Patent Attorney and Founder
JD: Hey everybody! Welcome to the Bold Inventor Show. I’m your host, JD Houvener, with my trusty friend, Matt KF. Matt, good day!
Matt: What’s going on, buddy?
JD: Hey, I’m having a good day. I want to hit this subject first about searching and research. Let’s talk about what needs to happen before you file. I’ll talk briefly about the patent side. This has always been the number one thing—patent research. Look before you leap. One of my soapbox moments is that there are some, let’s say, less scrupulous attorneys out there who just file everything without doing proper research. They’ll take your money and just file, but that’s not the right approach.
As an inventor, business owner, or entrepreneur, you deserve to know what you have and how different it is from what else has already been filed or published. Taking a hard look is crucial. As a patent attorney, I quickly realized that research wasn’t something I was trained to do in law school. So, I found an expert in research who looks at applications, the latest research, all the publications, classifications, and nuances in the language. At Bold Patents, we have someone dedicated to this research for our clients. The attorneys then review the results and determine from a legal standpoint if we can make a strong argument for the patent’s uniqueness.
The big question for the client is whether the difference between what we think is new and what you have is enough to make money in the market. Knowing the scope of rights you can obtain is essential. Patent research is inherently risky because applications filed today won’t be published for another year and a half. So, there’s always a window where new filings are not visible, making it a challenge.
Matt: That’s interesting, JD. When a patent is filed, it’s not publicly available right away?
JD: No, certainly not. Provisionals never get published. If you file a provisional and never file a non-provisional, it won’t get published. It only gets published when you file the non-provisional, and even then, it takes about 18 months from your priority date. It’s tricky because there’s a significant blackout period where we can’t see recent filings.
Matt: Wow, that’s a long period. On the trademark side, the blackout period is much shorter, like a week. So, you have to deal with a year and a half where a potentially conflicting patent could be filed?
JD: Yes, totally. It’s a challenge. During the examination, if there’s a conflict with a provisional patent filed earlier, it will come up. The examiner can cite it against your application. But they won’t look at the provisional unless there’s an ending application on the same subject matter.
Matt: So, if someone files a non-provisional patent after a provisional, they might get notified of a potential issue based on the earlier provisional application?
JD: Exactly. It’s tricky because it’s a long wait. On the trademark side, let’s talk about search. What are some important things to consider?
Matt: Similar to patents, the timeframe for trademarks is long, about 14 months from application to registration if everything goes smoothly. We recommend filing trademarks early and often because of the lengthy process. One common conversation with clients is about the order of operations. Many clients are first-time inventors or business owners who need LLCs, trademarks, and possibly patents. They often don’t know the best sequence for these steps.
We typically recommend clearing the name first. We do a search and provide an opinion. If everything looks good, the client can then file the LLC, possibly matching the trademark brand. Once the LLC is filed with the Secretary of State, we file the trademark using the LLC as the legal entity owner. You need to look before you leap because filing a trademark without research can lead to issues. It could be a year before you find out your trademark application is denied, or worse, you get a cease-and-desist letter years later.
JD: Good point. So, you advise clients to go to market once you’ve done the search and filed the application?
Matt: Yes. Assuming the search and opinion are positive, clients should go to market. You don’t need to wait for USPTO approval, which can take months. Once the legal research is done and the application is filed, proceed with your business as usual.
JD: Cool, love it. Research, research, research.
Matt: Absolutely. Research is crucial. That’s what we do all day—research, research, research.