The AIA And Its Impact On The Independent Inventor

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

The AIA And Its Impact On The Independent Inventor
By Michael Foycik ©2011
Used with permission.

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

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

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

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

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

Under the current law, any two conflicting patent applications can, in theory, be placed into an “interference proceeding” to determine which inventor should have the rights of both conflicting applications. Those proceedings are expensive, and fairly rare. Even so, the existence of such interference proceedings has one beneficial effect: it discourages “ripping off” (e.g., misappropriation) of inventions. Such “interference” proceedings will be a thing of the past under the AIA.


Registering A Trademark On The Supplemental Register of the USPTO

By: Gonzalo Law LLC

What are the benefits and disadvantages of registering a trademark on the Supplemental Register of the U.S. Patent and Trademark Office (USPTO) and the process of registering on the Supplemental Register after an initial denial?

The Client has applied for a trademark on the Principal Register however that application was denied. As a result, the Client is considering registering on the Supplemental Register.

What are the benefits of registering a trademark on the Supplemental Register of the USPTO? The Supplemental Register is used to register a trademark that is descriptive but has the possibility to identify goods or services.[1]  Some benefits that registering on the Supplemental Register include the ability to use indicia of registration including “Registered in U.S. Patent and Trademark Office”, “Reg. U.S. Pat. & TM. Off.”, and the “®” symbol.[2]However in a lawsuit, no profits or damages will be recovered unless the defendant had actual notice of the registration. [3]A mark registered on the Supplemental Register will also provide notice to people conducting trademark searches and can serve as a bar to registration of subsequent confusingly similar marks.[4]If the mark has the potential to become distinctive through use in commerce, a mark registered on the Supplemental Register may apply once more for the Principal Register.[5]

What are the disadvantages of registering a trademark on the Supplemental Register? Marks registered on the Supplemental Register do not receive the advantages of §§ 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063-1068, 1072, 1115, and 1124 of the Trademark Act.[6]This means a mark registered on the Supplemental Register may not have the power to achieve incontestability of the mark, does not imply the right to exclusive use of the mark, may not have the ability to cancel the registration of another mark, does not have the presumption of Federal ownership, and provides protection for only nondistinctive trademarks.

What is the process of registering a trademark on the Supplemental Register of the USPTO if the initial application to the Principal Register was denied? If the initial application to the Principal Register was denied with a “nonfinal Office action”, a trademark registration application can be amended to the Supplemental Register by filling out a “Response to Office Action” online form.[7]  If the initial rejection was denied with a “final Office action”, then the “Request for Reconsideration after Final Action” online form must be used.[8]Unlike an application for the Principal Register, the mark must be in use by the time of application on the Supplemental Register.

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US & USPTO Trademark

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


Preparing a US Trademark Application

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

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

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

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


Signs Your Patent Attorney Does Not Have Your Best Interests In Mind

By: Stephen Key

Conflict exists between the interests of inventors and patent attorneys who are tasked with protecting their inventions.

Inventing and commercializing a new product is extremely challenging, period. Obstacles abound. You have to be committed, dedicated and full of passion. Even then, you’ll still probably fail. That’s the nature of entrepreneurship. To become a successful inventor, you must learn from your mistakes and keep getting up to bat.

In my experience, many inventors are blind to this reality. I can relate. I remember feeling so determined to make my invention happen, I refused to listen to anyone else. This attitude is typical of inventors I’m afraid. Our inventions are so consuming, we aren’t always able to see clearly.

This is especially problematic when it comes to the patenting process. Because if you spend tens of thousands of dollars on a patent that goes nowhere, how likely — let alone able — are you to take action on your next idea?

Selling fear is easy. “If you don’t file a patent, someone else will beat you to it!”

This is very shortsighted, I feel. Providing knowledge is much more difficult, and thankless. That’s just how it is.

Intellectual property is only valuable when deployed strategically, to further a business goal. That’s a far less sexy sentiment than what I hear over and over again online, which is that having a patent will stop someone else from stealing your invention. If only it were that simple!

