Patent Attorney and Founder
Hey everybody welcome to the bold today show uh i’m jd hooven your host uh and owner here at bold patton’s law firm i am a patent attorney and i’m happy to answer any process level questions hypotheticals related to patent law and i welcome all of you entrepreneurs business owners or inventors right curious about what it takes to uh move from a idea to an invention to getting a patent granted and the whole process that leads into that so i’m excited to share uh some answers here to some questions i’ve gotten over this week from our avlvo.com community and i welcome any and all live questions of course as we get into this program i do want to make sure to put a legal notice out that
while this is a while i am an attorney i’m not going to be able to give you legal advice in this session be in the public nature and all so please do not share confidential subject matter uh no of course this is not a legal consultation there’s no attorney client privilege over the discussion uh the ukulele is gonna stay up there today sorry for those of you who are ukulele fans i did have that last week um so aside from legal notice i’m just gonna jump right in to these questions i know last week we looked at the some new school uh school-related inventions and a lot of people have children going back to school um ours went back uh just yesterday um our little first grader in kindergarten are so cute um so anyway if they if they missed that session you 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 avo 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 uh 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
okay and this is a this is a classic
okay so the question is what can change between a provisional patent application and a full pack if someone has filed a provisional patent location what are they allowed to change before following 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 you’re welcome um let me just get into this so what i want to show first is uh is this flow chart and i did take a peek at this question before so i was able to prepare this um this flowchart i like to share a lot of new with new clients all right so this uh this is the app 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 filing the provisional and when the they call it the fold which is also called the final or the non-provisional formal application must be submitted within a year okay so 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 you know confirm for yourself that it works the way you thought it would and you’re right and the person asking the question is sometimes things change you know you make a few you do some customer testing and feedback and you find that there are quite 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 file so how much can it change is the key question so let’s let’s jump back here at our question um so what i will say is that the key here is you cannot add new matter okay new subject matter i know it’s kind of a broad term but what that means is you know you can’t um broaden okay you’ve filed the provisional that really is the the bounce right the the limits on what exactly is your invention um but what you can do is you can add details and color in a way right so if you found out that let’s say your invention is a is a new type of a swiss army knife okay um and you talked about all the different features of the knife um you’ve got a blade you’ve got a screwdriver you’ve got a corkscrew opener um and maybe you’ve got this sort of a saw blade right um you know let’s say over the course of that year or maybe even a few months you find that well for the knife you actually needed to have a a half serrated and then a half full blade on one of the blades or you wanted to include in the saw blade you know more teeth you know you needed to have actually a higher frequency of teeth and they had to be sharper than you originally identified in the provisional those sort of 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 you have the actual knife be you know double as a as a parachute or somehow pop open and be a flare and nothing was discussed in the provisional about a flare gun or about you know having a um 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 be not allowed right you wouldn’t be able to add that to the non-provisional and still be able to claim the priority of the provisional so i know there’s a lot of a lot of details there but such a good question i wanted to make sure we spend time on it um hey all the opportunity three live viewers out there just in case you missed the note uh if you have any live questions please put them in the comments below don’t be shy here no questions too easy or too simple i love getting questions uh from first-time inventors uh entrepreneurs people curious about the patent process um and uh what i will do is i put a link in here about five minutes from now about how you 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 all right so let’s jump to the next question here and uh this is from our avo.com community the second one is here of la 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 uh 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 cool this is nice uh this is gonna put me to the test a little bit um so i do believe there is a search engine and i’m gonna fumble through this um but i 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 um
information about application patent so i have a quick i’ll put this url in the uh
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 you know information so you see there’s lots of different fields let’s take a look and see what it’s called um
attorney attorney or agent right there l rep so they’ve got a field code i’m pretty sure you’ve got to type in
uh lrep
slash unless this let’s just put in my name l rep hovener
okay so you can see that i am named as an attorney of record my last name h-o-u-v-e-n-e-r
on 41 patents some design patents you can see in 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’s 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 uh let’s go back to avo
and go to corona california this is just asked one day ago and it’s kind of lengthy question
let’s do this okay
okay
again a lot of these questions are gonna 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 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 the two there are two hypothetical patent implications both having the same primary claim but one includes a secondary okay uh there’s a second part of this question
and they give some cool hypotheticals here so let’s let’s go through this um with this to load in here okay so here’s the hypothetical so 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 a person b be issued a patent for the secondary claim
automatically
or would they need to have a file to separate application for the powder coating okay good question um so i think the way the best way to answer this is to say okay so person b where they are um improving they’re improving the bulb that person a invented improvement patents get issued all the time okay and they can be subtle and in this example here we’re adding a powder coating right to the outer part of the of the glass the important question is going to be is the addition of that powder coat is that 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 um that’s that’s the question is is that claim what they’re claiming is that the first of its kind ever in the world based on all publications all known known information um so meaning if 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 uh 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 um allowed a lot okay so i hope that answers your question um you’ve got to be able to just 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 to the trademark registry this is kind of a administrative question not necessarily legal i would say um
i i would guess not very cleanly not very cleanly i think usually you have to have one named applicant okay and um one of the best ways to handle this and even good advice in general in terms of having multiple people certainly siblings um just thinking of all the family debates and issues that can come up um when you’re emotionally vested in a company and a brand you ought to have a business okay a simple you know partnership an llc or a corporation will do fine and having a a document a corporate governing document shareholders agreement operating agreement you know 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 uh 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 you know entity that is the applicant and owner of the mark and yet you’ve got five owners that way they can potentially squabble you know get into our you know negotiations and have disagreements about what to do but it’s one company and they can move and have make a great decision um as as one in a way as opposed to having five different owners uh of a mark so that’s kind of my long-winded way to say um i’m not 100 sure but what i would recommend doing is forming a company and having it be the apple can’t be the business especially if you’ve got five potential owners of a other 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 scale 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 um so this is uh 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 sort of some of the threshold questions to consider if you are um making art and it’s you’re doing it on your own okay um using your own intellect creativity um and you’re you know making a shape uh you know from your own memory and your own thoughts there is basically no way that you’re going to be infringing okay 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 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 in to create a map i was showing point to destination relationships destinations you know mileage posts so all of that that now gets to the point to 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 um toward infringement right we’re using someone else’s work for commercial game 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 um 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 um contact information and before i forget i want to put down a um 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 iep or 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 free it’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 um yeah and if you’re watching this after the fact and you want to join us live i am uh i put the show on every wednesday at 9am 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 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 them with small uh women-owned business
all right
very good 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 turmeric is all about um 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 uh 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 um you know wooden wooden rock okay wooden rock for wooden instruments um no one else can be able to use that name uh wooden rock instruments for instruments but of course they could use the term for wooden rock if they have a rock climbing guide service okay 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 trimmer registration for wooden rock and you can get get that done you know 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 um you know 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 on the internet so for url domain names um if people are just squatting on the name you know or if they’re not um or if they’re infringing on your trademark trademark rights will in a way trump and over 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 jd hoover 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 bowl