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What type of search should you conduct when considering applying for a patent?

Different Types of Patent Searches

When an individual or business is looking to apply for a patent, they are usually surprised to discover the array of options that need to be analyzed in order to conduct a proper patent search. The reason there are multiple patent search options is because the scope of the search will be determined by the overarching reason for the search.

Generally, there are four types of patent searches that can be conducted:

  • Novelty (patentability) search
  • Freedom to Operate (FTO) search
  • Non-infringement search; and
  • Validity search

Let’s take a look at each…

Novelty Search

The most common type of patent search is the novelty search. Why? Because this type of search is initiated to help determine the likelihood of successfully getting a patent application through the United States Patent and Trademark Office (USPTO). Most startup companies engage in a novelty search to help assess whether a particular invention is actually patentable and worth the time and money to pursue a patent with the USPTO. Another benefit is that a novelty search routinely provides valuable information to inventors. For example, it can provide context and insight into other businesses competing in the same sector.

To complete a novelty search, you will need to clearly identify the invention and itemize each element and key aspect that you believe makes your invention novel and unique. Once this is done, a comprehensive search can be conducted through the USPTO database for patents and publications, Google, and other databases to assess whether any aspect of your invention has already been patented or would be considered “obvious” to the point where filing a patent application would not be worth the time, money, and energy.

Freedom to Operate Search

A Freedom to Operate (FTO) search (also known as a Clearance search), helps determine whether it would be prudent to commercialize a particular product in light of current products that have enforceable patent rights. The FTO search would determine whether you have the freedom to operate and commercialize an invention without a major risk of getting sued for patent infringement. If, for example, a Freedom to Operate search locates information that indicates a risk of patent litigation, you can assess whether to abandon the commercialization of the proposed invention, engage in a redesign, or possibly reach out to the owner of the patent and negotiate a licensing agreement.

Non-infringement Search

A non-infringement search, much like a Freedom to Operate search, is generally pursued to help determine if a proposed invention could infringe on an already-active patent. However, this search is unique in that it focuses on a specific patent, or set of patents, that have been previously identified as relevant to your invention. Engaging in a non-infringement search is generally recommended when a new product, process, or technology is created but is known to be similar to an existing patented product, process, or technology. This is especially true when there are known and recognized competitors with enforceable patent rights.

Validity Search

The validity search is considered to be the rarest form of patent searches. It is typically only pursued in the context of patent litigation where a defendant, or potential defendant, in a patent infringement lawsuit is seeking information that could be used to invalidate a particular patent thereby nullifying that patent owner’s legal rights.

Need Help with Conducting a Proper Patent Search? Contact an Experienced and Respected Patent Attorney in Los Angeles Today

As noted above, there is an inherent level of complexity associated with even attempting a patent search. To help ensure the search is done correctly and thoroughly, contact the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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How do you effectively protect your CBD business with a trademark?

Cannabis-Based Businesses and Trademark Law

Cannabis-Based Businesses and Trademark Law

Despite marijuana being legal in some form in 43 States and territories, there continues to be a prohibition on securing a federal trademark registration for any marijuana-based products. Why? Because marijuana remains a Schedule I drug under federal law. The conflict between the ever-growing number of state laws legalizing the sale and use of marijuana and cannabis-based products, and the archaic federal prohibition have created major issues for CBD business owners. This is because CBD products typically contain a certain amount of THC (the active ingredient in marijuana). As a result, a business selling CBD products is generally prohibited from securing a trademark under law.

Steps Toward Progress

Congress recently passed legislation that was intended to help ease the restrictions on trademarks for certain types of CBD products. The legislation was part of the massive 2018 Farm Bill. Specifically, the Farm Bill removed hemp and hemp-derived products from the Controlled Substances Act (CSA).

After the Farm Bill was signed into law, the U.S. Patent and Trademark Office (USPTO) issued a memo emphasizing that it would not register trademarks for applicants selling any goods and services that violate federal law. Nevertheless, the USPTO officially stated that applications for trademarks related to products that meet the definition of hemp will now be reviewed and accepted by the federal agency, subject to certain exceptions.

