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By J.D. Houvener
Patent Attorney and Founder

Hey everybody i am jd hoovener and host here at the bold today show you’ve made it uh i am the uh managing partner and owner here at bold patton’s law firm and we’re gonna be talking about um a lot of things patent related uh opening up the the whole thing to live questions and answers today and every week we’re here every wednesday 9 a.m pacific and noon on the east coast and we’ll be prioritizing live questions i do have an agenda for today we’ll be covering uh how to build a patent portfolio which sounds super fancy but i think you’ll see it’s actually pretty simple and straightforward so i’ve got a really neat presentation i’m going to show you that as well no guests today so we’ll be focusing on just that one lesson in patent law and i encourage you to bring forward your question if you’re a first-time viewer i encourage you to just know that this is not an attorney-client relationship right this is a public forum and so please hold off on sharing any confidential information about your invention we wouldn’t want you to disclose that before having a discussion with an attorney so i’ve got that disclaimer up there please read that i know this is not advice this is just me being able to give you general questions or general answers rather to your questions related to patent law anything at all related to an invention journey i’m really excited to get some of those questions from you and then at the very end of the show i will be addressing two separate questions today that came in from our community um so i’m looking forward to sharing those answers with you as well so thanks for the likes and the looks like a hug too that’s awesome i appreciate that um all right so let’s let’s put the agenda up for today um do the introduction as i just did again if you’re just joining i’m jb hoovener patent attorney and owner here at bold patton’s law firm and i’m here every week so if you missed this week and you’re watching after the fact catch us next week i’ll be there so let’s put this up i’ll share the uh agenda here

okay so that’s kind of the order of operations uh so the intro is out of the way i want to also offer you a chance to get a copy of this book behind me i got four books but this one here in particular both ideas the inventor’s guide to patents this book is one i just released about three four years ago actually a second version just got released two years ago it’s got all the basics i mean it’s 100 page manuals it might take an hour or two to get through but i’m going to give you a pdf copy if you take action and you decide to schedule a free 30-minute screening session with one of our advisors to see if now is the time to move your invention forward so how do you do that well follow this link i’m going to put in the chat window right here and that’s going to be how you get a copy of this book behind me whoops right there um and if you get further far enough along i would love to offer you opportunities to take a look at the other part of other books i’ve got here you’re not alone is a book i wrote just a few years ago about my own entrepreneurial journey and starting up this law firm so click that link uh get on our calendar with one of our advisors to see if now is the right time to protect your invention okay well without further ado we’re going to jump into the topic of the day which is how to build a patent portfolio okay this would be sweet right this is a good cocktail hour discussion you can have a bit of knowledge about what a patent portfolio is all about next time you need to have that sort of you know sophisticated level discussion so let me share my screen with you and we’ll get started

