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By J.D. Houvener
Patent Attorney and Founder

Hey, everybody, welcome to the show. My name is J.D. Houvener, and I am a patent attorney and the owner here at Bold Patents Law Firm. I’m here every Wednesday morning at 9 o’clock on the West Coast and noon on the East Coast. I’m here to talk about everything patent law, even bring on some intellectual property stuff too, like trademarks, copyrights, trade secrets. I’d love to bounce those off. But patent law, I mean, that is what we want to talk about here today.

The subject matter for today is file that child application. Some of you guys may have seen that cute kid we had on the photo, and that’s true. What is a child application? Let’s start there. We’re going to go all the way through how to develop a patent family. Maybe start to learn what some of this patent parlance is. Welcome to all those live viewers out there. We are going to prioritize live questions, just like we did last week and all the weeks before. I do have pre-loaded questions from Avo. I’ve got, I think, eight or so questions this week, so I’ll be featuring those if we don’t get any live questions. And yeah, the show’s going to go this week. I’m sorry, there’s not going to be a $25 giveaway. That was one of our most popular sessions we had last week when I was giving away money. So hey, hopefully we get a decent showing today, but if not, next week, I’ll be doing another giveaway.

All right, so for those joining in a little bit late, I’m J.D. Houvener. I’m the owner and patent attorney here at Bold Patents Law Firm. Certainly not the only attorney. We have six talented patent attorneys here, and we’re working with inventors. So we do primary work with startups, first-time inventors, entrepreneurs that are looking to lock in a technology and make that a major part of their business and monetization plan. So let me get started here with a little brief disclaimer. I want to make sure you guys are aware that although I’m an attorney, this is not an attorney-client privilege discussion. I’m not your attorney, at least not yet, and I don’t want you to share any confidential information. So I’ll put that legal notice in here for all of us to make sure we’re taken by the rules, right? We don’t start talking about inventions. So keep everything hypothetical. Process questions are great. Any questions about the system itself, be happy to talk about and help you through some of those patent questions. So bring it on.

This whole session, I’ll be looking for those live questions that come in. We’re broadcasting across Facebook, LinkedIn, and our YouTube platform. So we could be questions from any one of those. And none of the comments can be delayed about a minute or two. So if you don’t see your comment pop up or you don’t hear me respond to it right away, just hang in there. I’ll be getting to it shortly. Okay, so let’s talk about child patents. What I’m going to do is I’m going to share my screen for about five minutes. I’m going to show you this little slide deck all about what it means to develop and file a child patent application and why it’s so important to do so. And then we’re going to go to our Avo questions, and from there, I’ll be launching into our website where you can learn about more about PCT and Patent Cooperation Treaties, the foreign filings, how to build a portfolio, how to get started with the patent search, and all that stuff. And also how to get a free copy of this book behind me, “Bold Ideas: The Inventor’s Guide to Patents.” Alright, so let me share my screen.

Alright, so we’re talking about the patent portfolio guide. When I say patent portfolio, we’re just talking about developing from an initial parent application to filing child patent applications. So what’s the difference between that? The main parent or otherwise known as filing the first filing, as follows this gray line in the middle. What’s great to know is that all these different types of child patent applications can get varying priority dates. It’s something you should really consider if you’re moving through the patent process. Just how to file a child patent application. Do not come away with just one patent for your invention. In almost every case, you’ll be able to get broader rights and more protection by filing a family. Even more reason to do so. In every conversation I have with patent brokers who are actually out there selling inventions, in every conversation they have with a litigator, they love to know that there is a pending child application.

