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.


7 Tips For Start-Up Business Owners

By: The Q Gentleman
August 1, 2018

August is National Black Business Month! As the number of entrepreneurs grows in the United States, it’s important that new business owners receive as much advice as they can. Kimra Major-Morris, a top-rated intellectual property attorney in Florida, provided us with a few tips every business owner should be aware of before they start their business.

Do a comprehensive search before registering the business.

As a business owner, you want to do everything possible to strengthen the reputation of your business by offering quality products and services. Brand strength begins with quality products and/or services. The second most important thing is brand ownership. New business owners should invest in a comprehensive trademark search to identify all others selling similar products/services. The law does not protect accidental infringers. After the launch party, the investment in marketing materials, and the public notice associating you with an infringing name/logo or product, the financial and reputational damage for failure to thoroughly vet your business name can be extensive.

Purchase domains before registering the business and before applying for trademark registration.

Business registrations and trademark applications are public record. There are individuals and businesses that generate lists of new business names and trademark application information for the sole purpose of buying domains that match the newly entered names, titles, and slogans on the public record. Stay a step ahead and purchase domains before they’re on anyone’s radar.

Don’t underestimate the value of a non-disclosure agreement (NDA).

The excitement of a new idea and its huge potential for success is difficult to contain, but mismanaged disclosures can be costly. In addition to applying for copyright, trademark, or patent protection, non-disclosure agreements can provide another layer of legal protection. Employers should be sure to have non-disclosure agreements signed by employees and contractors who will be exposed to the company’s valuable information such as marketing lists, formulas, processes, etc.

Address intellectual property assets in the partnership agreement.

As in any relationship, things can quickly change in the business relationship. Make arrangements for the worst-case scenario. Although most business partners know to have working agreements, the agreements often do not address who will have the right to use the company’s trademark (business name/logo), copyrights (creative content), or patents (inventions) if there’s a parting of ways. This often leads to expensive litigation and damaged relationships.

Be sure to have vendor contracts that protect your existing creative content and brand identity.

Your graphic designer, interns, web developer, employees, and other third parties should sign off on work-for-hire language to be sure their creative contributions are assigned to your company when the job is completed. In other words, you should be purchasing their services and the rights to the work simultaneously.


How to Make Money from a Patent

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

Attorney Advice on:  How to Make Money from a Patent
By Michael Foycik, registered US patent attorney
April 18, 2013 

I am often asked how to make money from a patent, and that is an excellent question.  There is the commonly known answer, and a lesser known but more important answer.  The common answer is, a patent can be licensed or assigned.  A license is similar to renting the patent, whereas an assignment is a sale of the patent.  A license can be sold to more than one company, for example.

The less commonly known answer, though, is far more important to inventors and businesses.  This answer concerns the patent application, which is not issued as a patent but instead is still pending.  Thus, it is known to provide “patent pending” status.  The question of how to make money from a patent then becomes one of how to make money from a patent pending.  This too is done by license or assignment.


Twenty Tips For Startup Success, Part Seventeen: Start Slow

By: Mary Juetten

In my previous post of the series, I talked about questioning the status quo of your industry. In this installment, I’m discussing the virtue of starting slow.

Many entrepreneurs are looking to hit the ground running when they start their business. They’re filled with enthusiasm about their ideas and plans and are looking to make the most of their opportunity while they can, especially if they think they’ve hit upon a new product or a new segment of the market that their competitors haven’t yet. But that excitement and energy are best harnessed to a more cautious and calculated approach to the very early stages of the business, particularly with what seems like administrative issues.  For all the opportunity that exists, there are also dangers and potential mistakes that lie in wait for those that proceed by skipping over fundamentals.

One of the earliest mistakes you can make in starting your business is trying to build something upon things you don’t own. You might have a great idea for a product that someone else has already dreamt up and created. Or you might have landed upon the perfect name for our business that is already in use by another company that you weren’t aware of at the time. Doing some initial research of the U.S. Patent & Trademark Office or the U.S. Copyright Office before you start putting work into a startup can save you time and heartache of having to redo or scrap your work, or the more costly legal headache of potential infringement and legal action.

