Arizona Intellectual Property Laws

Provisional vs. Non-Provisional Patent Applications

I am Wayne Carroll with Inspired Idea Solutions Law Firm. We help entrepreneurs make a profit without giving their best ideas to the competition. What is the difference between a provisional application and a non-provisional application for patent? The main differences are one, expiration. Two, examination. Three, claims. And four is fees. So the expiration.

1. Expiration

Provisional applications expired at exactly 12 months without ever becoming a patent. The non-provisional application does not expire automatically and can be granted and become a patent.

2. Examination

The second is examination. Provisional applications are not examined by the patent office for patentability. This means that a poorly written provisional application and a high quality provisional application will look the same to the patent office, because they don’t look at it. Non-provisional applications are examined. If the patent is poorly written there will be multiple problems with the patent.

3. Legal Claims

The third thing is the claims. Provisional applications do not require legal claims. Non-provisional applications require at least one legal claim stating precisely what the inventor’s claim as their new novel and use for invention.

4. Filing Fees

And the fourth difference is the fees. Provisional applications have a lower filing fee. The provisional patent application filing fee is not credited towards the non-provisional filing fee. The provisional filing fee is an additional cost that allows for extra time before filing the non-provisional application. At Inspired Idea Solutions Law Firm we help clients to determine if filing the provisional application is the right strategy to protect their inventions.

By: Wayne Carroll

Protecting Intellectual Property

What steps can a start-up take to protect intellectual property? The most important would be to understand the difference between what is going to be protected by a patent, what’s protected by a trademark, and what’s protected by copyright.

By understanding these things, that a patent is going to protect inventions and new ideas, that confidentiality is very important in getting a patent application on file. I recommend filing multiple provisional patent applications for a start-up. It’s research, understanding what other people are doing with the term and copyright, making sure you put the copyright symbol on the things that you produce.

Those are the main things. There is many more. Go ahead and contact me if you have more questions about how to protect your intellectual property. I’m Wayne Carroll with Inspired Ideas Solutions Law Firm.

By: Wayne Carroll

Intellectual Property Explained

I’m often asked, What is intellectual property? Actually, I think most attorneys, even some patent attorneys get this wrong. Most attorneys think it’s patents, copyright, and trademarks, but it’s not. Intellectual property is your ideas, your inventions. The idea itself is the property.  Your brand, that’s the property. And your content that you write, those things are intellectual property. The patents, copyright, and trademarks, are how you protect them. Like the deed protects a house, the house is the property; the deed is what protects it. I’m Wayne Carroll with Inspired Ideas Solutions Law Firm.

By: Wayne Carroll

Hi, my name is Maria Speth and I’m attorney here at Jaburg & Wilk, and my areas of practice are intellectual property and internet law. Website terms of use may or may not be enforceable. There are a few different types of terms of use.

There’s click wrap agreements and browse wrap agreements. A click wrap agreement is the kind of agreement where the user has to actually click I agree on the website to show that they agree to the terms of use. A browse wrap agreement is it’s just there. It’s available, you can see it. You can read through it, but you don’t have to manifest an agreement to it by clicking.

Courts have been pretty clear that a click wrap agreement is enforceable because you have as a user you have agreed to those terms. Browse wrap agreements are usually not enforceable. It depends on how conspicuous they are and where they are on the website, but typically they are much harder to enforce.

So, if you have a website – especially if your website is interactive or is an E-Commerce website – I would highly recommend that you include a click wrap agreement, that actually have your users click I agree to the terms of use. Otherwise it’s likely that the court will find that it’s not enforceable. On the other hand if your website is a static website and you’re not actually either allowing somebody to post on it or allowing somebody to buy from it – then it’s not as important that you have an agreement that they can actually click on. In those cases more of a browse wrap would be acceptable.

By: Maria Speth

What is a Patent

What is a patent? A patent is an exclusive right to be able to make use and sell an invention. In the United States it lasts for (20) years if it’s a utility. There are some other types of patents, there is the design patent that protects the way something looks, not the way it functions, and that’s a (14) year right. So there is multiple ways to get a patent, but it protects an idea when you’re talking about a utility patent. I’m Wayne Carroll with Inspired Ideas Solutions Law Firm.

By: Wayne Carroll

Brand & Trademark Availability

In this video I’m going to answer the question: “how do I know if a brand name or a trademark is available?” Many people think that because they are able to register a name with the Secretary of State or the Corporation Commission in their state that the name is available as a brand or trademark.

Trademark Registration

A trademark is not the same as registering your business. A trademark is a word or symbol that distinguishes and identifies your business as the source of what you sell. In order to establish a trademark nationwide you must do more than merrily claim it or claim the domain name. You must register with the United States Patent & Trademark Office and use the trademark. When you apply for a trademark, the trademark office will do a search to determine if you meet the requirements for a trademark. There are two main things that they look for and these are the same things that you should look for to determine if your selected brand name is available.

Trademark Availability

First, does your trademark distinguish your brand from other brands already in use? And second, can your trademark identify your brand as a brand? To distinguish your brand, the trademark must be significantly different than other brands in use. If your trademark is similar to the way other trademarks look, sound, or create a similar impression as other trademarks, the trademark is not likely available and your application may be rejected. The prior trademarks need to be used for related products or services to what you are selling but “related” is a broad term. And your application can be rejected based on someone selling very different merchandise.