On the brokering and the sales side, it’s kind of in the same thing. It gives you more value because there’s not just one patent but several. Yeah, you likely would be able to get a larger royalty or sale if you have a demonstration. You can show you have the patent portfolio. Ariana Lawrence has got a question. Thanks for that. Let’s bring it up here on the screen. And a beautiful family you have, by the way. Does a parent-child filing apply to provisional patents? I read somewhere that you should include any and all applications the greatest possible universe in the original provisional. Yes, yes, yes, that’s an awesome question. I love it. A provisional patent application is the first. It is an informal version of the non-provisional. It creates the palette, the palette of paint that you’ll paint with on the canvas when you finally submit your final, formal non-provisional. Absolutely, after conducting a rigorous patent search, making sure you know exactly what’s novel, you write as broadly as you can, cover every single version, every embodiment, everything you can think about, every way your invention could work.

So when that provisional gets converted into a non-provisional, that’s when you have to decide what are we going to claim here. And like I said earlier, usually you’ll want to claim as broadly as you have that provisional. And typically, we’ll say let’s file on the device, the method of using the device, and perhaps even the process for how those steps come together. In many cases, the examiner says, well, hold on, you’ve actually got more than one invention here. That’s when that divisional comes into place, and you can just select which one you want to move forward with first and then come back later and file those child divisionals later. Hopefully, it helps to answer your question, Ariana. Thanks for that question.

Okay, let’s jump to our questions, and I will bring those up on the screen. And if anybody else has any follow-up questions, you’re welcome to far away. I’ll be here for the 10 or 15 minutes. Okay, so this first one we have.

Two, well, no questions on patent application or infringement, but I’ve got four trademark application questions, so I will go to those.

I’ll bring those up on the screen. You’re welcome.

All right, so the question is, again, this is trademarks. Oops, okay. Can I have a DBA with the same name as a corporation, minus the incorporation, the Inc abbreviation? I had a DBA with the same name as my contractor’s license. Unfortunately, let it lapse. Someone opened a corporation with the exact same name, except they added Inc at the end. Can I renew my DBA?

Well, DBAs, although also known as trade names, if I’m following the question correctly, these are state-specific. Okay, and they are, for the most part, unrelated to trademark law. Okay, there’s a, they’re tangentially related, but they’re fairly loosely enforceable. The most enforceable way to go for protecting your name if you’re going to be, you know, a company that sells to customers interstate right outside your state is to use the USPTO, the trademark office, to get a federal trademark registration for your specific classification.

A DBA, like, I hope I’m following the question correctly, is related to registering your trade name with your Secretary of State. Okay, and the only search that that Secretary of State will do is if there’s an exact name match. Okay, and typically, they will make you include your entity type, you know, LLC, C Corp, you know, maybe a not-for-profit, whatever it is, you, however, you form a sole proprietorship as well. And that’s it. There is to make sure there’s not an exact match. They won’t look for similar sound-alike or confusingly similar marks, which is what the federal register and the federal trademark examiners will look for.

So, I guess long story short, you know, depending on your classification, it looks like you’re, if you don’t know what kind of industry you’re in, uh, but let’s say you’re in, you know, painting houses and someone has the same exact name, you know, House of Color. Okay, House of Color LLC is your name, and House of Color Inc came in after you kind of let yours lapse. You didn’t pay the trade name fee or maybe you stopped using, you didn’t practice, you didn’t pay houses for a number of years, and now you want to come back. But you said you found another name, House of Color Inc has got their DBA. Well, what you really should start thinking about, um, is confirming that House of Color Inc is actually a painting company. Okay, House of Color Inc might actually be a, you know, if I don’t know, a physical therapy office. Okay, I don’t know, right? They’re very interesting concept, maybe they’re doing, uh, you know, diversity training, House of Color. Okay, and, um, and they’re totally unrelated to painting your house. Under trademark law, you would likely still be able to, assuming there’s no other similar or confusingly similar name, you’d still be able to register House of Color as a word mark at the federal level because there’s no one else competing for painting, right? House painting services using that mark. Hope to help answer your question there.

Okay, I’ll do one more trademark question. I’m hoping we get one more question, uh, our live community.

Well, that’s another DBA question, uh, okay, let’s see. All right, this one is coming out of Nashville, Tennessee.

