Patent Encumbrances Can Reduce Market Value up to 100 Percent

By: Steve Brachmann & Gene Quinn

Patents can help business startups in a number of important ways. Filing a patent application can aid a startup’s first mover advantage as a patent grant gives them the right to exclude others from a market sector, which could prove to be very valuable for a variety of reasons — not the least of which is to attract investors keen to invest in companies with some strategic advantage in the marketplace. 

Patents can also help minimize the risk of facing an infringement suit because it gives a startup an asset to assert defensively if and when an aggressive competitor might come knocking. But even if a defensive position does not ultimately prevent litigation from initiating having patents can open the possibility for counterclaims and cross-licensing settlements, which sometimes are the primary strategic reason patent lawsuits are filed in the first place.

These are well known examples of the advantages of patents to start ups and the venture capital firms (VCs) that often fund them. However, patents also help startups and the VCs that fund them because the patents can be sold. If the startup changes course from its initial designs – a not uncommon occurrence – then the sale of irrelevant patents can help recoup earlier sunk costs and the revenue used to fund more promising lines of research, development and commerce. If a startup fails, which ends up happening to the overwhelming number of startups, the sale of the patents can give investors a chance to recoup some of their funds.

The sale of a patent becomes more complicated and less valuable if the patent rights have been compromised. Not surprisingly, an encumbrance upon a patent negatively impacts the market value of the patent because it reduces the ability of others to monetize that patent by removing at least some avenues of opportunity.

Encumbrances can take several of different forms. A patent licensing agreement is an encumbrance because it prevents a company buying a patent asset from obtaining royalties from a company that has already licensed the patent. Companies can also sign covenants not to sue each other that can run with the patents. If those patents are sold while those covenants are still in force, the patent’s market value is similarly limited.

Patent broker Brad Close notes that encumbrances can have the effect of reducing a patent’s value by up to 100 percent, practically rendering a patent valueless on the market. “If the only companies which are potential targets for a license are already licensed, then the intellectual property is essentially worthless,” Close said. Close has worked as a patent broker for 12 years and has spent parts of the last decade working on brokering patent sales for startups while working with such firms as TIPS Group, Transpacific IP and Blackstone IP.

“If a startup is considering entering into an agreement that would place an encumbrance upon a patent, I would advise them to be very sure that what they’re receiving in return offers adequate value and to take into consideration both their investors and the future of the business,” Close said.

Certain organizations and consortiums in the patent sector require their members to enter into agreements which place encumbrances on patent assets. One such organization is LOT Network which requires members to sign an agreement that offers a conditional license in the event that a patent is sold to a patent assertion entity (PAE) or non-practicing entities (NPEs), effectively protecting members from PAE suits of LOT originated patents. While the potential of avoiding litigation from PAEs and NPEs may seem attractive to startups, Close notes that startups don’t face the same litigation risks of much larger entities. “True NPEs don’t target startups because they don’t have the market share to make litigation worthwhile,” Close said. “NPEs are typically going to go after companies who hold a significant share of the market.”


New Lower Official Patent Fees Coming January 1, 2014 - Great News For Inventors

By: Michael J Foycik Jr. 
October 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.

Finally some very good news for inventors about government patent fees. Some of the new lower fees have been put into place. Other impressive fee reductions are on the way.

The micro entity fee schedule has already been implemented. For example, filing a new Utility patent application costs as low as $400. A Provisional Patent Application, or PPA, costs as little as $65. The previous fees, in effect earlier this year, were much higher.

Other fee reductions are even more impressive, and are scheduled to go into effect beginning on January 1, 2014. These include the Utility patent issue fee, reduced from the small entity fee of $980 currently to just $480 (small entity) or $240 (micro entity). Assignments will be recorded at no charge in that new fee schedule; currently the government fee is $40.


How to protect your Startup Idea? (Intellectual Property)

By: Himanshu Jain

Startups and the Endless Possibilities

Sometimes a big corporation isn’t big enough for your brilliant ideas and you decide to go out into the free market and form your own startup. That’s great! You can now explore all options, work passionately on your interests and provide real-time value to the people. However, after the company registration procedure is done and dusted, there are still many issues surrounding the startup. One of these is the threat of someone stealing your idea and presenting to the world as their own. You wouldn’t want that now, would you? With this article, we’re going to look at Intellectual Property (IP) including trademarks, copyrights and patents and how they can help protect your startup idea.

Intro to Intellectual Property(IP)

The word “Intellectual Property” was first used in the 19th century however it wasn’t until the 20th century that term became a common usage and helped protect creations of intellect. Officially, Intellectual Property is defined as a class of property that includes intangible (lack of physical substance) creations of the intellect of an individual or an organization. These include patent, trademark, and copyright. Intellectual property can also encompass trade secrets, publicity rights, moral rights, and rights against unfair competition. The basic essence behind all the legal jargon is that your brilliant startup idea, your brainchild, is yours and yours alone and Trademark Registration, Patent Registration or Copyright Registration procedures can help ensure that they stay yours legally.

Trademark Registration

Before we get started with TradeMark Registration, let’s first ask yourselves What is a trademark?  A trademark is basically a recognizable sign, design, expression which distinguishes them as unique and as an Intellectual Property of a particular individual or organization. The word “expression” constitutes slogan, photograph, logo, graphic, color combination, sound or even smell. In most cases, however, brands look to trademark the brand name or logos. For eg. Nike’s Slogan “Just do it” and their swoosh icon are all registered trademarks. Trademark registration can help protect your startup idea and the benefits could also ensure you form a company with the brand name of your choice.

NOTE: Trademarks for Services are called Service Marks(SM)

Trademark Registration Procedure

The procedure for trademark registration is simplistic and involves the following steps:

> Conduct a Trademark Search – To file a trademark you need to ensure that there is no infringement of existing trademarks Trademark Search is a very critical and crucial step towards registering your own trademark(s). Apart from the legal ramifications of trademark infringement, a conflict between your proposed trademark and an already existing trademark could potentially lead to the tarnishing of your personal brand which you worked very hard on, undoing all the hard work behind it.
> Identify your Trademark Class- Depending on the type of product or service, In India, trademarks fall under 45 classes. You can check which classes of trademarks fall by following the link: Trademarks Classes in India.
> File your Application – File the application with appropriate Documents for trademark registration along with the prescribed fees. After filing the application for the trademark you can safely use the TM (TradeMark) or SM(Service Mark) symbol. This basically indicates that trademark is pending for the IP and alerts competitors of possible infringements
> Trademark Jornal- Your trademark gets published in the Trademarks Journal where a hearing is conducted on it for possible objections.
> Certificate Issue-  If no objections are raised against the trademark, a Trademark Registration certificate is issued. Including everything, a trademark is registered in about 18-24 months and are valid


Worry - Free Foreign Patent Rights - Things You Should Know

By: Michael J Foycik Jr. 
October 11, 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.

Foreign filing – it may be one of the biggest choices facing anyone with an invention or a pending patent application. What if your invention is so successful that foreign copying becomes a problem? Here are some things you should know.

First, the right to file in foreign countries – that is, foreign priority rights – can be valuable. And not just to you, but to anyone wanting to purchase/license those rights.

Second, foreign filing is expensive. It is so expensive, many companies have to target selected countries. It would be best to file for patent protection in countries where the product is doing well.

Third, there's a way to delay your foreign filing. A US utility patent application provides a one year grace period for PCT filing (Patent Cooperation Treaty filing) as well as in most countries.

Fourth, a PCT application provides typically 30 to 32 months additional time in which to designate individual countries. Thus, the PCT application is very useful even though by itself it cannot confer specific patent rights in specific countries.

