Hey everybody, welcome! I am J.D. Houvener, owner and patent attorney here at Bold Patents law firm. So happy to be here with you on this Wednesday morning, doing live questions and answers on patent law and intellectual property, serving you – the inventor, the entrepreneur, or business owner. I’m here every Wednesday, so if you missed us live, you can catch us next week Wednesday. I love being able to interact live with those viewers on LinkedIn, Facebook, and we’re actually on YouTube, the Google platform YouTube.
Today’s call, I’ve decided to dress up in fall sort of plaid, even though it’s sunny outside where I’m at. It still feels like fall; leaves are hitting the ground, weather’s got that crisp feeling in the air. So, I thought we’d take a quick look at some fall inventions and get inspired for this season. And then, I’m hoping to do a giveaway, a $225 giveaway. So, anyone that comes on live, that participates, asks a question, we’ll get their name in the hat, and I will do a drawing at about the 20-minute mark. And that is going to be your ticket to a free consultation with one of our patent attorneys, Michael Dodd. And of course, we do charge the public $225 for that. So, bring those questions on. You’ll have the opportunity to get that $225 giveaway. So, before we get started, I want to at least offer the disclaimer here for someone who may be new to the group, new to our live community. I do want to make sure that you know this is not a confidential forum. This is not the time and place to put in your invention materials or volunteer information about something you’re working on that still has not yet been filed. So, there’s no attorney-client privilege. This discussion is meant to be more process-level, high-level, hypothetical, and happy to help get you started on your journey, answer questions related to other areas of IP – intellectual property, of course, including trademarks, copyrights, and trade secrets, and dig into the patent process too. I’m happy to see those three live viewers. You may be interested in hearing about what that $225 giveaway is going to be. So, that will be a drawing. They’ll be doing a 20-minute mark. So, if you have any live questions, that’s your ticket to getting in the drawing. At the 20-minute mark, I’ll be able to make that announcement then. So, bring those live questions on.
So, without further ado, I have got a host of questions from my Avo community. I’m going to be jumping in on those right now. Those are questions that I get as a volunteer attorney from around the country, and I get the opportunity to answer these questions here on this platform. And happy to do that here. So, we’ll talk patents first, and then we’ll talk about trademarks second. I will prioritize those live questions; I’ll check every so often to see if they have any as they come in.
All right, so two patent application questions have come in this week. One is from North Richland Hills, Texas. Let’s take this one first. Well, it’s a bit of a lengthy one. All right, and I have not screened this, so hopefully, it’s Gerald. Yes, this is where you leave a question. Please post a question if you have one; I’d be happy to do it. And I’d say you may have actually tricked me, right? You asked a question by asking about a question, so I think technically you’re in because I like your style. But if you actually do have a question related to patent or IP, I’d be happy to put that in and make sure you get that answer. So here’s the question out of Texas that came in on patent law.
‘I was just wondering if my situation is intellectual property theft. So, I’ve created a technology that has a very real potential to save millions of lives across the globe. It’s awesome. I reached out to a nationally syndicated magazine for some insight to help me zero in on key points and make my device more user-friendly. I did not give any critical details, just a general overview. Meanwhile, I started working with a product development firm to get everything going, and I got an email reply back. Oh, you can kind of tell what’s coming. Let’s see here.’
Something that he had sent all my information to a product representative at the world’s largest manufacturer in this industry so they can incorporate it into their products. I wasn’t offered anything, no license agreement, nothing. I sent him an email back telling him that I had already secured a patent on the device, but I didn’t know what else to do. So maybe you fibbed a little bit and said you actually had one. If they move forward with implementing my technology in their products, then I’m doomed. Goodness sakes.’
Okay, so it appears, unfortunately, right, you fell victim to early disclosure. Early disclosure is the trouble when you are talking with third parties about what you’re working on, about your invention before you file for patent protection, you are at risk, absolutely at risk. And if you’re just sharing your idea right outright, and without, you know, you say you only shared some details, but no matter what it is, if you’re sharing that core concept of what you’ve created, then it’s very likely that it will not be protected. In other words, that other party could move to market, decide to sell it as they did here, talk to the manufacturer, and move to market and maybe beat you to market. So that is the rest. If you do that in the U.S., there is a really generous grace period. Okay, you actually have up to a year to file for patent protection even after you disclose what your invention is to the public, or certainly to just one third party. So maybe it’s still within a year, and you haven’t already done so, you should file a patent application as soon as possible. You might actually be able to get patent rights – not by lying, right, actually get a patent granted – and then have a real conversation with this company that went to market with it. You know they are not being better, so there’s no way that they’re going to be able to legally, without committing fraud, get a patent on that because you told them about it; you’re the rightful inventor. And hopefully, within that one year of disclosure, you can get your patent protection.
