Patent Attorney and Founder
Hey everyone, good morning. My name is J.D. Houvener, and you’ve made it to the Bold Today Show. I’m the CEO and owner here at Bold Patents Law Firm, and I’m here every Wednesday at 9 a.m. on the West Coast and noon on the East Coast. So bring all those questions for you inventors, entrepreneurs, business owners, or those just curious about what patent law is all about. As a patent attorney, I’m here to answer those questions. But just so you know, do not raise any confidential questions. Please keep those to yourself for now. If you want to bring them up to me confidentially, I encourage you to do that. What I’ll do is I’ll put my information down a little later in the show, and you can send an email directly to me. Of course, you can also schedule time with our advisor to see if right now is the time for you to get started. I know a lot of the inventors out there are kind of worried about whether it’s the right time, if patenting is right for you. What I’ll do is I’ll put that link in for you to make and take action today. So, there’s that link right there. It’s a Calendly link where you can schedule time, free schedule appointments with one of our advisors or non-attorneys to see if, at this time, if you’ve got what it takes, if you’re far enough along in the development to move your invention forward and ready to speak with the patent attorney.
Alright, so today, I was really hoping to talk about market-ready designs, and I had a wonderful guest lined up for you. Unfortunately, he fell ill just yesterday, and so we’re going to miss him today. So, we’ll bring him on the show in a later segment, well, in a future week. In other words, we’ll be able to talk about market-ready designs at that time. For now, I’m happy to field any questions about patents with respect to designs, and I’ll also include a link to a blog article that I wrote just a year and a half ago on design and design patents and drawings. But I can’t, of course, speak specifically to what it’s like working with inventors on the design side at this moment because I want to make sure we give that airtime to our guest. So, all that said, let me do this, and I’ll jump into our Avo.com questions. I’ve got a couple of questions that have come in this week, and so we can jump to those right now as we wait for our live audience to join.
Looks like we have two in trademark and one in patents. So, this first question is coming out of Cedar Rapids, Iowa. Okay, so I’m going to pull this question up, and I can share this with you all right from the screen.
Hey, Jody. Nice to see you. Thanks for joining. Alright, so this question is, I’ll pull it up here too so you can see it.
Alright, a highly complex patent likely to get a restriction requirement filing in the US and PCT in August. How does PCT work with restrictions? Our current patent draft is about to be filed with the U.S. Patent and Trademark Office; however, it has four different unique ideas that are unrelated. So, it’s got four distinctly patentable inventions. It will likely be asked to be split up. We’re filing both US and PCT soon, and I have no idea how PCT restriction requirements work, extra fees, or will I be asked to file additional PCTs? Also, our current lawyer kept all of my office actions, which I don’t mind here. See which I don’t mind. Our whole strategy is to spread the cost of several patents over a large period of time. As Mike Rennie, this is vital. Cool. Well, I like this. It’s a good question. It’s fairly specific. So, for those who may not know what a restriction requirement is, let me just give you a little bit of context.
So, when you file in the U.S., that’s, of course, where my ability to speak most knowledgeably, where you file a non-provisional patent application, which is the formal utility app where you try to protect the functionality of an invention, the patent office will assign an examiner. Okay, and as soon as they do, which can take up to six months, right, so it takes quite a bit of time to find the right examiner for your specific invention, the first thing they will do is make sure that, hey, you’re only submitting one invention per patent application. They don’t want to be on the hook to do four searches, okay, four times the amount of searching if they’re only getting paid for one set of one actual patent. So, you’re only allowed one invention per patent. And so, that’s their job initially, to say, okay, how many inventions do we have here? And this person asking the question is smart enough to know that they probably have four distinct inventions, and they decided to file them all into one claim set. Okay, what stuck it all into one patent application. So, what a restriction requirement is, this is the examiner saying, I only have time to look at one, and you’ve got to pick one. Okay, these are the four right? Claims one through three, our invention one. Claims four through seven is invention two. Claims eight through 15, invention three. And then claim 16 through 20 is the last invention. Now, tell me which one you want to move forward with. Okay, we’re going to restrict the patent application. And so, you might elect, okay, let’s go with invention one, claims one through three. And so, claims four through 20 will be restricted. Okay, sort of put off to the side, and you have the ability to then file later what are called divisional, divisional applications, where you actually have a brand new, in parallel