Fifth, if your product is successful, yet not so successful that you can spend freely on foreign priority rights, there is room for optimism. Many corporations would be happy to invest in a successful product in order to acquire foreign rights. Specifically, such corporations would be willing to pay the foreign patent costs in exchange for foreign marketing rights. In those situations, you'd still likley get a portion of the proceeds from foreign sales, but without the aggravation. Or, you might even consider selling the foreign rights for a lump sum.


Protecting your business’ intellectual property

By: BusinessNC

What are patents, trademarks, and copyrights? How does obtaining these intellectual property rights, or “IP” rights, help create value for your business? Unfortunately, there are no short answers to these questions. With that being said, in this article we attempt to make the subject of IP more accessible and provide a pathway to understanding how IP can be used to protect the products that your business has spent blood, sweat, and capital on, and also how it can create growth and value for your business.

A patent issued by the United States Patent and Trademark Office is an IP right that grants the patent owner the right to exclude others from making, using, or selling, or importing the invention covered in the patent. In order to obtain a patent, the invention must be a machine, apparatus, process, plant, or composition of matter. Although abstract ideas or mathematical formulas are not patentable, in some instances software is patentable.

There are several different types of patents, including utility patents, design patents, and plant patents. Utility patents, which include provisional patent applications and non-provisional patents, are by far the most common, followed by design patents. Utility patents protect the functionality of an invention. While a provisional patent application cannot itself become a granted patent, it can be used to establish a filing date and later be used as a basis for a non-provisional patent application claiming priority to the provisional patent application. A non-provisional patent typically has a term of 20 years from the earliest effective filing date, with some adjustment possible for time delays. Periodic maintenance fees are required to keep a non-provisional patent in force. Design patents protect the ornamental design of an invention and have a term of 15 years from the date the patent is issued. No maintenance fees are required to keep a design patent in force.

The most obvious reason for filing a patent application is to protect the years of work and capital invested in your product. Since you or your business invested the time and money in the product, providing an ability to stop others from copying your product is one of the main reasons why patents exist. Obtaining a patent on your product, however, can also help your business in other ways. Patent licensing allows you to give certain rights to others to your invention, for a fee, and can result in extra income without having to invest any additional capital into your own business. Moreover, if your business plan is to be acquired by a larger company or a merger is in your future, having valuable patents in your list of assets can result in a competitive advantage at the negotiating table. Patents can also be used as collateral to obtain new rounds of funding if your business is looking to expand. These are just some examples of how patents can create value for your business beyond the legal monopoly granted by the Patent Office.

Trademarks are IP rights that protect signs, symbols, names, and colors that are source identifiers for products and services. Product configuration trademarks also can be pursued to protect product designs via trademark rights. Although some trademark rights exist without registration, obtaining a federal trademark or service mark registration not only provides a tool that can be used to prevent others from using an identical mark as yours for the same goods, but a federal registration also can be used to prevent others from using a mark that would create a likelihood of confusion. This type of protection is, therefore, quite broad. As long as they are continuously used and have not become generic or cancelled, federal trademark registrations have a term of 10 years and can be renewed in perpetuity. Federal trademark registrations have been granted for particular color combinations, jingles or short musical pieces associated with a business, and even particular scents. The key is that the trademark is used to identify the source of the product or service as that of the entity that owns the trademark.


New Technologies Worth Investing In

By: Michael J Foycik Jr. 
October 2, 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 want to find the hot new technologies, and invest in them.  Smart!

When a techology gets “old” there are too many companies in it, driving down profits.  And, people get tired of new product announcements in old technologies.  For example, when was the last time you got excited about an ad for tires?  Yet there was a time when many people would get excited about such an ad.

So, what's hot?  What has an open field ahead of it?  What has room for growth?  It really is possible to answer those questions, if you know how.  Here are a few tips.

First tip: find a field that has not been updated lately.  If it is in the news every day, though, chances are it is very updated.  For example, solar power is updated.  Cell phones too, and cameras, and televisions sets.

So what hasn't been updated?  What has a real future?  Easy!

Tip one: look at change.  For example, natural gas has dropped in price, and vast reserves have been discovered.  This means a sharp downward trend in natural gas prices.  What products will benefit?  We know that natural gas is even safe in the home, so anything goes.  Good fields for investment therefore will be anything that uses natural gas, yet hasn't been widely sold and has few competitors in the field.  If only we could discover what those products are!

It turns out that we CAN find those products.  Specifically, you CAN find what new things use natural gas, which companies are making them, and many other worthwhile details.  Here's how, so keep reading.

You can locate those products and the companies of interest, using patents as your guide.  That's not too hard – you can search on any patent site and limit your search to just the current year and a specific search term.  Easy!  And, issued patents often show the Assignee, i.e. the company that owns it.

Further, once you know your technical area of interest, is the Class/Subclass search.  The issued patents of interest will show their Class/Subclass, and you might want to start with those.


Intellectual Property in the Age of 3D Scanning and 3D Printing


A few weeks ago, Sean passed a couple of links my way regarding the questions surrounding the trademarking of point cloud data. He asked for my opinion and, after emerging from the rabbit hole nearly a month later, I’m still not sure exactly what my opinion is. However, I am sure that the questions brought forth are both thought-provoking and in need of consideration by anyone that works or plays in the reality capture space.

Let’s start where Sean dropped me in to this and see where it goes…

The post he sent me was “Why 3D Scans Aren’t Copyrightable” by Cory Doctorow. The post is basically a summation of the work of Michael Weinberg who is the General Counsel for Shapeways which is a company/community built around 3D printing and 3D design. I must admit that my first instinct was one of suspicion: Of course the attorney for a 3D printing company thinks that 3D scans are not copyrightable, it’s in his employer’s best interest! However, after taking the time to read his other papers, I do think that he is right–you can’t copyright a scan. However, getting around the rules that make him right are so easy that I’m not sure it will matter the way we think.

Let’s go a bit deeper by defining a few terms that we will need to use

> Physible: a dataset that is capable of being manufactured as a physical object using a 3D printer or DNC machine.
> Copyright: the exclusive legal right given to an originator or an assignee to print, publish, perform, film, or record literary, artistic, or musical material, and to authorize others to do the same.
> Patent: a government authority or license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention.
> Design Patent: a form of intellectual property protection which allows an inventor to protect the original shape or surface ornamentation of a useful manufactured article
> Trademark: a symbol, word, or words legally registered or established by use as representing a company or product


Getting Investors - Ultra Quick Tips

By: Michael J Foycik Jr. 
Septemper 18, 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.
So, you need an investor.  Probably to start a new business and launch a new product.  Here's a very short yet useful guide.

Get a distributor.  Yes, they don't sound like investors, but it helps to see them that way.  Why so?  A typical one will bear the costs in some way, and help sell the product.  These things are what a good investor would do.  Typically, with a new product, you can expect to get anywhere from 2 to 9 percent of the selling price, though this can vary.

Sell though a TV marketing company – you know the ones.  You see them on late night television, or on cable channels that sell goods.  And yes, they don't sound like investors, but it will help to look at them that way.  A typical one will help with the costs in come way, and perhaps even with the development and testing of the product.  These are things a good investor might do.  Typically, one might expect anywhere from 2 to 4 percent of the selling price.

Source >>

Square Notches Patent for Crypto Payment Network

By: Jocelyn Aspa

Digital payment service provider Square (NYSE:SQ) has officially upped its game in the cryptocurrency world.

On August 21, it was revealed by the US Patent & Trademark Office (USPTO) that the company’s cryptocurrency payment network has been approved. According to the documents, the system will allow users to pay in any currency of their choice with merchants being able to receive any currency.

The patent application was initially filed by Square in September of last year.

In the abstract, it said that the current technology supports cryptocurrency payments but will improve the transactions “in a way that takes advantage of benefits of such transactions while overcoming drawback such as delays in processing.”

Square describes the present technology allows a first party to pay in a currency of their choosing while allowing the second party to receive the funds in any currency.  As a result, the technology is beneficial in that it eliminates barriers to transactions that could “inhibit international commerce, or commerce with certain types of currency.”