But of course, that one year has already gone by, that ship has sailed, and you have made us all smarter, better, healthier, and it sounds like you may have saved lives by distributing information. So all is not lost in the end, but in terms of you being able to have it exclusively, the opportunity may have failed. So if you have any questions, please get a hold of us. My personal information, I’ll give it to you. My email address: email@example.com. And here’s a text-only line if you want to send in a text. So thank you for that question. And Gerald, if you’ve got a question, please follow up with that too.
At this time, from LinkedIn. All right, all right. So if anyone who’s just joining now, I am doing a $225 giveaway for those people that ask questions. I will state specifically now if you ask questions related to patent or IP law, you’ll get the opportunity to get a free legal consultation that we do charge $225 for. So I’d love to get those questions from you guys.
All right, we have our first question here. Let’s see from Kent Turner. Let’s read this. ‘So, I’ve got a friend in Michigan who made three inventions as an employee, and his company got the patents. Is there any way he could get possession of the patents covering his inventions?’ Great question. And you know, this comes up a lot in the employer-employee role. When you sign on with an employer, typically you’ve got an employment agreement, and if an employer has done their homework, hired an attorney, usually in there is a clause about the assignment of all IP generated while on the job. Employers hire employees to do work, sometimes creative work, R&D, and come up with innovations. Maybe they do that without even being told to create or innovate or come up with things, but generally, that is the case. Those state laws, they’re all different. All state laws, so of course, to get a legal opinion, I’d want to refer you to an employment attorney in your state or your friend is located. But typically, employers will own all IP that is created if it’s during work hours, related to the job, and using the tools and equipment that the employer has provided. The couple nuances, right, the exceptions are when an employee is doing that, creating or inventing off hours, right at home, using their own tools and equipment, and not doing something that their boss asked them to do. So in that case, your friend in Michigan might have an opportunity to make a claim that if they were unrelated to the job, if it was off hours, and you know, not really using the tools or equipment of that employer, that’s probably the only way he’s going to be able to get ownership. So thanks for that question, Kent.
Let’s jump to one other question here from Avo. And let’s see. Okay, copy this in. Here we go.
Okay, so does a person making an invoice on behalf of someone own the rights for the service? Hi, I’m currently trying to register a patent through a patent bureau; however, I’m not the one who is going to pay for it. Instead, the patent bureau is going to issue an invoice to a third-party payer. My question is, does this make them an owner of the patent, or does that allow them to control what the patent bureau does, put their name on the patent ownership instead of mine?”
Interesting. Patent bureau, it makes me think of a foreign, non-U.S. patent office; perhaps that’s what the Canadian patent office calls itself or the European office. The USPTO, okay, the patent office. The way that the U.S. patent laws work is ownership. Actually, you know, it doesn’t mean just because someone pays for the application, hires the attorneys, and pays the fees that does not make them the owner of an invention. What makes the owner, the inventor of the invention, is the assignee. And so there has to be a legal contract – usually, it’s put in the patent assignment section of the USPTO. Must be a separate contract where the inventor assigns the rights to make, use, sell, and import the rights, which are the bundle of rights you get when you get a patent, to an individual or a company.
In the class example that Kent was asking earlier, that your employee will have to assign by obligation of their employment contract to the employer all rights and under that current pending application or granted patent to the employer. So I hope that helps answer your question. But no, no, people can make deals and make business decisions and pay for things, but that doesn’t mean that they’re the owner. The default owner of the patent rights is the inventor or co-inventors if there’s more than one. All right, so those are the two patent questions coming out of Avo. Let me go to our trademark section here and get a couple of these out. There were three sent in, and this one is from Mercer Island, Washington, a real nice part of town for those in the Seattle area. And you’re welcome, Kent. Thanks for that.
So, what’s the best way to find out if a new brand violates someone else’s trademark? I’m starting a new business and would like to establish it with a brand that’s potentially similar to another trademarked brand. How do I go about finding out whether their trademark precludes me from being able to use this new name and brand?
