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The Truth About NDAs

As a patent attorney, I often talk to small businesses and startups who say something like: “What good is a patent against a large business? You have to pay to enforce them.” Then in the very next breath, they will mention that they are discussing their invention with someone, but it’s okay, because they have an NDA. You realize that you have to PAY to enforce an NDA, right? NDA stands for non-disclosure agreement and is also known as a confidentiality agreement. They are just a type of contract that is so commonly used that they are referred to by a three-letter acronym or TLA. NDAs are not self-enforcing. If someone breaches your NDA, you have to pay to sue the breaching party to enforce the NDA just like you would pay to enforce any contract, patent, trademark, copyright, or trade secret. NDAs have been in the news a lot lately because they are powerful tools for big businesses, politicians, and celebrities to silence people, such as former employees, because there is a mismatch in power. NDAs have become controversial because rich people and big businesses have more money to enforce the NDA than the former employees to complain about…

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Warning: Watch Out for Patent and Trademark Scams!

I am writing to tell you how to save money by avoiding patent and trademark scams. If you are interested in saving money or helping someone else save money. When you file a patent application or a trademark application, the information in your application will become publicly searchable. This is part of the tradeoff for obtaining intellectual property rights; they have to be publicly searchable so that the public and your competitors can avoid accidentally infringing on your property rights. Unfortunately, all of that publicly accessible information leads to scam artists and others sending “mock bills” in the hope that you will accidentally send them money (usually over $1,000). These fake invoices will look real because they will reference the name of your application, your name, your address, your title, your file numbers and on and on. However, if you are using a patent attorney or an Intellectual Property attorney (IP attorney) to obtain your patents or trademarks, then your IP attorney should be listed as your designated contact by the United States Patent and Trademark Office (USPTO). This designation means that ALL of your bills should come to you through your attorney or an organization that your attorney introduced…

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Can You Leave Claims Out of Provisional?

Common Patent Questions: Can You Leave Claims Out of Provisional? Can You Add Claims Later? To the first question, yes — the same way you can jump out of a flying airplane without a parachute. Just because you can do it, doesn’t make it a good idea. To understand why, you need to understand how a provisional is treated by the patent office. When you file a provisional patent application, the United States Patent and Trademark Office (USPTO) does NOT examine your provisional. They merely ensure that it was filed with a cover sheet and proper payment. You can print out this post and file it as a provisional application and the USPTO will accept it. Do you think this post will protect your invention? Content matters. When does a non-provisional get examined? When your non-provisional patent application gets examined, then the Examiner may allege that your claimed invention is known or obvious over some public disclosure made between the time when your provisional and non-provisional were filed. The Examiner will basically say: prove it. Prove your invention, as defined by the claims, was filed in your provisional application. The best way to do this is to point to the…

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Can I Change My Provisional Patent?

Common Patent Question: Can I change my provisional patent? As a patent attorney, I often get asked something like: “I filed a provisional patent application, but I recently got great experimental results, OR actually made a prototype, OR improved my invention. Can I change my provisional patent application to add these improvements?” Yes, you can update your provisional application by filing another provisional and claiming priority to both. One of the great things about filing a provisional application is that you can improve on your invention for a year before filing a non-provisional application. Once you file a non-provisional application, you cannot make any material improvements. Technically, U.S. Provisional Patent Applications cannot be amended for any reason. However, realistically, you can file as many provisional applications as you want within a year of your original filing. We just add your improvements into the document of your original provisional and file it as a second provisional. Then, when we file the non-provisional, we claim priority to both provisional priority dates. This is the patent equivalent of “saving your work” as you go. Want to protect your invention? Call us at 832-621-0353 to schedule a complimentary consultation and we will be happy…

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1590: Turning Your Ideas Into Assets And Avoiding Getting Sued Into Bankruptcy For Patent Infringement

New Podcast with William Childs on The Entrepreneur Way Listen now:   William Childs William Childs earned his doctorate in chemistry, then attended law school to become a patent attorney. But he didn’t stop there. William founded and runs a virtual IP law firm in Houston, TX, where he helps entrepreneurs turn their innovations and creativity into valuable property their business can own. Entrepreneurial Role Models: Dan Kennedy When business started difficulties overcame: “I had to decide since I was a virtual firm where in the US that I want to work. This is much more difficult than it sounds because when I would work in a law firm I would typically just go to work where the job was. But now I could work anywhere in the world and work virtually. So, like where in the world would I like to work? And I decided on Houston Texas. But I didn’t know anyone Houston and I had never been to Houston Texas. I just sort of did the analysis and realized that Houston was probably about the best place in the US for my particular business which it turned out by the way was a brilliant decision” Favorite Books:…

