Great Ways to Invent – Get Incredible Features In Your Invention

By: Michael J Foycik Jr.
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

You want your invention to become a really successful product. You want it to be patentable. But you're not sure how. No problem! Here is one of the best ways to do it.

You'll first want to find unusual new things – products or novelties in search of a use. You want really great things, the kind that will inspire your creativity: new electronics, new compounds, new physics, and novel compositions with unusual features.

Those things are easy to find in the patent category for toys and novelties, because that is the haven for inventions in search of utility. Why? Because of the US Patent requirement for utility: no utility, no patent. So, if your utility is unknown, yet the invention seems interesting in some way, the easiest utility is as a toy or amusement device.

But how can you see those things conveniently? That's so easy – use an online search by class/subclass using the patent office web site. At the US Patent Office site, do a search by Class/Subclass. For toys, the Class is 446. Subclasses are by topic, for example 446/15 is for toys with soap bubbles.

You can find a topic by an index search, or by a manual of classification search. The steps are as follows. Go to the US Patent Office official site ( Click patents, which brings up a listing. Click the third item down, Classification. The topic you'll want for an index (word) search is “search USPC index schedule and definitions”, and the topic for a classification search is on the right hand side about a fourth of the way down called “browse listing of USPC Class numbers and titles.”


Costly Misconceptions About NDA's (Non-Disclosure Agreements)

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

You (the owner) has  an invention, a business idea, or a trade secret.  To develop your invention, start a business, or talk with investors, you'll need to share information with these recipients, and you'll want protection before showing them anything.  Many think an NDA (Non-Disclosure Agreement) will solve this problem, but there are major pitfalls to avoid.  And, an NDA might not be the best solution anyway.

The biggest misconception, in my view: an NDA is intended to protect and help the owner of the invention, business idea, or trade secret.  An NDA is much more likely to protect the recipient of the information, and not the owner.  Let's see why that may be true.

Many NDA's provide for arbitration as a remedy rather than litigation, but that only benefits the richer party.  Why?  A court action can be filed for free or at very low cost, but an arbitration usually requires the payment of substantial fees up front, and more fees at later stages.  When the recipient is a relatively substantial corporation or business, such fees may seem small, but to an individual or small businessperson such fees may be too great and they cannot enforce the NDA.

Normally, large companies fear litigation, and that is incentive for them to keep honest.

Another misconception: all NDA's are alike.  Not at all.  Each has to be studied in detail, because
many NDA's have fine print that lets the recipient off the hook.  I have reviewed many NDA's over the years, and have found serious flaws in most of them: the legalese unbinds the recipient one way or another.  Some unbind the recipient after a period of time, while others grant rights to the recipient.  Some are written to be so confusing that they defy interpretation.


Patent Assignments - What Inventors Should Know

By: Michael J Foycik Jr.
May 29, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

If you're an inventor who is considering signing an Assignment of a patent or patent application, there are a few things you may want to know.  Most questions concern the language of the Assignment itself, namely the promise to assign future improvements and to sign new patent applications related to the invention.

The typical Assignment includes language assigning the invention to the new owner (called the Assignee).  That new owner is usually either an employer or someone who wishes to purchase the rights to the invention.  For that new owner, some of the value of the invention may reside in the ability to file more patent applications, to make a family of products.

For example, let's say the invention is a big success; the new owner will surely want to file more patent applications for any likely variations that a competitor might try.  And, let's say the original inventor has moved on to a new company or a new business.  How much of a burden will be on that inventor, under the terms of the typical Assignment?  And, what about new inventions the inventor later makes – will those need to be assigned to the new owner under the terms of the original Assignment?

The key to answering the above and other questions is in understanding the legal meaning of the term “invention” in the original Assignment.  The term “invention” must necessarily refer to the invention as shown and described in the patent application, and to any “obvious” variations.  Because the courts generally define the word “invention” in this manner, it would appear that the inventor's future obligations should not be overly burdensome.

For minor variations, the inventor will very likely have to sign future patent applications under the terms of the original Assignment.  What are minor variations?  Court decisions have enumerated those that most often occur, such as size, shape, color, obvious extra features, and the like.


Tech giants offer startups free patents in bid to foil lawsuits

By: Susan Decker

Red Hat Inc. and Lenovo Group Ltd. are giving away free patents to any startup that joins a group of more than 200 companies devoted to keeping its members and their patents out of court.

It’s a carrot to entice startup companies to join the LOT Network, a non-profit created by Google and Canon four years ago to combat litigation by patent assertion companies, known derisively as “trolls,” that don’t make any products but seek royalties by challenging patents. By joining LOT, a company agrees that if they sell patents to such firms, all group members will have a free license to them.

“You’re binding yourself to the mast and saying ‘I’m not going to give in to the siren song of trolls,"‘ said Ira Blumberg, vice president of intellectual property and litigation for Lenovo.

The goal is to avoid or at least limit a repeat of what happened when the bubble burst nearly two decades ago. That left firms in bankruptcy court with little of value other than their patents, which were sucked up by speculators in hopes they would be tickets to big bucks. It contributed to a 47 percent increase in the number of patent complaints filed in the U.S. from 2000 to 2010.

While the number of suits is declining, it remains an issue for companies of all sizes, said Patrick McBride, senior director of patents for the Raleigh, North Carolina-based software company Red Hat.

“It is difficult to get a sufficient number of companies to coalesce around a single solution that will address the problem,” McBride said. “There is a mesh of overlapping efforts and LOT is a significant player.”

It’s easy to attract larger companies, said Ken Seddon, chief executive officer of LOT, which stands for license on transfer. The group’s members collectively own some 1.1 million patents and patent applications worldwide. That provides immunity from a fraction of the patents in force worldwide -- more than 347,000 were issued last year in the U.S. alone.

It’s still a big enough number that “I’m basically a patent litigation flu shot,” Seddon said.

Automakers including Ford and General Motors that are using more electronics in their vehicles joined as part of an overall strategy to eliminate the type of patent wars that engulfed the smartphone industry. Retailers like Bed Bath & Beyond and J.C. Penney get sued a lot over products they sell so it’s cost-effective to eliminate at least some potential threats.

Of the 224 members, about 75 count as startups and Seddon said he’s trying to increase that number. Investors in smaller companies may be wary of locking up patents in the future, fearing it will reduce their value, and may question the benefit of a group founded by large patent owners like Google and Canon.

Seddon’s pitch includes the free patents, no cost membership for companies with less than $25 million in annual revenue or financing, and an opportunity to network.

Limiting litigation is a concern of small companies focused on building their brand, said Alexandra Sepulveda, vice president of legal at Udemy Inc., a seven-year-old company that sells education videos taught by people with work-life experience.

“For any startup that gets to the success we have -- everybody comes out of the woodwork,” she said of the company’s decision to join LOT a year ago. “The last place you want to be is in front of your board answering questions about why you didn’t put preventative measures in place.”


Trade Secrets - Better Protection Than a Patent for New Products and Inventions?

By: Michael J Foycik Jr. 
May 24, 2013 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

You can establish a trade secret overnight, but not a patent.  A patent takes longer.  And, even if you could, would it really provide much protection against copying by distributors, retailers, developers, or investors?  Here's a surprisingly useful answer.

 A trade secret has some big advantages.  It is effective against anyone you have direct dealings with.  The damages for a trade secret violation are not limited to direct damages – they can be large enough to justify legal action against even a small or token violation.  This is very unlike a patent, where it is necessary to show actual, direct damages; those damages tend to be somewhat small; and where it can be quite difficult to obtain punitive damages. 

 So, why isn't there a “trade secret” office?  And, why doesn't everyone go after a trade secret first, instead of a patent?  Excellent questions.  A patent protects your invention after it is no longer secret, and it affects strangers who may innocently infringe patent rights.  So, a patent is very worthwhile, once you've gotten a good start.  But until then, all you really have going for you are your trade secret rights.

