Washington Patents Legal Questions

If you are going to have separate territories, your father-in-law may not be much affected by being a little obsolete, as it is unlikely that US sales will substitute for European sales. So I would argue that he doesn't need this. Likewise, if you do something significant in the future, why shouldn't that carry some compensation in exchange for a license to your father-in-law? That would be a win-win. I do not see the scenario proposed by your father-in-law as a win-win, and suggest that if you hold out you will not have to give rights to future inventions. I think a little hard negotiation will get you what you want.... Read Answer

1. There is a database called Inpadoc that allows you to search patent family trees and to find corresponding foreign patents. Access is not cheap. Attorneys will usually have access via a commercial service such as Dialog. If you want to search for free, it is possible to search the Canadian patent office records at http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/introduction.html You could search based on the inventor name, for example. 2. Yes, if the improvement is not obvious. However, the fact that you obtain a patent does not mean that you do not infringe the underlying patent. It is quite possible that you will need to obtain a license from the original patent owner to be able to manufacture your patented product. If the original patent holder likes your improvement, a cross-license deal may be possible, giving the original patentee the right to use your improvement in exchange for you getting the right to use their patent, though the original patent holder is not obliged to make a deal. 3. If any one claim is infringed, a patent is infringed.... Read Answer

It is possible to obtain a patent on an improvement. However, obtaining a patent does not mean that you do not infringe on someone else's patent. If you patent an improvement on someone else's technology, it may be possible to do a cross-license deal with them so you have permission to use their technology and they have your permission to use your improvement. However, they are not obligated to use your technology and to give you a cross license.... Read Answer

Some invention submission companies will mass-mail a very nicely published description of your product to multiple companies. The companies will ignore the mailings. The mailing is likely to start the clock on the one year deadline to file a patent application. (If the U.S. switches to a first-to-file system, that one year grace period may go away). So their actions may bar you from obtaining a patent. But for another company to obtain a patent, one of the requirements is that they have to be an inventor. Before hiring an invention submission company, ask them for some references (examples of success stories) and ask them about their success rate. What percentage of their clients see any return on investment? Also check the name of the company on the U.S. Patent and Trademark Office's scam prevention page http://www.uspto.gov/inventors/scam_prevention/index.jsp Also consider joining a local incubator where there are multiple start-up companies around you, some of whom can usually point you to reputable marketing and legal service providers.... Read Answer

It is possible. The only way to know for sure is to examine the claims of the other patent against your design. If you meet the limitations of any of the claims, a product manufactured according to your design will infringe the other patent. You should have a patent attorney perform this review unless you have experience with claim interpretation. Just because you obtain a patent does not mean that you are not infringing other patents. Similarly, it is possible to obtain a patent that builds on someone else's design.... Read Answer

There are two issues here. One is whether it is possible to obtain a new patent that builds on features of an old patent. Another is whether obtaining a new patent necessarily means that you have a right to manufacture. The answer to the first question is yes, it is possible to obtain a new patent that builds on an old patented idea. In fact, many inventions build on old ideas. The answer to the second question is no, just because it may be possible to obtain a new patent on an improvement of an old idea does not mean that you are not infringing someone else's patent. To be sure that you do not infringe on someone else's patent, you should hire an attorney to prepare an opinion on whether or not your new product infringes the old patent. Patent protection is defined by the claims section of the claims and the old patent may not cover exactly what you think it covers. It may also be possible to design around the old patent.... Read Answer

This would be one or more utility patents for the strongest protection. You can protect the interface arrangement, sequence of menus, or whatever it is that gives it the most value. Copyrights can be used in addition, and can be useful against pirates, but do not provide much protection against someone who reverse engineers the design. Copyrights should be registered before infringement occurs for maximum value.... Read Answer

You do not need any contract to do this. You cannot copyright a persons name. It is not allowed. I would tell them that I like the name and that I was planning to use it on the web but I would not pay them any royalties because they do not own anything. Set aside 5% of you profits for something worthwhile like homeless shelters, animal shelters etc.... Read Answer

