REFILE PATENT APPLICATION

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QUESTION: Is it possible to tweak utility patent and refile a new patent around the concept after the original patent expires?
My patent is expiring in two years. I’m still trying to build a business and/or license it. Is it possible to tweak utility patent and refile a new patent around the concept after the original patent expires?

ANSWER: You can refile your patent application with a “tweak” now or after your patent expires. However, your prior patent will be considered prior art to your refiled application. In other words, your refiled application must be not be obvious in view of your prior patent.

MULTIPLE PATENTS FOR “SAME” INVENTION

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QUESTION: What good is a patent, when apple has several patents on a phone, yet there are several phone’s just like theirs?
I’m trying to write provisional patent application. Looking through several patents, don’t find anything exactly like what I’m doing, but in some patents I see mention of what I’m doing tho in their drawings it doesn’t show. How or why can there be so many of the same things doing the same thing by different people and be protected under patent law.

ANSWER: It’s possible that the patent office issues multiple patents for the identical invention. That’s because the patent office examiner cannot check for pending patent applications that have not yet published or issued. However, patents for the “same” invention can exist when, for example, the end result is achieved in different ways.

WHEN TO REGISTER YOUR BRAND

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QUESTION: When is the best time to register your Brand name and trademark?
Our company is going to launch a mobile app very soon. When is the best time to register a brand name for the app to protect it and is there some kind of intermediate stage like register “Doing Business As”?

ANSWER: Sooner rather than later. In the US, a brand owner can file a trademark application based on an intent to use the brand in the future. Once used, the trademark application can become a registered brand.

QUICK PATENT FILING TO PREVENT COPYING

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QUESTION: Can I rush and file this patent in US to prevent the US company from copying it?
I recently shared an idea and developed a machine with an oversea factory, but already delivered the machine to a US company per their request (they paid for the machine but not the design). Can I still file a patent in US to prevent the US company from copying the idea? the US company is on east coast but I’m on west coast. What is the quickest way of securing this design ownership? Currently there is no MPA or any agreement preventing any parties from making copies.

ANSWER: Yes, you can still file a patent application. Quick ways can include a provisional patent application and/or design application.

MANUFACTURING IN FOREIGN COUNTRY

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QUESTION: Product that I have patented in USA can I manufacture in other country that is not signatory of international patent treaty?
I Have a patent and it is assigned to may company I work for now. I want to resign and open company in another country that my patent was not patented nor the country is a signatory of an international patent treaty. What is the legal situation doing that? If I am manufacturing the patented product in USA but the product is not patented in a country I want to manufacture that product, will I be liable of infringement and persecution by USA court?

ANSWER: Generally, the US patent only prevents infringement in the US. If you make the US patented product in a foreign country and do not export the product into the US, there is no US patent infringement. If the product is not patented in the foreign country in which you manufacture, you cannot be liable for patent infringement.

PATENT PRIOR ART

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QUESTION: Patent Prior Art Question?
If I have an invention for which the examiner has cited examples of prior art that could be combined to form my invention, but such prior art has all been around for 20 years and yet no one has combined them to form my invention, can a successful argument be made that it is not obvious due to the fact that if it had been obvious from the cited prior art, that it would have been done at some point in that 20 year time frame?

ANSWER: Your proposed response would not be legally persuasive. Also, you may not be able to provide evidence that your invention has never been done in the 20 year time frame. Generally, if the examiner can find all of your claimed invention features in prior patents, you will probably not be successful in convincing the examiner that your invention is not obvious.

PREVENT STEALING OF PROVISIONAL IDEA

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QUESTION: How can we prevent manufacturer from making/selling our product behind our back while we have Provisional patent?
I am about to reach out to a couple of manufacturers to make my product to sell, but I am unsure about their ethical conduct. And if I reach out to them before I have a Provisional patent issued, can they steal the idea?

ANSWER: It might be best to first file a provisional application before disclosing the invention to the manufacturer. But even if you do, the manufacturer can still steal the idea and you would not be able to sue for patent infringement with a provisional application. You would need an issued patent to sue for infringement

SEARCH FOR COMMON LAW TRADEMARKS

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QUESTION: How do you conduct a common law (not USPTO) search for tagline that want to trademark?
Hi there – I work at a Financial Services company and have been asked by to research what’s involved with trademarking a tagline. I already know that in order to qualify for trademark status, the tagline needs to be inherently distinctive, or creative, or have developed enough secondary meaning to call the name of my company to mind. Also, I know that prospective tagline needs to be conducted at the USPTO site. Thanks so much any help you can offer!

ANSWER: Apart for doing a Google search, you might use one of the many vendors that offer trademark searches. These searches can include common law trademarks (i.e., un-registered trademarks.

SAME IDEA, DIFFERENT WAY

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QUESTION: Idea for which a patent already exist?
I thought of an idea and worked to make it happen. When I was thinking about patenting it, I found out that it already exist. I have put a lot of hard work and money in to this idea. The technology behind it is different though. Is there anyway I can create a new patent because the technology or the way we achieve the final product is different

ANSWER: Yes, the same idea can be patented, if the same idea is achieved in a different way or different technology, if the different way/technology is not obvious.

FILING PATENT OVERSEAS

QUESTION: Filing patent overseas?
How does a company file patents after they have invested into a company and product that the current inventor only filed for in the usa. For instance i patent a product and place that product within a company.and then choose to leave that company and sell my equity stake.Now the organizations involved within the company don’t have patents in say canada and europe what do they do then..Do they need me to continue to continue to patent as i am the obvious inventor of the product or can they patent on there own or possibly just lose patentability regardless by competitors already replicating the product. And how are national laws in trying to replicate a inventorship of a product that has clearly been invented in another country i see this as a conflict.This is like someone inventing bubble gum in the united states and its clear they invented it and now someone in europe is trying to say they can invent it and can even file in other countries.

ANSWER: You probably assigned ownership of the patents to your company. They can file for patent protection outside the US without your participation. The foreign patents can be based on the US patent – which effectively allows the same invention to be patented in different countries.