“The disclosed technology addresses the need in the art for a payment service capable of accepting a greater diversity of currencies including fiat currencies … and non-fiat currencies including virtual currencies including cryptocurrencies … commercial paper … and securities,” the document explains.

The patent also says that with the inclusion of a trusted payment service, the current technology can bump up the trust in transactions occurring in more than one currency.

“Such increased trust can also be an important benefit of the present technology when a party to the transaction wishes to remain anonymous to another party in the transaction,” says the document. “Anonymity can reduce trust, and in some cases, transactions with anonymous parties can even be illegal.”

That being said, Square’s patent says the technology has methods in place surpass those concerns, particularly as it relates to cryptocurrency transactions.

While Square has traditionally been a fintech and mobile payment solutions company, it has certainly been making its presence in the crypto space known–at least in the long term.

In its Q2 financial results issued in early August, the company reported US$37 million in revenue related to bitcoin. However–the company spent almost that amount to offer cost-free trading cryptocurrency trading on its Square Cash App, which was launched in January of this year.

Square holds a select number of cryptocurrencies in the app on behalf of its users so they can buy and trade bitcoin instantly. In that regard, the company’s patent also alludes to the potential for bitcoin payments being done through the app. The company first began trading bitcoin late last year.

The last trading week has reflected positively on Square’s share price. Case in point, on Wednesday (August 29), CNBC reported that Guggenheim named the company as the best “new idea” and “highest conviction name” in the fintech space. As a result, the company’s share price rocketed by 6.12 percent on Wednesday alone to close the trading session at US$85.70.

Following the patent application details on August 21, shares of the company have increased from US$75.19, representing a 14 percent increase.

CNBC further reported that the firm raised the share price target for Square from US$75 to US$100.

Source >>

Getting Investors – Surprising Types

By: Michael J Foycik Jr. 
September 16, 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.

So, you need an investor.  Probably to start a new business and launch a new product.  Here's a very short yet useful guide to some surprising types of investor.

Get a distributor.  Yes, they don't sound like investors, but it helps to see them that way.  Why so?  A typical one will bear the costs in some way, and help sell the product.  These things are what a good investor would do.  Typically, with a new product, you can expect to get anywhere from 2 to 9 percent of the selling price, though this can vary.

Sell though a TV marketing company – you know the ones.  You see them on late night television, or on cable channels that sell goods.  And yes, they don't sound like investors, but it will help to look at them that way.  A typical one will help with the costs in come way, and perhaps even with the development and testing of the product.  These are things a good investor might do.  Typically, one might expect anywhere from 2 to 4 percent of the selling price.

Go to an investment club.  There are surprisingly many if you look.  Try online searches, and word-of-mouth if necessary.  Ask around, especially in local businesses, where the owner might well belong to such an investment club.  A good investor will take about 10 to 50 percent of your business, in exchange for investment money and possibly expertise.  A good investor will know how to help you succeed!

Press releases!  There are companies that do those.  The more press releases, the better.  Put up a web site so investors reading the press releases can find you.

Be your own investor!  Surprisingly, if you start small, you can experience exponential growth.  Say, start with one store in a chain, offering them goods on a consignment basis.  You may well be able to fund the product costs on such a small basis, until the revenue comes in.  If the product sells, the store will usually want to expand to a few other stores in their district.  Again, you'll be ready to expand production as the revenue comes in.  Slowly but surely!  If the product continues to sell in those stores, that chain may take it district-wide.  Again, revenue comes in, and you can fund the production yourself.  Finally, sales may expand country-wide, a huge jump.  By then, you will either have the money to fund it yourself, or a line of investors eager to fund it for you.




The patent, which specifically details how a computing device would manage blockchain encryption tags, is the continuation of a proposal for a cryptocurrency online vault storage system that Bank of America first began developing in 2014. The patent envisions a future in which cryptocurrency is widely adopted by the general public but that consumers still entrust their funds to custodians such as banks rather than maintaining their own private keys.

Bank of America, the second-largest banking institution in the United States, has filed another patent application for a system that manages cryptocurrency storage in an enterprise environment. Public documents published on Thursday by the U.S. Patent & Trademark Office (USPTO) show that the Charlotte, NC-based firm has furthered its research into securing private keys in an institutional organization. The company first applied for this patent in April.

“Enterprises may handle a large number of financial transactions on a daily basis. As technology advances, financial transactions involving cryptocurrency have become more common. For some enterprises, it may be desirable to securely store cryptocurrency.” Along with corporate giants such as Walmart and IBM, Bank of America has been among the United States’ most prolific investors in blockchain research. The firm has applied for dozens of blockchain patents over the years, including quite a few that involve cryptocurrency in some capacity.

In addition to its online vault storage system, the bank also applied for a patent for a cold storage system, as well as systems through which it could facilitate cryptocurrency payments and real-time conversion. However, that’s not to say the bank is bullish on bitcoin and its peers, at least in their present, decentralized forms. Bank of America executives have criticized bitcoin on multiple occasions, saying at various times that it is a “troubling” payment system and that investors should not be optimistic about its potential as a speculative investment.

The firm has also barred customers from using Bank of America-issued credit cards to purchase cryptocurrencies. Nevertheless, the bank admitted in its latest annual report that cryptocurrency adoption is a threat to its business model.

Source >>

Let's Sue That patent Infringer - Or Maybe Not!

By: Michael J Foycik Jr. 
August 23, 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.

Someone is infringing your patent.  Now you want to rush out and sue them!  Let's stop and talk about that for a minute.

The best reason to wait: that infringer is promoting your product, which takes time, money and effort before it pays off.  So, let them do it for a while, and then swoop in!  You shouldn't wait too long, perhaps a year or two or three, although some case law suggests that you can wait six years to sue.  Don't rely on that, of course - in a specific case your patent attorney should verify and recommend specific deadlines. 

 Let's just mention that there can be a number of defenses to a patent lawsuit.  Such defenses depend on the answers to the following (and possibly other) questions, such as: Was the infringer actually the first to use it?  Can your patent be challenged?  Were you actually damaged?  Is the alleged infringer's device/product really close enough to your patent to infringe its claims? 

Now let's say there are no defenses to the lawsuit, and victory is absolutely certain.  This is very hypothetical, of course, since there is always some uncertainly.  But, assuming this perfect situation, should you still go ahead and sue?  The answer may be “no” for a number of reasons!

So don't sue?  Why not?  Well, for starters, if the infringement was for a small number of products, you are unlikely to get meaningfully large damages.  It is very easy to spend more money that you can recover.  That's right, you can win the lawsuit and yet get little or no cash.

If the court finds in your favor, you can ask for actual damages, and/or lost profits, and/or attorneys fee, and/or costs, among other things.  Notice I said you can ask!  However, asking is not the same as getting.  Worse, it can be difficult to prove lost profits or actual damages.

Even in a good case, with ample proof, it can be difficult to get a damage award that really compensates for the time and effort of litigation.  Money is not the only cost of litigation.  And, a damage award is not the same as actually receiving money, since defendants may not have assets to cover the damage award, may declare bankruptcy, and may even simply hide their money.


Daimler granted partial summary judgment in trademark violation case involving wheel sellers

By: Chandra Lye
Aug 22, 2018

SAN DIEGO – The U.S. District Court for the Southern District of California recently granted partial summary judgment to German-based Daimler in a trademark and patent infringement case.

Daimler, the parent company of Mercedes-Benz, sought partial summary judgment in its suit claiming A-Z Wheels LLC and several other defendants violated trademark laws by selling car parts similar in design to Daimler products. Daimler also requested partial summary judgment on their counterfeiting claim and design patent infringement claim.

U.S. District Judge Janis Sammartino heard oral arguments in the case Aug. 8 and filed her decision Aug. 13.

