The United States Patent and Trademark Office Updates Hemp Mark Guidelines

By: Eric Sandy

Following the passage of the 2018 Farm Bill and the legalization of hemp in the U.S., federal agencies are beginning to line up their regulatory approach to this burgeoning industry. The U.S. Department of Agriculture (USDA) is preparing its guardrails for state-sanctioned hemp programs, and, now, the United States Patent and Trademark Office (USPTO) has clarified how it will handle trademarks for hemp businesses.

In short, hemp businesses (including plant-touching businesses) are able to apply for trademark registration­—as long as their business falls outside the Food and Drug Administration’s (FDA) regulations of hemp-derived CBD as a food or beverage ingredient. The FDA oversight is part of a broad gray area still in need of clarification post-Farm Bill.

For now, many hemp businesses have a shot at claiming their mark.

“We’ve been waiting since the Farm Bill was passed on how that would impact the trademarks used in connection with these particular products and services,” said David Gold, intellectual property litigation attorney at Cole Schotz.

The USPTO, which oversees patents and trademarks, splits its approach to controlled substances in the U.S. The patents office will work with companies that are using federally controlled substances, like whole-plant cannabis (and especially THC). The trademark office, however, will not work with those companies.

"This does not cover a very large segment of the industry. This doesn’t cover anything that’s subject to the FDA."

- David Gold

Now that hemp is no longer listed as a Schedule-I substance, the USPTO is opening the window for trademark applications relating to hemp and hemp-derived compounds. (Hemp is legally defined as the cannabis plant containing less than 0.3-percent THC.)

“Frankly, this is exactly what we anticipated the result would be—down to the language that now needs to be included in the application,” Gold said, referring to the THC content in the company’s hemp material, for instance. The language must mirror the Farm Bill, in other words.

Applications filed after Dec. 20, 2018, will be processed under this new regime. For businesses that filed hemp-related applications before Dec. 20, 2018, “registration will be refused due to the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA.” Those businesses will be told to request an amendment to their applications, which will then be filed with the post-Dec. 20 applications.


Quit Worrying About Competitors, And Start Making Money

By: Michael J Foycik Jr.
May 20, 2019
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.

Stop worrying! Many inventors and businesses become paralyzed by worry when trying to advance a new idea. 

What if competitors import cheap knock-offs? What if they steal your idea? What if it isn't protectable as a patent? 

Here are some factors to put your mind at ease. 

First, competitors won't spend money to copy a product unless they are sure it will make money. For anything that is new, how can they know? Probably only by seeing if you make money. That gives you a big head start. If your product is good, you can saturate the market before the first knock-off arrives. Also, this gives you time to establish your trademark or trade name, so that people asking for it by name will always get your product. 

Second, until your idea is made public, it can be protected as a trade secret, assuming you have marked everything confidential and avoided any non-confidential disclosures. Again, this provides a real head start, with the benefits noted above. 

Third, suppose your idea is so good that competitors want to immediately steal/misappropriate your idea. That can be a very good problem to have! Why? Because it means that your rights could have great value to a legitimate company, one that has power to enforce those rights for you against infringers. You see it in the news all the time: big companies investing in small companies, buying a percentage of the ownership. Big companies know how to protect their investments, and their rights. 

Fourth, your US patent application gives you one year's worth of priority, for filing of PCT or foreign applications. Can't afford foreign patent applications? See the above paragraph; if your invention is good and/or successful, it can attract investment by those with enough money to pay to get foreign rights. 



By: Greg Kirsch

Tech startup companies often rely on patents and other types of intellectual property (IP) rights to help safeguard against competition, protect their investors and increase their chance of executing on their business model. 

However, in many cases there are fundamental misunderstandings among the individuals and companies who invest in startups as to how to best use IP rights. Either the wrong attributes of the startup’s products and services are protected, or IP is forgotten altogether. 

There is no better way to learn how best to protect and exploit IP than by examining the successes — and miscues — of others. Here are two stories based on the real-life experience of practicing IP law for almost three decades. 

True Story Number One: The Bad Investment

How an investor may ask IP questions, but not the right ones

About 10 years ago, I received a call from a general partner at a well-known VC firm. The firm had recently made a large investment in a startup, which we’ll call “Acme Corp.,” which had a large patent portfolio. My friend wanted me to take a quick look at the Acme patent portfolio. 

My first thought was, “Why is he calling me after the investment has closed, rather than before the investment was finalized?” Nevertheless, I told him I’d take a look. 

The patents looked interesting and appeared to cover a technology (“Technology A”) fairly well. A few days later, I called my VC friend back. I walked him through Acme’s various patents, including some of the patent claims, which specifically define the invention covered by the patent.

“Are you sure that’s what the patents cover?” he asked, completely surprised by the nature of the patent portfolio owned by the company in which his firm had just invested a large sum of money. 