all right here it is and it may not be full screen for you but this is the 2021 patent portfolio guide by myself jd hoovener and so this first page here is you know what is a patent portfolio it’s a great place to start it really it’s a fancy term that means more than one patent okay so if you are a patent portfolio holder you might just have two patents right around your technology or your invention now certainly a portfolio could include more than one invention you know just like a stock portfolio you could have more than one stock but in this sense i want to encourage you to think about it doesn’t have to be multiple inventions it just has to be more than one patent that protects the same invention all right so let’s keep it really simple now for many inventions it does take more than one to adequately cover and protect it so i’m going to be talking more about that but this is a very interesting point i think one of the most clear examples is when there’s a product right a consumer product something that you’ve invented and it’s built right it’s actually tangible you can touch it and feel like a pen or pencil it has of course utility right you know you can click the pen you can see that it’s got a nice round tip to it it’s lightweight you know it’s got this nice screw top attachment if you need to replace the ink cartridge right all these different things the spring where there’s a lot of functionality involved and of course there’s nothing necessary unique about this but way back when maybe in the early 1900s when this was first invented that had utility and so it was protected under a utility patent but what you also probably noticed is that this has a pretty sleek interesting design you know the way that it actually looks apart from what it does and it has you know a conical shape it’s got this kind of nice you know sort of a circumscribed you know angle around where the the clip attaches all these different little aspects and quite detailed if you can see that how it actually looks and how it attaches to that to the base of the pen all right so those are design features and so you might need both utility and design to adequately protect this one invention and having both a utility and a design patent means you have two patents and a portfolio that protects your invention all right so that first invention that you probably protected let’s keep the pen example going um the utility application is likely what you would file first because generally a utility patent will cover more broadly it’ll cover much more than a design patent right it’s going to cover not just this exact version but any pen that has those features of a clickable top a spring-loaded and injectable cartridge with a screw top finish right and it could be any size it could take on any materials and could have even different you know shape okay because it provides the same function and that’s hopefully what you’re able to get under that utility patent so that’s what’s going to be called the parent the parent patent application is that first application that you file to protect the invention okay a child patent application is any application right any additional patent application that claims the priority okay don’t miss that claims the priority meaning let’s say we filed this pin january 1st 1933 just picking a random year all right so 1933 that january 1st that is the the priority date and so you file that utility pat application and then in 1934 the examiner says yep that utility patent we’re going to allow it to be issued and so before you pay the issue fee you want to file a child patent application also called a continuation application that will be around the design right going after a design patent application protecting the way that it looks or potentially going after additional claims about you know maybe in that year right between 1933 and 34 you found that uh you know you could actually include a um a spring on the top right to allow more flexibility uh for when it gets goes into the pocket right just like that you know maybe this is the early days of the uh you know the world war ii or whatever was going on at that time and they needed to have us you know make sure they weren’t going to break off so having a spring on top was helpful but you didn’t talk about the top spring when it was initially filed in 1933 so you’re adding new matter new subject matter and you can still claim the majority of that 1933 filing but you’re adding just a small bit of new matter that will be called what they can call a continuation in part but still it’s a child patent of that original parent application that was filed in 1933 that core parent patent which was the patent so you know i’m talking a lot when we jump back and see if we have any live questions from our audience here i don’t see any right now but if you do have any please keep them coming all right so let’s let’s go to a different uh different chart here to look at what are different types of child patent applications that you can get a divisional the divisional is when there is a restriction requirement from an examiner typically this is when the first things an examiner will do before they even begin doing their search is they’ll say okay how many inventions are there because i’m only allowed as an examiner to do work on one invention you’re only allowed one patent for one invention we can’t get you you know you can’t get a two for one deal so they may say now what you’ve what you’ve claimed here actually is more than one invention and sometimes they’ll split up into two or three what they call species right three separate inventive elements okay a classic example is where you’ve got a device and a method of using that device sometimes you can combine them both but the main thrust of it is that the examiner needs to make sure that when they do a search a single search covering different you know specific structures and elements that will be able to cover the breadth of what’s being claimed if it’s gonna if it’s gonna require two separate searches they’ll likely restrict restrict it and say you know inventory you must choose which invention you want to move forward with typically you know you work with the attorney and decide on which which species to choose and you kind of set aside you know those other one or two or more than one two species and you move forward with just that one invention later on in prosecution you can decide to proceed in parallel going forward with one or more of those species that was not elected so that’s what’s called a divisional patent application and it can become a second or third or more patent down the road right it would secure that other claim subject matter okay so that’s a division second is a continuation and this is kind of back to my pen analogy right where i have that pen that the utility has been allowed but you want to try to claim more subject matter and so that example where i said you’re including new subject matter it’s going to be this third option which is the continuation in part we’re adding that top spring and if that was not included in the original spec well it’s going to be difficult