 Let's see why there's no “trade secret” office.  First, you can easily establish your trade secret rights yourself.  How?  Start by documenting the materials you regard as your trade secret, and mark the pages “confidential.”   You can just mark the cover page as confidential, but more is better.  Whenever you show the materials to anyone, document that: write a note to yourself stating who saw the materials and when they saw them; and put a copy of the exact materials shown in an envelope.  If you have witnesses, write down their names.  If there were telephone calls or emails, note those; and so on.


Panitch Schwarze Welcomes Elizabeth Morgan as Trademark Counsel

MAY 14, 2018

Intellectual property law firm Panitch Schwarze Belisario & Nadel LLP is pleased to announce that Elizabeth Ann “Betty” Morgan has joined the firm. Morgan focuses her practice in Trademark Law and mediation and arbitration of intellectual property matters. Recently relocated to Philadelphia, she was named among Best Lawyers in 2014, 2015 and 2016 in Atlanta, Georgia, for Trademark Law.

Morgan has significant jury trial experience in federal court, including patent, trademark, copyright and trade secret matters, and has handled more than 100 matters before the Trademark Trial and Appeal Board (TTAB). Morgan has litigated in Arkansas, California, Colorado, Delaware, Florida, Georgia, Illinois, Mississippi, Minnesota, Michigan, New Jersey, North Carolina, Nebraska, Oregon, Pennsylvania, Texas and the Virgin Islands. Morgan also has managed trademark portfolios consisting of hundreds of marks and has handled world-wide rollouts of new brands. Morgan is active in the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA) and Intellectual Property Owners (IPO) where she has frequently lectured at their annual events.

Morgan serves as a panelist for the American Arbitration Association (AAA) and National Arbitration and Mediation (NAM). She was invited to join the peer-reviewed International Institute for Conflict Prevention and Resolution (CPR) as a mediator where she is a member of the Trademark Panel, Entertainment Panel, Employment Panel and Philadelphia ADR Panel. She is on INTA’s Panel of Mediators and is a neutral with the World Intellectual Property Organization (WIPO). As a FINRA public arbitrator, Morgan is injunction-qualified and has served as a panel chair. Morgan has experience with franchise disputes, contract disputes, banking disputes, construction litigation, employment and wage and hour litigation as well as securities industry practices. She has been a party representative or mediator in more than 100 matters.

After receiving a bachelor’s degree with High Honors (Phi Beta Kappa) from the University of Florida in Interdisciplinary Studies, Morgan went on to earn a law degree With Distinction (Order of the Coif) from Emory University School of Law. She is admitted to the Pennsylvania Bar and all federal district courts in Florida and in Georgia, to the Eleventh Circuit Court of Appeals, and to the bar of the United States Supreme Court.

About Panitch Schwarze Belisario & Nadel LLP – Panitch Schwarze Belisario & Nadel LLP is a boutique intellectual property law firm with offices in Philadelphia and Wilmington, Delaware. The firm’s IP law practitioners provide strategic litigation, licensing and counseling service relating to patents, trademarks, copyrights and trade secrets, domain names and internet issues domestically and internationally. The firm’s long-standing relationships with a network of associates worldwide enable its attorneys and advisors to provide clients with global intellectual property advice and protection.

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Trademark Application Tips, and Some Ways to Avoid Pitfalls

By: Michael J Foycik Jr. 
May 12, 2013 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

Filing a trademark application?  That may seem easy, but mistakes can be costly later, during the examination phase.  Here are a few helpful tips, and a few pitfalls to avoid.

 After a trademark application is filed, the U.S. Trademark Office conducts an examination of the application.  For example, if there is both an objection and a refusal to register the mark, then a response will be necessary to meet the objection and to overcome the refusal to register.  This happens frequently, and an experienced trademark attorney will likely know just what to do when writing the response.

 In my experience, it pays to respond to every office action.  Many issues are within the range of discretion of the trademark examining attorney, and good legal arguments in support of the trademark may well be persuasive.  Some firms charge substantial sums of money to prepare responses, and other firms might charge much less - therefore it may pay to shop around.

 A helpful tip: before filing a trademark application, find a cost effective trademark attorney.  It is wise to assume things may not always go smoothly or quickly.

 Another tip: select the best type of trademark application. There are two types: intent-to-use applications, and actual use applications.  Both cost the same to file.  The intent-to-use application can be filed long before actual use occurs, but there is a later government fee when completing the intent-to-use application.  The trade off is that completing the intent-to-use application requires a statement of use or allegation of use, together with a specimen of use and an additional government fee.  If an actual use application can be filed based on actual use in interstate commerce, then it will save money to do so.

 It pays to know what types of problems come up during the examination phase.  Some problems that may come up: the trademark examiner may raise objections due to a similar prior mark, may object to the mark based on descriptiveness or misdecriptiveness of the mark, may object to the mark as having an improper geographical reference, and may object to the listing of the goods/services.  There are other possible grounds of objection too. 

In light of the above, another cost saving tip is this: have an experienced trademark attorney look at the mark prior to filing, just to see if there is something that jumps out.  You probably wouldn't want to spend money to file an application if it was certain to fail.  Here, too, it often pays to shop around.  Some attorneys would charge quite a bit just to look at the mark, whereas others might take an interest and provide helpful comments at little or no additional charge.  Trademark owners have reported a wide range of fees, some fees being reasonably low and some fees being unexpectedly high.


Tesla sued for $2 billion by hydrogen truck startup over alleged patent infringement

By: Sean O'Kane

Nikola Motor Company has filed a lawsuit in Arizona alleging that Tesla’s all-electric Semi infringes on the hydrogen truck startup’s patents. The lawsuit claims Tesla willfully copied these patents in creating its electric truck, and Nikola is seeking $2 billion in damages in return.

“It’s patently obvious there is no merit to this lawsuit,” a spokesperson for Tesla told The Verge. A representative for Nikola Motors said in a statement to The Verge that “[w]e are not commenting because it is in the courts. The lawsuit speaks for itself.”

Nikola was founded in 2014, and the company showed off its first two products — an electric four-wheel offroad vehicle and a hydrogen-electric semi truck — in May 2016. It has since added a second semi truck to its eventual lineup, teased some all-electric personal watercraft, and announced plans for a $1 billion factory in Arizona.

The complaint filed by Nikola lays out a number of claims that, viewed together, the company says prove Tesla cribbed from the startup’s patents. Nikola points to supposed similarities in the trucks’ front fenders, wraparound windshields, mid-entry doors, aerodynamic fuselage (with similar drag coefficients), and more as evidence that Tesla copied its design. It also claims that a recruiter for Tesla, Aaron Hoyos, tried to poach Nikola’s chief engineer just a few months after the startup unveiled its hydrogen semi truck, and that this is evidence that Tesla was aware of Nikola’s unique design features.

Additionally, Nikola says it was able to identify that Tesla’s truck might be infringing on its designs from spy shots that littered the internet in the weeks leading up to Tesla’s mid-November 2017 reveal. The startup says it sent a cease and desist letter (which is included as an exhibit in the lawsuit) to Tesla on November 7th asking the company to delay its announcement until the issue was resolved, but that Tesla never responded.


Startup Companies and Trademarks, an Attorney's View

By: Michael J Foycik Jr. 
April 27, 2013 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

An important decision facing new startup companies is what to do about trademarks.  The question is, should they apply for a federal trademark registration.  The answer to that depends very much on the goals for the startup.

If the goal of the owner of the startup company is to succed and then sell at a profit, then a federal trademark is essential.  Think about it from the perspective of a buyer: without a trademark, that buyer cannot get the goodwill of the startup company.  That goodwill includes such things as name recognition by customers, and loyalty all those dealing with the existing company.  But, without official trademark rights, the buyer may not have exclusive rights to the use of the trademark, and imitators could flourish.

Some startups need investors, and investors are more comfortable when they see rights owned by the startup.  After all, what are they investing in, if not intellectual property rights of some kind?  Those rights commonly are from a good trade name or trademark.  Other such IP rights can include trade secrets, patents, or copyrights.


More Patent Trolls Are Targeting Startups. Here's What You Can Do.

