether the other party has actually been granted the mark. You probably should engage a trademark attorney to clarify your situation for you.... Read Answer

The bank can't force you to remove the reference on the grounds that it infringes their copyright because the bank has no copyright ownership in another's work (the articles on your web site). It also can't object to your using its trade name because there's very little protection for trade names. And how else are you going to refer to the business except by using its name. It may have a valid object to the use of its trademark on a couple of grounds: 1) if you're using the mark without acknowledging that it is a trademark that belongs to this particular company, 2) if the information contained in the article is defamatory or derogatory, or 3) if the articles on the site are somehow misleading or the bank does not want the author's name associated with its services. Ask the bank to clarify its reason for objecting, what specifically it objects to, and why the only solution is to pull all of the web pages.... Read Answer

Mere reference is likely to be protected under "Fair Use". You seem to be confusing trademark and copyright protection, they are different things. A trademark protects an identifying mark/phrase/logo used in commerce- in a word, the owner is entitled to prevent a likelihood of confusion with another thing. A copyright protects a creative work fixed in a tangible medium.... Read Answer

We advise our clients to be aggressively seek to evaluate the market for their technology once the Provisional Application is filed. Once the Provisional Application is filed, the product can be marked "Patent Pending" to advise competitors that you are seeking to protect any and all patent rights associated with this product. The competitors do not know whether you have filed a Provisional Application or a Patent Application. If it is a Patent Application, it could have been filed last week or it could have been filed 16 months ago and a Patent is about ready to issue. You cannot sue someone for infringing a Patent Application but need to wait for the Patent to issue. Nevertheless, a competitor will need to invest in manufacturing to build the product and advertising to promote the product not knowing when and/or if the rug will be pulled out from under him at any time. It's a risk many business people prefer not to make. Good luck!... Read Answer

A provisional application will usually cost less than a formal utility application - as no claims are required. The provisional application must teach how to make and use your invention - so that anyone skilled in the area of the invention can reproduce it. Once the provisional application is filed - you can state that your invention is "patent pending" and you can safely market the invention. NOTE - the provisional application expires one year after the filing date. Before expiration - you must convert the case to a formal utility filing. So you have little time to get the rest of the money you need. GOOD LUCK!... Read Answer