“Plaintiff claims defendants are using plaintiff’s trademarks in connection with the manufacture, offer for sale, sale and distribution of wheels which are not manufactured, authorized or sold by plaintiff,” court documents said. “Plaintiff also claims defendants are reproducing, manufacturing, selling, and distributing wheels which blatantly copy issued design patents in various distinctive and artistic wheel designs owned by plaintiff.”

“The court agrees with defendants’ preliminary argument in that it is plausible that a person buying a wheel rim on the internet, sight unseen, would do his or her research and look closely at the products," the ruling said. "However, even if the hypothetical consumer were to spend time looking at defendants’ products on, there is nothing on the website that would ease plaintiff’s concerns of confusion,” Sammartino wrote.

“Even if a consumer were to read the entire product description of the wheel on, for example, eBay, that consumer would most likely not be alerted to the fact that the wheel is only a replica. Nor would the consumer be alerted to the fact that Mercedes does not condone the sale of the wheel. Therefore, this factor does not weigh in defendants’ favor,” the ruling said.

Sammartino also noted that Damiler had proven that consumers would be confused by the duplicate products. “In this case, when defendants are using plaintiff’s exact trademark with the intent of selling replica products, without always using the word replica on the website, the court finds there is no dispute that plaintiff has proven a likelihood of confusion,” the ruling said.

With regards to the design patent infringement, the court said, “An ordinary observer would be deceived and could be induced to purchase defendants’ product over plaintiff’s. There are no sharp distinguishing features between the two designs against the context of the prior art. Plaintiff has therefore met its burden in proving design patent infringement.”

Source >>

What Does A Patent Lawsuit Cost ?

By: Michael J Foycik Jr. 
August 23, 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.

Patent infringement is a highly charged subject, and I have seen how it affects the patent owner.  A lawsuit would seem like a wonderful solution.  But, what should it cost?

Though I have heard many numbers, it is all just hearsay.  Even so, it may be helpful to say it.

A contingency attorney might take the case, but may require an ownership interest in your company of 50 percent or higher.  Is it worth it?  Maybe so, if that's the only way to go forward.  And why the high ownership interest?  Easy – to have control to ensure payment in event of a victory.

A very small law firm or individual attorney will often charge less than a large firm.  I have heard stories wherein a plaintiff might pay somewhere between 20k and 60k, depending on if/when it settles.  Higher numbers are possible when it goes to trial and there are many issues.   Is this a good value?  That depends – if you can only afford that much, then there's simply no choice.

A big company practically must use a large law firm for its reputation and size.  There is great variation, but one should expect to pay for that large size and reputation.  I have heard a number of experienced litigators say to simply add a zero to the numbers used for a small law firm.  Is it worth it?   That depends, but I have seen examples where it was well worth having a large firm do the litigation.

Where's that money go, anyway?  Well, a portion goes to filing or answering the Complaint; attending to discovery and motions related to discovery; depositions and court reporter costs; various court hearings where attendance is required; and finally for the trial itself (if it goes that far).

If you're the plaintiff, you'll have some control over the costs.  If you raise more issues, then the cost will be higher.  Or, if you challenge everything using Motions, then your costs will skyrocket.


5 Things Every Entrepreneur Should Consider Before Filing a Patent

By: Amit Aggarwal

The number of patents being filed in India is rising nearly every year. Indian entrepreneurs realize that securing patents present an opportunity to be rewarded for the effort and research done by them. A patent that is successfully applied to a useful innovation also presents the opportunity to outsmart the competition. Additionally, a useful patent is also more likely to attract investors, funding, and partners who are eager to join an entity that has successfully filed the patent.

Filing a patent is an important decision that demands certain key factors be considered beforehand. A few critical issues to consider before filing a patent are discussed below.

Research Your Patent

There is a need to understand what makes a patent unique and how it will be advantageous for your startup. It is also important to learn whether the idea or product has already been patented by another entity. For this, a startup will need to study the market and learn whether it is worthwhile to invest in a patent. If no similar patent exists in the market then taking the time, effort and expense to apply for a patent are most likely worthwhile. It may also be worthwhile to apply for a patent if it will create barriers for competitors. This means that if a patent is able to limit research a competitor can perform in a certain domain then the patent can be advantageous to a start-up.

When a Startup Applies for a Patent

A startup may have different considerations than an established company when it decides to apply for a patent. It’s likely that a successful startup has created a technology to help it excel in its business domain. Subsequent to the development of the new technology it may need to decide whether it should apply for a patent at all. For instance, a startup may wish to keep the technology it has developed completely secret to gain an edge over its competition. Because on the other hand, if the startup applies for a new patent for the technology it has created, it makes knowledge of the technology public leaving open the door to competitors to perhaps patent a somewhat similar technology. A competitor may use a patented technology that was developed by a startup to its advantage by developing its own technology using the start-up’s patent. Additionally, competitors may also block further development of a technology developed by a start-up by patenting their own technology.

These are a few reasons that a startup that has created a new technology may not wish to seek a patent at all but rather keep the technology it has developed a secret.

Learn About the Patent Laws in Different Countries

Many of the largest companies and entrepreneurs have struggled with respect to protecting their patents from infringement in certain countries across the globe. This is particularly true when it comes to protecting a patent in China where the price of entry often means sharing technology which is then copied and exploited by local Chinese manufacturers to the disadvantage of the company or startup that originally patented the technology. Every entrepreneur must understand the nuances of patent laws as they apply to different countries and markets across the globe. A startup that is proud of a technology and wishes to exhibit it or to publicly disclose information about the technology must also be considerate of the country or region where it seeks a file for a patent. For instance, leaving aside the Wild West that is China where patents are frequently disregarded, if a startup publicly discloses technology it may also be disqualified from owning a patent in a large and well-developed market like the European Union.


Patent Application – What to Expect After You File One

By: Michael J Foycik Jr. 
June 21, 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.

So you're an inventor with a patent application!  What happens now that it has been filed with the US Patent Office?  Here's what to expect.
First, you'll get your Official Filing Receipt – it is actually pretty important.  Sure, you'll get an electronic filing receipt if you filed it online.  But, that's not what matters.  The Official Filing Receipt is the easiest and fastest way to get your foreign filing license.  And you'll want that, if you ever intend to file in other countries and need your US priority date.

If the US Patent Office has any objections to the drawings, specification, or abstract, they'll (usually) notify you at the same time they send the Official Filing Receipt.  Formal drawings are the main type of objection – you'll need those.

After a period of time, typically anywhere from six months to two years, you'll get your first Office Action.  That's typically where the patent examiner reads the case, searches for the claimed invention, and applies the prior art to the claims.  This is also where the examiner can make objects, for example objections to claim language, to errors in the specification or drawings, or other things.

The first Office Action could, of course, be an allowance.  Those are not that common.  If your application is allowed, there is an Issue Fee due that varies depending on your inventorship status (micro entity, small entity, or non-small entity).  There is also a publication fee due, too (if the application was published).

Assuming you didn't get an allowance, then you'll have the option to respond to the First Office Action.  Typically, your Response would meet any objections by amending the offending parts.  And, your Response typically would provide remarks in support of patentability, such as explaining how the invention as claimed differs from the applied references.  Your Response likely will also include an amendment to the claims to recite a feature not found in the applied reference, and this is one way to overcome an applied reference.


From student to startup: 3 things I learned

By: Stafford W. Sheehan, Ph.D.

Staff Sheehan is an electrochemist and president of Catalytic Innovations. He received his Ph.D. at Yale University, was named one of the Forbes 30 Under 30 in the energy sector in 2016 and was among the CAS SciFinder Future Leaders in 2015 and Chemical & Engineering News Talented 12 in 2017. Passionate about helping to solve the climate change problem, Staff has been steadily making progress toward climate-friendly devices that will reduce carbon dioxide emissions.

