QUESTION: Does a patented limited invention prevent a broader invention from being patented?
If I have an IP that is much broader than an IP already patented by someone else, can I patent mine? I’ll give you a rough, but clear example. If Newton patented his energy formula E=mv^2 /2, and Einstein came up with his own broader formula E=mc^2 from which the Newton’s formula can be derived as a special and limited case, can Einstein patent his formula? Does Newton’s patent prevent Einstein from patenting his formula?

ANSWER: Not necessarily, but probably yes. Patentability depends on whether the invention to be patented is obvious over prior patents. Therefore, it is not always true that a narrow patent makes a broad patent obvious. However, it is likely that a narrow patent will make a broad patent obvious.



QUESTION: Can I file for the patent after I made the product/invention public on the market? I have a patentable invention but I would like to test/validate it on the market first if there is any demand for my product. It’s a physical product for men who shave and have sensitive skin. Can I file for the patent after I made the product/invention public on the market?

ANSWER: Yes, if you file your patent application within one year after putting your invention in the public market.



QUESTION: Does use in commerce mean that I actually have to have sales?
I have a trademark registration that is nearly 5 years old. My product has been available for sale online the entire time. Unfortunately the product is expensive and I have not made any actual sales. Does this mean that my mark is not actually used in commerce? Are sales required or does use in commerce just mean that the product must be legitimately available for purchase online. Customers do have the ability to purchase my products directly from the website by clicking on a credit card/PayPal payment button.

ANSWER: One does not necessarily have to have sales of product to establish “use in commerce” to obtain federal trademark registration. But it certainly helps to have sales in order to establish such use. In the online context, it would generally be helpful, in establishing use”, to display your products with your trademark on the product.



QUESTION: Can I file trademark infringement for a competitor in a different class?
My trademark attorney messed up, and filed our trademark as ‘Business services featuring ethical clothing’ instead of simply ‘ethical clothing’ (trademark class 35 instead of 25). A new brand just formed with the exact same name, creating the same products, with the same mission. Would I be able to complete a cease and desist on this case, even though my trademark only covers the ‘business services’ portion instead of simply the products?

ANSWER: Yes, if you were using your trademark on your clothing before the new brand started using the same name on their clothing. You can have trademark rights separate from registration.



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.



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.



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.



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.



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.



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.