The trademark office primarily searches in the databases of current trademarks in the United States. But a trademark is not truly available if someone else is using the trademark even without a registration. If they are using the trademark prior to your use, they have at least some rights that can block you from using the trademark.

If your chosen brand name cannot distinguish your brand from others, then it’s not available. So, this is the second requirement to get a brand that you can protect with exclusive rights it must also be able to identify your brand as a brand. Your trademark must be more than generic terms for what you are selling. The trademark also cannot be merrily descriptive of your goods.

For example, crispy may be descriptive for bacon and low fat may be descriptive for yogurt. The strongest trademarks have no elements of descriptiveness in the brand name. For example Xerox or Kodak. At Inspired Ideas Solutions Law Firm we perform high quality trademark searches to determine if your chosen trademark is available not just in the trademark office database but based on registrations from all 50 states, business publications, and other databases. We help you make the determination of whether to invest time and money into building a brand around a trademark. That brand can serve your business for years to come.

By: Wayne Carroll

Protect Your Inventions

Can I use the post office to protect my invention? The strategy is that an inventor can write down their idea and mail it to themselves in a sealed envelope and use the postmark as proof that they invented it on that date. That sounds like a cheap and easy way to protect an idea. This strategy does not work. There are two reasons why.

First to File System

One, it does not matter who invented it first. And two, this is a very poor evidence and would be torn to shreds in court if it were presented as proof. Why doesn’t it matter who is the first to invent? In 2013, new patent laws became effective that only grant patent rights to the first inventor to file a patent application. This was a major change in the law. You must be the first to file a patent application on an invention to be granted the patent right. It does not matter if you were the first to invent, you must be the first to file. I have talked to many inventors who have a great idea but do not act on it for years. And by the time that they come talk to me, someone else has already filed a patent application.

With the first-to-file system, it is more important than ever to keep your idea secret until you file a patent application. I have worked with inventors who have had their invention stolen when somebody they showed the invention to filed their own patent application. I recommend documenting your invention and requiring signatures on a non-disclosure agreement from people that you showed the invention to.

Why would the post office patent be poor evidence? First, you must think like a litigation lawyer. They will assume that you are lying. How do they know that you did not mail an unsealed envelope to yourself so you could use it later? All that the postmark really proves is that you paid for postage on a certain date.

A much better way to document an invention is to keep an inventor’s notebook and have someone witness before a notary what you have invented. A notary may be about the same price as the cost of postage and gives you much better protection as proof in court that you invented the idea. Don’t rely on patent strategies that you hear in rumors. Rely on advice from a professional.

By: Wayne Carroll

Patent Research

I want to address the question: “Can I do my own patent search?” My answer is yes and no. Most clients that come to me, have done some searching for their invention. They have searched on Google, at the patent office website, they have been to stores to look for their invention, they have checked on Amazon and other sites to try to find their invention. And they usually tell me that no one is selling their invention.

Other times inventors tell me, they know the industry and who is doing research in the industry, and no one has developed anything like their solution. These actions are patent searching. Sometimes my clients tell me that no one is producing and selling the solution, but they did find an old publication that shows the basics of their invention. In some cases I must advice them, that even though no one is selling the invention, the old publication is likely to prevent them from getting a patent on the invention.

You can do your own patent search, and there are a lot of great tools available that were not available ten years ago when I started working as a patent attorney. If you do your own patent searching, you need to save the publications that you think are the closest to your invention. You have a duty to tell the patent office of any publications you know about that are close to your invention.

Why did I say, “No, you cannot do your own patent search?” Patent searching is a highly technical activity, and there are many databases that are not easily accessible without paying. Also, most inventors do not know everywhere they need to look, or what will be used to reject their patent application in the patent office. The patent office hires examiners, and trains them to search for prior publications, not just patents.

Before you invest in your invention with a patent application, you should consider investing in a high quality patent search. You want a search that is better than a search that the patent office will do. At Inspired Ideas Solutions Law Firm, our searching staff have deep experience searching for patents, and have access to the same databases that the patent office is likely to search to determine whether to reject your patent application. Yes, you can do your own patent search with the tools that are free and available today. But you are not likely to go deep enough without the help of an experienced professional.

By: Wayne Carroll

Aspects of Non-Disclosure Agreements

I’m going to answer the question: “what should an NDA include?” First of all, an NDA is a non-disclosure agreement. It’s a contract that someone signs and it needs to include an agreement of what it is that’s going to be kept confidential. If it just says, I’m going to keep some broad idea confidential and there’s no linking so that you can concretely say what it is that they needed to keep confidential, it’s going to be hard to enforce.

It needs to be reasonable in scope and time. The important thing about a non-disclosure agreement is to make sure that they will not be disclosing things that are not currently publicly available. To find out more about how to draft the right non-disclosure agreement for your business, give me a call. I’m Wayne Carroll at Inspired Idea Solutions Law Firm.

By: Wayne Carroll