By: Nathaniel Borenstein

Startups aren't typically founded by lawyers, so patent law isn't usually a front line issue for them. But I've come to realize that patent protection is at best No. 11 on the top 10 list of things for startups to focus on -- something they generally understand is important, but not quite important enough. Part of that is because the headlines focus on big lawsuits lobbed at big companies, which creates a false sense of security. As an inventor and a computer scientist with 25-plus years of practical experience, I'd like to think I've navigated the murky, complicated world of patents and come out on the other side wiser and more informed. And, as such, there is something I want entrepreneurs, inventors and early-stage businesses to know. Yes, you are a potential target for patent trolls, and yes, there is something you can do about it. Today.

Related: If Your Startup Really Is Disruptive, Expect to be Sued By a Patent Troll.

Here's what everyone thinks they know.
It is generally understood patent trolls are typically "shell" companies that do no real business but simply pursue a business strategy of suing businesses over their patents. They typically sue for a large amount of money but settle for an amount they estimate will cost the victims less than a court fight. They do no good for anyone in the world but themselves, and they can be extremely costly (in time and money) to their victims. Too many people believe patent trolls are only after big names -- big companies with big wallets. The smaller suits, the ones aimed at startups and mid-sized businesses, might not make headlines, but they do untold damage.

Startups are targets for trolls, and grow more so over time.

Startups are often targets for trolls, but many entrepreneurs are unaware of this reality. With so many things to think about -- building a product, hiring a staff, fundraising, marketing, sales -- protecting against patent trolls is not likely to be high on a founder's list of priorities, but it should still be a consideration. A company gets hit with a suit and has to respond, but by then, it's too late. The mere presence of the suit is itself a drain on limited resources, to the tune of several million dollars that startups can't afford. This is why being proactive is essential.

Related: How to Conduct a Patent Search to Make Sure Your Brilliant Invention Doesn't Already Exist (Infographic)

A disproportionate number of patent trolls target smaller companies: More than 50 percent of businesses targeted by patent trolls make less than $10 million in revenue per year and 75 percent of the companies sued by trolls are privately held. And for good reason: To trolls, the whole point is to impose a costly and scary lawsuit, so that startups with limited resources to protect and defend themselves are more likely to settle than fight.


Forget the Scams, Make Money from Your Invention

By: Michael J Foycik Jr. 
April 27, 2013 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

You've seen the scams.  Forget those, and move on: real people can and do make money from their inventions.  Let's see who and how.

Who succeeds with their inventions?  Just about anyone, and at just about any age.  Here are a few ways.

If samples of the inventive product are available, then the quickest route can often involve first rate department stores and consignment sales.  It's easy if you know how, and it's easy to try even if you don't know how.  One successful person just went to their favorite department store, bringing their product, and talked to a manager about it.

For some inventions, it may be better to go through distributors.  That is not hard, but it is not always easy either.  Some distributors will help with the manufacturing costs, and some won't.  Your best deals come when you can provide the goods.

Sometimes, it helps to get investors to provide funding and expertise, so you can make and sell the invention.  The best ways to get investors involve one important first step: finding the manufacturing cost of a prototype.  That part isn't difficult if you know how, and can often be done in just a few days.  Most inventors are surpised by the low costs, and of course investors like seeing low costs since it means higher profits.

There are ways to find and meet investors.  I recommend e-press releases as a very low cost way to attract investors.  I can also recommend viral marketing, which is also a relatively low cost way.  There are even investor clubs in many areas, if you look for them.


A recent patent shows how Samsung's long-awaited Galaxy X foldable smartphone might work -- and there's even a design that folds into thirds

MAY 5, 2018

There’s long been talk about a foldable smartphone from Samsung, but now there’s something tangible that brings a foldable smartphone closer to reality.

On May 2, Samsung was granted multiple patents for its foldable smartphone design and the way it will work.

Samsung’s latest patents show that the company is experimenting with a smartphone that can fold into thirds – not just a smartphone that can fold in half, as was originally rumoured.

Being granted the patents isn’t a guarantee that Samsung is making these devices. Many patented devices never see the light of day. Plus, there would surely be several difficulties for Samsung to overcome with a foldable smartphone.

But Samsung has clearly been thinking about and researching the concept, and there’s always the chance the design ends up in a real product.


What is the Meaning of “Patent”

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

Attorney Advice on:  What is the Meaning of “Patent”
by Michael Foycik, registered US patent attorney
April 18, 2013     

An important legal question is, what is the meaning of “patent” and, how is it relevant to inventors and businesspersons.  The simplest answer is that a patent is a monopoly for a limited time, which is granted by a governmental entity.

In the US, there are several main types of patent: design; utility; provisional.  But, what is the meaning of “patent” when there are several types?  Again, a short answer will be helpful, explained as follows.

A design patent covers the ornamental features of an invention which are non-functional - imagine an unusual perfume bottle shape as an example.  A utility patent covers only features which are functional, rather than ornamental – think of a car engine as an example.  A provisional patent is somewhat like a utility patent application but exists for only one year.   So, the answer to the question what is the meaning of “patent” is that it depends on the type of invention and the type of protection needed.


Guidelines for Intellectual Property

By: Shannon McElfresh-Hall

Filing for Intellectual Property (IP) will protect a business’s specific product idea including product development. The strategic benefits of establishing ownership over an asset is vast: to deter competitors, raise capital, build a business, etc. The intellectual property you file should support the overall business strategy. There are three ways to protect intellectual property in the United States: patents, trademarks, and copyrights. A patent applies to a specific product design; a trademark to a name, phrase or symbol; and a copyright to a written document. There are key steps, which will help you obtain and protect IP. Andrea Davis, Managing Partner at Bodkin IP, shared a few points to focus on:

Know Your IP Rights

IP rights provide a defensive right to pursue legal action if a third party infringes. Patent infringement occurs when another party makes, uses, or sells a patented item without the permission of the patent holder. The function of a product can be protected with a patent; whereas the appearance can be protected by registering the design. Trademarks protect brands, such as trade names and logos. Lastly, copyright protects the expression of ideas- the words you choose to use to describe your idea, but not an idea itself. If you obtain any of these IP’s, you will own rights to that idea, design, or description and can peruse legal action against infringes.

Most businesses do not need the combination of patents, trademarks, and design registrations; in fact, trademarks are typically the only IP most companies have or need, however for a few companies the full IP protection is required. For example, Apple® and iPad® are two registered trademarks, registered designs, and patents for the way it interacts with the user. Apple also filed copyright for the code and the packaging. Apple then fought in a court battle with Samsung over IP, which effected changes in the law. “Apple denied Samsung permanent injunction against nearly two dozen Samsung products. The Apple/Samsung case was the patent trial of the century” said The Wall Street Journal.

Get Professional Help

To avoid infringement conflicts and extensive research and resources, finding an IP expert, like Bodkin IP, will help guide IP owners and relieve the hassle. Although the process of obtaining IP appears simple, it is a highly detailed procedure. Doing your own research is helpful, but IP professionals have additional resources, which are powerful and effective. “Inventors and start-ups should always do their own research early on to see if somebody else already has thought of the same invention. That includes the internet, also the free patent databases available, such as Google Patents, The Lens or Free Patents Online. If you don’t find anything, it is still wise to enlist a professional patent search firm to get it done professionally. The US alone has close to 10 million patents. When it comes to patentability, any publication counts anywhere in the world, so the number of patents is significantly larger! Without a database that has functionality the free resources don’t have and specialized knowledge on how to use that functionality, e.g. using patent classifications, citations and semantic searching, it’s almost impossible to do a thorough search.” Explained Ms. Davis, of Bodkin IP.

“I’ve heard many times in my career inventors say, “I’ve done my own search and haven’t found anything”, only to perform it in the professional databases and find something very similar within an hour. Out of the hundreds of patents searches I have performed in my two decades as a professional patent information professional, there have been less than five cases where I couldn’t find something close to the invention. That doesn’t mean that those other ideas weren’t pursued! In 99% of the cases they probably were, but in a strategic and informed way, that ended up saving those clients money. By identifying the prior art early on with very little investment, they were able to focus on the features that were not already patented by others both in the development of their product, as well as in the direction their patent applications were drafted. The patent prosecution is likely to take less time with less rejections from the patent office, saving the inventors’ not only that time, but also attorney fees, patent office fees and development resources.” Ms. Davis continues.