Once you’ve ensured that your ideas are free and clear of infringement upon others’ intellectual property, you’ll want to make sure that everything you’re putting out for the public is creating the best impression possible for your company. In the current landscape, your website is the face of your company to those who are looking to learn more about what you’re doing. Some small companies or solo entrepreneurs take the approach of getting up a website quickly and worrying about revamping it going forward. But even in those early days, your website can create a negative impression if it is filled with typos and broken links or missing functionality. Your first website doesn’t have to be a masterpiece, but it should be professional, showing that you are serious about your business and pay attention to detail.


How to Trademark

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


- a word
- a phrase
- a logo

A US Trademark Application can protect a word, a phrase, a log, and even a color. This article explains how to trademark these elements.

A US Trademark Application requires at least the following information: the name and address of the owner; the mark itself; the type of goods or services to be used with the mark; and the type of use, i.e. actual use or intent-to-use.

If the trademark application is based on actual use, then the date of first use in interstate or international commerce is required. If the owner is a corporation, the state of incorporation is also needed along with the name of the person who has authority to sign the trademark application.

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

To get started now:
No money is needed to get started. Once we receive the above-noted information for a trademark application, we perform a free, informal search of the trademark records and advise if a serious obstacle exists in the form of a prior similar trademark application. There is no cost or obligation for this.


Trade Related Intellectual Property Rights (TRIPs)

By: perfectp

Governments across the world have been trying to promote trade and business right from their inception, but, later on, they realized that there should be a framework that can connect the intellectual creativities and trade directly, thereby, protecting the interests of intellectuals or authors/creators. The goal was to reward those people who invest considerable resources to invent or create something that serves the society as a whole. The protection can be offered in the form of patents, trademarks, copyrights, geographical indications, trade-dresses, industrial designs etc. Let’s learn about the nitty-gritty of Trade Related Intellectual Property Rights (TRIPs).

However, the major breakthrough was achieved at the Uruguay Round of meeting of the World Trade Organization (WTO) extending from 1986 to 1994. This Agreement was negotiated as part of the eighth round of multilateral trade negotiations in the period 1986-94 under General Agreement on Tariffs and Trade (GATT). This is the time when TRIPS came into existence.

What are Trade Related Intellectual Property Rights (TRIPs)?

TRIPS (Trade Related Intellectual Property Rights) thus are a set of standards that provide legal protection for patents, trademarks, and copyrights. All countries that are party and signatory to this agreement will have to respect the rules put-forth by this agreement. To materialize this, members were advised to make adequate amendments in their domestic IP laws to incorporate TRIPS rules. For example, as per the TRIPS, all countries will grant protection rights to patents for a period of 20 years which varied greatly among member countries before this.

Outcome of TRIPS

> All countries (party to this agreement) should grant ‘patents’ for inventions in all fields of technology provided they meet all patentability criteria.
> The tenure for the patent grant should be for a period of 20 years and should be counted from the date of priority date.
> All member countries are required to grant copyright protection to literary and artistic works automatically without needing them to register or make any such formality.
> Copyright terms should extend for at least 50 years unless based on the life of the author.
In each state, intellectual property laws may not offer any benefits to local citizens which are not available to citizens of other TRIPS signatories under the principle of national treatment (with certain limited exceptions).
> Computer programs ought to be treated as “literary works” under copyright law and should receive the same terms of protection.
> All concerned parties need to protect the legitimate interests of third parties taking into account the patent rights.

Controversies in TRIPS

The main controversy that lies in the TRIPS agreement is about paving the level of the field because there is a huge gap between the technological advancements in developed and developing countries and thus stringent IP laws can hinder their progress. To address these issues developing countries were granted some transitional period to switch them completely to TRIPS.

Another contentious issue was about providing life-saving drugs to poor countries in Africa and some developing countries. Many countries have criticized TRIPS on the grounds that it imposes various costs on developing countries such as more expensive drugs, agricultural inputs, and foreign-owned technologies and have requested exemptions in life-saving drugs.

While developed countries are concerned about the unfair use of compulsory licensing by developing countries that discourage innovation. However, the consensus has been built to provide compulsory licensing only to those drugs that are life-saving.


Why Trademark

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


>>  to sell a business
>>  to attract investors
>>  to stop competitors
 >> to protect a web site domain name

What you can trademark:
>>  a word, phrase, or slogan
>>  a logo or design

Competitors can trade on your good name. Unless, that is, you have strong trademark rights. And what rights are those? The best trademark rights would be based on a federally registered trademark.

