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By J.D. Houvener
Patent Attorney and Founder

Hey everybody welcome to the show my name is jd hoovener uh and i am a patent attorney and i’m also the owner here at bold patton’s law firm i’m here every wednesday morning at nine o’clock on the west coast and noon on the east coast i’m here to talk about everything patent law um even bring on some intellectual property stuff too so trademarks copyrights trade secrets i’d love to kind of bounce those off uh but patent physical name i mean that is what we want to talk about church today and um the subject matter for today is file that child application uh some of you guys may have seen that cute uh kid we had on the on the photo and that’s true what is a child application let’s let me we’re gonna start there we’re gonna go all the way through how to develop a patent family okay maybe kind of start to learn what some of this patent parlance uh welcome all those live viewers out there we are going to prioritize live questions uh just like we did last week and all the weeks before um i do have pre-loaded questions from avo uh i’ve gotten i think eight or so questions this week so i’ll be featuring those um if we don’t get any live questions and um yeah the show’s gonna go this week i’m sorry there’s not gonna be a 225 giveaway that was one of our most popular sessions we had last week uh when i was giving away money um so hey hopefully we get a decent showing today but if not next week i’ll be doing another giveaway um all right so for those are joining in a little bit late i’m jb hovener i’m the owner and patent attorney here at bold patton’s law firm um certainly not the only attorney we have six talented patent attorneys here um and are 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 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 uh we’re broadcasting across facebook linkedin and our youtube platform so we could be questions from any one of those uh 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 um i’ll be getting to it shortly okay so um let’s talk about child pads okay and what i’m gonna do is i’m gonna 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 job application and why it’s so important to do so and then we’re going to go to our obvious questions and from there i’m going to be launching into our a link to 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 start 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 all right so let me share my screen

all right so we’re talking about the patent portfolio guide all right and this is uh