Strategize What You Will Do with the IP

Think carefully about why you are investing in protecting your IP. “Any money spent on IP is capital that cannot be spent on production, marketing, etc. There are many good reasons: to stop people from copying you; to add value to your company if you want to sell it; to sell or license to a third party; to hold it in your armory if you suspect you are going to be sued and want to counter-sue. For example, Google has spent a substantial amount of money buying patents recently; even to reduce your tax bill in certain countries profits attributed to patents can be taxed at a lower rate. However, in general, IP is a right to prevent other people from doing something; owning IP does not necessarily give you the right to do anything yourself.” Reports PLOS Computational Biology.

Keep Your Idea Secret until You Have Filed a Patent Application

Once your idea is published by a journal it is too late to file a patent application. It has been released to the public. A provisional patent application is a faster step to temporarily protect the IP until it is fully developed and can be submitted for the patent protection. It is important to understand this form is nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States.

“This is often unknown, and I’ve seen entrepreneurs have their own website, start a kickstarter page or even sell items. According to current law, from the time the invention was first sold, offered for sale or used publicly, you have 12 months within which to file either a provisional patent application or a nonprovisional patent application. After that timeframe, it is regarded that the inventor has forfeited the right to obtain a US patent. The best approach is to file at least a nonprovisional patent application before doing any of the above.

Make Sure the IP Is Owned in a Way That Allows Development

Ownership of IP can be particularly difficult in an academic setting where numerous complicating features are involved. Universities, as employers, are likely to have a right to their employees’ inventions. Inventorship is not like authorship—the people whose names are on an academic paper are unlikely all to be inventors; and in cross-border collaborations, national laws on ownership may well be in competition with each other. One complicating factor, which is often encountered, is joint ownership: if you can, avoid joint ownership; instead, set up a company to own the IP and license it to partners if necessary. Otherwise you face differing national rules on what joint owners can do with and without each other’s permission. If it is necessary to share IP, define who owns what at the beginning, what rights each party has and who will have the right to future inventions.

You can never act too early, but it’s very easy to act too late. To avoid the time intensive and complicated process of IP, find the best professional advice you can. If you are working as an employee, speak to your company at the earliest stage.


Bringing all these important IP aspects together provides the full view on approaching and protecting IP. These rights are applicable to all industries, companies, and individuals. Whether filing for a patent, trademark, or copyright, the procedure is complex. Finding an IP expert to help guide the tedious process to owning IP, will ease the progress and help you get to market quickly and correctly. Speed to market is imperative today. No matter the size of the company, there’s no doubt that filing intellectual property quickly after the conception of an invention, innovation, or service is a must.

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What is Trademark

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.


>> protection
>> application
>> infringement

A trademark is any mark, logo, or phrase that serves to distinguish one source of goods from another.

When a trademark is in actual use in commerce, common law trademark rights can often exist even without a registered trademark. These can be enforced in state courts.

A federally registered trademark can be enforced in federal courts. To get a registered trademark, it is necessary to first file a US Trademark Application.

Such an application needs the information noted in the query form shown on this page.

A trademark search is strongly recommended. Skill is required in interpreting the results, since even identical trademarks can be registered if they are in sufficiently different classes of goods/services.


10 intellectual property tips for startup companies

By: John Thomas and Jeremy Harrison  

Obtaining and securing intellectual property (IP) rights is often not a high priority with startup companies. Rather, startups commonly focus most efforts on obtaining financing, building a brand, and effective marketing strategies.

Securing company IP, however, such as patents, trade secrets, trademarks, and copyrights, is vital since doing so creates a legal barrier to competition. Company IP can be a revenue generator through strategic licensing or IP transfer, and is often crucial in valuation for venture funding purposes.

The following are some tips and strategies for startups to manage company IP.


Pursuing and maintaining patent protection requires a considerable capital investment. The cost to obtain a U.S. utility patent is roughly $20,000, and sizeable maintenance fees are periodically required to keep an issued patent enforceable. Thus, pursuing a patent should be approached proactively and with caution.

In addition to U.S. utility patents, design patents should also be considered. Design patents protect the ornamental appearance of an article of manufacture. The subject matter of a design patent application often relates to:

> The configuration or shape of an article.
> The surface ornamentation applied to an article.
> The combination of configuration and surface ornamentation.

Any person who has invented a new, original and ornamental design for an article of manufacture is entitled to apply for a design patent.  A design patent differs from a utility patent in that the design patent only protects the appearance of the article and not structural or utilitarian features. Design patents in the U.S. do not have maintenance fees and typically cost considerably less that utility patents. 

1. Undertake a patent prior to art search 

For key technologies, it is a good idea to conduct a prior art search before investing in the patenting process. A properly conducted search will identify patents, patent publications, and non-patent literature closely associated with the technology. The search can also identify potential competitors and infringement risks. Decision makers can then intelligently focus continued related research and development and draft patent application claims that avoid identified prior art.

2. Do not prematurely disclose

Unless a patent application is on file, foreign patent rights are immediately lost once an invention is publicly disclosed. In the U.S., a one year “grace period” following a public disclosure is generally available, but a patent application must be filed within 12 months to retain patent rights. If an invention must be disclosed, make sure to have proper confidentiality and/or non-disclosure agreements in place, which transform the disclosure into a non-public disclosure.


What is Infringement

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

There are three main types:

>> trademark infringement
>> patent infringement
>> copyright infringement

Trademark Infringement 
This occurs when one party uses a trademark that is confusingly close to a trademark owned by another. It is simple to decide in cases where one party has a registered federal trademark and is the senior user.

A federal trademark confers nationwide rights, and can be enforced in federal courts. A non-registered trademark may nonetheless confer common law trademark rights. Common law trademark rights are enforced in state courts.

It can sometimes be that simple, and trials tend to be relatively short. Often, however, the situation is not clear, and sometimes – especially where both trademarks are common law trademarks and are not federally registered - it is hard to determine who is the senior user. In those cases, it can also be hard to tell whether or not the senior user's rights are substantial enough to stop a competitor.

Contact us if you are concerned about any trademark infringement matter, for a free initial consultation. There is no risk or obligation.

Some common questions are: what kind of damages can be awarded; how much does a trademark infringement lawsuit cost; what kinds of risks exist.


Op-Ed: Protecting intellectual property

By: admin

EVERY year on April 26, we celebrate World Intellectual Property Day to learn about the role that patents, trademarks, and copyright play in promoting innovation, creativity and progress. As we celebrate this year under the worldwide theme, “Powering Change: Women in Innovation and Creativity,” we recognise the ingenuity of women around the world, who are bravely using their ideas, designs, and products to shape a brighter future for us all.

Our recent event on the role of copyright protection in promoting local content and business development in Guyana reflected that theme, from an opening speech by Minister of Public Telecommunications Catherine Hughes to the inclusion of remarkable women artists that added a wealth of depth to our panel and audience. Through their voices and the insight of all our panellists, we came to one conclusion: to honour content creators around the world, we must consider how we can protect their work from theft. Only this will ensure they receive the credit and financial reward to enable them to keep using their creative talents to better themselves, to better their craft, to better Guyana, and ultimately to better the world.

The protection of the creativity and hard work of writers, artists, musicians, and others makes prosperity and progress possible. During my time as U.S. Ambassador to the Co-Operative Republic of Guyana, I have seen first-hand that Guyanese are hardworking, intelligent, and resourceful. The ingenuity and ability of Guyana’s artists and entrepreneurs are daily proof of it.

I consider them and their creations as part of the social fabric and cultural patrimony of Guyana, highlighting the true extent of this country’s wealth beyond its already vast natural resources. As representatives of Guyana’s country brand domestically and overseas, writers, artists, film-makers, fashion and textile designers, mobile and web application coders and creators, and inventors in all sectors send a strong signal to the rest of the world about Guyana’s values, traditions, and knowledge. Protecting their creations and their intellectual property rights (IPR), is the right thing to do.