If you want to protect your company's web site domain name, you will need to be able to prove trademark rights in the name itself. There is no surer way than ownership of a federally registered trademark, which can usually confer nationwide rights.

There are other trademark rights too: state registrations, and common law trademark rights. Those may be very worthwhile too, but may not have national scope.

Common law rights sometimes require proof of instances of actual confusion, but even then there is a question of proving priority, i.e. who was first.

This brings us to federal trademark rights. In advertising, you may see a trademark followed by the symbol “R” in a circle. That indicates that the trademark is federally registered. A trademark followed by the symbol “TM” indicates that the owner wishes to claim common law trademark rights, or has other trademark rights.

A good trademark can help any business, and a successful one also attracts investors and can help when selling your business. Without a trademark, there is often nothing of value to sell.

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


APIs, Patents In Banks’ Sights Amid Race For Speed, Services


The movement of banks to join FinTech firms and stanch the disruption of their business models — decades and centuries old— has been well-documented. As banks embrace technology in ways that are both novel and, perhaps, permanent, observers have noted that the shift toward APIs is gaining momentum.

A recent report that bowed via Citi underscores that thesis, as Global Market Manager of the bank’s Channel Services division, Rene Schuurman, wrote that 87 percent of banks have a clear API strategy in place. That strategy is helping transform B2B commerce, amid other corridors of transactions. The shift also comes as sandboxes are proving to be effective avenues by which the companies and their FinTech partners are able to test those same APIs before live deployment.

The Citi research also shows that, amid those initiatives, the FinTech investment space notched $200 million in just one June week, which comes even as deal volume swelled last year. Even despite the uncertainties of Brexit, the U.K. has seen a quadrupling of deals to $3.4 billion last year.

In an interview with PYMNTS, in tandem with the latest B2B API Tracker, Schuurman said the overarching theme is “you build something, take it apart and build something new.” The banks, said Schuurman, are adopting a DIY approach and want to speed up the API pace. The API approach for Schuurman’s own bank is one where Citi can sidestep sending “big email attachments” as APIs are developed.

In light of the movement toward a faster API development pace, it is perhaps no surprise that Barclays was reported, last week, to have filed two patent applications in the U.S. One is geared toward consumers registering for crypto accounts, the other is for know your customer (KYC) processes.  The Barclays activity, of course, follows news that American Express filed a patent of its own, which would focus on blockchain proof-of-payment technology.

Turning back to activity beyond U.S. shores, London-based startup TrueLayer, which offers a developer platform that helps FinTech firms access bank APIs, has gained $7.5 million in financing, and comes on the heels of $3 million garnered last year. The efforts dovetail with PSD2 and Open Banking.

In an interview, the TrueLayer’s Co-founder Francesco Simoneschi said, “The first quarters of 2018 have been about working and educating companies on Open Banking and how to build propositions on top of it. This has seen a silent, yet massive, stream of inbound demand for us. To put things in context, we grew 500 percent in terms of the developer community averaging hundreds of companies a month asking how to start using TrueLayer and the services that we enable — from two people in a garage to the largest enterprise.”

Separately, also in Europe, FinLeap — which is noted by Crowdfund Insider as the FinTech behind the German bank solarisBank — is working with Fabrick, the Italian Open Banking platform that will launch a new financial management startup focusing on small businesses. The firms will simplify accounting, tax and other services for the smallest of firms in the region. The startup is to be named Beesy, the companies said earlier this week.

In Asia, specifically in Singapore, the lender UOB has made its second FinTech investment this year. The company has both invested in and partnered with Personetics, an Israeli firm, with an eye on artificial intelligence (AI). As reported by, the Singaporean firm wants to gain insight into transaction volume, with an eye on Southeast Asia. Terms of the deal were not disclosed.

Source >>

How to Patent an Idea

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

How to patent an idea? There are several good approaches, as follows. Easiest: file a Provisional patent application ("PPA"). Advantages: low cost, low government fee, few formalities, true "patent pending" status, priority rights for any later-filed utility or PCT applications filed within one year. No examination occurs.

How to file a Provisional patent application (PPA): service fee is relatively low and very affordable; call or email for a quote for a specific invention idea.

