by Kathleen Lynch | Oct 28, 2014 | Patent, US Patent Office
Last week I was vindicated to some extent by Good Morning America. Lori Greiner from the show “Shark Tank” provided some advice to the morning’s “tank” contestants. First thing she said was: “get a good IP attorney.” At the risk of sounding self-promotional, this is so important. I’ve posted before on how to select a good IP attorney. The things I think are most important are experience, expertise and relationship.
Here are a few questions to ask a potential IP attorney:
Does s/he practice patent law?
If you are interested in protecting an article or method of manufacture, you should seek out the advice of a patent attorney. Only patent attorneys and patent agents practice before the US Patent Office. In order to practice before the US Patent and Trademark Office, an attorney or agent must pass the US Patent Bar. This requires the person to have a bachelor’s degree in a technical field such as science or engineering and pass the US Patent Bar examination. Those tasked with preparing and filing a patent application and communicating with the US Patent Office with regard to patents and patent applications, must take and pass the US Patent Bar.
How long has s/he been practicing patent law?
Like any profession, patent law requires a certain level of skill and expertise which comes from experience and work. Someone who has filed many patent applications and has helped to move numerous applications through to issued patents will have a greater level of experience than someone with few or no dealings with the Patent Office.
What is his/her area of expertise?
This is a critical area. You need to ask what is the patent attorney’s area of expertise. What did the attorney study in college and in what area of technology do they focus their patent practice? In the same way you wouldn’t want a dermatologist to conduct heart by-pass surgery on you or a loved one, you should not select an attorney with a biochemistry degree to file your patent application directed to electronics.
Finally, there is the relationship aspect of any interaction between attorney and client. Do you have confidence in this person? Do you trust this person to act in your best interest?
As Lori Greiner confirmed, selecting the right IP attorney is critical. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Oct 7, 2014 | Infringement, Patent
This is the second in a series of posts on the basics of patents. The first post discussed the scope of a patent and how to obtain one. This post will focus on the benefits of a patent and how you can enforce one.
Now that you have a patent, what can it do for you? A patent is only as good as your ability to enforce it. A patent owner has the right to keep others from making, using, selling or offering for sale his/her patented invention. A patented invention is defined by its claims. The claims are the last part of the patent document and are numbered. The claims define the “metes and bounds” of the invention.
In a dispute, or when a patent is asserted against an alleged infringing party, the claims are interpreted to determine the scope of the invention. Once the scope of the invention is determined, then that scope is applied to the alleged infringing activity to see if it falls within the scope of the patented claims.
Patent infringement is a federal offense and may be brought in federal court. Patent infringement provides for the recovery of both actual and punitive damages. These may include up to three times the damages if the infringement is found to be willful or intentional. A patent owner may also seek an injunction to stop existing and future infringing activity. In some cases costs and attorneys fees are also recoverable.
Capitalizing on innovative developments is critical to any organization. Having the right person to help you make those decisions is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Sep 23, 2014 | Design Patent, Patent
This is the first in a series of basic info posts on the basics of intellectual property law. In particular, I’d like to focus on what is a patent and what kind of protection does it provide if you are able to obtain a granted patent.
To start, there are 3 types of patents: utility, design and plant. Design patents cover new and ornamental aspects of items of manufacture. An iPhone® smart phone or a Corvette® sports car are great examples of design patents. These have a life of 14 years from the date the patent is granted.
Plant patents are a particular type of patent that are directed to anyone who has invented or discovered and asexually reproduced a distinct and new variety of plant. Plant patent protection extends 20 years from the date of filing.
Utility patents are known to most people and cover articles of manufacture, methods of manufacture, compositions of matter, and business methods, typically used in the software and banking sectors. This last category of patents is presently in dispute but is not the subject of this article.
A utility patent must be useful, novel and nonobvious. A utility patent has a life of 20 years from the date of filing. However, once a patent is granted, maintenance fees must be paid to the US Patent and Trademark Office before 3.5, 7.5 and 11.5 years after issue, or the patent will expire.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Aug 26, 2014 | Confidentiality, Entrepreneur, Intellectual Property, Inventor, Patent, Trade Secrets
I had lunch with a colleague who is an IP attorney and an engineer. He was telling me about his participation in a start up weekend and all of the challenges and fun that he had. In hearing this, we discussed, as patent attorneys do, the consequences of disclosing ideas to a loosely held group of people whose only relationship to each other is on the back of a napkin.
Most start up weekends do not impose any obligation of confidentiality on their attendees for all that is developed and disclosed in a 48 hour period. This raised the concern that perhaps anything that is developed that may be rather meaningful, i.e. might lead to actual commercialization of a product or service, may need to be “black boxed”. In other words, the team of developers could agree to disclose only the basic outline of the structure and/or function of the development and then disclose the details of the operation once a patent application has been filed or a confidentiality agreement has been signed.
To do otherwise may jeopardize the group’s ability to seek meaningful protection which may likely translate directly into meaningful funding. The US patent system has moved to a first inventor to file system. In that system, the inventor has a year to file on the invention developed after it has been disclosed. The rest of the world essentially requires absolute novelty. So if any invention is disclosed prior to a patent filing, any international patent rights outside the US may be lost completely. This is something worth considering when venturing into a start up weekend.
One aspect of any new development is the extent of patent protection available to the ultimate product or service. If all international patent protection is lost by the close of a start up weekend as a result of disclosure, then the level of funding and any significant patent advantage may be lost. It remains that anyone involved in a start up weekend should ask the appropriate questions regarding disclosure with the organizers and raise any concerns with the team as it could impact the protection and funding of what may be developed during the weekend.
Protecting your innovative developments is critical to any start up venture. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Aug 19, 2014 | Entrepreneur, Patent
I am taking a break this week in my usual focus on intellectual property law, to give a shout out to the NCLEAP program here in North Carolina. I preface this by disclosing that I am an NCLEAP volunteer and sit on their steering committee.
NCLEAP (North Carolina Lawyer Entrepreneurial Assistance Program) is about a 7 year program that was established by North Carolina lawyers to provide pro bono assistance to low income entrepreneurs. Since its inception, it has assisted over 1000 entrepreneurs and small businesses. Volunteer lawyers from across the state provide low income entrepreneurs with pro bono corporate and intellectual property law advice and other legal matters relevant to a start up venture.
NCLEAP relies on donations to operate. If you are a lawyer licensed to practice in North Carolina, consider donating your time and expertise to help out a new business or entrepreneur. If you like the NCLEAP program, consider making a donation.
by Kathleen Lynch | Jul 22, 2014 | Examiner, Patent, Prosecution
The US Patent Office is expanding its Patent Examiner Technical Training Program. The Patent Office is seeking voluntary assistance from technologists, scientists, engineers, and other experts from industry and academia to participate as guest lecturers and provide technical training and expertise to patent examiners regarding the state of the art.
Guest lecturers must have relevant, historic and current technical knowledge, including industry practices/standards in technological areas of interest. Guest lecturers must also have relevant technical knowledge, as well as familiarity with prior art and industry practices/standards in areas of technologies where such lectures would be beneficial.
So if you or someone you know has expertise or knowledge in a cutting edge area of technology, here’s a chance to help an examiner out.
Having the right person to help you identify and protect your intellectual assets is critical. The Law Office of Kathleen Lynch is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