This is a great question, a really good question, and you know you’re very wise to be thinking about it before just hanging your shingle. The fact that you are worried about it means it’s probably worth hiring a trademark attorney to get their opinion. And what you’re really asking for is this distinctiveness, is one of the key requirements to getting your registration at the trademark office. They want to make sure that someone from the public – the current customer or client of the existing predecessor user – let’s say it’s Bold Patents. They’ve got this mark, and they’ve had it for five or six years, and you’re looking to start a company called Bird Patents. That’s a really bad example, yeah, Bird. And, you know, it’s got four letters; it’s got the B and the D. Maybe it even sounds the same, and you maybe want to use some of the same colors, and you want to know, hey, is it Bird? But it’s very different than the word Bold. But it does sort of sound the same, and it may have some of the same characteristics, and using the word patent. Is that going to be infringing? And you want to know, to what degree is how much risk is there to me going to market? And, of course, there are two separate questions there. One is, am I likely to be sued by Bold Patents or this predecessor user of the trademark? And then two, can they get a registration on Bird Patents separately? Okay, and so a trademark attorney will be able to know the case law. We’ll have insight on what the examiners usually push back on and ways that you could potentially argue to say how it’s distinctive and why someone wouldn’t be confused.
So, confusion in the marketplace is another sort of the second aspect of distinctiveness that if ever litigated, that’s what the jury would look at. If there’s the common person, would they be confused in terms of – you’re looking at Bird Patents versus Bold Patents. And so that’s a really weird example, but that is sort of the thing, and it is subjective, right? Very subjective here, and it will depend on case law in situations. The other sort of wrinkle to this is that you have to make sure that it’s in the same classification. If you’re going after Bird, and you’re actually selling services related to aviary or bird watching services and consulting, obviously, that’s completely unrelated to the practice of law, and so it’s very likely you’d be able to have success using that term in business as long as it’s not in the competing industry or classification. Cool. Well, thanks for that question, and one more from David. David, thanks for jumping in, David Jennings. So, if a patent is awarded, what’s the owner’s obligation to enforce or protect that patent from infringement, and how can this be done efficiently or economically for a small company?
It’s great. Okay, well, the truth is, you know, some people think, you know, the truth is, there is no obligation to enforce, protect, the patent, okay? This is a right, okay? There’s no patent police, you know. Some people think, hey, if you infringe a patent, the patent office or their army or their sort of police department is going to come find you because you’re infringing a patent. That’s not true. The onus is on the patent owner to monitor the market. And of course, they can do that if they have a professional patent attorney or company and help them monitor and assess and look for products or services that are on the market that are similar to the claims that they own. But usually, it’s the owners that are in the market; they’re in the industry, and they know their competitors. And so if a competitor starts launching a product that’s really close or exactly similar to what they have patent rights on, you bet they’re going to notice right away and get a hold of them and try to enforce.
But it’s true that it is not something that there is no obligation. And there are plenty of patents that get issued, and for whatever reason, you know, companies go out of business or technology evolves too quickly, and the patent is, unfortunately, not as valuable as it might have been, and it gets scrapped. And even though it gets infringed on, it’s not enough in terms of, you know, value to make it worthwhile to hire an attorney to do an enforcement action, take them to court. There’s just not enough damages there to make it all worth it. So your second part of the question, which is how can this be done efficiently or economically for a small company? There’s lots of ways. The first, almost in a way, obvious way is through a federal court. You can send a cease-and-desist letter to a company and let them know that you are infringing.
Now, leading up to that, you want to make sure you work with a patent attorney to make sure that your claims are valid, that there’s no chance that perhaps the bigger company you’re enforcing against will be able to invalidate your patent claims. There are lots of ways to do that. Let’s say you’ve got a patent that was issued five or ten years ago. Patent laws change, and it’s a little bit unfortunate that even though you have a patent granted and it still has that 20 years of life, it may no longer be enforceable, may no longer be valid in today’s patent law. And one very famous example is in the software domain, and after 2014, there’s been a lot more scrutiny under, you know, with respect to computer-implemented inventions. And if the claims are too broad and are more drawn to an abstract idea, they will not be enforceable. It’s one of the first things that the potentially infringing party will do is try to invalidate your claims. So before you get a big gusto and hire a litigation firm to help you with a big lawsuit, you want to do your homework and make sure your claims are still valid.
