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By J.D. Houvener
Patent Attorney and Founder

Hey everyone good morning my name is jd hoovener and you’ve made it to the bold today show i’m the ceo and owner here at bull patins law firm and i’m here every wednesday uh 9 a.m on the west coast and noon on the east coast so bring all those questions for you inventors entrepreneurs business owners are those just curious about what patent law is all about um as a patent attorney i’m here to answer those questions but just so you know do not raise any confidential questions please keep those to yourself for now if you want to bring them up to me confidentially i encourage you to do that what i’ll do is i’ll put my information down a little later in the show and you can send an email directly to me of course you can also schedule time with our advisor to see if right now is the time for you to get started i know a lot of the inventors are out there kind of worried about whether it’s the right time if patenting is right for you and so what i’ll do is i’ll put that link in for you to make and take action today so there’s that link right there it’s a calendly link where you can schedule time uh free schedule appointments with one of our advisors or non-attorneys to see if uh at this time if you’re if you’ve got what it takes if you’re far enough along in the development to uh to move your pa your invention forward and ready to speak with the patent attorney all right so today um i was really hoping to talk about market ready designs and i had a wonderful guest lined up for you unfortunately he felt ill just yesterday and so we’re going to miss him today so we’ll bring him on the show in a later segment um well the future week in other words we’re all we’ll be able to talk about market ready designs at that time for now i’m happy to field any questions about patents with respect to designs and i’ll also include a link to a blog article that i wrote just a year and a half ago on design and design patents and drawings but i can’t of course speak specifically to uh what it’s like working with inventors on the design side um at this moment because i want to make sure we give that airtime to our guest so all that said uh let me do this and i’ll jump into our questions i’ve got a couple questions that have come in this week and so we can jump to those right now as we wait for our live audience to join

looks like we have two in trademark and one in patents so this first question is coming out of cedar rapids iowa okay so i’m going to pull this question up and i can share this with you all right from the screen okay

hey jody nice nice to see you thanks for joining all right so this question is i’ll pull it up here too so you can see it

all right a highly complex patent likely to get a restriction requirement filing in the usn pct in august how does pvt work with restrictions our current patent draft is about to be filed with the u.s patent trademark office however it has four different unique ideas that are unrelated so it’s got four distinctly patentable inventions it will likely be asked to be split up we’re filing both us and pct soon and i have no idea how pt restriction requirements work extra fees or will i be asked to file additional pct’s also our current lawyer kept all of my

