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By J.D. Houvener
Patent Attorney and Founder

Hey everybody, I am J.D. Houvener, the host of The Bold Today Show. You’ve made it! I am the managing partner and owner here at Bold Patton’s Law Firm. We’re going to be talking about a lot of things patent-related, opening up the whole thing to live questions and answers today, and every week. We’re here every Wednesday at 9 a.m. Pacific and noon on the East Coast, prioritizing live questions. I do have an agenda for today; we’ll be covering 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. 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, know that this is not an attorney-client relationship; it’s a public forum. So, please hold off on sharing any confidential information about your invention. 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 answers 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 at the very end of the show, I will be addressing two separate questions today that came in from our alvo.com community. So, I’m looking forward to sharing those answers with you as well. Thanks for the likes and the looks like a hug too; that’s awesome. I appreciate that.

Alright, so let’s put the agenda up for today. 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. 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 agenda here.

Okay, so that’s kind of the order of operations. 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, “Bold 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 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.

If you get further far enough along, I would love to offer you opportunities to take a look at the 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, 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. 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 sophisticated-level discussion. So, let me share my screen with you, and we’ll get started.

Alright, here it is, and it may not be full screen for you, but this is the 2021 patent portfolio guide by myself, JD Hoovener. So, this first page here is, you know, what is a patent portfolio? It’s a great place to start. It really is a fancy term that means more than one patent. So, if you are a patent portfolio holder, you might just have two patents around your technology or your invention. Now, certainly, a portfolio could include more than one invention, 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; it doesn’t have to be multiple inventions; it just has to be more than one patent that protects the same invention. 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 it like a pen or pencil. It has, of course, utility, right? You can click the pen; you can see that it’s got a nice round tip to it; it’s lightweight; 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 necessarily 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 angle around where 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 the base of the pen. 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. So, that first invention that you probably protected, let’s keep the pen example going.

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 shapes, 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. A child patent application is any application, right, any additional patent application that claims the priority. 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 priority date.

And so you file that utility patent 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, you know, you could actually include a spring on the top right to allow more flexibility for when it gets goes into the pocket, right, just like that, you know, maybe this is the early days of the, you know, World War II or whatever was going on at that time, and they needed to have us 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. Alright, so let’s go to a different, 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 a two-for-one deal. So, they may say, now 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. 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 specific structures and elements that will be able to cover the breadth of what’s being claimed. If it’s going to require two separate searches, they’ll likely restrict it and say, you know, inventory; you must choose which invention you want to move forward with. Typically, you work with the attorney and decide on which species to choose, and you kind of set aside 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 were 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; 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, where 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 in prosecution. When the examiner is looking at your claims, oftentimes there’ll be some prior art, some previous publications, previous patent applications, or actually granted patents that are on the same subject. You’ll need to, either through legal argument or through amendments, make changes to the claims. So what you can do is, 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 patent 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. 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 a 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 let’s first focus on the green arrow. Okay, this bright green arrow that is what we’re calling the parent patent application. Now, before the parent actually gets filed, you’ll see that we have this first one, which is the provisional, okay? This is the provisional or non-provisional priority date. There’s the first time the invention has been filed. 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 patent. 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, 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 patent, right, thinking of 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. 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. 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. Again, if you didn’t add a spring top and 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 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. Nope, absolutely, for many articles. I know you’ve got your swirl fork utensil; that is a great way to go. 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, it can be sort of 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 avo.com 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 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 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 would have the same type of viscosity or similar type of 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 my blog article and 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 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. 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 boldip.com on how to do a really solid patent search on your own. And of course, if, 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 an awesome application 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. And if they’re not the inventor, it usually means that the inventor or inventors have assigned their rights to the assignee, and a pretty classic scenario is 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. 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, patent rights as soon as they are granted, you can get damages for them. 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, that was not put on notice of your invention and couldn’t, and not reasonably known about it, they would only be liable beginning January 1st, 2021. That is sort of 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, this is your notice. If they willfully infringe, if they sort of ignored that and said, “Now forget about you,” or, “I’m betting against you. I don’t think you’re going to 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 2020, even 2019, depending on how long ago you put them on notice of your prospective rights. Okay, so that’s the ownership, that’s the actual damages.

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 information you’d 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.

What is trademarked? The words ‘bold patents,’ fonts, and colors. Yeah, absolutely great questions. So, at our firm, our company name is actually Bold IP, and that was the first framework we got up here. Bold IP covers legal services, right? And I had to actually disclaim the letters IP; it would stand for intellectual property. So the word ‘bold’ really is ours, our firm’s, for any type of legal services. Bold Patents, you can see behind me, this is a sort of a sub-brand we were starting to explore this idea of having specific niches in each area of IP. Right now, and for the foreseeable future, we are focused on Bold Patents. Okay, patent law is really our passion. All of our attorneys at the firm are patent attorneys. 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. So, I really like being focused 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 time you begin using a word or a term, a logo, right, the colors in our actual logo, you get that as soon as you start using that 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; patent law requires you to file. The America Invents 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. 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. 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 https://boldip.com/contact/