Over three years ago, I decided to take a leap of faith into the world of chemistry startup companies. My first idea was to take practical solutions for reducing energy consumption from the research lab into the real world. After taking the plunge, Catalytic Innovations has been generating sales and growing after three years, but it’s not been easy.

It's fair to say that this career decision was not without its share of challenges. It was, and still is, less conventional than traditional academic, consulting or industrial routes for a young Ph.D. graduate. It means going from an environment with a wealth of resources at a university to an incubator with just you, your great idea and an internet connection.

During my Ph.D. at Yale University, I studied artificial photosynthesis, which is the conversion and storage of solar energy using chemical bonds in a carbon-neutral fuel. Intellectual property (IP) in this field centers on the catalysts and systems that can perform the desired reactions. This is an area with tremendous potential for innovation. Making fuel or fine chemicals from air has many important applications in renewable energy and toward solving the global problem of climate change, something I'm very passionate about. This became the focus for my company.

In this blog post, I'll discuss how I overcame the challenges I faced with my startup and outline some tips for young entrepreneurs thinking of doing the same.

Protect your intellectual property

Whatever a company's focus, in a technical industry like chemistry, IP is the most valuable asset. It is crucial that you have a robust way to protect your innovations that is both efficient and cost effective. Access to comprehensive scientific information resources is critical to building defensible patents and an effective IP strategy.

In the early stages of building the portfolio of technology around water oxidation that my company licenses, solutions such as SciFinder and PatentPak helped me determine an effective patent strategy that ensured we had defensible IP. By having access to the same tools that patent lawyers and examiners have to search prior art, we could execute rapid and rigorous structural searches in the global patent literature, allowing us to draft patents that had the highest chance of being granted. This was fundamental to getting a key patent granted at the U.S. Patent and Trademark Office (while also minimizing legal expenses).

Raise funds with an MVP

Transitioning from a scientist at a research institution to managing a small business comes with plenty of funding issues. Raising money with investors, contract research or grants all have their own nuanced challenges. Becoming an effective fundraiser is critical, even more so than for colleagues in academia, large industry or government. Without money, your small business won't be around for long!

My advice is to think carefully about your minimum viable product (MVP) and start selling it as quickly as possible. Think of something that customers can easily relate to and use. Even if it might not be the best showcase of your technology, if there's demand for it, you can build a business.

A thorough review of the research landscape will help ensure you are considering all relevant applications for your technology, as well as possible competitors. Catalytic Innovations uses water oxidation catalysts, which we intended to use for artificial photosynthesis, as anti-corrosion coatings and for other niche applications.

Expand your professional network

Building a network in your field is useful for business and is crucial to making sure your start-up succeeds. For scientists in the early stages of their careers, I recommend applying for networking opportunities like the CAS SciFinder Future Leaders program and C&EN's Talented Twelve. By participating in these programs, you'll meet a diverse group of scientists to help you gather valuable intel as you embark on a wide range of career paths in academia, industry, government or working in a startup. Joining a professional society, such as the American Chemical Society (ACS), is also a great way to expand your network and enhance your career development.

However, networking for a business isn't as straightforward as meeting new people. When looking for business opportunities, it's easy to fall into situations where your time is not being utilized effectively. When trying to make high-level connections, it is useful to attend events where participants are vetted, as they offer a better chance of yielding a helpful professional connection.

There are plenty of opportunities to apply for programs and accelerators where participants are vetted for entrepreneurs. Groups like Singularity University, Y Combinator, Techstars, MassChallenge, Forbes and many others provide excellent opportunities to extend the reach of your new company and make those all-important contacts. I suggest exploring these options to see what could work best for you.


Why Worry About Infringement – Things To Do First

By: Michael J Foycik Jr. 
June 3, 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 topic of patent infringement in the news.  Should you be worried?  If you are, here's some things to do that should minimize your risk.

If your product needs a component that is patented, you have two options.  One is to buy that component from the patent owner or from an official licensee.  Why?  It carries an implied license.  The other option is to contact the patent owner and negotiate a license, in which case fees may be small. 

What if there's nothing out there like your product, how will you know if you should worry?  You can do a right-to-use patent search.  This is different from a normal patentability search, because you're not worried about patentability – you're worried about infringement.  In a right-to-use patent search, you will search for patents that are expired, meaning more than 17 years old.  If you can find the component or feature that is of interest, then you can rely on it and have a right-to-use.  For a quick and easy patent search, try going to any patent site that allows searching, such as the official uspto site or Google® patents.


Meet Purdue Libraries’ Patent and Trademark Specialist Professor David Zwicky

By: Dave Zwicky

Many at Purdue know about (and have likely benefited from using) Purdue University Libraries’ robust research resources (online and in print), as well as cutting-edge services (e.g., 3D printing, data visualization, data management, research and scholarly communication support… the list goes on). What some individuals may not completely understand, though: How Purdue University Libraries faculty members contribute to instruction, teaching, and learning at Purdue.

In addition to serving as instructors and co-instructors in courses across the disciplines and majors here at Purdue, Libraries’ faculty members also perform important liaison duties to help faculty in all disciplines connect their students to important and authoritative information in their respective fields.

Over the next few weeks, we’ll introduce you to the Purdue Libraries faculty liaisons and share a bit about what they each do in their librarian, instructor, liaison, and/or information specialist roles.

This week, we start by introducing David (“Dave”) Zwicky, assistant professor of library science and chemical information specialist at Purdue Libraries. His liaison responsibilities include the departments of chemistry, chemical engineering, and materials engineering. He is also a patent and trademark specialist, affiliated with the U.S. Patent and Trademark Office’s Patent & Trademark Resource Center (PTRC) program.

His work through the PTRC is an invaluable resource here at Purdue, particularly for those who are interested in patents and want to understand how they are and can be used in business and industry.

“Patents help you avoid repeating work other people have done, they can inspire new designs, and expired patents are pieces of technology that are in the public domain, free to be built upon and adapted,” explained Zwicky. They also let you know what technologies other companies are exploring (they’re a key part of competitive intelligence analysis). And, of course, if you can get a patent on your own invention, that’s incredibly powerful when you want to commercialize it,” he added.

Following is a brief overview, through a short Q&A, of how Professor Zwicky advances teaching and learning at Purdue, through his direct work with students and faculty.

Q. Tell me a bit about your background, what you do here as a faculty member in Purdue Libraries, and your role as the patent and trademark specialist in the Libraries.

Professor Zwicky: As the chemical information specialist, I work with folks in my liaison departments to support research, incorporate information literacy into courses, build collections, and just generally see that their information needs are met.

Before I became a librarian, I was actually a chemical engineer (with my B.S. and M.S. in the field), and I was on my way to a Ph.D., but I decided I couldn’t see myself working in the field. I had worked in my undergraduate university’s engineering library and I knew that STEM and library science could be complementary, so I switched over and got an master’s degree in library and information science. It’s been a great experience, and my two different areas of study and former career practice work really well together.

I’m also Purdue University’s representative to the U.S. Patent & Trademark Office’s PTRC (Patent & Trademark Resource Center) program. We’re an outreach organization affiliated with the USPTO, which tries to help people in our communities learn more about patents and trademarks. This usually means teaching students and entrepreneurs about the basics of the patent system and how they can do their own patent searching.

I do this through courses, through workshops, and through one-on-one consultations. Patents are a different beast than other forms of information, harder to search, and harder to use. One of my specialties is breaking them down and showing people how to work with them effectively. I’ve been a patent librarian for about nine years (at my last job and here at Purdue), and I’m currently the president of the PTRC Association (the professional group for PTRC reps).