The investor explained that Acme’s current business model was completely based on another technology, Technology B. They used to have products that used Technology A, but had pivoted away from that business three years prior.


Surprisingly Good Ways Of Stopping Foreign Imports Using Your US Patent

By: Michael J Foycik Jr.
May 17, 2019
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 number one concern of many companies with new products is how to stop foreign copies from entering the US.  The good news, this is easy for US Patent owners, and there are two ways this can operate.

The most surprising way is using the US Customs Service to block suspected infringers.  To do this, you will need an order from the Customs Service.  Once you have that, Customs does the real work.  The catch here is, the US company will have to prove it makes the goods itself in the US.  So, two foreign companies cannot easily avail themselves of this privilege.

Customs can confiscate infringing goods, and may even turn over those goods to the US patent owner.  If specific infringers can be pointed out to Customs, which is often the case, those infringers  can be targeted by Customs.

The second way is more obvious: using the US Patent rights.  There is an easy way to do this, and a harder way.  The easier way is sending a copy of the US Patent to retailers and other companies selling the infringing product; most will quickly deal with the situation, usually by simply removing the infringing products.  After all, retailers do not want trouble, and can avoid it by fleeing from patent disputes.  The author has seen this several times, and it is surprisingly effective. 

The aforementioned harder way is the filing of a patent infringement suit.  This can be cost effective, assuming the infringer offers a quick settlement.  An infringer might do this to avoid the legal expense and legal risk of defending.  However, if the health of an infringing company depends on that infringing product, a quick settlement may still occur but there is also a chance of a big legal fight.


Understanding Soft Intellectual Property

By: Brette Sember, Esq.

Intellectual property is any work or idea created either by the human mind or by a computer, including copyrights, patents, trademarks, and trade secrets. Although "soft intellectual property" is sometimes used to refer to any intellectual property that is not a patent, the term is not fully accepted in the legal community.

Categories of Intellectual Property

Intellectual property is protected according to the type of work:

> Copyrights are used to protect fixed creative works such as books, articles, photos, computer software, plays, and music.

> Patents are used to protect inventions.

> Trademarks are used to protect brand names, slogans, and logos.

> The Uniform Trade Secrets Act protects trade secrets, which are confidential information used in business that can create a competitive edge in the marketplace. This can include formulas, methods, or techniques used to create a product.

Defining Soft Intellectual Property

The term "soft intellectual property" is sometimes used to refer to intellectual property other than patents , including copyrights, trademarks, and trade secrets. It can also be used to describe other assets that are harder to categorize, such as general knowledge about a product or confidential information held by a company. The distinction may have arisen because patents often apply to tangible items, such as machinery, products, and other physical inventions. Some of the more common types of soft intellectual property include books, white papers, company logos, and trade secrets.

Typically used only by laypeople, soft intellectual property is not a well-accepted legal term, although it is sometimes used in contracts or agreements. For example, a contract selling a company's intellectual property rights might include "soft" property. However, for clarity, it is best to use specific legal terminology about the items that are being managed or sold. For example, the contract might mention that items in the sale include copyrights, patents, trademarks, and trade secrets. Using the exact, correct terminology for the intellectual property in question makes it easier to manage and may also make it easier to sell, should you ever wish to.


Right Or Wrong Patent Attorney - Why Your Invention Matters

By: Michael J Foycik Jr.
May 15, 2019
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.

Is there a good way to tell when you have the wrong patent attorney?  There are factors worth considering. 

Does your patent attorney not seem to listen?  Or, not seem to care about your objections and concerns?  Does your patent attorney make themselves available to answer questions?  These are red flags, especially if things are not going well otherwise.

Does the patent attorney's first draft make sense for your invention?  Most inventors rightfully expect to see writing that is as good as or better than their own.  Do you have to explain things several times?  Are you uncomfortable with how the claims sound?  These too can be red flags, when other things are not going well either.

Has your patent attorney filed continuation after continuation without making progress?  Or, have they filed RCE (“Request for Continuing Examination”) after RCE without making progress?  Or, have they filed about Appeal after Appeal, without success?  These could be red flags too.

This is not to say “good” or “bad” - rather it is to say “right skills for the right job.”  Even a very good and reputable patent attorney may sometimes find themselves out of their element, and look bad as a result.  That shouldn't matter though – good results should matter.  A different attorney, better suited for a particular effort, may well get different results. 

While the above-noted issues can be bad signs, they might not tell the whole story.  Even though the above situations exist, can that patent attorney really still be the “right” one  for that job?  Possibly so – if it is just a case of simple bad luck, pursuit of a weak invention, sure.  Or, it could be part of a strategy to maintain patent pending status for strategic reasons despite a weak invention. 

One of the biggest problems in the patent field is that the law of chemical patent claim practice is completely different from the law of mechanical/electrical patent claim practice.  Claim drafting can be drastically different, in my experience. 


