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By J.D. Houvener
Patent Attorney and Founder

Hey, everybody! Welcome to the Bold Today Show. I’m J.D. Houvener, your host and owner here at Bold Patton’s Law Firm. I am a patent attorney, and I’m happy to answer any process-level questions or hypotheticals related to patent law. I welcome all of you entrepreneurs, business owners, or inventors curious about what it takes to move from an idea to an invention to getting a patent granted and the whole process that leads into that. So, I’m excited to share some answers to questions I’ve received over this week from our Avvo.com community, and I welcome any live questions.

Of course, as we get into this program, I do want to make sure to put a legal notice out that, while I am an attorney, I’m not going to be able to give you legal advice in this session due to its public nature. So please do not share confidential subject matter. This is not a legal consultation, and there’s no attorney-client privilege over the discussion.

The ukulele is gonna stay up there today, sorry for those of you who are ukulele fans. I did have that last week. Aside from the legal notice, I’m just gonna jump right into these questions. I know last week we looked at some new school-related inventions, and a lot of people have children going back to school. Ours went back just yesterday. Our little first grader and kindergartener are so cute. So anyway, if they missed that session, you can go back to our Facebook page or YouTube or our LinkedIn to watch those innovations.

Today, we’re going to look at three patent questions that have come in from Avvo, and then we’ll look at four trademark questions if we have time. But if you have any burning questions and you’re watching live, I will prioritize them, so please put those comments in and write in the comments.

So, this first question is out of Seattle, and I’ll copy and paste it in here so you guys can see it.

Question: What can change between a provisional patent application and a full patent? If someone has filed a provisional patent application, what are they allowed to change before filing the full patent? Are there things that can be totally changed or things that shouldn’t be touched at all? How does this process work? Thank you.

Answer: Let me just get into this. What I want to show first is this flow chart, and I did take a peek at this question before, so I was able to prepare this. This flowchart I like to share a lot with new clients. This is the application process, and where they’re at, this question is, they just filed their provisional patent application. This is step B, so hopefully, they did step A, of course, which is doing a patent search to make sure that they know what they’re getting into before they file. That being said, they did already file. Another wondering, they’ve got this time period here between ending the provisional and when the formal application must be submitted within a year. The full year, a nice chunk of time to test your invention, discuss with third parties, take it around perhaps to investors to see if what you’ve got is really real, see if the market is demanding what you’ve built, and maybe to confirm for yourself that it works the way you thought it would.

You’re right, and the person asking the question is sometimes things change. You make a few modifications or improvements and changes that should be made to your product, and you want to try to get those into the claims, right into the subject matter of your invention as filed. So how much can it change is the key question. So, let’s jump back here at our question.

What I will say is that the key here is you cannot add new matter. New subject matter, I know it’s kind of a broad term, but what that means is you can’t broaden. You’ve filed the provisional, that really is the bounce, the limits on what exactly is your invention. But what you can do is you can add details and color in a way. So if you found out that, let’s say, your invention is a new type of a Swiss army knife, and you talked about all the different features of the knife, you’ve got a blade, a screwdriver, a corkscrew opener, and maybe you’ve got this sort of a saw blade. Let’s say over the course of that year, or maybe even a few months, you find that for the knife, you actually needed to have a half-serrated and then a half-full blade on one of the blades, or you wanted to include in the saw blade more teeth. You needed to have a higher frequency of teeth, and they had to be sharper than you originally identified in the provisional. Those details would be fair, totally fine to add into the non-provisional.

But let’s say you wanted to now add a flashlight or have the actual knife be double as a parachute or somehow pop open and be a flare. And nothing was discussed in the provisional about a flare gun or about having the ability to have scissors or any other types of gadgets. So if they’re functionally different, that’s new subject matter, and that would not be allowed. You wouldn’t be able to add that to the non-provisional and still be able to claim the priority of the provisional. I know there’s a lot of details there, but such a good question. I wanted to make sure we spend time on it.