It’s not just individuals who benefit. Research shows that robust legislation to protect IPR encourages the development of the arts and breeds innovation in science and technology. Many people assume protecting people’s IPR only helps high-income countries, where companies spend large amounts on research and development (R&D).

However, economists have learned that improving patent, trademark, and copyright protection helps economic development in countries at all economic levels.

This is because a strong IPR framework aids open trade, which in turn creates greater trust between trading partners, helping to increase economic prosperity. In fact, the U.S. Chamber of Commerce’s international index found a strong link between robust IPR protection and increased technology transfers and exchanges, access to foreign direct investment, and employment. Even countries without large – or even visible – R&D sectors benefit from a strong IPR regulatory framework, because it gives them more access to new partnerships, technology, and knowledge. As the Government of Guyana prepares to take up the pen on copyright legislation, I commend the ministers, advocates, and content creators that have been and will continue to champion an improved framework of IPR protections in the country.

They are the visionaries that see, today, how legislation, treaties, and outreach will ultimately benefit the people and the economy. Today, on World Intellectual Property Day, I salute them and encourage all of us to support local content creators – from artists to inventors to software engineers–by purchasing their work through legal means and by applauding those advocating for change.

Source >>

The AIA And Its Impact On The Independent Inventor

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

The AIA And Its Impact On The Independent Inventor

By Michael Foycik ©2011
Used with permission. 

The Leahy-Smith America Invents Act, AIA for short, proposes sweeping changes to the U.S. Patent legal system and to the U.S. Patent Office itself. The “first to file” provision is of the greatest importance to independent inventors. Most of the other changes are, more or less, administrative in nature, and will be covered in future articles. This article takes a brief look at the issues affecting the independent inventor, and especially the “first to file“ provision of the AIA.

Simply put, the “first to file” law would mean whoever is first to file a patent application will be deemed the true inventor. Sounds simple, but the law also provides for a possible “derivation proceeding” which would have a very limited scope.

What does this mean for the independent inventor? For one thing, it means even the best confidentiality agreements and NDAs (non-disclosure agreements) will have questionable value. It will be difficult, and very costly, to contest inventorship under the AIA. How costly? It depends, but even now the costs of contesting inventorship may be out of reach of most independent inventors; under the AIA, far greater hurdles will exist, and the cost will be higher.

Under the AIA, independent inventors would be well advised to first file a patent application (provisional or utility, either will suffice) before showing the invention to anyone.

This is already my recommendation to inventors: file a patent application first! Do this before you show it. Do not trust in agreements or contracts to protect your rights. Too costly, you say? Not true! A provisional patent application is very cost effective, gives substantial rights, and the government filing fee is relatively low. And, if you can’t afford the government filing fee, there are even some work-around solutions for that, which I may write about in a future article.


US increasing focus on Intellectual Property protection in Guyana

By: Denis Chabrol

The United States (US) appears to be stepping up its focus on intellectual property protection in Guyana, with American Ambassador, Perry Holloway urging locals not to buy bogus products and welcoming signals that government is about to draft modern copyright legislation.

“Today, on World Intellectual Property Day, I salute them and encourage all of us to support local content creators – from artists to inventors to software engineers – by purchasing their work through legal means and applauding those advocating for change,” he said in an Op-Ed to mark World Intellectual Property Day on April 26. This year’s theme is “Powering Change: Women in Innovation and Creativity”.

Holloway said as the Guyana government prepares “to take up the pen on copyright legislation, he commended the ministers, advocates, and content creators that have been and will continue to champion an improved framework of IPR protections in country.

“They are the visionaries that see, today, how legislation, treaties, and outreach will ultimately benefit the people and the economy,” he added.

Owners of creative works still have to rely on the 1956 British Copyright Act that Guyana inherited from Britain at the time of independence in 1966.

Guyana is particularly known for the reproduction and sale of  music, movies and textbooks. Several years ago, when a local mass-producer of copied foreign textbooks was on the verge of winning a bid to supply the Ministry of Education, the United Kingdom Publishers association had taken legal action. That had eventually led to several agents for the British publishers bidding to supply original versions of the textbooks.

Concerns have also been raised about some television stations relaying foreign content without permission and also obtaining local sponsorship. A number of local businesses have also named their entities after well-known established names.

The US Ambassador noted that the American embassy’s recent event on the role of copyright protections in promoting local content and business development in Guyana reflected that theme, from an opening speech by Minister of Public Telecommunications Catherine Hughes to the inclusion of remarkable women artists that added a wealth of depth to that panel and audience.

Holloway said through their voices and the insight of all of the event’s panelists, they have concluded that it is necessary to stop stealing other persons’ original works to ensure the creators continue to earn and contribute to Guyana’s development.  “To honor content creators around the world, we must consider how we can protect their work from theft.  Only this will ensure they receive the credit and financial reward to enable them to keep using their creative talents to better themselves, to better their craft, to better Guyana, and ultimately to better the world,” the American envoy said.

He noted that every year on World Intellectual Property Day,  the opportunity is seized to learn about the role that patents, trademarks, and copyright play in promoting innovation, creativity, and progress.  “As we celebrate this year under the worldwide theme “Powering Change: Women in Innovation and Creativity,” we recognize the ingenuity of women around the world, who are bravely using their ideas, designs, and products to shape a brighter future for us all,” he added.


US & USPTO Trademark

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.


Preparing a US Trademark Application

To start, the trademark owner will have chosen a word, phrase, or design as their trademark. The trademark is what is applied to the goods or services, and is NOT usually the company’s name. For example, a company named XYZ which sells garments will attach a label to those garments with a trademark such as the fashion designer’s name, and NOT with the name of their company. To claim trademark rights, the symbol “TM” can be used, preferably as a superscript after the trademark. Alternatively it can be written in parentheses after the trademark. Example: If the trademark is “Wise“, it can be written as Wise™.

A US Trademark Lawyer, also called a US Trademark Attorney, can prepare a US Trademark Application for filing with the USPTO. The US Trademark Lawyer will draft a trademark application using a description of the goods/services together with a drawing showing the trademark, where the “drawing“ is often just the typed word in capital letters. That format encompasses all variations of that mark, within the laws pertaining to how marks are used. For example, the typed drawing in all capital letters will encompass an infringing use of the mark in script letters, or as part of a larger drawing.

The draft application is sent to the owner of the trademark, and changes can be made if necessary. We do not add any additional charge for making changes to the application at this stage. When the draft is finalized, the owner signs a form claiming ownership of the trademark application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Trademark Application.

At some point in this process, it is advisable but not necessary to perform a US trademark search. The US trademark search can find prior art trademarks that show the extent of the closest prior marks and whether the mark has been registered at an earlier time. If an expired trademark is discovered which is very close to the application, then that expired trademark might or might not mean the mark is available to other applicants. If a pending US Trademark Registration covers the mark and is in the same or similar field of goods as the applicant’s mark, then it is possible that infringement could occur. It is important to know if a product or service might infringe an existing unexpired US Trademark Registration. If no USPTO registration exists which covers the trademar, then it is possible that the trademark can be registered. As noted above, it is not necessary to conduct a trademark search prior to filing a new trademark application.


SOM study reveals gender inequity in patent process


Three professors at the Yale School of Management recently published an analysis that revealed gender disparities in the patenting process. Kyle Jensen, Balázs Kovács and Olav Sorenson reviewed 2.7 million U.S. patent applications and found that women had overall less favorable outcomes than men. Their patents were less likely to be accepted, appealed if rejected or adapted, the study found.

According to the report, published in the journal Nature Biotechnology, women make up only 10 percent of U.S. patent inventors. When the United States Patent and Trademark Office released information on patent applications from 2000–2016 to the public domain about three years ago, the SOM professors saw an opportunity to explore the causes of this unnerving statistic, Kovács said.

The three men found that the gender disparity could not be attributed entirely to application rates. Across all fields, women inventors are 21 percent less likely than men to have their patent application accepted. This percentage decreased to 7 percent when controlled for industry, still a significant discrepancy.

“Our theory is that they don’t know who these [applicants] are, so they just look at the name,” Kovács said.