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.


Tips for Highly Effective Invention Promoting and Marketing for Inventors

By: Michael J Foycik Jr. 
December 20, 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, then you have seen ads for invention marketing companies.  Here are a few tips for a highly effective strategy that is also cost-effective.

Tip 1:  Do the patent part separately from the marketing part.  The patent costs can be quite affordable, especially is you shop around.  You are more likely to get the personal service and advice you really need, and that can lead to a better patent product. 

Tip 2:  Focus on companies most likely to need your invention.  Avoid broadcast invention submissions to large companies, because that can be costly in time and effort.  There will be too many corporate forms for the inventor to sign before those companies will even accept the submission, and some of those forms do not protect the inventor's rights.  Large companies like to buy rights to products that are already on the shelves somewhere, to make sure no one looks bad when buying the invention rights. 

Tip 3:   Marketing isn't just to companies – it is also to investors.  Really, isn't that what selling an invention is all about?  A company buying an invention is very much like an investor.  Let investors know about your invention; they have money and often also have expertise and contacts.  Investors may well wish to use their contacts and expertise to help you succeed – they are betting on you. 


United States: A Trademark Is Not A Copyright Or A Patent

By: William M. Borchard

Although trademarks, copyrights, patents, and trade secrets all concern intangible property rights and overlap to some extent, they differ from each other significantly. If you know the attributes of each, you can take full advantage of them to weave a fabric of intellectual property protection. And the failure to get appropriate protection is an invitation to pirate. Competent legal advice often is advisable because all four areas of law are changing, especially as applied to new technology. It may help to distinguish them by remembering that:

> Trademarks protect source identifications (marks of trade);

> Copyrights protect original creative expressions;

> Patents protect new and useful inventions; and

> Trade Secrets protect valuable secret information.

This pamphlet summarizes the principal attributes of these various types of protection.


A trademark is a brand name, logo or package design, or a combination of them, used by a manufacturer or merchant to identify its goods or services and to distinguish them from others. Trademarks include brand names identifying goods (Dole for canned pineapple) and trade dress consisting of the graphics, color or shape of packaging or, after sufficient use, of goods (Coca-Cola Bottle for a soft drink); service marks identifying services (McDonald's for a restaurant service); certification marks identifying goods or services meeting specified qualifications (Woolmark for apparel made of 100% wool); and collective marks identifying goods, services or members of a collective organization (The International Game Fish Association for a game fishing organization). The same legal principles generally apply to all of these terms, often simply called "marks."

How to obtain trademark rights.

You need not register a trademark to have protectible exclusive rights in it and reserving a corporate name in one or more states is irrelevant to trademark rights. Simply by using a mark on or in connection with goods, or by displaying the mark in the sale or advertising of services, you can automatically acquire trademark rights in the geographic areas of use and natural expansion.

You can stake out nationwide trademark rights by applying to register the mark in the U.S. Patent and Trademark Office. (One reason why people confuse trademarks with patents seems to be that both are handled by the same office, but the trademark and patent operations are completely separate.)


Responding to a Rejection in a Patent Application

By: Michael J Foycik Jr. 
November 15, 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.

Rejected? Want to know more about what to do? Read on!

When a utility patent application is filed, examination on the merits follows in due course. The examination process involves a search of the prior art, and a decision by the patent examiner on allowability. The first such decision is supplied to the applicant by an official first Office Action on the merits. The great majority of first Office Actions involve a rejection of some or all of the claims.

But, this is not the end of the process, but the beginning! A Response should be filed.

What should go into the Response? The applicant, along with their patent attorney's help, should define what is different over the applied prior art reference(s). Then, suitable claim amendments should be made to clarify and/or emphasize those differences.

And, suitable remarks should be provided in the Response which explain the differences over the applied prior art reference. The remarks ideally will also point out how the amendments to the claims clarify and emphasize those differences.

Sometimes, there are other types of rejections and objections. These may be based on claim format, claim contents, objections to drawings or text, and so on. These can be handled in a similar way to that noted above.


Protecting the Integrity of your Business and Intellectual Property

By: Steve Cartwright

You’ve done your research and perfected your business plan. That wondrous document secured your funding and all your plans have come to fruition. You’re now a small business owner. As you hang out your shingle and proclaim yourself open for business, consider this sobering fact: there is another professional of sorts, right next door to you (literally or virtually, which means this person could be anywhere), who has hung out a shingle, as well. And this “professional” is an expert thief, looking for unwary business owners such as you to victimize.

How do you protect your business and your intellectual property?

One of the first things a small business owner can do to protect himself is register company logos, patents and/or documents with the correct authorities. A business logo or brand statement can be filed as a trademark, with an application to the United States Patent and Trademark Office. A trademark represents the goods your company supplies and keeps your business distinct from others. A patent can be filed within the same office, and permits the right to prevent other entities from developing and benefiting from your inventions.