Hey, all the opportunity three live viewers out there, just in case you missed the note, if you have any live questions, please put them in the comments below. Don’t be shy here. No question’s too easy or too simple. I love getting questions from first-time inventors, entrepreneurs, people curious about the patent process. What I will do is I put a link in here about five minutes from now about how you can schedule a free 15-minute information session with one of our advisors to see if now is the right time for your invention to move forward if you want to start protecting it.

So let’s jump to the next question here, and this is from our Avvo.com community. The second one is here from Los Angeles, California.

I’ll put this in the comments here for you guys to see.

I will be prioritizing those live questions, so please keep those coming in. Hi there. I wonder where I can search the patent by attorney name. I want to see some previous work of the attorney that I want to work with. I tried the Google patent search, but it’s only based on inventors, not the attorney name. That would be a great help if you could name a website I can search by attorney name and find their previous patents that they filed. Thanks a lot.

This is nice. This is gonna put me to the test a little bit. So I do believe there is a search engine, and I’m gonna fumble through this, but hopefully, you’ll appreciate this a little bit. I’ll share my screen, and we’ll look at it together. I will try not to take too long, so if I can go try to find out information about application patent, so I have a quick I’ll put this URL in the link here so you guys have it.

Okay, so that is the search tool I use if I want to get some really detailed information. So you see there are lots of different fields. Let’s take a look and see what it’s called.

Search Tool: [Link to the search tool]

Search Query: Attorney or Agent: LREP Search by last name: LREP Houveneer

Okay, so you can see that I am named as an attorney of record. My last name is H-o-u-v-e-n-e-r, on 41 patents, some design patents, and some utility patents. Now, of course, our firm has filed more than 41. We’ve got a lot of attorneys, but yeah, that’s a good way to do it just by last name and LREP, and you can do that. Another cool tool you can find within the Google Patent Search is the advanced patent search, and you can find out if you have the name of the inventor or the owner or the priority date. You can search that too, so I’ll put Google Advanced Patent Search. There are some pretty cool filters you can put in there, okay.

Good for you for doing some research on your attorney before you jump in. I think that’s a good call. All right, let’s do two. Let’s go back to Avo and go to Corona, California. This was just asked one day ago, and it’s kind of a lengthy question.

Let’s do this, okay.

Okay.

Again, a lot of these questions are going to put me to the test. Are multiple claims in a patent application considered independent, or are the variations of the primary claim? Are multiple claims in a patent publication provisional or non-provisional considered individual independent claims? Are they considered variations of the primary claim, and if so, would they be rejected if the primary claim is rejected? For example, are there two hypothetical patent implications, both having the same primary claim but one includes a secondary? Okay, there’s a second part of this question.

And they give some cool hypotheticals here, so let’s go through this with this to load in here. Okay, so here’s the hypothetical: Person A files a patent for the light bulb. The primary and only claim is for a glass bulb cap wires and lighting element. Person B files a patent for the light bulb. The primary claim is for a glass bulb cap wires and lighting element. The secondary claim is for a powder coating on the inside of the bulb to soften the light. Okay, Person A files first and is the word of the patent, and B’s primary claim is rejected. Would Person B be issued a patent for the secondary claim automatically, or would they need to file a separate application for the powder coating? Okay, good question. So I think the best way to answer this is to say, okay, so Person B, where they are improving, they’re improving the bulb that Person A invented. Improvement patents get issued all the time, okay, and they can be subtle. In this example here, we’re adding a powder coating right to the outer part of the glass. The important question is going to be, is the addition of that powder coat novel, non-obvious, and does it have utility? Okay, those are still the same questions, and if they’re claiming either on an independent or a dependent claim, that’s the question: Is that claim what they’re claiming the first of its kind ever in the world based on all publications, all known information? Meaning, if, in the invention of Inventor A, Person A, if they mentioned that the glass could be covered in powder coat at all in that application in the spec, even though they never claimed it, that would still be enough evidence that the examiner would reject Person B’s invention because it’s not new, it’s already been discussed and published. But let’s just say, for curiosity’s sake, that this powder coating has never been heard of before, it’s brand new, it’s novel, and it’s not an obvious version. Right, whatever they’ve currently been coding the glass with today, powder coat is not an obvious choice, it’s not something that is a natural selection. If that’s true, then yes, Person B’s invention, like I said, whether it’s an independent or a dependent claim, it will get allowed a lot. Okay, so I hope that answers your question. You’ve got to be able to show the examiner that it’s novel, non-obvious, and has utility above and beyond the current publications. All right, so we’ve got a couple more trademark questions, and I didn’t see any live questions come in yet, so we’ll just keep on cruising through.