Next up: file a Design patent application. Yes, it protects just the appearance of the inventive product or design, but costs much less than a utility patent application, has lower government filing fees, and often has better chances of success with the US Patent Office. Call or email for a price quote for a specific inventive idea, there is no charge or obligation.

Or, get a utility patent application on your idea. The Utility patent application is sometimes referred to as a regular application. It costs about three or four times what a provisional application costs, but should still be relatively affordable. It does require formal drawings, and will be examined by the patent office, possibly requiring a response. The chances of success are unpredictable, and vary depending on the invention itself and the specific examiner who examines it for the US Patent Office. Call for a price quote for a specific inventive idea, there is no risk or obligation.


Why You Need to Patent That Idea for Your Startup

By: Tyler McIntyre

It all starts with an idea. In a Startups for Dummies book, that would be the first step. It is true that not all ideas are potential million-dollar ideas, but when they are and when well-executed, they have the potential to change not only one’s life, but also the lives of millions of others. The conception of that idea is the beginning of a journey, much like the conception of a baby. Once the baby is birthed, or a prototype is finished, it must be protected and nourished to become successful. After executing on an idea and turning it into a product, it is imperative that it is patented. But why?

If the baby has the potential to revolutionize how something is done, everyone would want it. This revolutionary baby must be secured from the opportunist hands of other wannabe entrepreneurs itching for a breakthrough, wanting to kidnap the baby. Patenting the product is like naming the baby and claiming ownership over it. Without a patent, anyone can take the baby. The entrepreneur, as a parent to this baby, has obviously poured his heart and soul into it since its conception. What better way to ensure that his sacrifices were not in vain than to patent his baby. With that being said, there are also other reasons why patenting a newfound invention is so important to the success of a startup.

Ensures That Effort, Consistency, and Execution Are Not in Vain

Spending countless nights without sleep, depriving oneself of meals at regular intervals, maxing out credit cards, and asking for money from friends and parents can be arduous and compromising when first working on an idea (the baby). The baby is still growing in the womb at this point. Nick Woodman, CEO of GoPro, was a fantastic parent figure when it came to nourishing his baby: the first GoPro camera with a wrist strap. Unsurprisingly, he patented his baby once it was born.

Woodman was relentless in his pursuit for success in the startup world. He was at the helm of two failed startups, however, undeterred and with an insatiable desire to leave his mark of success in the startup world, he refused to give up. He was not in a dark corner in his parents’ basement brainstorming new ideas to bring to life when he conceived his revolutionary baby; he was actually surfing in Australia when his baby was conceived.

Woodman realized that surfers could not easily take exciting pictures of themselves riding the waves unless they hired professional photographers. This realization led to the idea of a wrist straps holding disposable cameras, which could be placed on people’s arms. People could be hiking, surfing, skateboarding, practicing almost any sport, while simultaneously taking memorable pictures of themselves enjoying their activity. This was a niche that he knew he had dibs on if he put in the effort to make his idea a reality.

Working 18 hours in one stretch, borrowing about a quarter of a million dollars from his parents, finishing the wrist straps using his mother’s sewing machine, and entering and exiting through a door to a side yard to go “number one” right next to his desk to preserve precious time, Woodman was bent on getting his idea solidified into a prototype. Really bent. He even wore a CamelBak to avoid meandering with his friends en route to the kitchen, which was also far from his desk. Once he finished his prototype wrist strap, it was time to find the camera: a Chinese-made 35-millimeter.


Ways To Make Money From Your Patent

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

Ways To Make Money From Your Patent

Here are some ways inventors can make money from their patents. These come directly from actual successes of actual inventors, as told by the inventors themselves in published interviews.

It is important to realize that every invention is different, with different markets. And, different inventions tend to attract different types of investors. Focus on what makes your invention different, and the rest will be easier.

The Licensing Approach - Accumulating Licensees
There are several approaches to gaining licensees. The following is one of the most successful approaches, where there are a number of different infringers. Where there is only one infringer, it may be necessary to threaten litigation, but that only works if the infringer believes you have the resources to do it.

First: identify which companies, products or services may be infringing your patent. Make a list, and try to estimate the sales of each one.