A copyright is a bit of a different creature. At the point of creation and in concrete form, you already own the copyright to a specific document. A copyright application can be filed with the United States Copyright Office, a subsidiary of the Library of Congress. However, most business owners who would like to secure official copyrights to written materials, such as writers, often do not have the funds to apply for a copyright for all the works they have authored. As a result, many small business owners simply utilize a copyright statement on the document, indicated with a copyright symbol (©), along with the date of creation. Many times, the presence of this statement will suffice to warn predators away. If the copyright is encroached upon, the positive results of pursuing legal action may be greatly improved by filing the copyright form within the first five years of creation.

Another way to monitor usage of intellectual property, likely unorthodox, is to utilize Internet search engines to look for mentions of your company’s name and works. This is not a suggestion for ego boosting, but rather an inexpensive tool to help locate possible instances of the online piracy of works. Many file sharing sites will respond to written requests by owners or legal representatives to remove works from said site. Of course, the work may find its way onto other sites or even back onto the same site at a different time. However, the online piracy of intellectual property also a flip side: it can have the unintended effect of serving as free promotion for the author.

Every small business should have legal counsel at its disposal. The cost to retain attorneys varies greatly; however, the investment is a necessary and invaluable one for a small business owner. Also, if you employ other individuals or are required to share company ideas and knowledge with contractors, utilize a confidentiality statement in your business dealings. This document, signed before divulging information, serves to protect the business’ interests by binding the signer to confidentiality.


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 Intellectual Property as a startup or scale up

By: Chloe Mckenna

It's so easy to overlook your intellectual property when you're a startup. Even companies who've been in business for a while but are scaling up can easily forget just how important it is to protect yourself and your business. So, how do you even begin to go about protecting it and what's involved?

Your intellectual property is one of your most valuable assets. Not only does it give your company its true value, but it also helps create brand recognition and sets you apart from your competitors. Without it, you can't differentiate yourself from the rest. So that's why business owners are realising just how valuable it is and taking steps to protect it.

So it's no surprise that legal claims made over the last 12 months by small to medium enterprises have risen significantly by 68%. If you're new to business and have no clue how to even register your intellectual property, read on to find out.

Determine what your intellectual property is

First, you'll want to separate the wheat from the chaff. Analyse and review the product or services you're offering. This could range from your brand kit (logo's and taglines) to physical products or unique services. Once you do this, it makes it much easier to see what's valuable in your business and how you can develop it further.

Submit your application to register a trademark or patent

After analysing your intellectual property and finding out what's most valuable and represents you as a brand you can then start to think about getting a trademark or patent to protect your business. If you don't want any other company using your brand name, logo or even numbers that are specific to your brand you can get a trademark through the Intellectual Property Office, using the UK government website.

You'll have to choose which class you want your trademark under. Once submitted, the public has a set amount of time to contest your application, and if no one comes forward, the trademark is all yours. Once you have the trademark, you can update all your branding with the TM logo, so other people know that it's protected. This means you can take legal action against any person or business who uses your brand without prior consent from you.

Patents are a little different. This helps protect inventions that don't exist or have never been thought of before. The process is a little more complicated than a trademark, and you'll want to be crystal clear on what you're trying to protect.


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.


Legal Aspects For A Startup In India – Every Entrepreneur must know

By: Smevebqu

The startup is a business enterprise with a brand new innovative idea which is attached within the society for instant growing business and to offer new services. Each startup should be aware of specific legal aspects.

A startup enterprise is an entrepreneurial challenge that is commonly a newly developed, fast-developing commercial enterprise that proposes to satisfy a marketplace demanded by developing or offering a revolutionary product, method or service. A startup can be an employer, including a small commercial enterprise, a partnership or an organization created for fast enterprise development.

With the beginning of a Startup comes hand in hand the illegal debt. A Startup commonly Startup in a partnership which does now not recognize the strict and sophisticated corporate lifestyle in them. But the prison obligation of a Startup is the same as that of an organization. One is meant to take his legal responsibilities significantly.

Basic Legal Aspects to be kept in thoughts while starting a Startup:

1. The name of the Startup requires to be legal and now not breaking other legal rights.

The Name you thought on your Startup requires to no longer violate the rights of an already surviving enterprise.  For this persistence, one can take the help of specialized or trained Startup lawyer. You may not need to fall inside the pit of criminal disputes at the inception of the commercial enterprise. Search to the following level and conduct a no-warfare, unfastened trademark search to match if your call is available to be used and not a certified trademark.

2. Collect all of the data associated with the employment Laws

Proper data on employment legal guidelines permits one to understand the legal rights and liabilities in numerous complicated situations. It is necessary to apprehend the law before taking law in hands. Startups were exempted from inspection by way of hard work inspectors for up to a few years in the event that they provide self-assertion for compliance with the nine hard work laws. Startups may be inspected on the basis of a written complaint filed for violation challenge to the approval of as a minimum 1 level senior to the Inspecting Officer.