The new regulations stipulate that you can now pursue federal trademark registration for a hemp-based product if it meets the following standards:

  • The product contains less than 0.3% THC (dry weight);
  • The product is derived from hemp;
  • The product is NOT an oil;
  • The product is NOT a food or beverage;
  • The product is NOT a dietary supplement; and
  • The product is NOT a pet treat.

Many CBD business owners have raised legitimate complaints about the narrow and rigid the current regulations are to secure a federal trademark. If a business is unable to trademark a CBD-based oil, food, beverage, pet treat, etc. there is not much left that can be trademarked.

If you own a business selling CBD products, do not throw your hands up in despair. There are ways to protect the trademark of your CBD business. For example, there is a Trademark Registration System within each state. This means a CBD business can legally secure a state trademark registration in those states where CBD products are legally offered for sale.

Once you secure the State-level trademark, you will be empowered with the legal right to prevent competitors from using the trademark of your CBD business.

Have Questions? Contact an Experienced Trademark Attorney in Los Angeles Today

As you can see, the rules and regulations related to securing a trademark are complex and vary greatly at both the state and federal level. Hence, it is in your best interest to retain the services of a reputable and experienced trademark attorney such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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How do you effectively protect your trademark?

Trademark Lawyer in Los Angeles

How to Effectively Protect Your Trademark

If you are a business with a registered trademark, it is important to understand that the trademark has value, both intrinsic and explicit. The trademark is a representation of your company’s brand and  can help distinguish you from the competition. This is why you need to be proactive and protect your trademark.

There are specific legal rights inherent with a trademark that is registered with the U.S. Patent & Trademark Office. Here are some strategies to consider in order to effectively protect your trademark:

  1. Register Your Trademark Internationally

The protections afforded to trademark owners in the United States do not extend beyond our borders.  As a result, if you want to ensure you have the strongest and broadest protection possible, it may make sense to register your trademark internationally. You may be thinking, “do I really need to spend the time and resources to register my trademark in multiple foreign countries?” Well, you should consider the fact that counterfeiting is a multi-billion dollar business in countries like China and Hong Kong. In addition, some countries (e.g., China), have laws in place that grant trademarks on a first-to-file basis. This means the first person to register the mark in that particular country will likely be granted the legal rights inherent with a registered mark. Basically, if you do not have international trademark protections, you are exposing your business to being taken advantage of by foreign counterfeiters.

If you are interested in registering your trademark internationally, the process is found in a treaty called the Madrid Protocol. It consists of 90 member countries and offers applicants the ability to complete a simple, single trademark application in one language. While the registration process is simplified, it is important to note that the Madrid Protocol does not guarantee approval of your trademark application. Each member country will conduct its own independent review of your application and make a decision on whether to approve or deny.

  1. Use Your Trademark Consistently

Registering your trademark is just the beginning. You need to take steps to maintain your registered mark so you can enjoy the protections for the foreseeable future. Hence, you need to make sure you consistently use your mark in your business ventures. For example, you should consistently try to use the same words, design, and/or logo that was registered with the USPTO. Using your trademark inconsistently will weaken its protections and could come back to haunt you in a potential trademark dispute.

  1. Renew Your Trademark

Consistent use of your trademark carries another inherent benefit – the fact that your trademark does not expire, as long as you continue to use the mark for the goods and/or services listed in your initial registration application. Though, it is important to note that you need to affirmatively renew your trademark. The first renewal takes place between the fifth and sixth year of use. The second renewal typically takes place around nine or ten years after your initial registration date. After that, you will need to file a renewal of your trademark every ten years to continue to protect your mark.

Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today

If you want to learn more about how to effectively protect your trademark, take action by contacting the highly reputable trademark lawyers at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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What does patent due diligence entail?

Patent Attorney Los Angeles

Patent Due Diligence

The term “due diligence” is most often associated with mergers and acquisitions. However, there is a type of due diligence that can, and should, be conducted when it comes to patent management. Patent due diligence is considered to be the process of analyzing a patent or set of patents to support your overarching business objectives. Patent due diligence can take various forms, depending upon the circumstances in which the need for this type of analysis arises. For example, due diligence can be offensive or defensive.