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Part 8: How to Patent an Idea: A Guide for Beginners

This is the last post in my series - How to Patent an Idea: A Guide for Beginners Thank you for taking the time to read my insights on how to understand patent claims. I hope this information was useful and helped to clear up some of the confusion that comes with pursuing a patent. Here is a quick summary of the main takeaways discussed throughout this series: Patents Only Protect Your Invention In Their Country of Origin. Only Issued Patents Can Be Used To Sue A Competitor. Only The Claims Of A Patent Protect Your Invention.Claims Are Usually Open-Ended: Make Sure That Your Claims Only Recite Essential Aspects Of Your Innovation. Patent Attorneys Are Claims Fundamentalists: Make Sure That Every Word Is Necessary And Not Overly Limiting. Challenge Every Word! Try To Envision All Variations Of Your Innovation And Ask Your Patent Attorney If Your Claim Will Cover That Variation. Find The Bottlenecks Created By Science, Your Application, Or Regulations, And Claim Them. It is up to you to ensure that your patent is valuable, and your ideas are well protected. If your current patent attorney doesn’t seem to have the time to help you prevent design around, Childs…

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Part 7: How To Prevent Design Around

You can listen to this blog below: How to Patent an Idea: A Guide for Beginners This is the seventh post in my series How to Patent an Idea: A Guide for Beginners. In the previous articles I’ve discussed how to understand patents, common types of claims, protecting your product or method, and many other topics. Hopefully by now you’re feeling a little more informed about the patent claim process. In this article we’ll discuss how to prevent design around. How Can I Prevent Design Around? The term “design around” is commonly used when referring to some minor change that allows a competitor to avoid infringing the claims of your patent. Depending on your technology, you may not be able to prevent all design around, however you can make it as hard as possible for your competitors to steal your invention. In exchange for disclosing your innovation to the public, the government will grant you a patent that allows you to sue others for using or selling your invention without first requesting permission. The purpose of the patent law system is to encourage the public disclosure of innovation, not to protect you from competition. This may seem like a subtle…

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Part 6: Protect Your Method with Method Claims

You can listen to this article below: How to Patent an Idea: A Guide for Beginners If you read my blog on understanding patents then you know that only the claim section of an issued patent can be used to sue for patent infringement. If you read my articles on how to protect your patent idea, and how a product claim can protect your product, then you’ve got a good foundation for reviewing claims. Now it’s time to discuss method claims, also referred to as process claims Generally, method claims are claims that recite one or more steps. They are typically used to protect methods of making a product, using a product, or providing a service. Method claims are usually considered much weaker than product claims because method claims can be difficult to enforce. Infringing Methods Are Harder To Detect Unless the method is being practiced in view of the public, the infringement of a method claim is more difficult to detect. The first step of any patent litigation is usually suspecting that a competitor is practicing your invention without your permission. Detecting an infringing product is usually pretty straight forward. It’s usually on the shelf right beside yours. And…

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Part 5: How A Product Claim Can Protect Your Product

This is the fifth post in the How to Patent an Idea: A Guide for Beginners series. You can listen to this blog below:   If you read part two in the series on understanding patents, then you know that only the claim section of issued patents can be used to sue for patent infringement. If you read the third post, How To Protect Your Idea, then you have a few tips for reading patent claims. Will My Patent Claims Protect My Product? There is no definitive way to guarantee that your claims draft will protect your innovation, especially given the constant evolution of patent law that can change the way claims are interpreted by the courts. To give you an example - the claims that you file in a patent application can be thought of as a starting point for negotiations with the U.S. Patent and Trademark Office (USPTO). As part of this negotiation the USPTO may require that claims be amended in a way that reduces the coverage of the original claims. Additionally, product claims are usually considered much stronger than process claims. One reason is that an infringing product is easier to detect when a competitor imports…

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Part 4: The Most Common Types of Claims

How to Patent an Idea: A Guide for Beginners Listen to this article below:   This is the fourth post in my series entitled How to Patent an Idea: A Guide for Beginners. In this post, we’ll discuss three special types of claims that are also very common. If this is the first blog that you’re reading in the series, it would be a good idea to also read the second post on understanding patents. If you need a few tips on how to read patent claims then Blog 3 is for you. Now let’s discuss the three most common types of patent claims and what you should know about each one. The Markush Claim? A Markush claim is a patent claim that contains a special phrase. The classical Markush format is “selected from the group consisting of (a list of possibilities) and (one last possibility).” For example, a Markush claim for a peanut butter and jelly sandwich might read as follows: A square sandwich for satisfying hunger comprising: a first piece of white bread and a second piece of white bread; a peanut butter layer; and a jelly layer, wherein the jelly layer contains a plant material selected from…

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