3. Trademark Protection for the name of the organization, the name needs to be ‘Trademarkable’

Trademark method a mark capable of being represented graphically and that’s capable of distinguishing the goods or offerings of 1 man or woman from those of others and may consist of the form of products, their packaging, and the aggregate of colors.


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.



By: Kelley Keller

Every business has intellectual property that has the potential to become extremely valuable, but if you don’t protect it from the very beginning, you could face big problems down the road. Not only could you end up in legal trouble, but you could also lose opportunities to expand your brand into new verticals, industries, and locations!

Unfortunately, I see it happen all the time. Entrepreneurs and business owners neglect investing the time and money into putting the right safeguards in place to effectively protect their intellectual property. Instead, they focus on short-term gains. After all, if they’re not making money, they can’t keep their doors open!

It’s not surprising that things like intellectual property protection, which doesn’t bring in new revenue immediately, is dropped to the bottom of the priority list, but trust me, this is a big mistake that is more than likely to come back and cause big problems later.

Here are five intellectual property mistakes that entrepreneurs often make which you should avoid at all costs because the long-term damage could cost you your entire business!


Don’t settle on a business name until you’re certain that you can use it now and in the future. In other words, you need to do a comprehensive trademark search to ensure the business name you want to use doesn’t conflict with any existing trademarks.

You also need to make sure the name can scale with your business, so think long-term. How might your business grow in the future? Pick a name that won’t conflict with other trademarks today or in the future. In other words, pick a name that will stand the test of time.


Just because you can register a domain name doesn’t mean that you can use it to promote or sell your products and services. If someone else owns the trademark rights to the name used in your domain name, and your use of the name could cause confusion in consumers’ minds as to what company is actually selling the products and services you’re offering, then you could be accused of trademark infringement.

If you are, in fact, infringing on someone else’s trademark by using their registered mark in your domain name, then all of the money and time you’ve invested into building awareness of that domain and traffic to your website will be thrown out the window (unless you can strike up some kind of co-existence or licensing agreement with the trademark owner).


Did you know that paying for logos, illustrations, images, or other graphic designs does not necessarily mean that you own the copyright to them?  While paying for the service is important, you must also be sure that the designer has assigned the copyrights rights to you in writing.  Many design services include an assignment of rights in their terms of use, but not all of them do.  And, many independent graphic designers do not transfer rights in their contracts, so be sure you follow up with a proper agreement.


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.


Nike Files Patent to Launch ‘Cryptokicks’ Cryptocurrency

By: Varun Nair

Nike has filed a trademark and service mark application with the United States Patent and Trademark Office for protection over the brand ‘Cryptokicks.’ The document reveals the company’s intention to launch its own cryptocurrency and associated services.

Nike Intends to Launch Own Cryptocurrency
Nike Inc., one of the leading and most popular manufacturers of shoes in the entire world, has filed a trademark and service application seeking protection over the “Cryptokicks” brand on April 19th.
The document’s filing basis falls within section 1B, which means that it’s filed based on the company’s bona fide intention to use the trademark in commerce.

As the identification of some of the services Nike intends to work on, the document outlines “financial services, namely, providing a digital currency or digital token for use by members of an online community via a global computer network.”

Commenting on the matter was trademark attorney Josh Gerben, who said:
There has to be somewhat of a business idea behind it. If you submit things just for the purpose of submitting things, it will tie up the trademark system unnecessarily. Nike does not have a history of filings that are speculative.
Reportedly, the attorney has also said that there’s a 30-day period to appeal the application. If approved, however, Nike would have reserved the “Cryptokicks” name for a period of four years, during which it would need to launch a commercial product with that name.
Gerben added:
There’s a requirement that you commercially use a trademark to get the rights to it.



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.


United States: What You Should Ask About Intellectual Property Before Investing In A Cannabis Company: An IP Due Diligence Primer

By: Rod Berman and Jessica Bromall Sparkman

The cannabis industry is the new investment frontier. Consider the capital investment by Constellation Brands in Canada's Canopy Growth, Aurora Cannabis's acquisition of Mexico's Farmaciea Magistrales, Coca-Cola's discussions with Aurora Cannabis to develop CBD infused drinks, CannaCraft and Lagunitas' co-branded launch of HiFi Hops, an IPA-inspired cannabis sparkling beverage, GUINNESS® owner Diageo's discussions to explore releasing a line of cannabis infused drinks, and Molson Coors Brewing and The Hydropothecary Corporation joint venture to develop cannabis drinks. And, with the decline of cigarette smoking, even Philip Morris is interested in the business. It is reported that other huge companies want to participate in cannabis deals, including BASF, DuPont, and Royal Dutch Shell, as well as Beau Wrigley who has invested in Suterra Wellness, a medical marijuana company with plans to enter the domestic market.

