California Patents Legal Questions

Presumably what you mean to say is that you have a patent *application* filed. A patent application does not confer any rights to exclude a competitor from practicing what is claimed (until/unless it issues as a patent). However that part about the "patent was never filed" seems to contradict my presumption and that you filed a non-provisional patent. Please clarify your question and what you meant to say.... Read More

A non-provisional patent application does not give one the right to stop infringement - only an issued patent. Therefore, if the other person seeks to retail a product covered by your pending application as opposed to an issued patent), you do not yet have patent rights to stop the infringement.... Read More

Not much - but learn from your mistake. Your registered mail item is essentially useless. You needed to file a patent application on your idea - at least a provisional application before you showed the device to anyone. Now it may be too late for you to file an application - but you should consult a patent attorney to be sure. Did you have a non-disclosure agreement with the manufacturer? If not, again, that was a mistake.... Read More

If ownership of the patents transferred to you under a will or court probate action, then the will or court order can be recorded with the Assignment Division of the U.S. Patent and Trademark Office to make your ownership of public record. However, the recordation is not the ownership tranfser, only a public recording of the fact that ownership of the patents has been transfer to you. This recordation is not mandatory, but provides additional benefits.... Read More

I would love to help, but you have posted this question before. The USPTO records show that he has assigned them to his company (and therefore does not own any patents personally).  You need to come at this from the business side, not the patent side. If he still owned the patent, you would hire a patent attorney to file an assignment with the USPTO that is executed by the Executor of his estate. If the Executor will not do that, then you need to go to court to compel the Executor. The attorney should be someone admitted to practice in CA.... Read More

Takisia, It appears that Mary Ann Sheehan assigned the patents to Sheehan Genetics as an executor of Timothy's will in December 2010 (and a couple more after this date). I would assume Sheehan Genetics is either the company selling the grapes, in which case they do not owe anyone royalties because they own the patents, or someone else is selling the grapes and paying royalties to Sheehan Genetics. Here is information on that assignment: http://assignments.uspto.gov/assignments/q?db=pat&asned=SHEEHAN%20GENETICS,%20LLC To have a right to this revenue, you either need to show: 1) that Mary Ann improperly assigned the patents to Sheehan Genetics and they should have been assigned to you; or 2) you have an ownership interest in Sheehan Genetics through which you should be receiving revenue. I would be happy to assist you if this were a patent matter. However, it appears this matter is one for an estate attorney in California. Here is a suggestion: http://www.kirstenesq.com/#! Good luck  ... Read More

Yes, it would include your husbands patents and copyrights. However, you have not provided enough information about the "grapes patent" for me to respond. My best guess from the limited information provided is that, either the patent is expired or what he had was only a patent application and not a patent.... Read More

Hi Takisia, I am sorry for your loss. All copyrights require an executed document to assign ownership, as do patents. However, ownership of copyrights and patents can also pass through state intestacy laws. See 201 d(1): http://www.copyright.gov/title17/92chap2.html  Here is discussion of a related patent case: http://www.patentlyo.com/patent/2008/04/patent-asignmen.html I see 23 issued patents for Timothy P. Shaheen. Some have expired, but most have not. http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch-adv.htm&r=0&f=S&l=50&d=PTXT&RS=IN%2F%22Sheehan%3B+Timothy%22&Refine=Refine+Search&Refine=Refine+Search&Query=IN%2F%22Sheehan%3B+Timothy+p%22 (not sure if this link will work). Good luck and I'm sorry.  ... Read More

As you may know, the US Trademark Office will permit separate businesses to own similar or identical word marks if there is enough difference in the goods so that consumers would not mistakenly believe the two businesses are related. One of the common examples is Delta Airlines and Delta Faucets. There are several factors they will review. For example, one factor is how distinctive the trademark is. Under this standard, Kodak would be considered more distinctive than International Business Machines and thus entitled to a broader scope of protection. Another is the exact scope of the goods. For example, the clothing company you identify in your question may have goods that indicate "clothing, namely men's socks," which would be relatively narrow scope of goods. Another factor would be whether companies that produce the Registrant's clothing frequently branch into sunglasses. If companies have expanded that way previously, consumers are more likely to think the Registrant branched that way and thus confuse your companies. Last, keep in mind that the trademark allowance standards are subjective. "Is the consumer likely to be confused" is a question that two experienced trademark attorneys can answer very differently. Thus, even if I had all the information about your mark and the clothing company, I may not be able to give you a more definitive answer than probably, maybe, or doubtful.  You can find those factors here: http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml#/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml Good luck.... Read More