I’m not alone in my frustration. Michael Marra is an inventor whose firm Marra Design Associates helps inventors license their toy, game, novelty, and seasonal ideas for royalties. Over the past three decades, he has licensed more than 150 product concepts that were not patented. He holds and has held patents in several industries — all paid for by licensees.

“Inventors and the public at large have been indoctrinated, conditioned and persuaded to first ‘protect’ their new idea by securing patents,” he wrote in an email. “But patents do not provide protection! Patent infringement lawsuits can easily cost six figures — with no guarantee of recovering a single dollar nor an amount covering legal fees, let alone banking a profit.”

To interest a potential licensee or retailer, an idea must substantially raise the bar in its specific category. But in Marra’s experience, most patent attorneys do not consider this aspect of the invention, which is key to profiting commercially. Instead, research is strictly limited to making sure the idea does not infringe on other patents.


Do I Need A Patent?

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

When – and why - do you need a patent?
You need a patent:

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

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

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

You need a pending patent application:

> If you wish to discourage competitors from copying your invention. Those competitors may not wish to invest in manufacturing and marketing a competing product, because your pending patent application could issue at any moment as a granted patent. That uncertainty itself thus helps to protect the invention.

> If you wish to protect yourself from competitors who may copy your invention and then try to patent it themselves. Even if the patent application never issues as a patent, it is a permanent record of your prior inventorship. The published patent application, even if it never issues as a patent, might be used as prior art against later applicants.

> If having a unique new product would allow you to set a much higher selling price. Customers and retailers know that “patent pending” means something, and it suggests that your product or service is new and unique. It can be a good selling point in some cases.


Steps For Getting A Patent

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

Steps For Getting a Patent

These are the basic steps for getting a patent.

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

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

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

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

A more detailed explanation is as follows.

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

When you are satisfied with the application, we send the final, revised version of the application together with the necessary legal forms (i.e. the Declaration by the inventor, and possibly a small entity form and/or an Assignment if needed). You review the completed application papers, and if satisfied, sign and date the forms and return all of the paperwork together with the balance due.


7 things that are killing your startup


“Time for a poll,” I say, standing at the front of the classroom. “How many of you think you’ll go to work in corporate America?” More than a dozen hands shoot up. And then, I ask, “Entrepreneurs? Who is going to start their own business?”

One day a week, I step away from a consulting practice working with startups and companies in transition to lead a class in the business school at what U.S. News & World Report has named a Top 25 Innovation University. Despite its relatively small size, Stevens Institute of Technology ranks No. 14 on the list of patents granted to alumni. Its students—electrical and computer engineers, majors in quantitative finance—are, you know, smart.

And so in the classroom this day, in answer to my second question, only three or four confident hands rise. Despite the constant stream of blogs lauding Silicon Valley and celebrating young billionaires and glorifying what’s been called “startup porn” (something that curiously features very few women—more on that later), America’s best and brightest are, it seems, loathe to jump into entrepreneurship.

In fact, American entrepreneurialism, as tracked by the Census Bureau and other indexes, is in steep decline. That’s alarming, given how much our economy depends on the small and midsized businesses (SMBs) that startups become when they go from crawling to walking to running. SMBs are where the U.S.’s world-leading spirit of innovation develops, and it is where job creation happens. In fact, as legacy companies periodically shed businesses and employees (hello, GE; hiya, GM), startups may be the most dependable source of net, quality job creation.

In class or on the job, almost every day I bump up against seven things blocking entrepreneurship. Seven things that, sadly, we are responsible for—in our failure to ignore economic imbalance, our pursuit not just of returns but ever bigger returns, our belief in a business philosophy based in gender and other biases. Of course, given that responsibility, it’s fixable, if we’re so inclined.

For gen-Z, like those in my classroom, or those just out of school, the spiraling cost of a college education limits possibility. As I said, these kids are smart, and being smart, they can calculate how hard it’s going to be to pay off the average student loan debt of $37,000 and continue to eat and purchase pants just by rewriting code, business plans, and pitch decks with former classmates in a shared apartment while hoping they can create the next Snapchat.