Then, line up the infringers by the estimated amount of infringing sales. Send demand letters to the smallest infringers, asking relatively small royalties. It would not be unreasonable to offer petty infringers royalty rates of 2%, or in some cases even a 0% royalty; all conditioned upon sales being below a certain limit.

As you accumulate more and more licensees, you will approach larger and larger infringers. The more licensees you have, the easier it is to sign on bigger companies as licensees. And, you can ask form somewhat larger royalty amounts. Having ten licensees, for example, is a persuasive factor to a company you approach for royalties, when that company is deciding whether or not to risk being sued for infringement. By this time, the royalty demands should be in the 6% to 9% range.

The largest infringers are saved for last. For those companies, seeing your list of licensees suggests you will have substantial reserves in case of litigation. It is much easier, by this point, to persuade them to pay the higher royalties in the range of 10% to 18%.

Market Your Invention the Easy Way – Consignment Sales 
If you are able to make products embodying the invention, it makes sense to make small batches of those products. Many stores will carry the products, if you offer them on consignment.

So, what is a consignment sale? This occurs when you offer the goods to a retailer for a period of time, say one week, and at the end of the period the retailer either returns the items or pays a percentage of the selling price for each one sold.

A reasonable rate is 25% for the first batch. If the retailer sells out, then they will want more, in which case it is likely you can get 50% of the selling price for that batch. If sales are very good, then higher percentages are attainable, up to a maximum of about 75% in many cases.

Why try this method? Well, it is profitable, and if one retailer is selling, others will want the product too. And, it attracts the attention of large companies, who have been known to offer substantial sums of money (in the millions of dollars) for the rights.


Intellectual Property: Difference Between Trademarks, Copyrights, and Patents

By: Sam Mollaei

Considering the complexity of intellectual property law, it is understandable that many individuals like artists, authors, bloggers, journalist, etc. are likely to confuse the terms Patent, Copyright, and Trademark. Often you may hear them speak of “patenting a book” or “copywriting a new gadget”. These are legal terms that are on occasion confused by a lot of people. In this post, you will get to know the difference between:

>> Patent
>> Copyright
>> Trademark

So what is Intellectual Property?

Intellectual property is the ownership of tangible and non-physical goods. Since intellectual property is intangible, then it becomes a lot more difficult to protect it as compared to other kinds of property.

A simpler definition of intellectual property is something that is created by an individual’s or professional’s mind. However, intellectual property does not protect the bare ideas; rather it is basically the expression or the symbolic power/recognizability of the ideas that have been protected.

The intellectual property, in this case, is the design of a car that is patented. But not the idea of the car itself. It can be the painting of a beautiful house that is copyrighted but not the idea of the house. The intellectual property is the consumer recognizable logo that has been trademarked but not the idea of the logo. Therefore, the intellectual property only protects how we can express and identify ideas in concrete ways. But not the idea itself.

What is a Trademark?

A trademark is a device, a symbol, a name that is used in trade with goods to indicate the source of the particular product or service that will distinguish it from the goods and services of others. The trademark rights that are offered to a company may be used to prevent other businesses from making the same goods or rather from selling the same goods or services under a clearly different mark.

The trademarks protect any symbol that shows or indicates the source of the origin. While the trademark of a particular company may be very important to the owner of the company, its ultimate purpose is to protect the consumer, by informing them about the origin of the product.

What is Copyright?

The copyright can protect the specific creative expression of an idea that can be through any medium of artistic or creative expression. Examples can be paintings, writings, sculptures, photographs, software, etc. It is generally a form of protection that is offered to the authors of original works of the authorship.

The law gives the original owner the right to reproduce the copyrighted work; that can be both published and unpublished. The copyright will protect the form of expression rather than the subject matter of the writing.

That is why the description of a car can be copyrighted. But this, however, will not stop others from writing a description of their own or from making and using the car. Copyrights are usually registered by the copyright office of the Library of Congress.

What is a Patent?

A patent for a specific invention is the grant of a property right to the individual inventor that is usually issued by the Patent and Trademark Office. The patents purpose is to protect the functional expressions of the idea and not the idea itself.

A machine’s method, composition, and manufacture may all be patented. Therefore, an engineer can patent the design of a nozzle on a spacecraft or the method used in making the spacecraft, etc. However, you cannot patent the broad idea of the spacecraft.

