I usually do a 10-15 minute consultation before taking on a project and a lot of people are worried about patent infringement from the beginning. Not about infringing upon other people's patents, but about others infringing upon their future patent. It's often difficult to answer questions regarding what would happen if someone infringed upon their future patent (when there is not even an application pending). The best that I can respond is to say that I would have to investigate and conduct an infringement analysis to decide whether there is actually an infringement, and if there is: 1) send a cease and desist letter; and/or 2) dive into a lawsuit.
When filing a patent application, the first thing you should be worried about is the patentability of your invention, not patent infringement. This means making sure that your invention: 1) qualifies as a patentable subject matter; and 2) is patentable in light of prior art. There are other things to take into consideration as well of course, such as enablement, statutory bar, and inventorship, among other things, but we won't go into that right now.
How do you know that your invention is patentable? Well, you won't know for sure (even when your application is pending) because the USPTO makes the ultimate decision on whether your invention will be allowed or not, but the best thing to do is to conduct a patent search (before filing a patent application and sometimes even during). And if your patent search comes with a patentability analysis*, then you may be able to identify some novel features of your invention to highlight in your application.
You might be a little bit confused when you receive this in the mail.
Did you know that you can conduct patent searches on the USPTO website? I never actually took the time to review the steps outlined in the tutorial provided by the USPTO, but I took a quick look at it recently. Basically, this is what the USPTO recommends that you do:
One of the first things I've learned as a legal intern was: "Notice of Incomplete Application is bad, and Notice of Missing Parts is not great."
Your first thought may be, "Well, if my application has missing parts, isn't it technically incomplete?" So it's important to know the difference between the two and know when you would receive one notice or the other.
This article was inspired by one of my Twitter followers, who asked me whether Sprint was infringing upon Verizon's copyright. He was specifically alluding to Verizon's "A Better Network as Explained by Colorful Balls" TV commercial, to which Sprint responded with their own version of a "Colorful Balls" TV commercial.
To establish copyright infringement, plaintiffs must show: 1) ownership of a valid copyright; and 2) unauthorized copying of the copyrighted work. See 17 U.S.C.A. § 101. If a plaintiff holds a valid copyright (here, Verizon does), a juror must be able to establish that: a) the alleged infringer had a reasonable access to the copyrighted work; and b) two works are substantially similar in copyrightable expressions.
Most people hire patent attorneys when applying for a patent, but no one really talks about how it all works and the things you should consider when hiring one (or a whole firm for that matter). I think hiring an attorney is like finding a new hair dresser. You should feel comfortable and be able to communicate freely. Aside from having natural chemistry, your attorney, like your hair dresser, should understand your goals (i.e., what you want to do with your invention vs. what you want your hair to look like) and gain your trust (i.e., handle drafting, filing, and prosecution on your behalf vs. you're at mercy of whoever is cutting your hair).
The first thing you should consider is your budget. If you're a start up and you're tight on budget, you probably should not go to a big firm in downtown of your city. In Philadelphia, big firm lawyers (firms in multiple cities with 200+ attorneys) typically charge clients on an hourly basis. The hourly rate depends on who is doing the work. If you're having a senior attorney (i.e., a partner) work on your application, be expected to be billed at about $600/hr. If you're having a junior attorney (i.e., 1-2 years out of law school) work on your application, be expected to be billed at about $200/hr. Sometimes, you'll have a junior attorney work on your application and then have a senior attorney review it. This may mean that you're being billed for both people's work, so take a look at your invoice carefully. I hear that it's more costly to hire patent attorneys from Washington D.C. and Silicon Valley area.
One of the most chilling moments for small businesses is being hit with a cease and desist letter - more specifically, being hit with a claim for a patent infringement. Panic, stress, and frustration set in. But it's important to not overreact and come up with a game plan. What are your options when you're accused of infringing a patent?
The first thing to do when receiving a cease and desist letter is to validate the claims of the letter. Are you actually infringing the patent in question? This may be a question that you should ask a patent attorney and have him or her conduct an infringement analysis.
No matter how hard we all try to be perfect, we're all bound to make mistakes, at least once. Sometimes, those mistakes appear on your trademark application.These mistakes may not even be your mistakes. They may be someone else's mistakes that you're responsible to fix. But don't panic. USPTO will let you fix most mistakes within reason. Here are the types of mistakes that the USPTO will generally allow you to fix.
Raise your hand if any of these sound familiar to you:
All of these are trademarks owned by celebrities. And yes, some of these (or all of these) are ridiculous.
Once you're in the mindset of building an IP portfolio, sometimes it's easy to get carried away and go overboard with filing applications. I've seen applicants file trademark applications, patent applications, and copyright applications all at the same time for the same product/invention or for the same line of products/inventions. While it may be convenient (and maybe satisfying) to file everything at the same time and get applications out of the way and over with (for a while), it is important to time applications right.
Timing the filing of applications allow applicants to: 1) budget wisely; 2) manage workload during prosecution; 3) coordinate approximate publication dates, issue dates, and registration dates; 4) strategize product/service launching; 5) coordinate funding; and 6) prioritize needs vs. wants.