patent application for up to three more inventions. So, you could, in theory, have four pending applications before the patent office. Which, you’ve got to pay those fees, and you’ve got a bill. The examiner is going to want to get that allotment of time to do their search and examination for each of those inventions. Okay, so that’s kind of the background on what restriction requirement is with respect to the PCT. Okay, patent cooperation treaty filing. Okay, all that that does, okay, it does quite a bit, but one of the major benefits that it provides is it allows more time. Okay, you file in the U.S. that say January 1st, 2021, you must file in foreign countries by January 1st, 2022. It’s one year, okay, and if you don’t know which country you want to file into, this could be pretty stressful. And so, the PCT does is it says, okay, you must file the PCT, which is a treaty that over 150 countries are part of. They have all agreed that, okay, we’re going to acknowledge the one search that’s done by the U.S. examiner, and we’re also going to allow additional time for that U.S.-based inventor to decide which countries they want to file into. So, it buys you in a whole year and a half on top of that one year. So, it’s a two and a half years, 30-month period where you get to now decide, okay, which countries do you want to file into. So, it’s really a placeholder, okay? There’s no examination that happens through the PCT itself. The PCT is just a vehicle that you can then file into the foreign countries with. Okay, let’s see. It buys you the ticket to be able to have more time and have saved some money in those foreign countries. Let’s say in the UK or in Australia or Korea, those examiners in those different countries will all be obligated to use the search result that the U.S. examiner, acting on behalf of the whole world under the PCT, performed. And I’m throwing a lot of information at you, but it was a detailed question, so I think you wanted a detailed answer. So, the further question is, well, okay, how do these restricted four separate inventions apply, or how does that work with respect to the PCT? Well, have to file multiple PCTs. And the answer is yes, yes, you do. The Patent Cooperation Treaty, you have one filing. Okay, the Patent PCT effort will only give you that priority back to the one application. Okay, so if you want to then seek international protection for those three other inventions, if you follow those separately through other divisional applications, yes, you will have to file separate PCT or foreign filings. The beauty is though that you probably should hold off, right? If you haven’t finished prosecution with the examiner in the U.S. first, you should probably wait because you have time to see how things go on that first invention. And if things go well, great, I think proceed right to the second divisional and then also look to file. But it could be that you get all the way through prosecution before the 18 months is up. And so, you’ll be very wise to know which, how many PCTs to file to get the best bang for the buck. Okay, long-winded answer. Thank you for hanging in there. Bendy, nice to see you. Thanks for hanging in. So, if you’re new to the channel or you’re just joining me for the first time, I’m JD Hoovener. I’m a patent attorney and owner here at Bold Patents Law Firm. And I’m happily to answer any live questions you’ve got. I will prioritize those over anyone else. It’s like Flavio, you’ve got a question, you bet. Yeah, you’re welcome. Yeah, we’re going live. When someone buys your patents, do they officially become the inventor? No, no, sir. Great question. You know, the difference between inventorship and ownership is something we have to explain, and we’re happy to do. You know, inventing, you have to be the inventor, okay? You have to be the one that has the idea that conceives of that solution that will not change. You know, even for inventors that are in big huge companies, let’s say Microsoft or Amazon. They must be named by first and last name, even if, of course, Microsoft or Amazon is going to own that because as an employee, usually, you’re obligated to assign, meaning transfer the ownership of the invention to your employer. They’ll be listed as the assignee, but the inventors will always be there. Okay, and there are certain rights that come with that. But usually, like I said, in an employee-employer situation, those rights will be assigned, and there will be a separate recording of that assignment in the patent recording database. So, nope, inventorship stays the same while ownership can certainly change hands quite a bit. Okay, so let’s jump to a second. We had a second and third question on Avo. That was the only one we had on patents, but it was a really good one on the implications of PCT and divisional U.S. applications. So, onto trademarks. I know we’re Bold Patents here, but we do certainly help inventors and entrepreneurs that want to start and grow a business. I’ll help educate them about trademarks, and we do help research and apply for trademarks at the federal level too. So, here’s a trademark question. I’ll bring this over to the board.
Okay, I’m wondering if I can create a trademark for my cryptocurrency Mercury Currency, but there’s already a cryptocurrency Mercury Cash that is registered. Question mark. So, let’s assume that there is a Mercury Cash out there that is already registered at the federal register at the USPTO.