To be specific, the right that is conferred by the patent grant is the language of the statute and the grant itself. This is the right that excludes others from making, using, offering for sale, or selling the invention in the United States.

What You Need to Know

You need to note that each of the categories is distinct. A product may at times fall into one or more of the categories. A good example is of a software that is covered by both the patent and copyright. Where the copyright will protect the artistic expression of the idea, this is the code itself. While the patent would protect the functional expression of the idea of the software.

Therefore, before you set out to copyright, trademark or patent anything, make sure you get legal advice from a qualified lawyer. He/she will assist you in processing your product or services within the illustrated categories.

Choosing whether to get your work/ invention/creation patented, copyrighted or trademarked can be quite a tedious task. Especially if you do not know how to distinguish one from another. Therefore, the motive of today’s post was to make it clear in the mind of readers what each one of the different methods of safeguarding various types of intellectual properties means and how they are different from each other.


How to Get a Patent

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

How to Get a Patent

How to get a Patent? That’s a good question! The short and long answers are below.

The short answer is : In the US, file a US Utility Patent Application, or a US Design Patent Application. Note that a US Provisional Patent Application does not become a US Patent, but does give “patent pending” status.

And, do you need a US Patent Attorney? Yes and No. In theory, a patent application can be filed by the inventor. Due to the great number of legal technicalities and chances of losing rights by use of poor legal language or by failing to add the right legal language, most authorities believe it is by far the best course of action to have a US Patent Attorney prepare the patent application. Some very experienced inventors might prepare their own patent applications, although that is not common.

The longer answer is:

These are the basic steps for how to get a patent. For a Utility Patent, the goal is to get broad claims allowed by the US Patent Office, and which become part of an Issued Patent. The claims define the scope of what is legally protected by the issued patent.

The inventor should write a description of the invention, and make sketches or drawings which can show the invention. The description and drawings do not have to be very detailed, as long as they clearly explain what the inventor believes is new.

If working with a US Patent Attorney or US Patent Lawyer, something which is highly recommended, this information may be enough to start. The US Patent Attorney will then draft a more detailed version of the invention in the format required by the US Patent Office, referred to below as the USPTO (which is short for US Patent and Trademark Office).

What will the US Patent Attorney add to help the invention? Good question! The US Patent Attorney will provide the correct wording for various elements, and will provide a set of claims to set forth the legal rights proposed for the invention. Proper drafting of the specification and claims requires good knowledge of current laws and legal case decisions. It should include proper use of “means for” language which may need to be present in the claims and specification, and must be properly supported by an explanation of equivalent structures or functional elements. The US Patent Attorney can provide additional language to encompass or add features which would be known to anyone having skill in the art, in order to broaden the scope of the resulting claims.

The US Patent Attorney will send the draft application to the inventor for changes and additions. This draft application may go back and forth more than once, until the Inventor is satisfied with the draft application. At that point, the draft application is filed with the USPTO by the US Patent Attorney together with the necessary transmittal forms and legal forms.


Generating Alpha with Trademark and Patent Data

By: Val Stepanova

“Find your unfair advantage, then build out from there.” This is one of the more valuable pieces of advice Tev Kofsky has ever received. These unfair advantages can be found in recognizing your unique experiences, skill sets, or networks and applying them. Co-founder of IPqwery, Tev Kofsky’s unfair advantage was his perspective. While building a Chrome extension with patent data and Trademark data, he was able to look at data through a unique lens, and think through how to repurpose data for different markets.

Fresh out of school, Tev built his first product. While working with various law firms, he created a “search and watch” software.

This product allowed attorneys to research opportunities and protect their client from infringing on Intellectual Property.

Tev later realized that law firms weren’t the only ones who needed easy access to patent and trademark data. Corporations also needed access as to this information.

“Corporations can learn the direction of competitors and can identify an upcoming sector by looking through trademark or patent filings,” Tev explained. “Sifting through this data is also an incredible way to spur new ideas and pinpoint a potential acquisition.”

Tev and the team consisting of Mitch Schwartz, Bryan Haley, Frédérik Lacharité, Tev, as well as a few programmers were determined to bring patent data and trademark data to the masses.

Finding a Target Audience for Patent Data and Trademark Data

IPqwery was formed to become a patent data and trademark data provider not only for the traditional use case (law firms), but also for corporations, venture firms, and platforms looking to enrich their data.