Offensive Patent Due Diligence

Offensive due diligence can be done to help assess whether other individuals or companies are infringing on your patents or whether your patents could potentially be monetized through licensing or divestment to help achieve your overarching business objectives.

Defensive Patent Due Diligence

Defensive patent due diligence can be done in order to assess whether you have the ability to operate your next business venture, including whether you are infringing on the patents of another individual or company and what actions can be initiated to mitigate that risk.

Benefits of Patent Due Diligence

Conducting patent due diligence will assist in determining the value of your patent portfolio, including whether you could potentially monetize your patents through licensing, enforcement or even divestment. In addition, completing patent due diligence enables you to assess and mitigate the infringement risks associated with a competitor’s patents or the patents of another party (e.g., a Non-Practicing Entity). Another advantage to completing patent due diligence is that it can help influence your strategy when assessing how to best respond to a cease-and-desist letter from a third party and can help mitigate your damages exposure against a finding by a court of willful infringement.

Another scenario where due diligence can be helpful is when you are attempting to develop a portfolio of patents that you simply keep on your proverbial shelf. Your company may not even be looking to pursue a patent infringement lawsuit or claim, but you may still prefer to have a series of patents that can be used to assert offensively against competitors that may attempt to file a lawsuit against you.

The Process

When you decide to engage in patent due diligence, the process usually entails the following steps:

  • Assessing whether a target product falls within a patent claim, including an in-depth review of patent file wrappers, specifications, how certain claim terms could or should be interpreted in a patent proceeding, and an application of the patent claims to a target product.
  • Assessing the enforceability of a patent, including whether the patent claims are novel, whether the patent sufficiently describes the invention, and/or whether the patent claims are directed to patentable subject matter or a patent-ineligible “abstract idea.”
  • Determining whether there are potential ownership, chain of title or maintenance fee issues, including an assessment of the ownership, chain of title and early expiration issues related to the patent.

Have Questions? Speak to an Experienced Patent Lawyer Today

If you are looking to secure a patent and have questions about the process, including due diligence, take action by contacting the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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What changes to trademark prosecution and litigation were effectuated by the Trademark Modernization Act of 2020?

Trademark Attorney Los Angeles

Trademark Modernization Act of 2020

If you currently own a trademark, or have interest in applying for a trademark, it is important to gain a general understanding of a new federal law that was enacted at the tail end of 2020. The new law is the Trademark Modernization Act of 2020. Congress passed this legislation and the President signed it into law on December 27, 2020 as part of the Families First Coronavirus Response Act. There are an array of significant modifications and amendments made to the Trademark (Lanham) Act.

Summary of Changes

Below are some of the most significant modifications made to trademark law under the Trademark Modernization Act of 2020:

  • Providing clarification on the evidentiary requirements needed to secure injunctive relief in a trademark infringement lawsuit;
  • Modifying specific procedures in trademark prosecution that takes place before the S. Patent and Trademark Office (USPTO); and
  • Establishing new procedures for the cancellation of fraudulent registrations in an effort to assist in the fight against fraudulent foreign trademark registrations.

Let’s take a look at each of these modifications.

New Evidentiary Requirements

The new law amended Section 34 of the Trademark Act of 1946 in order to establish that irreparable harm can be presumed in requests for injunctive relief upon a finding of trademark infringement. This was necessary since appellate courts were divided on whether irreparable harm could be presumed in a trademark lawsuit or if they needed to engage in an analysis of four specific “equitable” factors before finding harm.

New Protocols for Trademark Prosecution Before the USPTO

The new law created a series of new protocols that must be followed in trademark prosecution conducted before the USPTO. For example, third parties are now able to submit evidence into the record of an application, but only when that evidence is tied to a particular ground for refusal.

New Expungement Procedures

Section 16A of the law establishes new expungement procedures where a registered trademark can be challenged on the basis that the mark was never properly used in commerce, which is usually required for registration. The new law established that a petitioner is obligated to submit evidence of a “reasonable investigation” along with their petition. If there is a finding that a prima facie case exists, expungement proceedings will be initiated and notice will be provided to the registrant. This petition may be filed within three years after registration.

