Washington Patents Legal Questions

Thank you for the question.  Design Patents are used to protect the ornamental appearance (i.e., design) of the object and not the functionality.  They can be a very valuable tool in building an intellectual property portfolio and with the new decision in Egyptian Goddess a much easier patent to protect.  Our Firm is a fixed-fee patent firm and charge $1800 for each application.  That $1800 cost includes your professional draftsman fees and USPTO filing fees.  In addition, our firm does not require a retainer or charge for phone calls or correspondance duing the application prosecution.  Please see our website www.arapackelaw.com or Youtube videos under rapackelaw for much specific information regarding design patents.  Lastly, please give me a call at any time at (407) 801-9368 if you have any further questions.  I look forward to speaking with you.   Respectfully, Andrew Rapacke... Read Answer

It is hard to answer your question without knowing why you did not answer the office action and why you have taken so long to decide to do something about it. Also, have you been using the mark the whole time or was the application and intent to use application and you haven't commenced use of the mark? As you can see this can be a complicated situation and it would be best if you find a trademark attorney to assist you.... Read Answer

There is no patent, which means you can duplicate the product without violating any patent law. You still need to be careful of passing your product off as your ex-wife's product, intentional interference with business opportunities, intentional interference with contractual relations, and a number of other unfair competition laws that may stem from your familiarity with your ex-wife's business. Without knowing you, I would worry that you looking to create emotional turmoil in an already fractured relationship, which has a risk of clouding your business judgment moving forward.  Legally and emotionally, it would be healthier to get in a business unrelated to your ex-wife.... Read Answer

As an initial matter, patent rights are geographically limited, *i.e.*, U.S. patent rights carry no legal authority in foreign countries, only in the U.S. If you want patent protection in Asia, you will need to file patents in the Asian countries you want to sell your product. As for whether you can get a patent for your composition, you should first commission a patentability search to see if your composition/product is novel and nonobvious and therefore possibly patentable. Such patentability opinions are generally less expensive than the cost of filing a utility patent application and being rejected because someone else has already disclosed your invention. If your composition is not patentable, and it has been publicly disclosed for long enough that it is dedicated to the public and there are no other patent rights covering the product, you should be free to make, use and sell your product. Finally, you should seek freedom to operate or "clearance" opinions from patent attorneys in the countries that you intend to sell your product in order to determine whether your product infringes on other's patents. Having a patent for your product does not mean you are not infringing other's patents. You may need to seek a license to sell your product.... Read Answer

There are common law rights that can exist before a Federal trademark registration application is filed. The answer to your question is not a simple one. It requires an analysis of who used the mark first in the relevant market, what goods or services were sold under the mark, and whether there is a likelihood of confusion between there use and your use. You could consider filing a trademark opposition proceeding if you were earlier in your use. Hire competent counsel to help you with this analysis.... Read Answer

You must use the mark in interstate commerce before the USPTO will grant the registration. If you apply for a provisional registration, you have one year from the date of application to use the mark in commerce. If you fail to use the mark in interstate commerce, the USPTO will not grant the registration.... Read Answer

The short answer is no you cannot. Furthermore, just because you disagree with the Examiner does not mean he has done anything wrong. If you disagree with the Examiner's rejections, your recourse is to appeal the rejections to the Board of Appeals and as part of the appeal process you court request an initial review by a panel of examiners in that examiner's technology center. However, this is not something you should do by yourself and you should get advice from a patent attorney.... Read Answer

Patent applications, copyright applications, and federal trademark applications for a start. Possibly design patents. There are different methods of protection with different costs and benefits. The best solution will involve a combination. It would be best to consider your budget and goals and discuss the alternatives with an attorney.... Read Answer

Branding means trademarks. Before adopting a trademark, you should first perform a clearance search. The strongest marks are terms that do not exist in any language, such as Exxon for gas. The second strongest are words that do exist in a dictionary but do not describe or suggest characteristics of the goods or services sold with the mark. If you have an attorney help you with the selection and clearance, filing can possibly be done yourself at USPTO.gov though it is always better to have professional help. Copyright applications should also be possible for the text and graphics though you should check the terms of your agreement with the service provider. They probably reserve rights to the layout if they provide templates.... Read Answer