you have to file the continuation in part to get that issued a regular continuation is where you’re not adding new matter but you’re just claiming more than you did so in prosecution when the examiner is looking at your um your claims oftentimes there’ll be some prior art right some previous publications previous patent applications or actually granted patents that are on the same subject and you’ll need to either through legal argument or through amendments make changes to the claims so what you can do is sort of in a way negotiate with the examiner to get to a final set of claims that’s allowable now what you can do is you can say well okay i’m going to make these arguments and i’m going to concede in a way to you examiner and allow this first set to go through but i’m going to still fight you and file a continuation with the broader terminology and try to make more legal arguments in a separate pad application later so you kind of reserve the ability to argue that later oh there is one more here i want to also mention design so this was also part of that analogy with the pen earlier i mentioned is yes you can file a design patent application later that claims the priority all the way back to the original utility provisional excuse me a provisional or non-provisional filing date as long as the drawings or i take it were there right in terms of what you filed and provided with that provisional or non-provisional patent application you can claim a design all the way back and get that early priority date now you’re covering both the utility and the design aspects of your product so definitely great idea to expand so let’s take a look at the somewhat complicated flow chart this is how things can develop over time so um let’s first focus on the green arrow okay this bright green arrow that is what we’re calling is the parent patent application okay now before the parent actually gets filed you’ll see that we have this first one which is the provisional um okay this is the provisional um or non-provisional priority date right there’s the first time the invention has been filed okay so it will it will go forward go through examination and like i said the first thing that will happen at this point is the uspto restriction requirement the examiner says you know what yeah there are more than one inventions here and just like i said you’ll have to select one species one invention that you file and if there are any other inventions right a second set the second species that’s an opportunity to file a child pad so we’ll come to that later this green one this parent filing goes all the way through gets issued so at that point at any point before the parent gets issued okay any point before it gets actually granted you will have to file if you want to on the child patents and there are four kinds of child patent applications that may be filed all right and so let’s look at this first orange one if you wanted to file a design pattern right thinking of that that pen and before this green right this green arrow which represents the utility of that pen gets issued you want to file the orange dash which is the design patent application that will claim the priority back all the way to this date right and you’ll get that second patent application going in parallel before that one issues the second type of child path application you can do you just see this blue dashed line which is the child divisional remember this is when the examiner said we restricted you there are two separate species here you elected species one that’s what the green is there is the second species which we said was a different invention and now you’re going to go back and say yep we want to move forward with that other child that second species and move forward with now we have the third pending application let’s talk about this fourth one which is the cip okay and i mentioned if you wanted to add that spring to the top of this pen that would be this purple one where you’re actually going to get a priority date that starts here for what was added as new subject matter so it will be a little more challenging you’ll have to build it there’ll be more prior art you know there could be a year even two years that have gone by during prosecution and so some new things that may have come up maybe someone else since you filed this original that’s come up with a spring talk and so that’s no longer a new or novel claim and so you might get a rejection there it depends so it’s more challenging to do a cip so again if you didn’t add a spring top and you wouldn’t you kept it all within the same spec you could follow the red which would be just a straight regular continuation that would claim the priority back to when you had your provisional filing here so you could end up with five patents right this collection of five patents that make up the entire portfolio for just one invention okay so i covered a lot there and i will be providing that uh to anyone that wants it to be a pdf today so i’ll share that with you let me just stop sharing flavio you’re welcome

yep you went for the design patent first it is certainly a more economical way to go um yep nope absolutely for many articles i know you’ve got your swirl fork utensil that is a it’s a great way to go um if you want to just have an inexpensive way to get some patent rights covering the way something looks and especially if you’re not going to be changing the way that it looks um it can be you know sort of a an easy way to get in there and get some protection for a consumer product like that all right so we’re going to jump now to our questions i know there were two in the patent field that were coming through this week so let me share those with you guys all right let’s work on the patent application question coming out of bradenton florida

here we go okay and i’ll share this with you

okay so can i file a provisional patent application um if i improved the way a product is being used by i.e replacing the bottle that the product comes in i change the way the product is dispensed by changing the bottle that comes in absolutely i mean containers dispensers packaging all of that is patent eligible all right and it sounds like you know you have not modified or you know really even changed um the actual substance the real product whatever is inside that bottle you’re just changing the way that it’s dispensed so i would love to talk with you in more detail about what exactly you’ve come up with it could very well be that you’ve come up with a new type of dispenser that could be applied not just to this one type of product but in many many types of products that uh you know would have the same type of viscosity or similar type of you know need or niche so certainly it is eligible i would not recommend you just file a patent application i’ve talked a lot about this in in my blog article in on my live that you really ought to do your diligence and have a patentability search and get a legal opinion by a patent attorney on whether you should file or not okay it could very well be that the dispenser the mechanism you’ve come up with is actually not new you know it’s been come up with before or it’s really just an obvious version of some other type of dispenser that’s already on the market so i’d hate for you to waste your time and money filing a patent application getting far enough along to just get rejected by a very simple prior art by the examiner so do your homework i mean obviously you don’t need to blow a ton of money i would do some dilutions on your own i would begin with a google search um my book bold ideas discusses exactly how to go do your own google searching i’ve got a blog article as well so check that out at on how to do a really solid patent search on your own and of course if when when you’re ready to get serious you got to hire a patent firm like our firm to help you do that professionally and make sure that that is true that worldwide this dispenser really is unique so we can go in there and help you with developing a um an awesome application you know so you can get those rights protected thank you for that question all right let’s grab the second one here from avo