Section 16B of the new law establishes similar reexamination protocols, but registrations may be challenged on the basis that the trademark was not used in commerce prior to the relevant registration date. Similar to the prerequisites in Section 16A, any individual has the ability to petition for reexamination under Section 16B, provided that they are able to submit evidence of a reasonable investigation such as to create a prima facie case. However, it is important to note that a petition filed pursuant to Section 16B must be filed within the first five years that a trademark is registered based on its use in commerce.

Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today

If you have questions about the impact of this new trademark law, take action by contacting the highly reputable Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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What Can Be Trademarked?

Trademark Attorney in Los Angeles

When researching the trademark registration process, it is important to attain a general understanding of what should be trademarked and what can be trademarked. Why? Because if you are going to invest in a developing a portfolio of intellectual property, it makes sense for you to not waste your time and resources. This means conducting a level of due diligence so you can determine the aspect of your branding where a trademark registration would be worthwhile.

Business Name Trademark

In many instances, a great place to start your IP portfolio is trademarking the name of your business and/or your primary product or service. Trademarking the name of your business is especially beneficial because filing the trademark application will generally include a preliminary search before you submit the requisite application materials.

Comprehensive Trademark Search

When pursuing a trademark, it is extremely important to invest the time and resources in conducting a comprehensive trademark search. This critical step is generally best performed by a skilled and experienced trademark attorney in Los Angeles. When a comprehensive search is conducted, it will help discern whether your trademark application could be blocked by a previously registered trademark, or perhaps another mark that is too similar and is already in use in your particular industry.

Trademarking Your Business Logo

If you were able to successfully trademark the name of your business, you should then proceed with considering a potential trademark for the logo of your business. A business logo is extremely valuable and should be trademarked, if possible, since it is routinely the most distinctive form of identification for your business or brand.

If you decide to pursue a trademark for your logo, a “design search” will need to be conducted. Much like the business name trademark, you should utilize the services of an experienced trademark attorney to complete this search. A design search is an important part of the application process for pursuing a logo trademark. This type of search serves to ensure your logo is sufficiently unique and will not cause confusion with any other trademark in existence.

Trademarking Your Business Slogan

In addition to a business logo, you should consider trademarking a business slogan. This is especially important if there is a particular phrase that customers typically associate with your service or product. In most cases, a viable slogan that can be trademarked is succinct and truly original. It is a saying or phrasing that stands out to a listener and instantly creates a connection to your particular business. A good example is the slogan “Just Do It” and the company Nike. When you hear that phrase, most consumers immediately think of Nike.

Looking for Advice on Trademark Law? Take Action and Contact Omni Legal Group Today

If you are interested in applying for a trademark, take action by contacting an experienced trademark lawyer at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation with one of our highly experienced trademark lawyers please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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Why is it important to properly prepare before filing a patent infringement lawsuit?

Patent Lawyer in Los Angeles

Proper Preparation is Key Before Taking Legal Action

Filing a lawsuit that alleges patent infringement is a serious matter. The outcome of the legal action can have significant financial ramifications for both the prevailing party and the losing party. This is why proper preparation is absolutely critical. When a party fails to invest the time to properly prepare, there can be significant legal consequences and remedies that can be levied by a court.

Recoverable Attorney Fees in “Exceptional” Cases

According to 35 U.S.C. § 285, attorney fees can be awarded in “exceptional” patent infringement cases.  You may be asking yourself, “what exactly is an exceptional infringement case?” Well, an exceptional case is determined by the court and is typically based on the totality of the circumstances.  A patent infringement case can be considered exceptional because of a substantive legal position or because one of the party’s utilized unreasonable litigation tactics. In many instances, courts have awarded attorney fees to a prevailing defendant when the plaintiff was not justified in filing the patent infringement lawsuit in the first place.

An example of a court ordering attorney fees as a result of poor preparation can be found in ThermoLife International LLC v. GNC Corp., 922 F.3d 1347 (Fed.Cir. 2019). In this case, the District Court for the Southern District of California awarded attorney fees to the defendant because the plaintiffs did not adequately investigate the issue of the defendant’s alleged infringement prior to filing the infringement lawsuit.