But what important assets do these cannabis companies own or control that justify an investment? In the typical investment scenario, a target's intellectual property is a key bankable asset and questions about the strength and scope of the target's intellectual property are critical. Does the company own any patented technology, and if so, are the patents valid and enforceable? How about company brands? Does the company own its brands? Where does the company stand in terms of the risk of being sued for infringement? What about employee-created intellectual property? Does the company own it? Does it matter if the deal is structured as an asset purchase or an equity transaction?

These and other intellectual property related due diligence topics are discussed below.

A trademark is typically (though not always) a word, phrase, symbol, sound, smell or design that uniquely identifies and distinguishes the source of goods or services. Examples of word trademarks include JUUL®, ROORTM, EPIDIOLEX® or GG4TM. A "service mark" is a mark that identifies services rather than goods, such as EAZE®, LEAFLY®, FLOWHUB®, and MASSROOTS®. The distinction between trademarks and service marks, however, is one without a difference. They function in the same way and, from a legal stand point, are treated in the same way, and the term "trademark" (or sometimes just "mark") is often used to refer to both trademarks and service marks (as is the case in this article). Similarly, "trade dress" refers to a trademark that consists of the appearance – the "look and feel" – of a product and/or its packaging, e.g., the look and feel of the PAX® vaporizer (shown below).


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.


The Truth Nobody Tells You About Startup Budgeting

By: Tracy Leigh Hazzard

So many startups are so eager to throw money into anything they believe will speed up the launch process. More seasoned experts know that intellectual property, patents, trademarks, copyrights, content, and products should all be assets that hold value, rather than sinkholes. You need to have an investment plan for all of this. That means every single spending point along the way should be detailed in your investment plan and budget. The problem with this is that, unless you are spending thousands on an expert, which you probably cannot afford in the beginning, who knows how much you should budget for things like patents, marketing, prototyping, research, and design? This is what we are going to break down today.

Scrounging and Spending: Why? What? When?

The first thing you need to be able to determine is whether or not an item is an asset or a liability, so you can learn when to scrounge, and when to spend, and when you are spending, how much you should be dropping. Remember, when discerning between the two, assets always add value while liabilities oftentimes eat up resources without adding value back in.

The Importance of Research and Design

 It is no secret that startups that spend on research and design, especially forward-thinking research and design in their product categories, out-profit every other brand in their category. Every other brand in their category has less value both in the marketplace and in sales. As you build your brand, compare yourself to bigger brands in your category. If you're competing in a marketplace with Apple, for example, then you're going to have to spend a pretty steep amount on research and design. Apple spends between 20 and 25 percent of its overall revenue budget on research and design. In my early days at Herman Miller, they had an entire research division that built assets for the business.

Content-based assets. Research and white papers that help to boost the sales of existing products would be considered assets. Herman Miller researched the power of ergonomics, the comfort levels of office chairs, and so on, with the hope that this research might lead to aha! moments in which they might come up with new ideas and new projects to initiate. They also knew this content would help sell existing products.

Proprietary technologies. Any competitive advantage that is specific to what you are selling has an extreme value because that doesn't expire in 17 to 20 years. So in this case, the more research and design you put into your proprietary technologies and processes, the more value your company has.


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.



By: Gregory Barber

INITIAL COIN OFFERINGS have gotten a bad rap—in many cases, deservedly so. Sure, there were blockchain projects with sound dreams and solid business plans. But as the bitcoin bubble swelled in late 2017, ICOs became synonymous with predation: get-rich-quick schemes that involved taking money from anyone who was willing, in return for worthless crypto tokens.

Since then, the Securities and Exchange Commission has been trying to clean up the mess. The rules are vague, but this much has become clear: Most ICOs are securities offerings, and require all the protections and disclosures of selling stocks. That basically takes them off the table for ordinary investors. Blockchain startups now typically fund themselves with sales of shares (or tokens) to so-called accredited investors, institutions, and wealthy individuals.

But now one blockchain startup thinks it’s found a way to get you and me involved again in token sales—with the SEC’s blessing.

“I hate the term ICO,” says Muneeb Ali, cofounder and CEO of Blockstack, which is building a platform for decentralized apps. Last week, the company filed an application with the SEC to sell its tokens, called Stacks, under an exemption called Regulation A+. The pathway came into being as part of the JOBS Act passed by Congress in 2012, and allows businesses to raise $50 million each year from ordinary investors. Blockstack believes that, if approved by the SEC, it would be the first to use the exemption to sell a crypto token.

Tucked in the filing was a disclosure about another Blockstack investor: Harvard Management Company, which oversees the university’s endowment. It’s listed alongside two other investors that together hold a stake valued at about $11 million, purchased in an earlier token sale (Harvard’s exact share wasn’t disclosed). Though a few big institutions, including Yale and two Virginia pension plans, have invested in crypto-focused funds, Harvard’s involvement is unusual in that it appears to have taken a direct interest in the tokens of a blockchain network. Harvard Management Company declined to comment.