The applicant’s name is the only potential indicator of gender in a patent application, but the professors thought that gendered names might be enough to evoke biases. The researchers used information from the Social Security Administration and commercial databases to determine the probable genders of applicants based on their names. Then they collected data on the progress and ultimate results of the applications.

“It’s surprising just how ubiquitous the negative effects are,” Jensen told Yale Insights, a School of Management publication. “It’s not just across one metric. They are less likely to have their patents accepted. Fewer claims are granted. The claims are longer, less often maintained, less often cited.”

It is difficult to determine whether the results point to biases within the patent office or to a larger societal problem, Kovács said.

Take, for example, the disparity in independent claims — attributes of an invention that are listed by the inventor to be novel and therefore warrant a patent. The Patent and Trademark Office can return an application with requests for the modification of or removal of certain claims. The inventor then makes changes to her application and resubmits it. At the end of this process, female inventors will have 80 percent fewer independent claims than males.

Women also tended to write longer independent claims, which are more specific and limiting to their patent, according to the study. These disparities might suggest that women are less willing to negotiate the terms of their revisions. On the other hand, it could point to a bias in the Patent and Trademark Office if officials are holding applications from women to higher levels of scrutiny.

Regardless of the causes, the study revealed an issue in innovation previously not discussed, Kovács said.

“The goal is that the United States Patent and Trademark Office is aware that this is happening,” Kovács said.

The study has gotten some attention from journals, but the results have not yet been sent to the Patent and Trademark Office. Kovács is hoping the study might inspire the Office to consider its biases and conduct more research on the roots of the issue.

The SOM research team, however, is not quite satisfied with its work. For example, the team still wants to look into the effects of interviews in the process. Not all patent applications include interviews, but Kovács said that interviews seem to decrease the demonstrated bias. The team plans to investigate this claim with the same database used for the 2000–16 report.

Meanwhile, the gender gap doesn’t seem to be getting any better: During the 16 years studied, the data on patent applications remained fairly consistent.

Source >>

Do I Need A Patent?

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

When – and why - do you need a patent?

You need a patent:

>> If you wish to stop others from copying your invention.
>> If you wish to protect yourself from competitors who may copy your invention and then try to patent it themselves.
>> If your product is in stores and you are challenged by a competitor who claims they have patent rights of their own.
>> If having a unique new product would allow you to set a much higher selling price.
>> If it is important to impress potential investors, customers or retailers.
>> if you want to stop illegal copies of your products from entering the U.S.
>> If you hope to sell your business for a profit. Patent rights are often the most important asset of a successful business.
>> If you hope to license your patented product to others.

And, there may be other reasons, in particular cases, for having a patent.

And, there's more! A patent is based on a patent application. Even before a patent application issues as a patent, the pending patent application can also give important benefits. These are as follows.


Why an Indian hotel startup is taking the difficult route of filing patents

By: Ananya Bhattacharya

India is no country for filing patents. Riddled with problems, from lack of awareness to systemic flaws, the country is one of the least friendly when it comes to intellectual property (IP) rights. In 2016, just 45,000 patents (pdf) were filed in India—China registered over 1.1 million in the same year.

However, a three-year-old Bengaluru-based startup has now gone against the grain.

Budget hotel chain Treebo has filed for not one but four patents in India and the US for its quality management system.

“Since Treebo’s operations are spread across 70 Indian cities and different people have different expectations (of quality), providing a consistent, reliable experience can be a challenge,” Kadam Jeet Jain, Treebo co-founder and chief technology officer, told Quartz. “Even when we were in just four cities, we realised that relying on manpower to do quality control would be unsustainable in the future.”

So, the company developed Prowl, a software that helps Treebo ensure the quality of its service, and soon plans to monetise it.

Treebo’s patenting plans 

Launched in 2015, Prowl lets Treebo’s on-ground auditors feed in their evaluations of hotels and curates customer reviews from various websites. It then uses machine learning to turn all this information into data points to help anticipate possible hiccups across the 400 hotel partners listed on Treebo.

These are the different aspects of Prowl that Treebo is looking to patent:

The move to patent these systems could boost Treebo’s business considerably, experts said.

For one, having the “patents tag” could help it attract more investment from venture capital firms, better its prospects in the mergers and acquisitions space, and make it more suitable for an initial public offering (IPO), Adheesh Nargolkar, a partner at law firm Khaitan & Co, told Quartz.

Moreover, patenting “enables businesses to monetise ideas more quickly” while also warding off duplication or theft by competitors, said Mandeep Singh Baweja, the India managing director of CPA Global, an IP technology firm.

Treebo believes if Prowl’s patents are approved, it may help establish a new revenue stream. “We could sell it as a software as a service (SaaS) solution to other players in the otherwise low-tech hospitality industry,” Jain said.

However, patenting is not up every startup’s alley.

Unless one is operating in the up-and-coming segments like electric vehicles or space research, where there is a need to shield virgin ideas, a firm should turn to patenting only after establishing a robust business model, said Murali Talasila, partner and innovation leader at PricewaterhouseCoopers (PwC) India.

“Startups will end up burning cash filing patents rather than generating revenue and finding customers” if they apply for patents too early in their life cycle, Talasila said.


Steps For Getting A Patent

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

Steps For Getting a Patent

These are the basic steps for getting a patent.

First, file a patent application which describes and claims the invention.

Then, respond to any official actions received from the U.S. Patent Office. If the official action is a rejection, then a response will provide arguments in support of patentability and possibly changes to the claims.

Assuming the application is deemed patentable (the majority are), then a Notice of Allowance and Issue Fee Due is sent. Upon payment of the issue fee, a patent will issue.

It is that simple. This whole process can take anywhere from 12 months to 36 months, depending entirely on the U.S. Patent Examiner to which the application is officially assigned.

A more detailed explanation is as follows.

Preparing the patent application

First, you provide details about the invention, and we prepare a draft application together with draft drawings, for your review. This draft includes the claims, abstract, summary of the invention, background of the invention, and detailed description of the invention. We make any changes or additions you wish to make, at no additional charge. We charge half of the fixed service fee in advance for this draft.



By: Rebel Venture Fund

In this era of technology and innovation, businesses are becoming increasingly dependent on intangible property (aka: intellectual property) to run their operations and produce profit. That being said, investors need be confident that the intellectual property assets of a company (patents, copyrights, trademarks, licensing agreements, etc.) are legally and fiscally sound prior to tendering agreements. The intellectual property protection of a startup plays a significant role in determining its value. In fact, for some startups, intellectual property protection is the sole metric for valuation.

IP assets are incentivizing for venture capitalists because they have multiple aspects of value and have the potential for creating “excess profits”. These multi-revenue, generating aspects include defensive use, internal use, sale, licensing, and others.

Examples of IP assets are: patents, software, domain names, trademarks, and trade secrets. To ensure maximized profits and to promote growth, it is imperative that startups identify and protect these assets. Proper intellectual property protection can mitigate revenue swallowing litigation and demonstrate to investors that your business is a sound investment.


Probably the most well-known IP protection is through a patent. US Patents are granted by the United States Patent and Trademark Office (USPTO), within the Department of Commerce. When a US patent is granted, it essential gives the inventor(s) or assignee(s) the authority to exclude other parties from using, selling, or making their product or design in the United States. Given its power to create a temporary micro-monopoly, patents are generally highly sought after since they grant the patent owner exclusive rights to the product, which can translate to a significant competitive advantage. However, it is important that investors and innovators be aware of the nuances that accompany this IP protection method and how it affects potential investments.

While a patent may have significant advantages, the path to obtaining one is not easy and is time-consuming. Angel investors should take into serious consideration the current stage of patent prosecution the investment seeking startup is in. The average cost to prosecute a patent through its completion varies based upon the nature of invention and other variables, but can range from $5,000 - $20,000. This includes the cost of filing fees as well as the acquisition of patent practitioners (patent attorneys or patent agents). As of 2014, the USPTO takes, on average, 3 years to render a final decision on a patent application. The price and time necessary to obtain a patent are serious factors that should be considered by investors and business owners alike.