A lightning rod for all ills, most imagined, but in this case, statistics prove that 22- to 35-year-olds are becoming entrepreneurs at a lesser rate than any prior generation, with about one-quarter the number of self-starters as compared to gen-X or baby boomers. But then how much risk tolerance should we expect from a generation that grew up being told life came with certain guarantees? That the right internship or right school or right GPA, or just simply hard work, was all they needed to succeed in the world? In reality, the only certain thing about startups is a failure rate of 90% (and more like 98% if you’re in health tech). So it’s not surprising that a group unaccustomed to failure would be the near opposite of those who grew up in more precarious times—like my father-in-law’s father, a Depression child “only-in-America” character, who worked as a press agent, produced a TV game show, owned a forerunner to schools like Apex Tech, and even, briefly, an international airline. The risk of failure wasn’t a deterrent for him.

Why is an entrepreneurial boot camp class I teach to high schoolers 80% male? Why, in the last hackathon I judged, was only one of the 20-plus participants a woman? Because we still treat startups like boot camp—before women could serve as soldiers. We may tsk-tsk bro culture, but we still embrace startup machismo as a necessary esprit de corps. We glorify the work-life imbalance of someone like Elon Musk as if he were a World War I soldier in the trenches. And the way VCs fund male-founded ventures is reminiscent of the Pentagon on a spending spree. To be sure, we have begun to address this issue with STEM education and women-founder-focused investment funds and, of course, #MeToo, but until female founders receive more than just 2% of the $85 billion VCs put into startups last year and we have as many female Mark Zuckerbergs and Jeff Bezoses as we do male ones, we’re in your father’s army.

To a certain kind of person, shooting clay pigeons isn’t as much fun as hunting big game. Such people have issues. As do investors who, because of ego, or the insatiable appetite for moremoremore, or the need to promise bigger and bigger returns to those who subscribe to their funds, too often ignore perfectly viable smaller ideas while tracking the billion-dollar babies. Github, Mailchimp, Shopify, and GoFundMe were all bootstrapped for want of VC dollars. They were lucky, of course. Lack of capital is a top five reason for new businesses to fail, and it results in a lot of unnecessary carcasses.


How to Patent a Business Method

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

A business method cannot be copyrighted, but it can sometimes be patented. Specifically, the inventive steps of certain business methods can be patented, and because of this the patent can provide protection far beyond just the specific business method language used.

First, a drawing is made showing the most important steps of the business method as a flowchart diagram. It is usually not necessary to give every detail of the operation of the business method; instead, the main features should be illustrated. The business method should be protected by a utility patent application, since that will cover any type of business method language. This is also sometimes called a “regular” patent application. The business method steps can be explained in words and by the flowchart drawings.

This is a good point to mention that there is also something called a “provisional patent application” that gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. This is much less expensive, and is recommended when there is an urgent need to get something one file, for example just prior to a trade show or publication. Further below, there is a section called “How to patent using a provisional patent application.”

Here's a simple example showing how to patent an idea for a simple and amusing invention, where a business method is used. The simplest business method already in the public domain would be a lottery. Here, tickets are sold, and based on predetermined or later-determined criteria such as the drawing of numbers, determines winning tickets. For the moment, we aren't concerned with whether it has been done before, it is just an example. For now, the idea would be expressed in words, written just as above. These steps would be shown in a simple flowchart.

Next, a claim is added to describe the invention broadly, such as the following: Claim 1: A method for selling tickets and awarding prizes, comprising the steps of: selling tickets with indicia thereon; matching the indicia with predetermined or later-determined criteria such as the drawing of numbers to determine winning tickets; and awarding prizes to winning tickets.

Standard text is then added including sections titled: background of the invention; summary of the invention; brief description of the drawings; and an abstract of the disclosure. This part is not usually hard to do, but can be time consuming.