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. 


Rivalry can bring out the best in a startup

By: Alison Coleman

A novel business idea can quickly attract competition, but there are many ways to turn this into an advantage

You’re about to launch your new business when you find a rival with an almost identical idea. How do you respond? Give up? Rethink it? Or race to be the first to market?

That was the scenario facing entrepreneurs Massimiliano Gritti and Elliott Aeschlimann Perales right before their business went live. They planned to launch Bombinate as an online marketplace for new brands to sell men’s clothing and accessories. And by last December they had secured 30 suppliers from seven countries. Then, in January – a month away from the planned launch – they attended the Pitti menswear fair in Florence, Italy where they encountered a nasty surprise – another business competing for the same customers and brands.

“The future of our soon-to-launch company was now in question,” says Gritti. After the initial shock, the founders worked to make their offering more compelling. As well as an online marketplace, they decided to offer other services to their sellers.

These included helping them to create digital content, such as videos and photography, for their websites by connecting them with trusted content agencies and photographers. Bombinate would then promote the content on social media and analyse the traffic it received. With this new model complete, Bombinate is launching this month.

Leon Ifayemi and Omar Fahmi are the founders of SPCE, a search app for student accommodation. They also had to rework their business idea in its early stages. While crowdfunding in March they were contacted by two larger competitors with a view to working together. But they declined, instead using the interest to strengthen their business.


Startups with Patents are the Ultimate Anti-Monopoly

By:  Paul Morinville

Patents are often referred to as monopolies. But that is a fundamental misunderstanding of how patents work to enhance competition. The truth is that a patent is a natural anti-monopoly.

In a functioning patent system, inventions become investible assets when they are patented, and the value of the invention increases as market demand increases. Because of the direct relationship between market demand and patent value, a patented invention can attract enough investment to compete with entrenched incumbents in the market for the invention.

This effect introduces new competitors into the market who are protected against incumbents for a long enough period that they can survive after the patent expires. Thus, patents act to increase competition by introducing new competitors into the market and thereby create competitive markets. But perhaps even more important, some inventions deliver a strong dose of creative destruction to monopolistic incumbents who did not innovate fast enough, causing those companies to fail and clearing the market of dead weight, thus opening the market to innovative new companies.

Patents are the ultimate anti-monopoly in a free market. But for this to work, the market must function undisturbed by crony laws and regulations. A patent must be a presumed valid “exclusive Right.”

The Exclusive Right Creates Market Scarcity

Like any free market, the value of an invention is determined by variations in supply and demand. Demand for an invention cannot be increased or decreased for an invention except by market effects outside of the invention. But supply is different.

If supply for an invention is unlimited, the value of the invention is zero no matter how high demand goes. Therefore, an invention with unlimited supply has no value and can never attract investment. The problem of unlimited supply was corrected by the Founders, who wisely constructed a patent as an “exclusive Right” in the U.S. Constitution. (The word Right is used only once in the Constitution and capitalized in the original.)

The exclusive Right creates scarcity in the market for the invention—it prevents anyone other than the inventor from commercializing an invention protected by a patent. This limits supply so that demand can act to increase the patent’s value. Thus, the exclusive Right creates an investible asset that can be collateralized to attract enough investment to commercialize an invention and supply it at a level that meets demand.


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.


5 Ways To Manage Intellectual Property For Startups

By: Imdpremiere

Intellectual property (IP) is a primary business component for many entrepreneurs. However, intellectual property differs from other company assets in the way that it is not tangible. Since it is not a piece of physical property, many entrepreneurs neglect to realize its value. As a result, they fail to protect it and lose any advantage they had over their competitors.

However, intellectual property protection is very important in entrepreneurship. To refrain from making the common mistakes, here are the best ways to protect intellectual property for startups.

1. Develop An IP Strategy.
In order to protect intellectual property properly, you need to develop an IP strategy. As with many business plans, there are many necessary elements to include in your strategy. For instance, your first step must be to determine all of your intellectual property assets. Such assets can include copyrights, trademarks, and industrial designs. Then, create timelines for how you will protect your assets and how you will enforce any infringements on your property. Develop an IP strategy so you have a set plan to follow throughout your startup. If done well, your strategy will ensure IP protection.

2. Conduct A Trademark Search.
Another way to protect intellectual property for startups is to conduct a trademark search. Many entrepreneurs run into legal issues when they fail to conduct a search. They put themselves in a vulnerable situation. If you design a trademark that has already been registered, you could create a liability. Consumers will have a hard time differentiating your business from the other business with the same trademark. Furthermore, the company who had already registered the trademark could take legal measures to eliminate this conflict. Protect intellectual property and your startup as a whole by conducting a trademark search before creating new claims.