and when i say patent portfolio we’re just talking about developing from an initial parent application to filing child patent application so what’s the difference between that well i mean a parent application is the first it’s the first patent application you file and generally has the largest disclosure right you’re telling the the whole world here’s what i’ve invented i’ve got this new solution to this world’s problem right and here’s everything about it here’s the way it works here’s the different versions it could have and in almost every case literally almost every case there’s a there’s an opportunity to file the child application which is sort of a version of that parent and it looks a lot like the parent right um but it uh but actually it’s different right and it must be filed before the parent issues that’s the most important piece here is that you have to do it you have to file that child and develop your portfolio before the first patent issues right and this is stuff that we we push and present to our clients and help them sort of think through quite a bit um and uh so yeah let’s get to it let’s start talking about what what what do they look like what are the different kinds and so there are four major types of child pattern applications out there a divisional application is when right up front when you file that big parent application the examiner is um is going to see if there is more than one invention right their job is to make sure they have enough time to do a really good search and confirm whether your invention is patentable or not right that’s their job uh so if you have more than one invention there that would be doubling or even tripling their work so they’re gonna be like no no i need to get i need to get credit for three separate applications if you’re gonna be sending in three different inventions and this is really common when you have a device for example then you have a claim for the method of using that device and then perhaps there’s sort of a system or an algorithm process based for for the performing that uh that method all three of those are separately patentable patent eligible and they should be considered and therefore what will happen is you have to select just one of those to be the parent and the other two sort of are on standby and at any time before that parent gets the issue you should really seriously consider going after and filing with the divisional and that’s just going after that method or that process claim and proceeding through the prosecution now continuation application is a little different this is when you have gotten far enough along and you know that there is some part of your claim set the examiner said no that’s not in my opinion the examiner’s opinion not novel we’re not new uh and not a and is obvious based on the prior art and at some point you say okay well we’re going to modify the claims and try to get the parent issue and finally get to the point towards allowed right the examiner says all right we’ll let you through well any of those claims you had to modify or take out in order to get the parents allowed you can actually file a continuation application with that you know going for it now in other words you know having a bit more of an argument legal argument or making further amendments and trying to capture uh that invention as claimed uh they sort of had to uh deviate from during that uh initial prosecution of the parent now the continuation apart is quite different because you’re actually adding new subject matter okay so you’re actually you know adding and providing new invention subject matter and so it’ll have a new priority date but it’s still related to your parent application and maybe it’s you know a discovery you had in the lab or after you had customer feedback you found out that oh my goodness i totally forgot about this really i didn’t know didn’t think about this really neat modification or improvement to the application um or the invention rather and i really want to go after this and so instead of filing a brand new application you actually can get some benefit in the priority date uh by filing continuation in part and you get the benefit of already having it be starting through the process and usually gets assigned to the same examiner so there’s some strategic things to think about whether you want to file a new application or continuation in part design patent application is also considered a child because you’re moving through with a utility application let’s say it’s for an electric scooter okay and you’ve got the utility about how it actually looks and the structure and the components and how those motor helmet rejection was able to propel the scooter forward and the attachment to how the how the board fits with the wheels that’s awesome but before that utility patent for that motorized scooter gets allowed you actually realize oh my gosh the way that the motor sits on the board the way that it looks is actually unique right the actual appearance of that scooter is new and you want to protect that shape of the design of how the motor integrates with the board or that scooter that would only be protected under a design patent application and so in that essence you’re actually going to be able to broaden out your ability to enforce your patent rights by having protection on both the utility and the design side so those are the four main types of child patents you can file um before i move on i want to check to see if there’s any live questions on kind of the subject matter i don’t see anything right now but if you have any questions maybe you’re watching this after the fact i would encourage you to please put those comments in i’ll be sure to get back to you even if it’s after the the broadcast here so it’s a bit of a complicated chart i just want to show you some timeline and how this works um you know the main parent or otherwise known as the you know the filing the first filing as follows this gray line in the middle and uh what’s great to know is that all these different types of child patent applications can get varying uh priority dates okay and when you would want to file those uh depending on how how the parent application moves along so i won’t get meyer down in the details here and i can definitely provide this to anyone who’s interested in learning more about when and how to file these child applications uh and just briefly i did pull this up before uh the menu here’s a lovely family here um just to show you what it means to develop a family why you might want to file that child application um you can just see this is the parent right one parent you could say sort of the you know the marital unit okay both parents if you will in the in the real life scenario uh this first parent application right uh after that just before that was issued there was a cip a continuation in part you remember that terminology here it’s uh that was filed and so there this patent was born and before this was issued there was a cip of the cip over here and there was also a continuation another cip off of that from that application you can see there was two separate continuations that all point back to a pct which is an international application at the u.s patent receiving office and there was a there’s indeed even a further chain uh i mean look at this five separate you know layers of you call it generations of patent portfolios and if you look at these numbers i mean 9 million versus 10 million that’s probably around you know six to seven years you know worth of development so um you know while well the inventor might have just come away with just one patent because they were wise to develop other versions other modification improvements of their invention and capture broader rights they have upwards of 10 plus you know plus all the international applications that they likely have as well so and it can get even more complex you look at this very robust pack portfolio when over 25 patents were issued uh chill out child patents all born from one parent application here and here you can see it’s almost over the course of 10 years this portfolio has been developed um you can do it too and so it’s something that you should really consider if you’re moving through the patent process um just how to 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 the even more you know reason to do so in every conversation i have with patent brokers with who are actually out there selling selling inventions in every conversation they have with a litigator they love to know that there is a pending child application right that there is a portfolio under that initial patent that has been issued now uh the benefit of having that is that you are able to go through a great negotiation and settlement with let’s say on the litigation side with someone who may be infringing your patent sure it’s you know scary that you have a patent that might be you know indeed reading on the product that they’re selling right they may be liable for infringement but even if they’re able to change their product or argue that they’re not infringing you have that child patent application and you’ve got the ability to make amendments and you could sort of have it in your back pocket and you could make enough sets that you could lock in and be identical to what they’re trying to sell the other side 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 and yeah you likely would be able to get a larger royalty uh or sale if you have a demonstration you can um you know show you have the the patent portfolio uh 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 apparent 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 yes that’s awesome question i love it okay so a provisional patent application um is the is the first it is an informal version of the non-provisional okay and it’s it has less requirements um that a full amount provisional does but it lays the foundation and i like to say it creates the palette right the palette of paint that you’ll you know paint with on the canvas when you finally uh submit your final uh formal non-provisional and so absolutely after connecting a rigorous patent search uh making sure you know exactly what novel what to speak about that’s when you you write as broadly as you can cover every single version every embodiment everything you can think about every way your invention could work all the applications possible don’t hold anything back you want that provision to be really all-encompassing that’s one of the mistakes that i think some inventors if they found their own they make a big mistake and they just file one version right they happen to manufacture or prototype you know something that works they get all excited they hear patent you know to file the patent and so they just talk about the one product that they made when in actuality what they’ve invented is this whole body of knowledge that could apply to maybe 100 different types of industry applications but that provisional didn’t talk about it so you bet you got some good advice from somewhere that yes indeed you should include all sorts of things okay so when that provisional gets converted into a non-provisional that’s when you have to decide okay 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 and in many cases the examiner says well hold on you’ve actually got more than one invention here and 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 so hopefully it helps to answer your question ariana thanks for that question okay let’s jump to our uh questions and i will i’ll bring those up on the screen and if anybody else has any follow-up questions you’re welcome to uh far away i’ll be here for the 10 or 15 minutes okay so this first one we have let’s see here

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 here 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 incorporate the inc abbreviation i had a dba with the same name as my contractor’s license unfortunately let it labs someone opened a corporation with the exact same name except they added inc at the end can i renew my dba okay well dbas although also known as trade names if i if i’m following the question correctly these are state-specific okay and um they are

for the most part i’m related to trademark law okay there’s a they’re tangentially related but and 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 um a dba um like i hope i’m following the question correctly is related to uh 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 um 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 painting houses and someone has the same exact name you know uh house of color okay house of color llc is it your name and house of color inc came in after you kind of let yours lapse you didn’t pay the the trade name fee or maybe you stopped using you did 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 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 of 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 trade more 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 whims in trademark as opposed to patent which is now as of 2013 first of file doesn’t matter who invented it first whoever files it first that’s who gets the right uh 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 uh 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 your products with that logo in mind um on 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 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 trainwreck attorney uh we have one on staff here at both 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 uh 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 recommendation on including claims what is 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 bank 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 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 gonna 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 jd opener 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 bulb

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