Q. Why are patents important sources of information for faculty and student researchers?

Professor Zwicky: Patents are important for researchers for a few reasons. The big, obvious reason is that researchers might want to get patents of their own. If they invent something novel and useful, they may want to patent and commercialize it, which is great for both the researcher and for the University. That said, I really want to get people to think how patents can be useful beyond their entrepreneurial applications. Patents have the potential to give researchers insight into research and development that goes on outside of academia. If you’re working in industry and you invent something important, you may not write an academic article or present at a scholarly conference; you’re almost certainly going to apply for a patent. These publicly available documents dramatically expand the scope of the scientific literature, particularly in applied areas.


Costly Misconceptions About Trademarks

By: Michael J Foycik Jr. 
June 8, 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.

Getting a trademark is a great idea, but things may not be that simple.  There are some misconceptions that can cost time, money, or even loss of rights.

One common misconception is that a registered trademark is necessary to have enforceable trademark rights.  We are all familiar with registered trademarks – the kind with the ® registration symbol.  But, trademark rights normally arise from actual use, even for unregistered trademarks.  State courts can enforce such rights arising from actual use, even in the absence of a federally registered trademark.  No registration, no problem – sometimes.

Getting a registered trademark requires filing a trademark application.  Choices need to be made right at the start: actual use or intent-to-use; type of goods/services; logo or word mark.  These choices can have profound consequences.  Even the U.S. Trademark Office recommends having an experienced trademark attorney help with those choices – you'll see the warning for that in the online trademark  application filing forms and elsewhere.

Actual use sounds better than intent-to-use.  Maybe so - unless there is a conflict with another trademark filed on an intent-to-use basis.  Then, surprisingly, the owner of the intent-to-use to application is permitted to introduce evidence of events that show an intent-to-use that has occurred before the application's filing date.  The actual-use applicant does not have the same rights.  Such evidence of intent-to-use can be scant: a mere mention at a business meeting, or an order for design of the mark, for example.  This is peculiar to federal trademarks; state courts can apply their own standards and might well decide specific cases differently.

Choice of goods/services is important: more is better, right?  Not so fast.  Listing multiple catergories is all good and well, until you have to prove actual sales.  Sure, a Statement of Use might work with the U.S. Trademark Office, but at a cost: forfeiture of rights if untrue.  When it comes time to enforce your trademark rights against an infringer, it may become necessary to have proof of use in specific categories of goods.  Listing a few categories of goods is fine, and once you get your trademark registered your future use in other categories will allow you to file further trademark applications for those additional uses.

Logos are great: typically a logo is a design plus words.  Better than just the plain words, right?  Not exactly.  A plain, ordinary word mark – once registered – covers variations and logos, and sometimes can even cover translations into other languages.  But, again, things are not always simple.  A complex logo might be registrable when the word mark by itself would not be registrable, but those situations do not seem to be very common.  The word mark is a very good way to go.


Intellectual property: protecting your ideas with copyrights, trademarks and patents

By: Gregy Bonney and Brandon Prinsen
August 10th 2018

Virtually every business deals in some way with intellectual property. Whether it’s a restaurant wanting to protect its secret recipes, a computer firm laying claim to newly developed software or a car wash seeking exclusive use of an advertising slogan, most at some point will want to keep their ideas from being used by others.

Generally, the law allows a business to protect its unique ideas through the use of three avenues: copyrights, patents and trademarks. A copyright is the easiest to obtain. Copyright laws protect an “expression fixed in a tangible form” through which the work “can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”

Copyrights apply to both published and unpublished materials, including literary, musical, dramatic, choreographic, pictorial, graphic, sculptural, audiovisual and architectural works, as well as motion pictures and sound recordings. That means the copyright laws allow you to protect everything from your technical, training and employee manuals to your website, company videos and PowerPoint presentations. To be protected, works must be original. In other words, they must be independently created by an author and have some element of creativity. A copyright is not available for inventions since copyright laws protect expressive (artistic/creative) matter rather than useful or functional matter.

A copyright exists as soon as an original expression is fixed in tangible form, and you can use the symbol (©) to designate the copyright. However, it is generally not enforceable until registered. Registration protects your work against a direct copy and allows for a lawsuit to prevent infringement. Keep in mind that if works are registered within three months of publication, registration also allows for certain costs and attorney’s fees upon enforcement.

The standard application fee for most copyright applications is only $35 if filed online, and registration can occur rather quickly. To obtain an application, visit

Trademark registrations are more involved. They cover words, symbols, packaging or other matters used in commerce to identify goods or services and distinguish them from others. Examples are logos, slogans and product or business names.

As with copyrights, federal registration is not required but makes enforcement of your trademark easier. Costs vary widely, ranging from a few hundred dollars to thousands of dollars, depending on the nature of the goods or services to which the mark would apply, as well as current government and attorneys’ fees. The process can also take several months.

Trademark applications have many technical requirements. For example, in addition to a full description of the goods and services to which the trademark applies, you must include a drawing or picture of the mark and examples of how the mark is being used in commerce.

For cursory searches of registered trademarks, visit The use of a trademark attorney is advisable for a more extensive search. If you believe you have common law rights to the mark, you can use the “TM” symbol prior to registration, but the circle-R (®) cannot be used unless the trademark is registered.

Trademark registrations are valid for five years initially and in ten-year increments thereafter if additional filings are made.

Although the federal registration process provides you with the greatest protection, you may also register your mark with your state. However, state registration is primarily designed only to provide notice of a claim to a mark. In other words, a state filing proves when you started using the mark. The process and fees vary from state to state.

Patents are granted by the federal government to acknowledge certain exclusive rights to an invention for a limited period of time. A patent essentially gives you a monopoly over the use of an invention and prevents others from making, using or marketing the invention in the United States and its territories. Patent applications are extremely complicated, and you’re best off beginning the process by consulting a patent attorney.

The process for registering copyrights, trademarks and patents varies greatly in expense, time and complication. But one need look no further than Lin-Manuel Miranda’s Hamilton©, 3M’s Post-it® Notes or Microsoft’s PowerPoint® to see it’s a process that can make a valuable difference to your business.

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Three Things You Should Look For In A Patent Attorney, With Handy How-To Guide

By: Michael J Foycik Jr. 
June 3, 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.

Getting a patent attorney or patent firm?  Get the name of the individual attorney who will personally do the work on your case.  You'll wish to know whether the patent attorney is registered; is qualified in the relevant technical arts; and has a successful track record.  The following explains how.

Why do we care about this?  Because once a patent application is filed, it will be examined by a patent examiner.  Most applications receive an official action with some kind of rejection or objection.  Many such rejections and objections can be overcome, some more easily than others.  Not every patent application is allowed, and therefore the skill of the individual patent attorney comes into play.  The patent attorney must be capable of making convincing legal and technical arguments in support of patentability.  And, the patent attorney must be skilled at claim drafting: amending a claim skillfully may overcome a rejection or objection.  Failure to skillfully respond can result in greater expense and may fail to result in obtaining an issued patent. 

Is your attorney/firm experienced, with many good results?  Since the attorney or law firm name is printed on the front of issued U.S. Patents, you can easily find out what type of patents they handle, and how many have issued.  You can find out by using the patent search feature on the site; type in the name of the attorney in the top blank.  It should find all issued patents with that name in it.  You can do this more precisely at the official U.S. Patent Office site, by going to that site and in the upper right corner click the button “search for patents” where you'll get several databases to choose from.  Select the first one, and a search box comes up allowing clicking on the “all fields” button and changing it to “attorney or agent.”


Using Your Intellectual Property to Escape the 9-to-5

By: Carel Smit

If you're reading this article, then I assume you're sick of the 9-to-5, you've read The 4-Hour Work Week, and you're planning your escape from the cubicle. You've gone to every startup seminar and information session, dreamed up a slick-sounding name, read The Secret (in case you need it) and stuck some of Richard Branson's inspirational quotes on the wall behind your computer.

Related: 3 Ways to Slay the Risk of Bringing a New Product to Market

But, you're still not sure about one thing: What is that crucial first step when starting up?