It is also important for investors to be well versed in the patent application process. A common misconception is that inventions or designs obtain patent protection once a patent application is filed. That is not the case. A patent application may be granted, rejected, or suspended until corrections are made or information is provided (in the form of office actions). A patent application renders no protection until the patent is approved and issued by the USPTO.

Similarly, the filing of a provisional patent application (patent pending status) provide only temporary protection and does not extend to the power of an issued patent. Investors beware: there is no such thing as a provisional patent. One may file a provisional patent application, but there is no patent protection until a non-provisional patent application is filed and a patent is issued by the USPTO.

Absence of filing for a non-provisional patent application or lack of an issued patent are serious red flags on the sustainability of a company’s competitive edge and orientation of its future growth. Furthermore, given the complexity and significant amounts of time required to obtain a patent, inquiry into the skills of the acquired patent practitioner should be made. While the USPTO permits the inventor to file for his or her own patent applications, signs of a well-drafted patent application come from acquisition of experienced patent attorneys or patent agents. This is more true for potential investments that overlap into international markets. Provisional patent applications, international placeholders, and self-draft patent applications are not strong signs of sustainable intellectual property protection.

Ownership of the patent is also necessary information for potential investors. With patent applications, the inventor(s) or assignee(s) have the power to enforce patent protection. Investors should ensure that their intellectual property is licensed to the startup, not the founders. Otherwise, single ownership of the patent may lead to the patent owner leaving and crippling your investment.

Investors should also demand the founder’s pre-prosecution research, known as a “prior art search”. This may be conducted by the founders or via a patent practitioner. This is important because patents are granted to innovations that are unique. Failure to conduct adequate research and to distinguish one’s product or design from existing ones creates a risk of a rejected patent application and potential patent infringement litigation. Furthermore, if a startup has marketed its product or design beyond the grace period (typically twelve months), their own product may be considered prior art and eliminate them from obtaining a patent.

Patent litigation can become a serious drain to a company's capital and resources. Averaging $3-$10 million per claim, not only can the court fees and time required to fight patent infringement claims reduce profits, it may potentially cripple the organization’s productivity through injunctions and court orders. Hence, avoiding IP litigation can result in superior returns. All the more reason for investors to get serious about their IP inquiries in the due diligence phase.


Trademarks also have considerable effects on the valuation of a company. While startups with filed patent applications or issued patents are likely to receive funding from venture capitalists, it is imperative that investors consider trademark protection during their due diligence process. Trademarks are strategic means to protect one’s marketing assets. Because branding and advertising depend upon visual imagery, venture capitalists should view ownership of trademarks as a sign of a startup’s potential growth, ambition, and interest in protecting its future marketing value.

Like patents, trademarks are granted via registry through the United States Patent and Trademark Office, however, they operate in a different manner and grant different authority. Trademarks grant the owner the ability to exclude others from using protected symbols or signs. Logos, sounds, smells, or phrases are also trademark eligible and can help distinguish the product or design of the startup you are considering from others within the same market.

Lack of trademark protection should trigger a red flag to potential investors that the leadership has failed to mitigate risks to their marketing value and lack the legal basis from future branding. Just like with patents, investors should be skeptical of trademarks in the review stage that have yet to be granted. A rejected trademark is not a myth. Just ask the Las Vegas Golden Knights.


Only acquiring a patent or trademark for your product or company is no longer a sufficient means of protection or profit maximization. Rather, a well-rounded IP protection strategy is necessary. There are other tools and methods startups can explore and implement to ensure that their ideas are protected from litigation and potential theft by competitors. Of these, IP licensing is probably most significant. Not only does proper IP licensing ensure only those permitted to access your product can, but also maximizes the full utility of the assets. Owning a patent or trademark is an excellent asset, because you can exclude others from using your design or product. However, oriented growth can be achieved by relaxing exclusivity authority through licensing agreements. Through licensing, IP assets can be tapped for their excess profit potential where a startup can leverage their ideas into profit making partnerships. It would behoove investors to take into account the various IP assets in a startup and analyze them for maximum return to their investment. Leave no stone unturned.

The thing about intellectual property issues is that they are avoidable. Typically, the red zone for startups to begin their intellectual property strategy is within the first twelve months of operation. Investors should seriously consider the risk they take by failing to conduct a thorough intellectual property investigation. Litigation, loss of IP rights, and mis-valuation of an investment can lead to no return for negligent investors. But for those that would take heed, you will reap the rewards, because intellectual property is the cornerstone of sound investments.

Source >>

International Trademark Classes

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

International Trademark Classes

Class 1 - Chemicals 
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2 - Paints 
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3 - Cosmetics and cleaning preparations 
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4 - Lubricants and fuels 
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.

Class 5 - Pharmaceuticals 
Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6 - Metal goods 
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7 - Machinery 
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.

Class 8 - Hand tools 
Hand tools and implements (hand operated); cutlery; side arms; razors.

Class 9 - Electrical and scientific apparatus 
Scientific, nautical, surveying, electric, photographic, cinematographer, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10 - Medical apparatus 
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 11 - Environmental control apparatus 
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12 - Vehicles 
Vehicles; apparatus for locomotion by land, air or water.

Class 13 - Firearms 
Firearms; ammunition and projectiles; explosives; fireworks.

Class 14 - Jewelry 
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

Class 15 - Musical instruments 
Musical instruments.


90% Of Indian Startups Will Fail Because Of Lack Of Innovation, Study Says

By: Suparna Dutt D'Cunha 

Of late, India might have become the third-largest startup ecosystem, but it lacks successful innovation.

Notwithstanding the fact that market valuation of Indian startups has grown significantly over the past four years, a recent study, “Entrepreneurial India,” by the IBM Institute for Business Value and Oxford Economics found that 90% of Indian startups fail within the first five years. And the most common reason for failure is lack of innovation — 77% of venture capitalists surveyed believe that Indian startups lack new technologies or unique business models.

Other reasons cited for failure include lack of skilled workforce and funding, inadequate formal mentoring and poor business ethics, according to the study.

It's well known that most Indian startups are prone to emulate successful global ideas, by and large fine-tuning an existing model to serve local needs. There’s Ola for Uber, Gaana for Spotify, OYO Rooms for Airbnb and Flipkart for Amazon.

India doesn’t have meta-level startups such as Google, Facebook or Twitter. On the other hand, China, with which India often compares itself, built its own Google named Baidu and Alibaba displaced Amazon. Unsurprisingly, in 2016, Asian Paints was the only Indian organization in Forbes' 25 most innovative companies, and Gillette India was among Forbes Top 25 Innovative Growth companies.

“Since 2015, as many as 1,503 startups have closed down in India. And the major reason is due to the replication of Western business models, and not lack of subsequent funding from the investors,” says Rishabh Lawania, founder of Xeler8, a market intelligence platform recently acquired by a Chinese venture capital firm. The highest number of failures were in logistics, e-commerce and food technology.

Copying existing models

Initiatives such as Make in India, the Startup India program, the establishment of the Ministry for Skill Development and Entrepreneurship, the Intellectual Property Facilitation Centres and other incubation programs may have spurred growth, but it’s no secret that innovation remains the biggest missing piece of the Indian startup puzzle.

“Many new high net worth individuals [HNIs] without proper due diligence invested in startups having flawed business ideas, which led to massive failures in the last two years,” Lawania says. “Angel investors and early stage VCs have had their fingers burned far too many times, but not anymore. They have now mastered the art of diligence and are making quick and informed decisions.” Even in evolving AI technology, Indian entrepreneurs are not pioneers.

“AI and ML technologies have been adopted in retail and banking as well, but India is a follower market -- what you see in the U.S. today will start appearing here tomorrow,” says Navneet Sharma, co-founder and CEO of Artifacia, a visual intelligence platform.

Undoubtedly, India’s startup ecosystem needs top notch technical talent and global business skills. Unlike Israel, India is not investing in R&D through international cooperation between different countries that helps in establishing links between local companies, multinationals and academic institutions. In 2016, a survey conducted by the Information Technology and Innovation Foundation (ITIF), a U.S.-based think tank, ranked India near the bottom of a list of 56 countries on global innovation. The ITIF study revealed that the country’s poor performance in developing human capital is mainly because of its failure in investing on education. The IBM report cited another study that said as many as 80% engineering graduates in India were “unemployable.”