office actions uh which i don’t mind here see which i don’t mind our whole strategy is to spread the cost of several patents over a large period of time um as a mike rennie this is vital cool well i like this it’s a good question it’s fairly uh specific so for those who may not know what uh a restriction requirement is let me just give you a little bit of context so when you file uh in the u.s that’s of course where my bill to speak most knowledgeably where you file a non-provisional patent application which is the formal utility app where you try to protect the functionality of an invention the patent office will assign an examiner okay and as soon as they do which can take up to six months right so it takes quite a bit of time to find the right examiner for your specific invention uh the first thing they will do is make sure that hey you’re only submitting one invention per patent application they don’t want to be on the hook to do four searches okay four times the amount of searching if they’re only getting paid for one you know set of one actual pad so you only allowed one invention per patent uh and so that’s their job initially is say okay how many inventions do we have here and this the person asking the question is smart enough to know that they probably have four you know distinct inventions and they decided to file them all into one claim set okay what it stuck it all into one patent application so what a restriction requirement is this is the examiner’s saying i only have time to look at one and you’ve got to pick one okay these are the four right claims one through three uh our invention one claims four through seven is invention two claims eight through 15 invention 3 and then claim 16 through 20 is the last invention before tell me which one you want to move forward with okay we’re going to restrict the patent application and so you might elect okay let’s go with invention one claims one through three and so claims four through twenty will be restricted okay sort of put off to the side and you have the ability to then file later what are called um uh divisional divisional applications where you actually have a brand new in parallel patent application uh for up to three more inventions so you could in theory have four uh pending applications before the patent office which you’ve got to pay those fees okay and you’ve got a bill the examiner is going to want to get that allotment of time to do their search and examination for each of those inventions okay so that’s kind of the background on what restriction requirement is with respect to the pct okay patent cooperation treaty filing okay all that that what that does okay it does quite a bit but one of the major benefits that it provides is it allows more time okay so you file in the u.s that say january 1st 2021 you must file in foreign countries by january 1st 2022 it’s one year okay and if you don’t know which country you want to file into this could be pretty stressful and so the pct does is it says okay you must file the pct which is a treaty that over 150 countries are part of they have all agreed that okay we’re going to acknowledge the one search that’s done by the u.s examiner and we’re also going to allow additional time for that us-based inventor to decide which countries they want to file into so it buys you in a whole year and a half on top of that one year so it’s a two and a half years 30-month period where you get to now decide okay which countries do you want to file into um so it’s really a placeholder okay there’s no examination that happens through the pct itself the pct is just a vehicle that you can then file into the foreign countries with okay let’s see buys you the ticket to be able to have more time and have saved them money in those foreign countries let’s say in the uk or in australia or korea those examiners in those different countries will all be obligated to use the search result that the eos examiner acting on behalf of the whole world under the pct performed and i’m throwing a lot of information at you but it was a detailed question so i think you wanted a detailed answer so the further question is well okay how does how do these you know restricted four separate inventions apply or how does that work with respect to the pct we’ll have to file multiple pcts and the answer is yes yes you do the patent cooperation treaty you have one filing okay the patent pcp effort will only give you that priority back to the one um application okay so if you want to then seek international protection for those three other inventions if you follow those separately through other divisional applications yes you will have to file separate pct or foreign filings the beauty is though that you probably should hold off right if you haven’t finished prosecution with the examiner in the u.s first you should probably wait because you have time to see how things go on that first invention uh and if things go well great i think proceed right to the second divisional and then also look to file but it could be that you get all the way through prosecution um before the 18 months is up and so you’ll be very wise to know which how many pcts to file to get the best bang for the buck okay long-winded answer thank you for hanging in there bendy nice to see you thanks for hanging in um so if you’re new to the channel or you’re just joining me for the first time i’m jd hooven i’m a patent attorney and owner here at bolt patins law firm and i’m happily uh to answer any live questions you’ve got i will prioritize those uh over anyone else it’s like flavio you’ve got a question you bet yeah you’re welcome yeah we’re going live when someone buys your patents do they officially become the inventor no no sir great question you know the difference between inventorship and ownership is something we have to explain and we’re happy to do um you know inventing you have to be the inventor okay you have to be the one that has the idea that conceives of that uh solution okay that will not change you know even for inventors that are in big huge companies let’s say microsoft or amazon they must be named by you know first and last name even if you know of course mother mike microsoft or mother amazon is going to own that right because as an employee usually you’re obligated to assign meaning transfer the ownership of the invention to your employer they’ll be listed as the assignee but the inventors will always be there okay and and there are certain rights that come with that but usually like i said an employee employer situation those rights will be assigned and there will be a separate recording of that assignment in the patent recording database so uh nope inventorship stays the same while ownership can certainly change hands quite a bit okay so let’s jump to a second we had a second and third question on avo that was the only one we had on patents but it was a really good one on the implications of pct and divisional us applications so onto trademarks i know we’re bold patents here but we do certainly help inventors and entrepreneurs that want to start and grow a business i’ll help educate them about trademarks and we do help research and apply for trademarks at the federal level too so here’s a trademark question i’ll bring this over to the board

okay i’m wondering if i can create a trademark for my cryptocurrency mercury currency but there’s already a cryptocurrency mercury cash that is registered um question mark so let’s assume that there is a mercury cash out there that is already registered at the federal register at the uspto