Yes but be very clear in the patent that it is an improvement over the original patent - note that this could be used in combination with some of your actions to bar your obtaining of a patent on the entire second patents's material. The material in the first provisional that is in common with the second provisional may not be patented if it was disclosed despite the fact that there were provisionals filed for both of them. You cannot just extend the length of a provisional by filing another provisional with minor changes to the first provisional if there has been a disclosure.... Read Answer

I am not sure what you mean by title. Each country does have its own intellectual property laws, though. So you could have Canadian and US patents, copyrights, trademarks, and trade secret. Only the Canadian intellectual property can be enforced in Canada and only the US IP can be enforced in the US. There are some conventions like the Berne convention on copyright that require one country to honor IP created in another country that makes this answer a little less clean cut. Patents and trademarks would be separate for each country. You probably have some IP without even knowing it. Copyright and trademarks can be established without registrations, though there are advantages to registration. Either a US company or a Canadian company can own worldwide IP or it can be separated out. There may be tax and marketing reasons to separate things out too.... Read Answer

I recommend that you find an "incubator" to help you with a startup and to help these questions. Also try SCORE and the MBA department of a nearby university for advice. Commercial banks also are often well connected and have lists of professionals who may be able to help you. Funding is extremely difficult to obtain at the present. Angel funding (friends and relatives) is a common way for new businesses to start. Companies rarely buy inventions from individuals unless a product has been manufactured and sold and profit margins can be demonstrated. It is sometimes possible to enforce a patent against an infringer using contingency fee litigation without having to manufacture a product. It is reasonably easy to file your own copyright application using the website at copyright.gov by following the instructions on the website. If you did not copy someone elses work, odds are very low that you will infringe someone elses copyright. Trademark searches are best performed by attorneys. You can try your own search at tess2.uspto.gov but be aware that similar sounding marks, translations, marks with different suffixes or prefixes, and synonyms may be conflicting with yours. The standard is whether there is a "likelihood of confusion." An exact duplication is not the standard. In addition, there are common law marks that are not registered anywhere that can cause problems for you. Be aware that most attorneys will only quote an estimated fee for preparing an application. You should consider the start-to-finish costs before starting. The fee for obtaining a patent depends on the complexity and the number of rejections received by the U.S. Patent and Trademark Office. In a negotiation session, where the applicant tries to get broad coverage for a wide range of alternatives, and the Office tries to limit the applicant to one specific design, the Office routinely rejects everything and the applicant has to file amendments and responses in multiple rejection/response cycles until claims of a reasonable scope are allowed. The average legal fee for preparing a patent application on an invention of minimal complexity was $7879 in 2009. For relatively complex mechanical, the average fee was $9699. For electrical or software, $13,277. These are just averages. There is also a government filing fee of about $600 for a small entity. The average fee for each amendment/argument was $2322 for minimal complexity (rare) and $3135 for a difficult rejection for a mechanical case, $5021 for an electrical case. You should plan on about three of these rejection/response cycles, though it could take more. To reply a third time, a Request for Continued Examination and another government fee of about $600 is required. In some cases, if an examiner is being particularly difficult, an appeal may be advisable, and an average cost for a written appeal brief was $5547. If a Notice of Allowance is received, there will be an Issue fee of about $1000 government fees for a small entity plus a $200 service fee for filling the forms and attending to allowance formalities. If these fees seem high, be aware that if there is an infringement, the average cost for a patent infringement trial is over a million dollars. These are averages for the U.S. My fees tend to be a little lower than the averages even though I have 20 years of patent preparation and prosecution experience. If you would like a more precise quote, I would require a written disclosure and I can send an invention disclosure form for you to use. Please let me know if I can be of any further assistance. Unless I hear from you, I will assume that you are not proceeding with me. No attorney-client relationship exists until a representation agreement is signed and an advance fee is paid. Thank you again for your inquiry and best of lu... Read Answer