There isn't enough information in your question to determine patentability. As the Supreme Court has indicated on more than one occasion (most recently in the KSR case), inventions are not developed in a vacuum. All of the pieces, all of the concepts, all of the principles were likely known in some manner before the invention. The key is you want to be able to say that no one thought to use those pieces in this unique way for this purpose before, and therefore the invention is patentable. You took a material out of another industry and used it for your product. A product can be novel even if the material is not. If the product was known before, but you did something unique with it to make it compatible with the new material or as a result of incorporating the new material, that unique element could be patentable.  en.wikipedia.org/wiki/novelty_(patent) A provisional patent application is just a lead-in to filing the utility patent application. The provisional application buys you one year to file the utility application. During that year, you are patent pending and you can determine if your invention is commercially viable.  Even if the invention is patentable, it is not worth patenting if it is not commercially viable. A provisional patent application is not an alternative to a utility patent, it is just another way to initiate the process at a lower initial cost.  ... Read More

If you purchase the scent in the ordinary stream of commerce you can use it for any purpose. You do not need to disclose it and you can describe its properties. If the scent is protected by a patent then you may not be able to make the scent yourself without a license from the patent owner.... Read More

It would be best if you conducted a trademark search before adopting a trademark, and you apply to register a trademark with the United States Patent and Trademark Office (USPTO).  Using a trademark attorney wold make things easier for you and insure that everything is done right. However, you can search the USPTO records for pending trademark applications and existing registrations at: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4806:k63ov3.1.1 and can file a trademark application onlin at: http://www.uspto.gov/trademarks/teas/index.jsp... Read More

You probably can, as long as it is new, useful, non-obvious and patentable subject matter. The patentable subject matter part is where you have to be careful with online ideas - some are and some are not, so you need to consult with an attorney who is experienced with software patents. I would definitely get that figured out before you start talking to investors. You will want to start with a basic patent screening search if the attorney tells you that it can be patentable subject matter. The search will tell you a lot about your chances of it being new and non-obvious. It is pretty easy to show that ideas are useful, so that rarely is a problem.... Read More

Trade dress refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Trade dress may be registered with the United States Patent and Trademark Office (PTO) in either the Principal Register or the Supplemental Register. A trade dress must not be functional. The configuration of shapes, designs, colors, or materials that make up the trade dress in question must not serve a utility or function outside of creating recognition in the consumer's mind. Trade dress is not patentable, just as trademarks and service marks are not patentable. You cannot use a trade dress that is owned by another where the goods or services are similar. A design patent protects the appearance of a useful article. You cannot make, use, or sell a product that has the same appearance as a product protected by a design patent unless you have permission of the design patent owner. You can copy any product that is not protected by a utility or design patent, but you cannot copy the trade dress for that product.... Read More

You need to file the nonprovisional application within one year of the filing date of the provisional application to claim priority of the provisional application filing date for the nonprovisional application. You have to file the nonprovisional application within one year of the publication date of the invention in the journal or you will lose your right to file a patent application on the invention. The safest approach is to file the nonprovisional application based upon your provisional application, claiming priority of the provisional application date for your nonprovisional application. The first to file a patent application on an invention will prevail over anyone who files later, so it is best to claim priority of your provisional application filing date for your nonprovisional application.... Read More

Your attorney was correct. However in my experience trying to attract financial investors without an issued patent is a waste of time. You don't have or own anything. The PPA just lets them know you have established a filing date for the eventual application your invention. How do you think showing a PPA will convince anyone that you will indeed have a patent with an existing claim that will be strong enough to cover you invention. Investors don't invest money on vapor. They want to see that they have protection before they put up their money. I would say if you believe in what you have go ahead an file a full utility application. A patent search does not even look at the patents filed within the last 18 months. What type of insurance is that to an investor that you will even get a patent issued on your invention?... Read More