When looking for ways to repurpose their data even further, IPqwery’s team started focusing on hedge funds and their new interest in “alternative data.”

Hedge funds were searching for means to identify data outside of typical performance metrics to help them with investment decisions.

IPqwery helps hedge funds to “gain alpha” by creating insights into upcoming technologies by aggregating patent data and trademark data, while also analyzing their own portfolios to see if they should begin diversifying their investments.


How Much Does A Patent Cost?

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

How much does a patent cost?

We try to keep your costs as low as possible, and as affordable as possible. We provide flat fee estimates in advance, at no charge to you. 

In the simplest cases, where the invention is easy to describe or show in a few figures of drawing, patent application can be prepared for as little as $1800, with a government filing fee of $540 for a small entity (this cost is slightly less for electronic filing). 

The formal drawings, if needed, can usually be obtained for less than $150 per sheet. One sheet might have several figures on it, depending on the complexity of the invention, thus saving money.

If the patent application is granted, the government charges an issue fee of $755 and publication fee of $300. A service charge of $80 is added for attending to preparing and filing the Issue Fee Transmittal. 

The U.S. Patent Office examines the patent application and finds any relevant prior art. If the prior art is sufficiently close, they will make a rejection. A response can be filed, usually at a cover of $350 to $450. Every case is different; some are allowed without needing such an amendment or response. In some cases, a further response is necessary or desirable, and the cost is normally somewhat less than $350. 

This type of rejection is fairly normal. To attempt to overcome such a rejection, the response can be filed which changes the claims to avoid the prior art, and/or presents arguments to distinguish the invention in the patent application from the prior art. 

Sometimes such a rejection can be overcome by a telephone call to the patent examiner; in those cases the cost is at the hourly rate of $100. Such calls are usually short and to the point, especially if the call is to authorize an examiner's amendment which will result in allowance of the application.

Opinion: Insurtech Start-Ups Can Do More to Win Government Cash

By: InsuranceEdgeEditor

Insurtech is the buzzword in the insurance industry right now, with dozens of UK start-ups all trying out new ideas and often hungry for investment cash. But what can they do to increase their chances of getting off the launch pad?  Is there anything companies can do to get more government help?

Definitely, says Luke Hamm, CEO of GovGrant

It’s taken a while but it seems that the UK insurance industry has well and truly caught the Insurtech bug. For years, analysts, the media and consultants have been championing the benefits of innovation to drive the change necessary to deliver the products and services that the modern consumer demands.

And it appears that those messages have been taken on board with the money following quickly behind. According to Accenture, the first half of 2017 saw £218m invested in UK Insurtech which was a huge leap on the measly £7.3m the year before with deal making increasing by 75% in the same period.

Companies such as Brolly, Cuvva and Nimbla are good examples of successful UK startups, embracing the Insurtech spirit. But as investment continues to pour in, so the number of startups focused on the disruption of the UK market will increase.

To date, it is this external investment that has grabbed the headlines and understandably so, for the best ideas in the world will get nowhere without the necessary capital to make it a reality.  But what many existing and nascent organisations may not be aware of is that there are Government incentives to get businesses like theirs off the ground and growing.

Back in 2000, the Government introduced Research and Development (R&D) Tax Credits to encourage greater R&D spending, in turn leading to greater investment in innovation. They work by either reducing a company’s liability to corporation tax or by making a payment to the company if it is loss-making.

According to Government statistics from 2015-16, nearly £3bn has been claimed back by UK companies and while it appears knowledge of the scheme is growing (a 20% increase on the previous year), the scale of adoption is till not what the Government would like.

Indeed, in his 2017 Spring Budget speech, Chancellor Philip Hammond bemoaned the lack of take-up of the scheme and my experience of working in this space, backs that sentiment up. At GovGrant, we assist businesses, including InsurTech, to maximise the funding opportunities through innovation tax incentives when they are investing in R&D and Intellectual Property. We come across too many companies that are completely unaware of what is available and even when they are aware, they may think it doesn’t apply to them or that it’s just too difficult to secure.


US & USPTO Patent - General Information

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


The US law provides for patent and trademark protection. The administrative agencies responsible for this are the US Patent Office and the US Trademark Office, which are combined and called the US Patent and Trademark Office, abbreviated as USPTO. In the following, the abbreviation USPTO will be used throughout.

