Patents Questions & Answers
Q: 10 years ago I sold the patent rights to a U.S. corp. Can I now re-assert my ownership rights to the patent overseas?
1 Answer | Asked in Patents for Colorado on Feb 19, 2014
Answered on Feb 26, 2014
Mr. Ilya Libenzon's answer
you need to examine your assignment agreement -- most likely, you assigned all the rights so you cannot re-assert your ownership rights unless you execute another assignment transferring the rights back to you
Q: How can I contact the assignee or inventor of a patent?
Mr. Ilya Libenzon's answer
First you need to check if the patent has been assigned or not.
If the patent has not been assigned, then you can contact the inventors listed on that patent.
If the patent has been assigned, you should contact the assignee only because inventor(s) don't have legal rights in this patent anymore.
Both, the inventors information and assignment information is available at the USPTO web site.
Q: Looking to create a patent and not sure how to find out if one is already in place for the idea I have
Mr. Ilya Libenzon's answer
You should contact a patent practitioner who can help you conduct a patentability search, and most importantly, interpret search results.
Q: How do i get a patent
Mr. Ilya Libenzon's answer
You should contact a patent attorney who can help you with the following procedure.
The first step would be conducting a patentability search to see what it out there disclosed in the prior art for ascertaining the chances of getting a patent. Next step is to draft a patent application taking into account the outcome of the search results.
Q: Does an active patent registered in the USA (Patent number available) applicable to Great Britain?
Mr. Ilya Libenzon's answer
no, patents are regional in their effect, which means that if you have a U.S. patent, you can stop others from making, using, offering for sale, selling your invention only in the U.S. To be able to do the same in the Great Britain, you would need to have a GB patent, or EU patent.
Q: I'm looking at a Patent Application ( #20120291885). How do I know if it has been issued, or if it's pending?Thanks!
Mr. Ilya Libenzon's answer
you can check the status at the public pair using an application number and then for more details, you can go to the Image File Wrapper (IFW) by clicking on the IFW tab
http://portal.uspto.gov/pair/PublicPair
Q: What can I do once I have realized that I have written about my 'invention' on my blog - describing it.
1 Answer | Asked in Patents for Massachusetts on Mar 9, 2013
Answered on Feb 26, 2014
Mr. Ilya Libenzon's answer
You need to contact a patent attorney to determine if you can move forward with patenting your invention. That would depend on the scope of your blog post disclosure as compared with your invention. I would be glad to help you with your patent needs.
Q: Can I create an accessory for a patented product?
Benjamin W Scott's answer
You should be able to create and sell an accessory without infringing on the original product. The patent owner only has a right to exclude others from making, using, selling, or importing the product without permission. The patent right does not exclude others from making accessories that can be used with the patent. If you plan on selling your product, you will want to meet with a patent attorney to see if your idea is patentable.
Q: Is a patent that has expired public domain
Mr. Ilya Libenzon's answer
When patent publishes it is open/available to the public in exchange for a right given to a patent holder to exclude others from making, selling, offering for sale, etc. Upon expiration of a patent term, the patent holder has no right to exclude others anymore, but the patent itself remains in a public domain.
Q: If an international brand/P don't patent the design,suddenly other brand copy it.How P will sueD over IPright infrigemnt
Mr. Ilya Libenzon's answer
You may have some protection available under trademark law for your design as a trade dress, depending on some factors.
You may also protect your design under copyright law as a design of a useful article, depending on some factors.
And, finally, you may try to obtain a design patent to stop others from making, selling, offering for sale, etc, but this would depend on many factors as well (date of invention, etc).
Q: Will the Patent Office recommend a patent attorney to help protect my invention?
Paul Overhauser's answer
No, the Patent Office will not make this choice for you. However, a general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients.
Paul Overhauser
www.iniplaw.org
www.overhauser.com
317- 891-1500
Q: Are invention promotion companies reliable and trustworthy?
Paul Overhauser's answer
This can't be answered in the abstract - some companies are legitimate and some do a very poor job. No. The Patent Office publishes complaints regarding invention promoters and replies from the invention promoters. Questions or complaints can be sent to Mail Stop 24; Director of the U.S. Patent and Trademark Office; P.O. Box 1450; Alexandria, VA 22313-1450 or call at (703) 306-5568.
Paul Overhauser
www.iniplaw.org
www.overhauser.com
317- 891-1500
Q: What is a reasonable royalty to pay for licensing a patent?
Paul Overhauser's answer
There are many factors to consider in determining a reasonable royalty. Under Supreme Court precedent, there are 15 factors (known as the Georgia-Pacific factors) to consider in a patent infringement lawsuit. These were first articulated in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and include: 1. The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty. 2. The rates paid by the...
Q: How can I be sure the Patent Office will not give others information contained in my application while it is pending?
Paul Overhauser's answer
Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the...
Q: Can I write to the Patent Office about my application after it is filed?
Paul Overhauser's answer
The Patent Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.
Paul...
Q: Is it necessary to go to the Patent Office to get a patent?
Paul Overhauser's answer
No. Most business with the Office is conducted by email and written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.
Paul Overhauser
www.iniplaw.org
www.overhauser.com
317- 891-1500
Q: If a friend and I work together to make an invention, to whom will the patent be granted?
Paul Overhauser's answer
If both you and your friend had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, you are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall...
Q: If a first person furnishes all of the ideas to make an invention and a second person employs the first person
Paul Overhauser's answer
No. The application must be signed by the true inventor, and filed with the Patent Office, in the inventor's name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.
Paul Overhauser
www.iniplaw.org
www.overhauser.com
317- 891-1500
Q: Does the Patent Office set the fees charged by patent attorneys for a patent?
Paul Overhauser's answer
No. The price is between you and your patent attorney, and the Patent Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) prosecution.
Paul Overhauser
www.iniplaw.org
www.overhauser.com
317- 891-1500
Q: What do the terms "patent pending" and "patent applied for" mean?
Paul Overhauser's answer
"Patent pending" means you applied for a patent, and the application is still active - it has not been finally rejected, or, issued as a patent. "Patent applied for" is not a commonly used term, but it means that a patent application was filed, even though it could have been finally rejected.
Paul Overhauser
www.iniplaw.org
www.overhauser.com
317- 891-1500