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.


What Every Startup Should Know Before Filing A Patent

By: Shimrit Tzur-David

Anyone who has led a technology company or been in the startup scene will tell you that most startups share a number of challenges. Key among them is the need to prove to investors and potential customers that what the company offers is unique and that barriers to entry exist that preclude anyone else from encroaching on their idea or market. As a co-founder and CTO, I have been involved in numerous pitches and discussions, both with investors and with customers, where we have had to demonstrate how our technology, approach and business model are unique. Based on this experience, I have come to appreciate the value of a patent.

If you go the patent route, it’s important to do it properly from the outset. Filing a poor patent, even a provisional one (more on this later), can end up costing so much that sometimes it’s worse than filing no patent at all.

Jumping In

If you’ve invented a solution to a problem that differentiates you from the competition or provides a competitive advantage, seriously consider filing a patent application before making your solution available to the public. In many countries, public disclosure prior to filing a patent application can make it more difficult to obtain or enforce a patent.

There are three main types of patent applications: the provisional, the Patent Cooperation Treaty (PCT) and filing a full patent application directly in the country of your choice (usually the U.S., but often in Europe or China). Filing any of these applications allows you to mark your product as patent pending. A provisional application never gets examined and never matures into a patent, but it acts as a placeholder and gives you a one-year grace period to file a PCT or a full patent application that will date back to when you filed the provisional.

Provisional applications are generally recommended for technology that is still under development and technology that a company wants to test commercially before investing significant resources in obtaining patent protection. Most startups file a provisional application first. It testifies to the fact that your company filed the specific patent for a certain technology, which is critical in light of the U.S. patent system switching from a first-to-invent to a first-inventor-to-file system in 2013. While the requirements for filing a provisional patent are less stringent than those for a full patent, it’s best to file as robust an application as possible. If you do decide to file a provisional application, do it as early as possible so you avoid being locked out by someone else who files first.


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.


Protecting Intellectual Property: An Easy Guide for Startups

By: Todd Baker

What Is Intellectual Property?

Intellectual property (IP) is a general term for the rights recognized by U.S. law for creations of the mind, including:

> Patents – rights granted to inventors for novel and useful inventions.
> Trademarks – rights granted to businesses relating to the branding of their goods and services (company, product and service names).
> Copyrights – rights granted to authors for tangible expressions of ideas (art, literature, music, software code, architectural plans).
> Trade secrets – rights granted to businesses relating to their unique and valuable intangible assets (business processes, client and customer lists, procedures, practices, formulae, research notes, market data).

Types of Patents

There are three types of patents that every startup should be aware of:

Utility Patents – According to the USPTO, utility patents are for inventions, “… of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.” Utility patents are for the protection of how an invention is used and works.

Business Method Patents – Business methods are also protectable under U.S. patent law. A business method patent is actually a form of utility patent that protects new methods of doing business, such as those used, for example, in banking, tax compliance, and e-commerce, to name a few.

Design Patents – Design patents, as described by the USPTO, are “Issued for a new, original, and ornamental design embodied in or applied to an article of manufacture.” A design patent, “permits its owner to exclude others from making, using, or selling the design.” A design patent may provide protection for IP when a utility patent is unavailable.


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.


Startup Myths: The Company Without IP

By: Mary Juetten

As we discussed last time in the first in the series here, myths and misconceptions are part and parcel with nearly every human endeavor, and business is no exception. Myths take hold where knowledge is lacking, until such point where they are misperceived as knowledge itself. Occasionally these myths can be harmless, but education is needed for those that can do real harm to people working under these false assumptions.

One of the most pernicious startup myths — indeed, one that often persists well past the startup stage— is the idea that there are companies or fields in which intellectual property (IP) doesn’t exist, or at least not to the extent that it matters in decision making. And while there’s no basis for that assumption, it’s easy to understand how the idea might take hold among the uninitiated. Intellectual property often applies to real things, but itself is intangible, and in fields that concern themselves solely with the tangible assets they deal in, it must be easy to forget or ignore what you can’t see in front of you.

As I’ve written about many times before,IP is something that exists in every business and serves as the backbone of what they do. And the most successful companies in the world recognize the importance of patents, trademarks, copyrights and trade secrets. They know that a strong IP portfolio is a platform from which they can continue to build and innovate, and that is why they devote the resources to protecting their intangible assets. It’s not a coincidence that the most frequent applicants for IP protection are the companies considered leaders in innovation and creativity.

Nevertheless, there are undoubtedly some who, despite this evidence, still refuse to see the relevance of IP in their own businesses. Patents are the province of the Elon Musks of the world, with their rockets to Mars, copyrights the domain of Disney and their blockbusters. Particularly among small businesses, the notion that your own venture or enterprise doesn’t rise to the level needed to have what would be considered IP can be prevalent in the absence of a greater understanding on the topic.


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.