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By J.D. Houvener
Patent Attorney and Founder

Hey everybody welcome i am jd houvener owner and patent attorney here at bold patins law firm um so happy to be here with you on this wednesday morning uh doing live questions and answers on patent law 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 uh being able to interact live with those viewers on linkedin facebook and we’re actually on youtube uh the google platform youtube so uh today’s call we’re uh i’ve decided to dress up in the in fall sort of you know plaid even though it’s sunny outside where i’m at it’s still feeling like fall right leaves are hitting the ground weather’s got that kind of crisp feeling in the air so i thought we’d take a quick look at some fall inventions and uh kind of get inspired for this season and then i’m hoping to do a giveaway a 225 dollar 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 uh so uh bring those questions on uh you’ll have the opportunity to get that 225 give away so before we get started i want to at least uh offer the disclaimer here uh for someone who may be new to the group new to our live community i do make sure that you know this is not a confidential forum this is not the time and place to uh 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 the patent process too so i’m happy to see those three live viewers you may be interested interested in hearing about what that 225 25 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 give that uh make that announcement then so bring those live questions on so without further ado i have got a host of questions for by alvo 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 to i get the opportunity to answer these questions here on this platform and um and i’m happy to do that here so we’ll talk patents first and then we’ll talk about uh trademark second uh and i will prioritize those live questions i’ll chill 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 uh 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 uh hey gerald yes this is where you leave a question uh please post a question if you have one i’d be happy to to do it and i’d say you may have actually tricked me right you asked a question uh by asking about a question so i think technically you’re in uh because i like i like your style but if you actually do have a question related to patent or ip i’d be happy to uh 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 have uh i did give any critical details did not give any details out just a general overview uh meanwhile i started working with the product development firm to get everything going and i got an email reply back uh oh you kind of tell what’s coming uh 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 in 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 uh-oh but i didn’t know what else to do so maybe you fibbed a little bit and said you actually had one um if they move forward with implementing my technology and their products then i’m doomed goodness sakes okay okay so it appears uh unfortunately right you fall victim to um early disclosure early disclosure okay and this is the trouble right 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 um and without you know you say you only shared some details but no matter what it is right if you’re sharing that core concept of what you’ve created then it’s very likely that 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 probably and maybe beat you to market um so that is the rest if you do that um 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 have 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 be lying right actually get patent granted and then come 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 you’re the rightful inventor and hopefully within that one year of disclosure and you can get your patent protection but of course that one year has already gone by that ship has failed 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 to you my email address jd bold 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 okay all right all right so if anyone who’s just joining now um i am doing a 225 dollar giveaway for those that people that ask questions i will state specifically now if you ask questions related to patent or iep law um you’ll get the opportunity to get a uh 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 say from kent turner can’t let’s read this so i’ve got a friend of michigan who made three inventions as an employee and his company got the patents yeah 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 okay 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 assignment of all ip generated while on the job right employers hire employees to do work sometimes creative work r d and come up with innovations yeah maybe they do that without even being you know told to create or innovate or come up with things but generally that is the case and those state laws right 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 below in all ip that is created if it’s you know 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 is 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 uh you know not really using the tools or equipment of that employer um that’s probably the only way he’s gonna be able to get ownership so thanks for that question kev okay 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 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 um patent bureau bureau it makes me think of a foreign non-us patent office perhaps that’s what maybe the canadian patent office calls himself or the european office um 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 you know the application hires the attorneys and pays the fees that does not make them the owner of an invention what makes the the owner the inventor of the invention is the assignee and so there has to be a legal contract usually it’s put in in the patent assignment section of the uspto must be a separate contract where the inventor assigns the rights to make you sell and import the the rights which are the bundle advice you get when you get a patent to an individual or a company um in the class example uh that kent was asking earlier that your employee will have to assign uh by obligation of their employment contract to the employer all rights and uh under that current pending application or granted patent to the employer so i hope that helps answer your question um but no no people can make deals and make you know business decisions and pay for things but that doesn’t mean that they’re the owner uh 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 uh 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 cat thanks for that okay

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 like to establish it with a brand that’s potentially similar to another trademark 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 really good question and you know you’re very wise to be thinking about it before you know just hanging your your shingle the fact that you are worried about it means it’s probably worth hiring a trademark attorney to get their opinion right and what you’re really asking for is is this distinctive 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 right the current customer or client of the existing you know predecessor user uh let’s say it’s bold patents right they’ve got this mark and they’ve had it for five six years and you’re looking to start a company called bird patents that’s a really bad example yeah bird okay and uh yeah you know it’s got four letters it’s got the b and the d uh 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 you know bird but it’s very different than the word bold uh 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 you know infringing and you want to know what to what degree is how much risk is there uh to me going to market um and of course there’s two separate questions there one is am i likely to be sued the by bold patent or this predecessor user of the trademark um and then two can they get a registration on bird patents uh separately okay and so turmeric attorney will be able to know the case law uh 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 a confusion in the marketplace is another sort of the second uh aspect of distinctiveness uh that if forever litigated that’s what the the jury would look at if there’s the common um person would they be confused uh in terms of uh you’re looking at bird patents versus bold patents and so that’s a really weird example but that is sort of the um the thing and it is subjective right very subjective here and it will depend on case law in situations um the other sort of wrinkle to this is that um you have to make sure that it’s in the same classification if you’re going after uh you know bird and you’re actually you’re selling services related to you know aviary or you know 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 uh in 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 uh 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 uh the pet okay um this is a it’s a it’s a the right okay there’s no patent police you know some people think hey if you infringe a patent uh the patent office or their you know 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 you know 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 they’re 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 uh it is uh it is not something that there is no obligation and there are plenty of patents to get issued and for whatever reason you know companies go out of business or technology evolves too quickly and the patents is unfortunately not 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 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 um you can send a statement to assess 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 the patent attorney to make sure that your claims are valid uh that there’s no chance that that perhaps 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 uh 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 um 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 uh potentially infringing party will do is try to invalidate your claims so before you get a big gusto and hire 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 uh is to purchase insurance right in a whole world of iep and patent insurance you can get a very uh interesting policy for a patent claim um whereas if there is a infringer you then have a policy that will actually allow you to get uh funding to hire litigation patent attorney council and make it a more economical way to hire and get all that stuff done i just mentioned is to get that validity confirmation uh to hire them to pay this 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 uh sorry so suma you’ve got a question here this might be the last one that we get to summa pinawa um hi jd uh how much time would you or your firm need to provide a consultation uh 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 um uh 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 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 uh our attorneys would review that patent draft give you their opinion on what the time provided and uh recommended next steps um 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 you know hitting their date okay put this in a pretty tough spot the ideal thing to do you know assume 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 uh 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 general 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 we’ll pull that name to the giveaway um 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 and 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 um and with trademark law as you probably know doing tool you have to provide the trademark office evidence that you’re using that name in commerce and 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 you know industry this just demonstrates you’re using those services um sorry you’re selling under that brand or word mark 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 return so please get ahold of us and we can help you with that if you’d like 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 dollar giveaway for you sir so if you hang in there gerald newman you’re the winner and i appreciate you uh you guys all participating in this week’s uh 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 jd you can of course visit our website at and uh if you take action and schedule a consultation with us today i will road you with a copy of this book behind me both ideas the inventor’s guide to patents uh it’s a nice 150 page digest on basically what is patent law how does it compare to trade secrets trademarks copyrights and and other types of ip all right so anyway nice talking with you guys thanks for those live questions that was fun um you bet alright everybody have a good rest of your day take care go big go bowl

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at