Kenneth Avila, Esq. - Patents, Trademarks, and Business Law
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What is a Design Patent?

11/19/2017

4 Comments

 
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Many people are confused about design patents as compared to utility patents or do not even know that design patents exists.  Adding to the confusion is that both design and utility patents may be used to protect the same invention.  So when should you use a design patent and when should you use a utility patent?  You may answer that question by asking yourself the question "Is what I am trying to protect function or decorative?"  For example, say that you have come up with a new pattern of tread that you want to use on a snow tire that is to be sold.  Lets say that your new tread pattern provides your tire certain advantages on snow over current snow tires.  Since your new snow tire is more "functional" than current snow tires then you will want to obtain a utility patent on your new tread pattern.  Conversely lets say that your new tread pattern gives your snow tire the "appearance" that it performs well on snow but in reality it doesn't; It just looks really cool, rugged, and mean.  Since your new pattern is decorative then you will seek a design patent on it.  Beware, using this example say that you know that your new tread pattern provides better performance on snow over other snow tires but to cut costs you seek a design patent on your new pattern.  If your competitor can provide that your new pattern is functional then your design patent will be revoked and you will not have the opportunity to go back and get a utility patent on the tread pattern; in effect you will lose all rights to any sort of patent.

Below are design patents for the Crocs shoe, Chrysler Crossfire, Apple iPad screen layout, and a tire tread pattern.​

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​​Design patents are a cost-effective mechanism to add value to a company and combat the counterfeiting of products when protecting ornamental features.  For more details contact me.
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Interested in a patent?  Contact me between 11/12 to 11/16 to schedule a free consult on patents.

11/11/2017

1 Comment

 
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Do you have a new idea but don't know how to best protect it?  Do you know the importance of the dates when you first show your invention to the public or file a provisional patent?  Do you know what requirements are to be satisfied before the patent office will grant your patent application?  There are many issues to consider before and during the application process and unless you are aware of them you could lose your rights to a patent. 

This week I am offering free 30 minute consults on patents.  The consults may be over the phone or using internet based video conferencing.  During the consult I will review with you the patenting process using a flowchart that depicts the process.  If you are interested here is what you need to do:

  1. You will need to contact me via email to request the free 30 minute consult between November 12 and November 16.  My email address is displayed in the top right corner of this webpage.  We will then setup a time via email.  Please do not call me regarding this offer.  
  2. You will need to download and print my flowchart that depicts the patenting process before the consult.  Navigate to my IP Websites page and then look for the link "Flowchart Depicting the Patenting Process" in the "Attorney Online Forms and Downloads" section.
  3. If you miss our appointment or you do not have my flowchart printed out before the consult you will forfeit your free consult.

I look forward to meeting each of you!

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Beware of Invention Promotion Scams!

10/28/2017

1 Comment

 
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Do you want to save yourself $10,000?  That is about how much you will be paying those "invention assistance companies" you see on TV.  Be very careful when dealing with them and the promises they make.  I have read a number of agreements offered by these companies to inventors and all of them have many terms that are not in favor of the inventor.  Yet every year many inventors will hand over thousands of their hard earned money to these "invention assistance companies" and get very little as a result.  So what should you be looking for when you approach one of these companies?  I would say body armor, but seriously here are some pointers:

  1. Offers of a free review of your invention.  What did you mother tell you about free things in life?  Listen to your mother.  "Free" is their hook to bring you in contact with their professional sales person who will then do what professional sales people do - make a nice commission off of you.
  2. Market evaluation report.  The first thing their professional sales person will do is tell you that a market evaluation report needs to be performed.  Very likely that report will indicate that the market potential for your invention is great.  Of course their market evaluation report will say that because it is a lead in for the big dollar items that come next.  The purpose of the report is to get you excited enough to take the plunge.
  3. "Poor Man's Patent".  Some of these companies will tell you to protect your idea by writing it down, putting it into an envelope, mailing the envelope to yourself, and then not opening it.  You will gain no legal protection by this process and your idea remains open to copycats who see it.
  4. Agreements.  Once they have excited you with their market evaluation report they will offer you marketing services with brochures, TV ads, and phone banks.  But they will need to get you to sign an agreement first.  The agreement is key because the agreement will protect the invention assistance company from being sued by you!  Always have an attorney review the agreement and explain the risks you are taking by signing the agreement.

Because of the number of inventors being taken by invention assistance companies the US government has written 35 USC 297 to protect inventors.  35 USC 297 is nice but it is best to talk with an attorney first before signing the agreement.  

35 USC 297 allows you to ask the invention promoter the following:
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  1. The total number of inventions evaluated by the invention promoter for commercial potential in the past five years, the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations.
  2. The total number of customers who have contracted with the invention promoter in the past five years, excluding those who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter.
  3. The total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by the invention promoter.
  4. The total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by the invention promoter.
  5. The names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.

Finally an attorney has certain ethical duties owed to their inventors.  An invention promotion company owes no such ethical duties.  An attorney who breaches their ethical duties to a client may lose their license to practice law in their state and to represent inventors before the patent office.  Those licenses are very hard to get and represents years of hard work in school.

1 Comment

What are Utility, Design, and Plant patents?

10/21/2017

3 Comments

 
There are actually three basic types of patents you may file with the patent office.  They are as follows:
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  1. Utility:  When most people think of patents they think of utility patents.  A utility patent protects the invention of a new and useful (i) processes, (ii) machines, (iii) articles of manufacture, (iv) formulas, or (v) a new and useful improvement of i - iv.  The non-provisional version of the utility patent permits the owner to exclude others from making, using, or selling the invention.  Approximately 90% of the patent documents issued by the patent office in recent years have been utility patents, also referred to as "patents for invention".  There are two kinds of utility patents: provisional and non-provisional available:  
    1. Provisional Utility Patent:  Provides a basic level of protection for an invention for a period of one year from its filing date in exchange for some simplicity.  For more information on provisional utility patents please see my FAQ.
    2. Non-provisional Utility Patent:  A very complex document that provides the full range of patent protection for a period of up to twenty years from the date of patent application filing upon grant.  For more information on non-provisional utility patents please see my FAQ.
  2. Design:  Following utility patents, design patents are the most commonly issued patents.  Design patents are used to protect new, original, and ornamental designs embodied in or applied to an article of manufacture and generally permits the owner of the patent to exclude others from making, using, or selling the design for a term of fifteen years from the date of grant.  For more information on design patents please see my FAQ.
  3. Plant:  Plant patents are rather unusual.  Plant patents are used to protect a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, it permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing.
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Copyright © 2011 - 2020 by Making Innovation Count PLLC. Notice: The information presented on this website is for general informational purposes only, and should not be relied upon as legal advice. No attorney-client relationship is created between you and Kenneth Avila Esq. simply by your use of this website.
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  • Home
  • Meet the Lawyer
  • Practice Areas
    • Business Law
    • Intellectual Property Law >
      • Patent FAQ and Fees
      • Trademark FAQ and Fees
      • Copyright FAQ and Fees
  • Resources
    • Blog
    • IP Twitter Feeds
    • IP Websites
  • Contact Me
  • Disclaimer