No you don’t need the actual software. However you can’t patent an idea - to get a patent you must disclose how to make and use your invention. Simply stated you must have the details worked out. Probably don’t need to know the language. No need for an LLC unless you want to protected yourself from being sued personally for infringing another's patent. Converting an existing program to an iphone app may or may not be patentable. I can’t tell until I see the differences.... Read Answer

Wow, Complicated questions... The best way to solve these issues is to do cross-licensing agreements. The original idea if not protected by a patent or patent application is only protected by trade-secret law. Trade secret law will protect your idea only to the point you voluntary tell it to some one else. If there was a confidentiality agreement in place, to the extent the contract protects it. You going to have to look at the language of the contract. You might have several causes of action if they broke the agreement and took the confidences within. Their defense will be that the contract is not valid and any other contract defenses. 1. jointly added features are considered improvements and both of you can claim these features in a patent as co-inventors. Inventor ship is something that can not be changed, if at least one claim came from any of you, you are both inventors. Unless the original contract talked about improvements you can both independently exploit the improvements. 2. it has to be a significant change, in your case an improvement of the joint improvement. The standard is obviousness, a legal term very difficult to explain, but it can not be a trivial or insignificant change. 3. You are correct, if the code is described in the confidentiality agreement, they should license your code, but again, the contract has to be valid etc. You need a lawyer to review it and make sure is a valid agreement. So, the best most economical way is for them to license your original code and you to license their piece of contribution in an exclusive license. You can always improve and be a better competitor in the market place. In order to prevent them from using your software altogether, you are going to have to sue them from breach of the confidentiality contract. I hope this helps.... Read Answer

It is unclear to me whether you have an application pending or not. Ideally, you will want to have some patent application filed before releasing information to them. Otherwise, you will want to have an attorney review the contract they are offering you. If they are offering to take over prosecution, you will want to make sure that deadlines are not missed and that competent U.S. patent counsel is hired. You will also want to file a Chinese patent application or PCT application within one year of the filing date of the U.S. patent application. If your product has a name, you should consider filing trademark applications in the U.S. and China. Who will own the patent? Who will be responsible for enforcement of the patent if there is infringement? Can you step in and enforce the patent if they fail to do so? Can you have your attorney review responses to office actions (to make sure they aren't limiting claims too much)? Can you file your own continuation application to try to get broader claims? Can you have your accountant periodically inspect the books and royalty calculation? Do they have assets in the U.S. (e.g., if you have to sue them for breach of contract or for dropping the ball with your patent application). Who has the right to sell in other countries? Can you file in foreign countries if they do not? There are many questions that need to be considered. I recommend that you sit down with a licensing attorney who is also a patent attorney, and discuss the details of your situation. I'm not sure that there is not enough information here to give you good advice.... Read Answer

Patenting an invention is an involved process and the fees and costs are dependent on numerous factors such as the complexity of the invention and the amount of prior art existing. I highly recommend you setting up a meeting with a patent attorney to have him/her answer your questions since its very important that your patent application is drafted properly.... Read Answer

There is no need to fear your attorney. Attorneys would not keep their licenses very long if they stole inventions from clients. All attorneys are bound by state ethics rules that require confidentiality. For example, Washington State lawyer are obliged to follow RPC 1.6 which states that A lawyer shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation or the disclosure is permitted in certain limited circumstances such as to prevent reasonably certain death or substantial bodily harm, to prevent the client from committing a crime, etc.... Read Answer

By design, I understand you to be referring to an ornamental design. I would recommend filing the design in the U.S. Patent and Trademark Office, being careful to include good drawings. Please also be careful to check if the Indian patent application was published before the grant. This would start the one year time period running. If the Indian application was done to standard, and cost is an issue, you could try to file it yourself and that is likely to be better than not filing. However, it is always better to get professional help to make a filing.... Read Answer

It is possible that the combination will be patentable depending on a variety of factors such as how long the craft kits have been on sale. The main issue is likely to be whether or not the combination is "obvious." The concept of obviousness is complex and has recently been re-defined in a Supreme Court case called KSR v. Teleflex. That case made it easier to find combinations to be obvious. Generally speaking, if you use components for something other than their normal use, or if there is some reason why it would be difficult or non-intuitive to combine the components (something that teaches away from the combination), you would have an argument against obviousness. You could read the KSR v. Teleflex case or discussions and come to your own conclusion, or see a patent attorney for advice.... Read Answer