In my experience, the thing stopping you from launching your product is that you're most likely scared to tell someone about your idea, thinking that it's going to get stolen, corrupted or plagiarized by every Tom, Dick and Sally. Or, you're worried that you're re-inventing the wheel, which is not only mildly embarrassing, but costly.

I know the feeling; I've lived though it myself as an entrepreneur, and I've seen it play out in the excitement that I dealt with in a previous life as a patent lawyer working with startup clients. But, here's the deal -- your own paranoia could be keeping you in that cubicle. Fortunately, there's a way to get over this while also setting your new venture up for success.

The field of idea protection, loosely termed intellectual property (IP), isn't just for gadgets any longer -- it's now a mainstay of how business is done and the sooner you come to realize that, the sooner you can create your own enterprise that uses these IP rights optimally to protect, launch and profit from your ideas.

These IP rights are typically patents for technical inventions (called "utility patents" in the U.S.), trademarks for brands, copyright for artistic creations and design patents for new industrial designs.

Related: What Are They? Domain Names, Business Entity Names, Trademarks.

So, how do you manage these conflicting agendas -- keeping your concept secret while disclosing it to a select few who also have the power to steal your idea from you? Even if you get past that stage, how do you then attract funders, position yourself as a market leader, while throwing shade and making your competitors look as fresh as last Thursday's burrito?

It's seldom that you can find a magic bullet that can hit all of these at once. But, the good news is that, if used and communicated in the right way, IP is a massively powerful business tool that can help you set up your business to not only hit those buttons but also help you create generational wealth.

Sara Blakely famously did this with her Spanx shape-forming undergarments. She'd crafted a rough prototype by cutting the toes off her usual stockings, and realized she had a winning idea. To protect her idea and make her product look more "technical," she filed a patent application for her concept, before securing the help of a manufacturer. This catalyzed her launch into Nordstrom and became the first steps toward building her multibillion-dollar enterprise.

So, what are the easiest ways for you to use your early stage IP to overcome your paranoia, position yourself in the market and set yourself up for success?

1. Using IP-based agreements

In the early days, before you even know how viable or defensible your idea is, you can tie in developers and collaborators with a confidentiality agreement to at least bounce the idea off them and see whether it is actually technically feasible. These agreements are never watertight and can't be enforced against someone that's come up with the same thing independently (that's what a patent is for), but at least they show that the intention was to keep the idea secret to preserve your patent rights.

If things go well, you can perhaps also get them to sign a development agreement that expressly states that not only the eventual product, but also the intellectual property residing in the idea, is to be made over ("assigned") to you or a company you might set up.

Related: How to Avoid Trademark Infringement

2. Getting the Patent Office to do the heavy lifting

One of the most effective ways of using the IP system to your advantage is to leverage the search reports that are generated by the Patent Office. Sure, you can do your own free patent search or you can pay a patent attorney to do this for you. But, if you'd like to get up and running you'll most likely need to attract the attention of investors and convince them to part with their money.

Investors want to know that their money is safe and that they're not investing in something that is merely a copy of something else that's already out there. And the best way of convincing them about this is to get an impartial third party such as the Patent Office to do a search that shows which aspects of your idea are new and inventive.


Get a Patent, Sue Competitors – Can it Really be that Easy?

By: Michael J Foycik Jr. 
May 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.

True, a patent confers a sort of monopoly.  Also true, one of the intentions of patent law is to reward an inventor with a competitive advantage.  But, exactly what does that mean, and is it that easy?

Patent rights are defined by their claims.  A competitor infringes a patent if their competing product has each and every recited element of at least one claim of the patent.  That competing product will still infringe if it has more elements, but not if it has fewer than recited in that claim.  Sometimes, an element in a patent claim can be stretched a bit by a court of law, to cover equivalent structures.  So far, so good.

But, there are defenses to allegations of patent infringement.  For example, the competitor might be able to show their product is the same as that shown by an expired patent.  So, expired patents can provide protection to your competitor, since once a patent expires it becomes part of the public domain.  Other defenses may also arise from a competitor's own prior patent.  Or, the competitor may be able to invalidate your patent, for example based on other prior art or issues of fraud.  Just owning a patent might not be enough in these cases.

Let's say your competitor does infringe, has no valid defenses, and cannot invalidate your patent.  Great, right?  Not so fast – patent litigation costs real money, sometimes big money, so if you sue it has to be worth it.  Small time infringement would likely result in very small damages, and your litigation costs could easily exceed the damages you recover.  It may pay to wait until damages have mounted, or it may be necessary to simply overlook small or token infringements.

If a big company infringes in a big way, it may well pay to sue them for patent infringement.  Let's say the big company is infringing, is making big money, and has no valid defenses.  They still have two main options: offer you a license fee, or engage in a long and protracted litigation and hope you run out of money.  The costs of litigation include discovery costs, motions and answers, depositions and interrogatories, and more.  That adds up fast, even if your litigation attorney works for free, which is not likely.  Contingency litigators are scarce in the patent field, are in high demand, and can command exorbitant rewards if they are successful.


Start-ups and Intellectual Property


When it comes to establishing a new brand or business, intellectual property protection could prove to be invaluable.

All businesses have intellectual property, whether it’s their logo, original designs, or even a trade secret. This can act as a valuable asset giving start-ups a competitive edge, as such, it needs protecting.

What is intellectual property?

The term ‘intellectual property rights’ describes a range of legal rights that can attach to certain information, ideas and creations such as inventions, names and images.

They generally fall into two categories. Unregistered rights for which protection arises automatically, this includes copyright, unregistered design rights and rights in unregistered trademarks.

There are also registered rights which include patents, trademarks and registered designs. An application must be made to an official body to protect these rights, for example the Intellectual Property Office in the UK.

The owners of such rights are entitled to prevent their unauthorised use and can also exploit them to generate an income.

Type of intellectual property protection

Copyright – copyright automatically arises when an original work in a relevant category is created. Due to its automatic protection it is one of the most simple intellectual property protectors and it provides the owner with a number of rights and legal benefits to prevent unauthorised use and exploitation of the protected work.

Trademark – this is a registered right in which is applied for at the Intellectual Property Office. There are specific requirements such as it being a distinctive sign which is used to identify particular goods and services provided by that business. The trademarked sign must be distinctive and not misleading. It cannot be identical to an already registered trademark.

Patents – patents are one of the most effective ways of encouraging innovation and improvisation by ensuring inventor’s works are protected and that they are being rewarded. Patents last for 20 years in which the owner can exploit their right as they wish. Patent applications are lengthy and complicated, however the grant of a patent will greatly benefit the business.

Industrial design protection – this protection allows you to protect the aesthetic aspects of a product such as surface decoration. Industrial design protection only takes into account the aesthetic aspects and does not consider the functionality of the product.

The importance of intellectual property protection

Intellectual property can be used a unique investment opportunity and allows your business to be differentiated from others. Intellectual property creates good value for your business and a high entry barrier is created allowing you to develop your business without the threat of competitors using your ideas or branding. Intellectual property creates a competitive advantage for start-ups.

The benefits of protecting your intellectual property

Intellectual property can differentiate your business from others, from a customer and investor perspective. It allows customers to distinguish and easily identify your brand. Investors may be more attracted to your business if they can see that you have protected your intellectual property.

As mentioned above, when intellectual property rights are registered you are entitled to exploit those rights. This is an advantage as it allows additional revenue by selling or licensing your intellectual property.

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What Happens After Filing a Utility Patent Application

By: Michael J Foycik Jr. 
May 19, 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.

One of the important but little-discussed subjects for inventors is what happens after filing of a Utility Patent Application.  Here's a brief guide.

Initially, the US Patent Office studies the application papers for formalities.  These formalities include such things as the signed forms, whether the drawings are sufficiently formal, whether specification required information is provided, and so on.  If any problems are found, a Notice is sent to the applicant, and a period for response may be set for those problems that can be corrected. 