and they are in the cryptocurrency i think it is uh extremely high likelihood that if you were to apply for mercury currency uh that you’ll get a rejection just based on the fact that it’s not distinct over and over of mercury and also that’s confusingly similar to mercury cash so um yeah i mean even though you’re changing the word currency versus cash i think those names are synonymous uh and even actually descriptive of cryptocurrency right uh currency being a part of cryptocurrency that’s like you know in terms of you know more perhaps a more tangible example let’s say you’re selling hamburgers um you know mercury burgers okay the mercury part is what’s distinctive right that’s not necessarily having anything to do with a hamburger right what you’re selling but burgers is of course and so you’ll likely have to disclaim you won’t be able to get you’d be the only one that can call yourself burgers if you’re selling hamburgers because it’s just describing what the products are merely descriptive and so the term mercury is the only part that’s truly distinctive about your mark and so that is likely um i mean very likely to be a a point of contention where the trademark examiner will say sorry uh this is already taken okay now there’s not necessarily the end of the road for you you may be able to work with mercury cache to get a license maybe be able to use that mark and perhaps there’s sort of sub niches or sub industries within cryptocurrency um i don’t know for example if they’re if they’re a you know like a wallet and you’re more of a you know behind the scenes b2b um you know validator i’m not necessarily in the industry but if you’re doing somewhere that data validation and you’re more behind the scenes b2b work and they’re more b2c and they don’t mind if you use the word mercury and they may just want you to pay them a royalty for using that term mercury currency if you’re doing if you’re really not competing with them okay but the trademark office may not probably won’t know that so anyway this hopefully a little context for you on the trademark side for for that okay well i don’t see any more live questions i’ll do one one more question here from alvo community

this one is from edentown new jersey

all right

okay do you think i’ll be a problem if i trademark my rap name nfl even though it stands for something different than national football league trying to trademark my rap name but feel like it will be a conflict so should i spell it out or can i leave it as nfl savvy even though nfl has a different meaning i see sure so you know i think it’s going to take some research on this certainly i think you’re off to a good start in terms of not being in the same industry or same competitive space in the last example we saw you had mercury currency versus mercury cash and they’re both in crypto i think that’s going to be a major conflict you’re selling music right you’re creating a record label you’re producing you know lyrics musical compositions um in terms of you know how you’re selling what you’re putting out to the market as nfl okay uh very different than right the sports and entertainment industry uh of football through the national football league in nfl that said okay there are many marks and i think nfl may be one of them that over enough time okay when you think of starbucks google amazon’s and these huge mega brands they become famous okay and they get extra privileges when you become famous and their good will and their no in notoriety goes beyond their classification is a technical term it goes beyond football goes beyond sports and if you’re using the term nfl to really sell anything okay and certainly including music and rap because nfl is triggered in many people’s minds many customers minds the thought of their argument would be you’re still taking away from the nfl brand and their goodwill you know they’re selling a completely different product so that’s where we need to research i’m not going to give you a straight answer right now i think we need to do some research on how pervasive is msl mark uh in terms of what likelihood you’d have in having success there um and it would be a sort of a likelihood of confusion analysis to see whether you’d have

can’t give you success clear yes or no on that but it’s a good question so thank you all right well i know the topic was market ready designs for those of you that may be hanging in there trying to hear some tidbits on that i don’t have um a pre-packaged uh you know presentation on market ready design like i said i was hoping to bring on our guest uh but he just i had about yesterday because he felt i’m hoping he’s able to recover soon he’ll have him back on the show to talk about design prototyping development and how to bring you know physical products um even digital products how to do some rendering some interesting ways to bring them to market and show them in a professional way so it’ll be on a future future show i think i’m gonna wrap up okay so please bring those questions in keep it coming give us a like on social come back here next week if you have further questions i’m jd hovener owner here at bullpatton’s law firm and it’s a pleasure being with you all right take care everybody have a good day go big go bull

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