All right, trademark applications, lots of turmeric questions. Four came through. Let’s answer this one from Kansas City.

All right, can more than one person own a trademark? If five siblings develop a trademark, can all five be listed as owners on the application to the trademark registry? This is kind of an administrative question, not necessarily legal, I would say. I would guess not very cleanly. I think usually you have to have one named applicant. One of the best ways to handle this, and even good advice in general, in terms of having multiple people, certainly siblings. Just thinking of all the family debates and issues that can come up, when you’re emotionally vested in a company and a brand, you ought to have a business. A simple partnership, an LLC, or a corporation will do fine. Having a document, a corporate governing document, shareholders agreement, operating agreement, co-founder agreement, to where all owners, right, of that company, assuming the five siblings would want to be co-owners, they have various responsibilities, obligations, investments. And then what’s great is that you can actually have the trademark with the registration assigned to the company so that it’s one entity that is the applicant and owner of the mark, and yet you’ve got five owners. That way, they can potentially squabble, get into negotiations, and have disagreements about what to do, but it’s one company and they can make a great decision as one, as opposed to having five different owners of another brand. All right, let’s go to our second trademark question.

This is out of Buffalo, New York. It’s about handmade goods.

Okay, so can I make handmade goods or crafts depicting my home state and local landmarks legally without infringing state property law? I make crafted decor and goods like key holders and wood plaques with original artwork on them. I’d like to know if I can make the shape of my home state, you know, the actual geographical state, or other states with locations like major cities or local towns, landmarks or skylines, safely for sale at craft fairs without risking any legal issues via state government or risk text, excuse me.

Yeah, sorry about that, legal issues via state government, or being or risk being taxed for use of it without acquiring a license from the government. So this is actually more of a copyright question, and it’s a little bit out of my wheelhouse, but what I will say is, when you’re, you know, some of the threshold questions to consider, if you are making art and it’s, you’re doing it on your own, okay, using your own intellect, creativity, and you’re, you know, making a shape, you know, from your own memory and your own thoughts, there is basically no way that you’re going to be infringing. But if you’re using, you know, images using others’ creative works as the basis of what you’re creating, that’s when things can get tricky. And I mean, artists build on each other all the time, and so there’s ways to go about this. So if you’re looking at, I mean, if you just Google, you know, a state map right in the state of Washington, let’s say, you know, there’s a geographic shape. And I think, for the most part, the actual shape of the state, it’s not artistic. I can’t think of any reason or rationale for an individual or a company or government to claim the ownership of the shape of the state. So if that’s really all you’re going for, I think it’s extraordinarily low risk. It’s not zero risk of reproducing the actual shape of the geographic state. Now where things can get tricky is where there are reproductions where people, individuals or companies, have put forth effort to create maps. I mean, maps are very valuable, and maps can be simple, right, where they’ve just got simple cities highlighted, where they got shapes or icons or details on roads and rivers. But that’s actually someone putting effort into creating a map. I was showing a point-to-destination relationships, destinations, you know, mileage posts. So all of that that now gets to the point where there’s an individual or company that owns that right to that creation. Like they put forth effort to create that map. So for using someone else’s map, someone else’s icons, colors, pictures, designs, and you’re using that for your own business, your own commercial benefit, that’s where things can get toward infringement. Right, we’re using someone else’s work for commercial gain. There certainly are rules about fair use. I think you’ll be asking about this, but I wanted like to mention that if, of course, you want to try to use that for non-commercial benefits, let’s say in the classroom if you’re a teacher or using it perhaps for non-profit use, there are ways to avoid infringement, but it is a sort of special case. So if you want to ask more questions, feel free to get a hold of me. If you have any more specific about what exactly you’ve created, copyright generally is going to require an analysis into what exactly you’ve done for me to provide viable detailed information. So that’s my contact information. And before I forget, I want to put down a way for any of you to book a free screening session to see if you want to have a discussion with one of our attorneys to try to protect some of your intellectual your inventions, trademarks, or creative works. So there’s the link right there to schedule, and it’s a calendar link so you can plug that in. Excuse me, copy that link and get booked today. And so there’s a no fee meeting to get done today. I’ve got time for one more question, and again, I don’t see any live quests, but if you have any, I will still do that one as well. All right, let’s go to one more question about trademarks. This was out of New York asked just last night. So pretty fresh question here.