Filing patents

Also, if a yardstick of innovation is the patent, then India is miles behind its Asian counterparts. India filed 1,423 international patents in 2015-16, while Japan filed 44,235, China 29,846 and South Korea 14,626 , according to the World Intellectual Property Organization. Over 70% of the patents filed in the country are by MNCs; Indian companies and academia share the remaining 30%.

Currently, India ranks 66th on the Global Innovation Index (GII) list, which is 41 places behind China. The GII report said India has the ingredients needed to become a global driver of innovation, including market potential, talent pool and an underlying culture of frugal innovation, but “relative weaknesses exist in the indicators for business environment, education expenditures, new business creations and the creative goods and services production.”

Emphasizing innovations on societal problems, Nipun Mehrotra, chief digital officer, IBM India/South Asia, said: "We believe that startups need to focus on healthcare, sanitation, education, transportation, alternate energy management and others, which would help deal with the issues that India and the world face."

However, it's not all doom and gloom. The IBM report adds that in addition to strong government promotion of entrepreneurship that has strengthened the startup culture, India’s economic openness and large domestic market are significant advantages.

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How to Patent a Design

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

A design 
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent.

A design is anything which is not functional. A casing or cover for a working device can be a design. Other things can be designs too. A design can best be protected by a design patent application, and usually costs much less to file than a utility (“regular“) patent application. Even the government filing fee is much lower for a design patent application.

What is needed to get a design patent application? You will normally need drawings showing the design from six different orthogonal views. The application itself is very short, and has text naming the invention, describing the drawings, and ending with a claim. The drawings do not need to be like blueprints; instead, they are simplified. And, it is not necessary to have a working model.

Once filed with the US Patent Office, the design application is examined, and if granted, can mature into a design patent. But why get a design patent? For one thing, a design patent protects not only the design itself, but all obvious variations that are not within the public domain already.

By contrast, a copyright only covers copies made, which must be exact copies. And, a copyright does not cover any design, even if identical, which was not copied. So, if two inventors both make the same exact design by sheer chance, and one inventor gets a copyright, that copyright would not be usable against the other inventor. The reason is, a copyright only covers copying.

A design patent covers any design that is sufficiently close so as to infringe, even if there was no copying. A design patent is therefore valuable, yet different from a copyright.

Before getting into the details, we would like to mention that there is also something called a “provisional patent application” discussed hereunder. It gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. That is another way to get a patent. The provisional application is much less expensive than a utility patent application, and can be recommended when there is an urgent need to get a patent application on file with the US Patent Office. For example, just prior to a trade show or publication of the invention, there is an urgent need to have the idea on file with the US Patent Office. For further information, see the section below called “How to patent using a provisional patent application.”

Standard text is then added including sections titled: background of the invention; summary of the invention; brief description of the drawings; and an abstract of the disclosure. These are not usually hard to do for a design patent application.

Then, a Declaration is prepared showing the name of the inventor and title of the invention. This is from a standard form provided by the US Patent Office.

Last, a cover page including a Transmittal sheet is prepared, listing what is being filed with the US Patent Office. The Transmittal page normally will include a check for the amount of the US government filing fee, and a postcard filing receipt. The check can be omitted, as can the signed Declaration, but in that case the US Patent Office will send a notice asking for those items along with a relatively small late fee.


India's Startups Are Filing More Patents Than Ever Before -- Here's Why

By: Sindhuja Balaji

Abhishek Satish and Adarsh Warrier were students pursuing engineering in the south Indian town of Vellore when they founded Vicara - a startup that develops wearable technology devices. Soon after, Satish and Warrier filed a patent for a gesture recognition device they'd created called Kai. “When we created the technology, we knew there would be competition. It doesn’t take long for someone to copy your work and pass it off as theirs. For a hardware startup, a patent serves as a form of insurance,” says Satish.

Despite being common practice in other parts of the world, the importance of filing patents has only just become apparent to young startups in India, as the country increasingly moves towards becoming an innovation hub in Asia. Moreover, the Indian government has begun offering incentives to encourage innovators to file patents, including attractive tax rebates and speedy documentation processing.

Tackling Rising Costs

One of the most significant factors that keep startups from filing patents is cost. Filing a patent in India involves a pre-filing cost priced between $920 and $1530, a first-action cost of up to $2300 followed by a patent maintenance cost of another $2300. The collective fee of filing a patent can be a burden on several early-stage startups so private IP firms are helping startups manage these costs.

Bangalore-based BananaIP is one such firm that bears the expenses of patent filing for select startups. In addition, if a startup offers equity, BananaIP also takes care of a nominal patent filing fee to be paid to the government. Dr. Kalyan C Kankanala, senior partner and chief IP attorney at BananaIP, says, “Several startups don’t prioritize patent filing as an early stage activity. It’s important for them to understand that once an idea or product goes public, the possibility of acquiring a patent is lost under most circumstances.”

Startups Seize Patent Filing Opportunities

Vicara’s Satish and his cofounder started off by approaching IP Dome Strategy Advisors, a Chennai-based law firm that assists startups with filing patents. While anyone can file a patent, it is recommended to seek the help of IP law firms, which conduct patentability analysis to verify the authenticity of an idea and suggest amendments in patent documents. Based on findings by the Indian Patent Office, the process of filing patents in India has improved of late. Applications went up by 10% last year compared to the year before, and growth has been credited to the improvement of online services, availability of IP specialists across the country as well as the incentives provided for startups under the government’s Startup India initiative.

IP Dome has been supporting the government’s Make In India initiative by educating startups on the value of intellectual property, as well as the strategic use of intellectual property to gain a competitive advantage in the global marketplace. Swapna Sundar, CEO of IP Dome Strategy Advisors, says, “An increasing number of product startups in India are embracing the need for filing patents at an early stage of product development, which is very sensible. The Indian government’s Startup India initiative is creating awareness towards minimizing legal risk against IP infringement.”

Startups Receive Incentives For Filing Patents

The rising awareness around patent filing is having a positive impact as more startups are investing in onboarding good IP lawyers at initial stages of commercialization of their product. Kankanala says, “About five years ago, we would do about five to six patent filings a year. This year, we have already filed about 20 patents for startups, and expect more.” Sundar stated that IP Dome is witnessing an increased growth in IP awareness as well as filings this year. “We have helped around 35 startups in building successful IP portfolios for their businesses,” she said.

In addition, the government’s Startup India initiative provides a slew of benefits to Indian startups, which includes an 80% rebate on patent filing. Application fees for startups to file patents has been reduced to just $25. The Indian government has introduced mechanisms for speedy processing of patent applications, and it’s now possible to acquire a patent in India within a year of its filing. Unlike earlier, the Indian Patent Office is processing foreign filing permits quickly, with which Indian startups can now file patents overseas.

Lawyers recommend startups file a patent application in India first as it is cost-effective and provides priority rights for international filings. Once a patent application is filed in India, the startup can either file directly or opt for a Patent Cooperation Treaty (PCT), which provides international patent protection. "Opting for a PCT grants the startup at least thirty months to perfect the product, test the market, and/or raise funds to file in other countries," says Kankanala.

Protected Ideas Lead To High Investor Confidence

The eagerness to file patents has also led to improved investor confidence. Having seen both the sides of the ecosystem, Sateesh Andra, an entrepreneur-turned-venture capitalist with Endiya Partners believes that patent filing is an integral part of the overall product strategy as benefits outweigh the timelines and costs involved. The owner of multiple patents himself, Andra says, "As startups go global, how quickly you go to the market is paramount. Entrepreneurs must be aggressive in their market outreach plan as patent filing not only increases the credibility when they scale but also bolsters investor support."

As awareness around patent filings and quality of legal assistance improves, startups can now push the boundaries of innovation and creativity in India, establishing new benchmarks in the fast-growing ecosystem.

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