and this is in the patent litigation patent infringement category okay this is a little bit long

okay this is quite lengthy so i’ll just what i’ll do is i’ll put

just the first part of this question in there

okay all right so can a patent assignee not an inventor okay so for all those who may not know a patent assignee it’s just the owner okay and if they’re not the inventor it usually means that the inventor or mentors have assigned their rights to the assignee and a pretty classic scenarios where you’ve got an employee and an employer that requires their employees to assign or give up give all the rights to them sort of in exchange for their employment so can they sue can the owners sue for damages before they acquired the patent so okay interesting if they assign the patent in 2021 can they go backward so they’re saying the patent troll has recently contacted me which i assume they are the person asking this question is the inventor about my company’s use of some sketchy patents okay and then in there they actually listed the patent numbers i don’t have the time or right now in the show to go pull those up but i think it’s a great question

so okay patton writes as soon as they are granted you can get damages form all right in other words if there was an infringer if they were not put on notice call them an innocent infringer let’s say you get your patent rights granted january 1st 2021 someone or some company that is out there infringing right making using or selling the invention in the u.s let’s say um that was not put on notice of your invention and couldn’t and not reasonably known about it um they would only be liable beginning january 1st 2021 okay that is sort of that is the law now if they were put on notice either while your rights were pending and that can happen quite easily happens pretty often let’s say you were monitoring the market and you saw them actually begin to infringe your product even after you told them hey look i’ve got prospective rights on this our patent will be granted on january 1st please stop you know you know this is your notice if they willfully infringe if they sort of ignored that and said now forget you know forget about you or i’m betting against you i don’t think you’re gonna get a patent granted you can actually seek retroactive damages back to the point of when they had actual or even constructive notice and that could be right back to 2020 right early in early 2020 even 2019 depending on how long ago you put them on notice of your of your prospective rights okay so that’s the ownership that’s the actual damages um it is odd for a patent troll or anyone involved in litigation to be approaching you as the inventor especially if it’s clear by the record that the inventor has fully assigned given up your rights to the company they should only be speaking with the assignee and the owner all right so hopefully to answer your question i know there was more to that really interesting and fascinating detail there again if you have more more information you like us to talk about in confidence please do get a hold of me specifically i’ve got my email address listed here i’ll put that and then a text only phone number too flabby outside your question let me see what you got uh

what is trademarked the words bold patents fonts and colors yeah absolutely great questions so we have um at our firm our company name is actually bold ip and that was the first framework we got up here bolt ip uh covers legal services right so and i had to actually disclaim uh the letters ip it would stand for intellectual property so the word bold really is ours our firms for any any type of legal services uh bold patents you can see uh behind me uh this is a sort of a sub brand we were starting to explore this idea of having specific niches in each area of ip uh right now and for for the foreseeable future we are focused on bolton patents okay patent law is really our passion all of our attorneys at the firm are patent attorneys um we have one contractor who is a patent agent and another contractor who is a trademark specialist but aside from that our mission is really to help inventors and so i really like been you know focused rather you know and excited to be bold patents because we want to make sure our inventors know that this is our specialty this is our focus we’re here for all of you inventors with trademark law as you may know there’s a lot of common law and so any anytime you begin using a word or a term a logo right the colors in our our actual logo um you get that soon as you start using that and in the stream of commerce you get rights attached to that common law rights and privileges so you can then file with the trademark office and say i’ve been using this since way back when when you first started using it and get rights that go back that far so it’s pretty neat the way the law is set up patent is not the same right padlock it requires you to file uh the american events act changed that big time in 2013. so it’s been a long time since that law issued but people are still not quite clear about it so you need to make sure you file your inventions um you can’t come forward later and say oh i invented this first here’s my notebook signed and notarized that’s not going to do it it’s the impetus is to file with the patent office that is what’s required so get with us let’s do some diligence research get your invention going and help make that bold move here in 2021 well thank you all for tuning in i’m going to wrap up the broadcast today i am here next week as well wednesday at 9 a.m pacific noon on the east coast thank you all for those likes and live viewers have a good rest of your day take care 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