Preparing a patent application
A US Patent Lawyer, also called a US Patent Attorney, normally prepares a US Patent Application for filing with the USPTO. The US Patent Lawyer works with the inventor to draft a specification having a description of the invention, including drawings when possible. The draft is then studied by the inventor, and changes are made if necessary. When the draft is accepted by the inventor, the inventor signs a form called a Declaration, claiming inventorship of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Patent Application.

At some point in this process, it is advisable but not necessary to perform a US patent search. The US patent search can find prior art patents that show the extent of the closest prior art, and whether the invention has been patented at an earlier time. If an expired patent is discovered which is very close to the invention, then that expired patent can confer a “right to use” that invention. If a pending US Patent covers the invention, and has claims which are sufficiently broad to cover the invention, then it is possible that infringement would occur. It is important to know if a new product might infringe an existing unexpired US Patent. If no patent exists which covers the invention, then it is possible that the invention can be patented. As noted above, it is not necessary to conduct a patent search prior to filing a new patent application.

The Role of the USPTO in Examining the Patent Application
The US Patent Application is examined in due course by a patent examiner. The US patent examiner will be an expert in the particular art in which the invention resides. The US patent examiner will search the prior art patent literature, and will make a search report and send it to the inventor along with a first Office Action on the merits.

If an invention is finally rejected, that rejection can be appealed. In that case, it is taken up for review by a board of appellate examiners. Each appellate examiner is likely to be a USPTO Patent Attorney or USPTO Patent Lawyer. If the appeal is refused, it can be taken further to a US District Court, in which case the USPTO is represented by the Solicitor’s Office. In that case, the Solicitor in Court will be a USPTO Patent Lawyer or USPTO Patent Attorney. Such higher appeals are not frequent, but are more likely to occur when the invention is particularly valuable.

The Role of the US Patent Attorney in the Examination Process
The US Patent Attorney or US Patent Lawyer considers the Office Actions received from the USPTO, and transmit’s the Office Action to the inventor along with any advice or comments on how to respond. The US Patent Attorney or US Patent Lawyer then responds to the Office Action, usually by providing legal arguments in support of patentability.

If the Office Action is a Notice of Allowance, then the response by the US Patent Attorney or US Patent Lawyer simply transmits the Issue Fee Due along with a transmittal form required by the USPTO.

During this time, the inventor may be commercializing the invention. In this case, a successful invention might be licensed or assigned, or distribution agreements may be made. In all these cases, the US Patent Attorney or US Patent Lawyer performs an important role in making sure these agreements serve the interests of the inventor.

The Role of the US Patent Attorney or US Patent Lawyer after the Patent is Issued
Once the patent issues, it can be enforced against competitors. In that case, the US Patent Attorney or US Patent Lawyer normally first sends a warning letter to the infringing competitor. If the infringement continues and no licensing agreement or assignment agreement is reached, then a lawsuit can be filed by the US Patent Attorney or US Patent Lawyer in a US District Court or in a state court.

The filing of a lawsuit, and the defense of such a lawsuit, are usually referred to as US Patent Litigation, or simply Patent Litigation. Such lawsuits can be short or long, and many businesses with successful products consider it commercially economical to conduct Patent Litigation to protect their rights.

Foreign Entities
Foreign entities must be represented by an attorney or lawyer, in order to obtain a patent or trademark, and in order to maintain a lawsuit in the US. In a Trademark case, the US Patent Attorney or US Patent Lawyer can be appointed as the Domestic Representative of the foreign entity.

Preparing a Trademark Application
A US Trademark Lawyer, also called a US Trademark Attorney, normally prepares a US Trademark Application for filing with the USPTO. The US Trademark Lawyer works with the applicant to draft an application having a description of the goods/services together with a drawing showing the trademark. The draft is then studied by the applicant, and changes are made if necessary. When the draft is accepted by the applicant, the applicant signs a form called a Declaration, claiming ownership of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Trademark 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.

It is important to reevaluate patent protection on a regular basis and consider filing on new features of the invention when applicable. If the product is evolving quickly, consider filing a provisional patent application or a series of provisional patent applications within a year before filing a utility patent application.