And they are in the cryptocurrency. I think it is extremely highly likely that if you were to apply for Mercury Currency, you’ll get a rejection just based on the fact that it’s not distinct over and over of Mercury. And also, that’s confusingly similar to Mercury Cash. So, yeah, I mean, even though you’re changing the word ‘currency’ versus ‘cash,’ I think those names are synonymous and even actually descriptive of cryptocurrency. Right? Currency being a part of cryptocurrency. That’s like, you know, in terms of, you know, more perhaps a more tangible example. Let’s say you’re selling hamburgers. Um, you know, Mercury Burgers. Okay, the Mercury part is what’s distinctive, right? That’s not necessarily having anything to do with a hamburger. Right? What you’re selling. But ‘burgers’ is, of course. And so, you’ll likely have to disclaim. You won’t be able to get. You’d be the only one that can call yourself ‘burgers’ if you’re selling hamburgers because it’s just describing what the products are, merely descriptive. And so, the term ‘Mercury’ is the only part that’s truly distinctive about your mark. And so, that is likely, um, I mean very likely to be a point of contention where the trademark examiner will say, ‘Sorry, uh, this is already taken.’ Now, that’s not necessarily the end of the road for you. You may be able to work with Mercury Cash to get a license. Maybe be able to use that mark. And perhaps there’s sort of sub-niches or sub-industries within cryptocurrency. Um, I don’t know, for example, if they’re, if they’re a, you know, like a wallet, and you’re more of a, you know, behind-the-scenes B2B. Um, you know, validator. I’m not necessarily in the industry. But if you’re doing some data validation and you’re more behind the scenes B2B work, and they’re more B2C and they don’t mind if you use the word ‘Mercury,’ and they may just want you to pay them a royalty for using that term ‘Mercury Currency’ if you’re doing, if you’re really not competing with them. Okay, but the trademark office may not, probably won’t know that. So anyway, this hopefully a little context for you on the trademark side for that. Okay, well, I don’t see any more live questions. I’ll do one more question here from Avo community.
This one is from Edentown, New Jersey.
Alright.
Okay, do you think it’ll be a problem if I trademark my rap name NFL even though it stands for something different than National Football League, trying to trademark my rap name but feel like it will be a conflict. So should I spell it out or can I leave it as NFL savvy even though NFL has a different meaning? I see. Sure. So you know, I think it’s going to take some research on this, certainly. I think you’re off to a good start in terms of not being in the same industry or same competitive space. In the last example we saw, you had Mercury Currency versus Mercury Cash, and they’re both in crypto. I think that’s going to be a major conflict. You’re selling music, right? You’re creating a record label. You’re producing, you know, lyrics, musical compositions. In terms of, you know, how you’re selling what you’re putting out to the market as NFL. Okay, very different than the sports and entertainment industry of football through the National Football League in NFL. That said, okay, there are many marks and I think NFL may be one of them that over enough time, okay, when you think of Starbucks, Google, Amazon’s, and these huge mega-brands, they become famous, okay, and they get extra privileges when you become famous. And their goodwill and their, you know, notoriety goes beyond their classification. It’s a technical term. It goes beyond football, goes beyond sports. And if you’re using the term NFL to really sell anything, okay, and certainly including music and rap because NFL is triggered in many people’s minds, many customers’ minds, the thought of, their argument would be you’re still taking away from the NFL brand and their goodwill. You know, they’re selling a completely different product. So, that’s where we need to research. I’m not going to give you a straight answer right now. I think we need to do some research on how pervasive is the NFL mark, uh, in terms of what likelihood you’d have in having success there. Um, and it would be a sort of a likelihood of confusion analysis to see whether you’d have. Can’t give you a success clear yes or no on that, but it’s a good question, so thank you. Alright, well, I know the topic was market-ready designs for those of you that may be hanging in there trying to hear some tidbits on that. I don’t have, um, a pre-packaged, uh, you know, presentation on market-ready design. Like I said, I was hoping to bring on our guest, but he just, I had about yesterday because he felt. I’m hoping he’s able to recover soon. We’ll have him back on the show to talk about design, prototyping, development, and how to bring, you know, physical products, um, even digital products, how to do some rendering, some interesting ways to bring them to market and show them in a professional way. So, it’ll be on a future, future show. I think I’m gonna wrap up. Okay, so please bring those questions in. Keep it coming. Give us a like on social. Come back here next week if you have further questions. I’m J.D. Houvener, owner here at Bold Patents Law Firm, and it’s a pleasure being with you all. Alright, take care, everybody. Have a good day. Go big, go Bold.