Okay, is a trademark first to use or first to file? I do not have the money to trademark out the gate. I have a character I’ve created and will be selling merchandise such as clothing, coffee cups, and a brand. However, do not have the money to trademark. I need to test the market, see if it works, see if people want to buy it, basically. Yeah, is the trademark first to use or first to file? Do I need protections? Can the gate insurance? Finally, have similar attempts to take my idea. Um, cool. I like this question, and in general, it is first to use, okay? First to use wins in trademark, as opposed to patent, which is now as of 2013, first to file. Doesn’t matter who invented it first. Whoever files it first, that’s who gets the right. So if you’re using, um, you know, your mark, let’s say it’s, you know, Monkey Boy is your cartoon. I’m just making it up, Monkey Boy. And if you’re the first one, if you’re the first priority to use Monkey Boy, have your cartoon made and have a brand you’re developing with that, obviously with, you know, a logo or a picture icon as well as some word marks. As soon as you start, you know, entering the stream of commerce and especially as soon as you start selling interstate, right outside your state, certainly outside the country, you’re demonstrating that you are using that mark. And that is the date, whenever you can demonstrate you’ve made a sale, that is the key when you actually sold your logo, your products with that logo in mind. Um, on the open market, that is what the trademark office will look at when you eventually, hopefully you get enough money to file registration. So you don’t need to file first, you just need to go into the market and using it. Know that if you do that, you are taking the risk that there’s someone else using the name Monkey Boy in the same industry, same type of, you know, classification, and you might actually find out, unfortunately, that you’re infringing their rights. So to be wise, you should do a search, uh, certainly a trademark attorney, uh, we have one on staff here at Bold Patents to help you do a search like that even if you don’t have the money to make it all the way to the application phase. So thank you for that question, looks like Ariana has a follow-up question here, um, I love it, by the way.

Okay, so let’s put this up. I’m going to take a stab at drafting a provisional patent application on my own. Don’t do it. Um, number one, do I include all references to all previous patents in the provisional? Two, what is the recommendation on including claims? What is the recommendation on a good resource to use to draft this provisional on my own? Well, like I said, don’t do it. Um, because it is something that takes a long time to practice on doing. It’s like, yes, you know, you can file your own taxes, but are you going to really get the best bang for the buck, or is it worth it to just hire a professional and get those taxes filed the right way and get all the right discounts or whatever they say? You know, write-offs. Um, and almost every case, yeah, it’s better to hire a professional and allow you to spend your time right, your valuable time, not muddling through and learning a new process and writing. You actually should be spending your time inventing, right? Or starting your company and investing your time and energy on something that you’re passionate about. Um, so that’s my soapbox. Um, again, obviously you’re going to do what you want. I actually have a lot of material about how to write a provisional patent application. Um, and I’ve written about a blog article, lots of articles about this. Um, let me see if I can pull up one.

All right, so here is one, uh, how to file provisional patent application in 13 steps. Again, don’t do it. I’ll show you, I’ll share the link here for you, Ariana. That is our blog article that I put out and I’ll share screen really briefly to show you what that looks like. So yeah, you know what I’m saying. Don’t do it. I did write an article on how to do it, but honestly, the trick is, um, you know, I’ve got videos on how to do it. I’ve got the reality check. It’s complicated, and this article, this blog article is long and lengthy, and it goes through all the nitty-gritty, and it’s supposed to scare the daylights out of you, okay? It’s supposed to scare you into thinking, yeah, you know what, this is a lot, and to do it right, I’m not going to have enough time. Let me hire an attorney. Okay, so honestly, this is to be roll above board. That’s what, what, what, uh, my efforts were, but the information is there, and it will actually help you if you want to go through and do it. So kudos to you for having the initiative to get after it. All right, guys, we’re going to wrap up. Um, I’m J.D. Houvener, and I am the owner here at Bold Patents. If you miss us live and you want to catch us, I’ll be here every Wednesday at 9 a.m on the West Coast and noon at your lunch break on the East Coast. So I’ll see you next week. Have a great day, everybody. Go big, go bold.

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