The next stage is the patent examination itself.  This is where the patent examiner takes up the application for study.  Usually the patent examiner is an expert in the subject matter of the application.  The examiner will search the prior patent art, including patent publications, to locate the most relevant references to the invention as described in the claims.  The result of this will be a first Office Action, which is usually a statement of objections and rejections, but can sometimes be a first action allowance.

The applicant can respond to the first Office Action, and is normally given a set period of time to do this.  The response can include changes to the specification, drawings, and/or claims.  Such changes are usually to overcome objections and/or rejections, and to further emphasize the novel features of the invention.  Additionally, the applicant can provide remarks in support of patentability.

Of course, many other things might occur beyond those described above.  Those are less common, and though important, are not discussed in detail herein for the sake of brevity.  A short and incomplete listing is: restriction requirements, election requirements, statutory double patenting rejections, and/or non-statutory subject matter rejections.

Following the applicant's above-mentioned response, the patent examiner can either allow the application, or issue a further rejection.  The further rejection is usually a “final” rejection, but the applicant can still respond within a set period of time.  The difference is, the examiner does not have to examine the response but can optionally do so, typically in order to allow to application.


Intellectual property strategies for startups

By: Benjamin Lehberger

Intellectual property protection is an important consideration for most startups. Obtaining intellectual property protection, such as patents, can minimize competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. In formulating an intellectual property strategy for your startup, consider the following.

File early, and keep quiet

Your time to file for patent protection is limited and patents should be contemplated early on in development. In the United States, an inventor has a one-year “grace period” from first publicizing an invention to filing for patent protection, after which it is too late. However, you should not wait even that long. In 2013, the U.S. patent system switched from a first-to-invent to a first-inventor-to-file system. This subtle difference in terminology could mean dire consequences for those who delay seeking patent protection.

Under the old first-to-invent system, you could be the first to conceive of an invention and still obtain patent rights over an earlier filer by showing that you conceived first and continued to diligently work on your invention. Today, it is a race to the patent office. Regardless of who conceived of the invention first, the first one to file their patent application “wins.”

Also, it is important to note that the one-year
“grace period” to file a patent application is not available in most countries outside of the United States. If you plan to seek patent protection abroad, publicizing your invention at any time before filing a patent application could put your foreign intellectual property rights in jeopardy. Therefore, file early and keep quiet until you do.

File again as the invention evolves

As your startup continues to develop its product or products, consider each new feature as a possibility for patent protection. Startups that file one early patent application and stop may find that, once the patent issues, the product has moved far beyond what was in the original patent application. The product may end up being under-protected or not even covered by the patent at all.


Myths and Misconceptions About International Patent Applications

By: Michael J Foycik Jr. 
May 9, 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.

Wondering about filing an international patent application?  There are some myths and misconceptions about international patent applications, including what that phrase even means.  Let's talk about that.

Myth: an international patent application can be filed that, when granted, turns into a patent giving patent rights in all countries.  Fact: there is no such thing.  This is probably the biggest patent myth.

Misconception: a PCT application is like a US patent application, and can turn into an issued patent.  Fact: a PCT application is more like a bookmark in time, holding the date for other, later applications called “national stage” applications.   A short explanation about PCT applications is in the following paragraph.

Most would think “PCT application” (Patent Cooperation Treaty application) when talking about international patent applications.  Yet it is not a traditional application in the usual sense of that word, and so is a little tricky to understand.  A PCT application is like a US patent application in some ways: it grants “patent pending” status; it confers rights to its filing date as a priority date for filing other patent applications; and, it grants a period of time in which to file other patent applications.  However, it is unlike a US patent application in that it does not directly mature into a patent, and the time period conferred is different.

Misconception: a foreign patent is equivalent to a US patent.  Fact: the protection afforded by a granted patent differs widely among countries.  For example, a US patent confers protection that is considered very broad, and legal rights are as strong as other property rights.  In some countries, a granted patent may have little practical value, or may be costly to enforce, or may only cover what is specifically shown and not variations.  It is important to know the legal rights conferred in a specific country, before filing a patent application there. 

So, how does a PCT application turn into a patent?  This is done by filing a national stage application based on the PCT application.  Here's a simple example: a PCT application designates two countries, China and Germany.  If the applicant decides to obtain patent protection in those two countries, then a national stage application must be separately filed in both countries including national stage fees.  The patent applications will be separately examined in China and in France, and there will almost certainly be legal costs associated with those applications.   If thirty countries had been designated, then thirty separate national stage applications may need to be filed.  It may be possible to save costs in the future: an EU application will reportedly cover all of the EU countries in the near future, with a single filing fee and a single examination process.


The Four Types of Intellectual Property

By: MotiurSoft

Intellectual Property

If you own a business or are thinking about starting a new business, you should familiarize yourself with what is known as intellectual property. Intellectual property is a phrase used to describe certain legal rights that people may hold over "creations of the mind," such as works of art, writing, inventions, designs, ideas, music, or choreography. There are four main types of intellectual property – copyright, patents, trade secrets, and trademarks.


A copyright is a form in intellectual property that protects the original authors of both published and unpublished creations. The rights of authorship for these works remain solely the possessions of the originator for a specified period of time under copyright law. Once the time period has elapsed, then these works are open to others for reproduction and republication.

Copyrights are registered through the US Copyright Office. Copyrights filed in or after 1978 will last for the entire of the author's life plus 70 years after his or her death.


Patents are legal property rights applied toventions (as opposed to works of any kind of art or literacy), and they must be distributed by the United States Patent and Trademark Office. Typically, patents apply to such items as processes, machines, manufacturing designs, biological discoveries, or "compositions of matter."

Like copyrights, patents are available to the inventors for only a certain period of time before they expire. Patents generally last for 20 years after the date on which the patent application is filed.

Trade Secrets

Trade secrets are practices, designs, formulas, processes, recipes, or ideas used by a company that allows it to gain leverage in its industry. Typically, trade secrets are hidden hidden by one's own means, as opposed to being protected through government policies such as patents or copyrights. An example of self-protection commonly used with trade secrets is locking the pertinent information away in a bank vault. Since trade secrets lack legal protection, once they are leaked to the general public, they are available for use by anyone.


Trademarks include any words, phrases, symbols, logos, designs, or devices that are used in association with a particular brand or good in order to distinguish it from other products of that industry. Trademarks are used for identification purposes, and are legally protected once they have been registered with the United States Patent and Trademark Office.

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Why Your Startup Company Might Need an International Patent Application; an Attorney's View

By: Michael J Foycik Jr. 
May 05, 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.
Your startup company has a valuable invention, and you're considering filing a US Patent Application.  But, you're wondering whether or not to file an International Patent Application.  The answer to that depends on various factors, as follows.

Worried about foreign competitors sending infringing products into US market?  Your US patent application can stop them at the border if your file a complaint with the US Customs Service and meet the requirements.  So, if your market is strictly the US market, then you might not need an international patent application.  That might include a PCT application or an EU application.

Expecting a big success, or have investors expecting a big success?  Then you might just need an international patent application.  That's because you may be exporting goods into other countries, and would want patent protection in those countries.

When going after international patent protection, there are several ways to go.  There is a PCT (Patent Cooperation Treaty) filing, which gives a kind of patent pending status in any designated foreign countries for roughly 30 to 32 months.  This will require a national stage patent filing in the designated countries during that pendency.

Then there is an EU (European Union) patent filing, currently similar to the PCT filing.  The EU application is changing for the better in the coming year, by including all EU member countries for a single filing.  That is expected to represent a great cost savings.  Previously, I might not have recommended an EU filing in all cases, but I expect to highly recommend the new EU filing once it is available.

Finally, there is the direct foreign filing, by individual countries.  This may be very cost effective compared to a PCT filing for a small number of countries.