California Patents Legal Questions

Provisional patent applications definitely have their place in the patenting process. However, they typically are reserved for emergency situations when a disclosure is imminent and something needs to get on file to preserve rights to the invention. If you have the time, and the financial resources, it is always better to do a non-provisional filing. The problem with a provisional application is that when it comes time to convert it into a non-provisional, you can only claim that which is disclosed in the provisional?s specification. So to the IP attorneys point, a good provisional has a specification which should not be that different than a non-provisional. Where I think the IP attorney consulted is incorrect is that a provisional is typically less expensive if for no other reason there are no claims needed to be created which is the true art of patent application drafting. We agree with the advice already received that provisional applications should be of used sparingly, but financial realities and timing can make them the best choice at times.... Read More

While it is unclear what them is, given your question I will assume they are consumer or other goods protected by a trademark. You should be very careful about reselling items for which you have no authorization especially if they are covered by a famous brand. It is true that Customs either destroys counterfeit items that are seized at the ports or airports or offers them to the brand owner, but that should not have any bearing on the goods you plan to resell. It is possible that they are gray market goods, legitimate product that found its way into the US market from another legitimate distributor. But again, without permission of the authorized distributor in the US or your region, you could wind up with a very upset distributor who may come after you. The only legitimate resale of product is from a consumer who purchased the product at retail and is reselling it or if there is a legitimate overstock sale from a legitimate liquidator. Bottom line make sure the source from which you obtained the product is legitimate, and if possible, get assurances in the form of indemnification should it turn out the product you resell came from an unauthorized source. Ignorance will not be an excuse or shield from liability including potentially criminal liability if the product you are reselling turns out to be counterfeit.... Read More

A complete answer is much too complex at this point. It is very expensive to file for patents in other countries because you must file in each country that you want a patent - there is no "international" patent. There are treaties that allow certain filings that delay the time you have to file in each country for up to 30 months, but ultimately you will have to pay filing fees and attorneys fees in each country, plus you may have to get translations made. To file under the Patent Cooperation Treaty which can "save your filing date" for up to 30 months, you are looking at a minimum filing fee of over $2000.00 plus attorneys fees to prepare the application and drawings. The only sponsorship that is available is if you have investors - the government does not have any programs to sponsor inventors to file for patents. You need to talk to a patent attorney before you disclose your idea to anyone.... Read More

What do you mean by a "connoisseur" patent attorney? Do you mean an expert in an area of the fine or domestic arts, or somebody with discriminating taste in such a specialty?  Also, you have not indicated what you would like the patent attorney to do for you, e.g., a patent ability search, an infringement evaluation, or prepare a patent application and handle the proceedings before the patent office. Without a clearer explanation of what you are looking for, it is hard to advise you. Depending on the technology, nature of the invention and what services are to be performed, the costs could be any where from a couple of thousand dollars to tens of thousands of dollars.... Read More

That would be governed by trademark/servicemark laws. The USPTO has a database of federal registrations and states have databases of state registrations. Keep in mind many marks are not registered, but still have common law protection. I'd recommend speaking with an attorney to have a mark search performed. My office offers free initial consultations if you are interested is speaking with us.... Read More

Provisional patent applications are generally a good option when you are low on funds, low on time, or unsure about the technology or your commitment to it. They have negatives, though. It will generally increase your total cost (you've added an extra step to the process), increase the time it takes to get the patent allowed, and increased the risk that someone might invalidate the patent. So, it is always a judgement call by the owner/inventor/ceo.... Read More

If you have no money you have no options. You can't afford a utility patent. You must file a design or a provisional patent application. However, keep in mind a provisional only holds your place for 12 mo. Before that year is up you must file a utility patent. So if you are intending to file a provisional patent then you must plan to spend the money necessary to file a utility patent before the provisional patent application ends.... Read More

A trademark protects the "source of goods," that is, your company name and the goodwill surrounding it. A patent protects the invention itself and its workings. Both are your intellectual property and should be protected. I counsel my clients to pursue patent protection, a provisional application at the least, before they disclose the invention to the public at large. The reason for this- inventors have a 1-year time frame to file for a patent once their invention is disclosed to the public. Public disclosure can come in a number of forms (sale offers and marketing toward investors included) and many inventors find themselves outside the 1-year filing time frame, thus ineligible for patent protection. Please feel free to contact my office for further discussion if you decide to proceed with trademark registration or patent filings. Our initial consultations are free and no-obligation is placed on potential clients.... Read More

If they did not have use of the trademark prior to your registration of your domain in 2007, you do not have to stop using your domain and could possibly even seek to have their registration canceled. It is a more complicated question if their use goes back to, e.g., 2006, and they only registered it in 2010.... Read More

My recommendation is that you not use the photos without permission from the copyright holder. Generally, just because you can find photos on the web, it does not mean the photos are free to use. Also, just because you crop away some of the photos, it does not mean you are free to use the cropped photos. Though it may be difficult or even impossible to find the copyright holder, if there is one, people get into trouble by using photos and then the copyright holder (who might be the owner of thousands of images) will search the web for unauthorized users and seek to extract payment.... Read More

Yes, you probably do. Assuming both businesses are involved in custom glass tinting, the name "custom glass tinting" simply describes the nature of the services and is generally not protected as a trademark. You should check to see whether the other person has a trademark registration. Assuming there is no registration, neither has the ability to prevent the other from using custom glass tinting.... Read More

No. All that can possibly do is prove that you invented it first. It gives you no protection. If you think you idea is outstanding and can make you some money, then i suggest you pony up the bucks and file a patent. Unfortunately with the new America invents Act the patent no longer goes to the first to invent but the first to file.... Read More

The owner of a valid enforceable unexpired US patent has the right to determine who makes, uses and sells products that are covered by the claims in the patent. There are four requirements in my last statement. 1. The patent has to be valid. Or more specifically, the claims of that patent have to meet the requirements of novelty, utility and non-obviousness. A patent is presumed to be valid when issued by the USPTO but the claim scope is bounded or limited by the prior art, statements and actions taken during prosecution of the patent application at the USPTO and even by statements made in the patent specification itself. 2. The patent has to be enforceable. The Courts will not be permit enforcement of a patent that has been obtained by fraud. 3. The patent has to be unexpired. The maximum life of most patents is 20 years from the earliest application date. Patents can go into the public domain earlier if the patent maintenance fees are not paid in a timely manner. 4. One or more claims of the patent in question must read on the competitive device. As you can appreciate, you have asked a question that is very situation sensitive. The particular answer in your case will vary depending on the configuration of you device as well as the patent(s) in question. If you are concerned about potential accusation of patent infringement, the first step would be to have this reviewed by a patent attorney. This review will help you to better assess your risks in the area and perhaps even suggest a way to design around one or more of the patents in question. Depending on the relationship you have with you manufacturer, perhaps you can negotiate some terms that indemnify you against allegations of infringement.... Read More

This is not a patent question but rather and ethics question. Short of having any sort of written agreement between the two of you, and short of owning any sort of right to your idea, I would say you are out of luck. Just keep in mind if he is publicly disclosing your idea and tying to sell it - you may only have a very limited time in which to apply for a patent on the embodiment of your idea (your invention.)... Read More