California Patents Legal Questions

They can sue the shareholders, directors, and/or officers although they must demonstrate the individuals knowingly and willfully infringed the patent at issue. Alternatively, they can get the shareholders as an alter ego of the corporation if corporate formalities were not adhered to and there is some manifest injustice or inequitable result.... Read More

This really depends on how substantial your modifications are and how the patent was claimed. Legally, you will need to compare the accused product to the patent claims to determine whether infringement occurs. It is highly advised that you speak to a patent attorney to help you determine any potential infringement issues.... Read More

There are two types of utility patent applications, a regular application, which gets examined and hopefully eventually becomes a patent, and a "provisional" application which never becomes a patent but can become the basis for a regular patent application if one is filed within a year of the provisional filing date. After you apply for a patent, whether provisional or regular, you can mark your product and advertising as "patent pending." It may scare off some potential infringers or it may not. However, you have no legal enforceable rights until a patent issues (with the exception that it is possible for damages to accrue from the publication date of a regular patent application in limited circumstances). You can either file a provisional application or a regular utility application up front. However, there are many dangers with filing a provisional application unless it is drafted as if it were a full regular patent application. In order to be valid, the provisional application must comply with the first paragraph of section 112 of the patent law. If the provisional application does not comply with this section, it will be invalid and will not provide a filing date. As the U.S. Patent and Trademark Office does not examine these applications, it may not become apparent that a provisional application is invalid until after the deadline for filing a patent application has passed. It should also be kept in mind that provisional applications automatically expire one year after filing, and that this deadline is not extendible. Foreign applications must be filed within one year of the filing date of the provisional application in order to be entitled to the filing date of the provisional application. Thus, a disadvantage of provisional applications is that there is no opportunity to receive a first examination by the U.S. Patent and Trademark Office before making the decision of whether or not to file corresponding foreign applications. If provisional applications are used, it is recommended that they be drafted as if they were a full regular patent application to make sure that they comply with the best mode and enablement requirements. An invalid patent application has zero value. A patent infringement trial typically costs over a million dollars in legal fees and it is not wise to skimp on fees during the patent drafting process. With such high stakes, a professional litigator is looking for every weakness in a patent application. A provisional application that is not drafted by a patent attorney is likely to have many problems. These problems will carry through even if a patent attorney is later hired to draft a regular patent application. This is because the "file history" of the patent application will be ordered and the provisional patent application will be available along with the file history. Various mistakes that can be made in drafting a patent application are described in my guide on how to find a patent attorney. For example, if an applicant in a provisional application says "the switch is a MOSFET" where no specific type is essential, and then a patent attorney preparing a regular patent application corrects this by saying "there is a switch, it can be any type but in some embodiments it is a MOSFET," be prepared for an argument during litigation that unless a competitor uses a MOSFET, there is no infringement regardless of what is recited in the claims because the inventor clearly only contemplated use of a MOSFET. If there is no budget for a full application and a provisional application is filed, a full application drafted by a patent attorney should be filed as soon as possible after the provisional application is filed. Thus, in the event that the provisional application does not comply with the provisions of 35 U.S.C. ' 112, first paragraph, it may be possible to prepare the regular application before any important deadlines are missed. It should be kept in mind that it usually takes thre... Read More

If you intend to use any of the names or insignia associated with the National Football League, you will need to obtain permission of the NFL and any other trademark/copyright owners. Begin with the assumption that all such names and insignia are subject to copyright and/or trademark protection. Unauthorized use of such material can expose you to legal action for infringement. There can also be legal issues regarding the use of player's names and likenesses depending on the particulars of your concept Retain a knowledgeable IP attorney and discuss the specifics of your idea. The two of you can determine how best to proceed.... Read More

First, you are to be congratulated for being concerned about the intellectual property rights of others. In order to infringe a patent in the United States, your device or method must fall within the scope of one or more of the claims of at least one valid, unexpired US patent. Now that you know that a patent exists that may have an impact on your activities, have that patent reviewed by a qualified patent attorney. He or she can confirm whether the patent is still in force. The patent attorney can also determine what exactly is the patented subject matter. Patented subject matter is found in the claims - the numbered paragraphs located at the end of the patent document. Many times the scope of the claims is narrower than the disclosure discussed earlier in the patent document. A patent attorney can make this determination for you. Remember that many patent holders are willing to license their patents to third parties if everyone can agree on terms. Granting a license and obtaining license revenues can be preferable to costly patent infringement litigation for everyone concerned.... Read More

If any wording tends to infringe, confuse or mislead, it would be the basis of expensive IP litigation. There is no safe answer to your question, other than to proceed at your own risk with similar logos, artwork, names, words or phrases. That is what keeps IP litigation lawyers busy. Many well known companies go to great lengths to scare off infringers, whether justified or not. Remember: anybody can sue anybody for anything. Winning is a different question.... Read More