Another way economically for a small company to go after a big company is to purchase insurance. In the whole world of IP and patent insurance, you can get a very interesting policy for a patent claim. Whereas, if there is an infringer, you then have a policy that will actually allow you to get funding to hire litigation patent attorney counsel and make it a more economical way to hire and get all that stuff done I just mentioned is to get that validity confirmation, to hire them to pay for the cease-and-desist letter, and even go so far as to compensate you for litigation. So insurance is a really cool option. I’d be happy to show you that if you want to follow up with me via email. So thanks, David, for your question. I love these questions. So Suma, you’ve got a question here. This might be the last one that we get to. Suma Pinawa. Hi, JD. How much time would you or your firm need to provide a consultation or vet a non-provisional patent draft so one can schedule their filing date accordingly?
Well, of course, that would depend. Okay, I mean, like a lot of legal questions, and on how far along you’ve got. And, but it is absolutely part of what we do is we look at and help inventors no matter where they are in the process. So if they’re just at the idea phase and they want to see if the idea is even eligible if patent law is even correct for them, or they’re getting ready to file their non-provisional patent application, which I assume you or maybe someone you know is close to, we’re going to help you with wherever you are. Maybe you’ve even filed already and you have an office action response; you don’t know what to do. We’re going to jump in and help. But it all starts with an initial consultation, and that’s a paid consult. You can book that online at boldip.com at our contact page. We do charge $225 for that, and it’s a half-hour. So it’s action-packed. You’re going to want to submit as much information as you can. And absolutely, as part of that process, our attorneys would review that patent draft, give you their opinion on what the time provided and recommended next steps. But I will say generally, you know, it’s not my favorite thing to do, right, is jump in at the non-provisional phase to try to help someone with hitting their date, okay? Puts them in a pretty tough spot.
The ideal thing to do, you know, Suma, is to get a hold of an attorney well before you’ve started drafting and to get a patent search done, okay? Way up front and have an attorney give you an opinion on how, you know, what the scope of rights is. And so we can then help you draft a really well-formulated application along the way. But I know those are, you know, perfect scenarios that oftentimes don’t always add up. So thanks for your question, Suma. If you have any follow-up questions, feel free to put those in. All right. Well, that will be one more minute for another question. I’ve got a list here of names of those that asked questions so far.
We’ve got Zuma, David, Kent, and I think we had Gerald. I’ll give Gerald credit; I like his creativity asking a question about a question. So we got four names in the hat. We’ll wait one more minute for any other questions to come in, and then we’ll pull that name for the giveaway.
All right. Meanwhile, I will pull up our last question on trademarks.
All right, here we go. This one’s coming out of Jamaica, and New York. I know there was a Jamaica in New York.
Okay. Can I legally sell things outside of my class of items? So we’re still in the trademark domain. I have an LLC, but I still want to start selling a few things that are in a different class. I make handmade products like jewelry and bookmarks, but also want to include a few t-shirts. Now, also, if you’ve already filed your trademark application, you already have a registration on, let’s say, jewelry, you’re stuck. You’re going to have to file a second application. You can’t just broaden. But if you’re midway in the application phase, there are ways to modify and amend an application while it’s still pending. And with trademark law, as you probably know, during the application process, you have to provide the trademark office evidence that you’re using that name in commerce. So you have to provide the same thing for apparel, right, t-shirts or hats, whatever you’re trying to expand into. If you’re trying to claim an additional class, which is a new industry, this just demonstrates you’re using those services. Sorry, you’re selling under that brand or wordmark in addition to what you’ve got, for two reasons. And so we have a trademark attorney as well. We’re not just doing patent law here. We have one excellent trademark attorney, so please get ahold of us, and we can help you with that.
All right. Well, I’m going to do a pulling of the hat here. We’ll see who gets the award. This is a new process here for the giveaway, let’s pseudorandom. I promise I’m not cheating. Okay, and the winner is Gerald. Gerald, you win, sir. All right, so what I’ve got is a $225 giveaway for you, sir. So if you hang in there, Gerald Newman, you’re the winner, and I appreciate you guys all participating in this week’s Bold Patents live Q&A. If you have any questions again, you’re going to be able to get ahold of me at my email address, firstname.lastname@example.org. You can, of course, visit our website at boldip.com. And if you take action and schedule a consultation with us today, I will reward you with a copy of this book behind me, “Bold Ideas: The Inventor’s Guide to Patents.” It’s a nice 150-page digest on basically what is patent law, how does it compare to trade secrets, trademarks, copyrights, and other types of IP. All right, so anyway, nice talking with you guys. Thanks for those live questions; that was fun. You bet, alright everybody, have a good rest of your day, take care, go big, go bold.