And I’ll put that in the comments as well.

Thanks for that, like I appreciate it. Yeah, and if you’re watching this after the fact and you want to join us live, I am I put the show on every Wednesday at 9 am on the west coast and noon on the east coast. Okay, let’s take a look at this one. So a trademark name was taken with a similar name in the same area of business. I started my LLC, this is a business company, a limited liability company, in 2015 but postponed the trademark until I got the company fully up. After researching the turmeric website for my name, I recently saw two very similar companies use my name with a slightly different spelling. Would I still be able to register mine and can I have the option for any legal action to these other companies, even though they trade more but I established before they did? Please help, I’m a small, women-owned business.

All right.

Very good, thank you. Okay, cool. So let’s see if I can follow that a little bit more. It looks like there is some concern about using the name.

So if so trademark, okay, trademark is all about using a name, a word, or a logo or design to signify to customers that you want that to represent your goods or services. And so if you’re using that mark, if you’ve used it in any way in commerce, meaning you’ve actually sold goods or you’ve sold services using that mark, that is sort of your first use date. Okay, that is the priority date when you say you first used it and you could argue that from that date forward, assuming you’ve had continuous use of that mark, no one else can use that more if they came after you for the same class of goods or services, right? So you’re selling ukuleles and, you know, musical instruments well and using the name, you know, wooden rock. Okay, wooden rock for wooden instruments. No one else can be able to use that name, wooden rock instruments for instruments, but of course, they could use the term for wooden rock if they have a rock climbing guide service. It would be a different class or different use. So if you so something you’re saying you’ve started your company and you rolled it out maybe a couple years later, let’s just stick with the wooden rock name, uh, so you started selling, you know, instruments in 2017 or 2018 or so and then recently 2020 you’ve seen, you know, Rocky Wood, you know, instruments pop up or do you seen you know similar misspellings or sound alikes where they seem to be copycatting what you’ve done absolutely. So one I would recommend getting a trademark registration for wooden rock and you can get that done as soon as possible. Obviously, you can use our firm to help you with that. Once you get the registration, you’ve got a lot of power. Now you have the ability to then cease and desist, send those letters out to companies that are using your name or a similar name without your permission. You could also then potentially seek to give them a license to be able to use that name and you just get a simple lump sum or a royalty for every time that they use it. There’s lots of different options. But as long as you are really the first one to use the name you’re, you’re scot-free and there are a lot of mechanisms to enforce your rights on the internet. So for URL domain names, if people are just squatting on the name, you know, or if they’re not or if they’re infringing on your trademark rights will in a way trump and overrule any type of ownership of a website because that is commercial use and if they’re selling to the US they’re not able to do that and so you may be able to reclaim ownership through the domain registrar. So a lot of interesting and cool rules that are going to be helpful for you if you go down the path of seeking turmeric registration. All right, guys, so that’s the end of our program.

Thank you for tuning in. I’m J.D. Houvener patent attorney owner here at Bold Patent Law Firm. I’ll be here with you next week Wednesday so if you miss us live please join us and give us a like and share this with your community on social we’ll get this to be more lively interactive group. Thanks a lot everybody have a good rest your day 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/