For context, ThermoLife licensed four patents from Stanford University. The patents covered specific compositions of amino acids. The patents also covered a unique method for using those amino acids that promoted vascular function and improved performance in individuals. Subsequently, ThermoLife alleged that GNC infringed on these patented amino acid compositions and methodology.

Here is the problem – ThermoLife did not conduct the necessary pre-suit investigatory work before taking legal action.  In fact, the defendants in the lawsuit went so far as to say that if ThermoLife simply took the time to read the labels on the defendants’ products and performed simple tests, then ThermoLife would have realized that no infringement took place.

A motion for attorney fees was filed pursuant to the aforementioned 35 U.C.S. § 285 and granted by the court. The Federal Circuit determined that ThermoLife failed to conduct an adequate pre-filing investigation which resulted in “objectively unreasonable” allegations of infringement. The court stated that the facts indicated ThermoLife failed to read the defendants’ product labels and or conduct basic testing.  The court went further and described the pre-filing investigation of ThermoLife as “severely lacking” which led to the filing “frivolous claims.” ThermoLife appealed the award of attorney fees. However, the Federal Circuit Court of Appeals affirmed the district court’s judgement of attorney fees. Ouch.

Takeaway

The lesson from the ThermoLife case is fairly clear – take the time to conduct a sufficient pre-filing investigation of infringement before deciding to actually move forward with a patent infringement case. If you skimp on the pre-filing investigation, it can come back to haunt you in the form of a large award of attorney fees for opposing counsel.

Need Answers to Questions About Potentially Filing a Patent Lawsuit? Contact the Omni Legal Group Today

If you have questions related to filing a patent lawsuit, whether you have a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, it is in your best interest to obtain the counsel of a highly reputable patent litigation attorney such as the Omni Legal Group.

Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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What actions must be taken to secure a trademark application filing date?

Trademark Lawyer in Los Angeles

Securing a Trademark Application Filing Date

When filing your trademark application, there are specific prerequisites you need to be prepared for and actions to take in order to secure the application filing date. Many people are surprised to discover that it is not always mandatory for you to pay an application fee to secure a trademark filing date (which is quite valuable for trademark priority rights). When completing a trademark application, you can access a list detailing the items required to complete a trademark application, along with a secondary list of items that are needed in order to secure a filing date.

No matter where you submit a trademark application, you will invariably need to provide the following information:

  • Personal contact details;
  • Information about products/services offered for sale under the mark; and
  • A representation of your trademark

Personal Information

Depending on the jurisdiction in which you reside, it is typically required to provide a local address. If you are filing a U.S. trademark application, you are required to provide your mailing address as well as your email address. If you are a foreign applicant, you have the option to appoint a local agent whose address can be used as the local address. This address will be used for service of process.

Depending on the jurisdiction in which you reside, it is acceptable to have joint applicants. In this situation, applicants can be either a formal legal entity (e.g., corporation or LLC) or multiple individuals. Each applicant must either directly sign the application or appoint a representative (e.g., an attorney) to sign the application on their behalf.

Description of the Products/Services

In the goods and services description section, you will need to clearly identify the goods or services associated with your trademark. The USPTO conveniently provides a list of acceptable descriptions.

It is recommended that you only identify goods or services for which you are currently using your trademark, or for which you plan to utilize your trademark in the near future, depending on your business strategy.

Representation of the Trademark

When you are completing a trademark application, you need to be prepared to provide a representation (i.e., drawing) of your mark. If you are filing a standard character mark, that is, without any design or ornamentation, the representation of the mark is made by typing it into the application form. On the other hand, if you are filing for a design mark, the drawing of your mark will need to be a visual image/wording of what your trademark looks like. When submitting this drawing, the trademark will need to be a stand-alone image, without any other depiction surrounding it and without it being attached to any product.

As mentioned earlier, you do not always have to pay a fee for your trademark application at the time of filing to secure a filing date. However, if you reside in the United States, China or Germany, you need to be prepared to pay the filing fee upfront in order to secure the filing date.

Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today

If you have questions about the laws and regulations governing trademarks and the application process, take action by contacting the highly reputable trademark lawyers at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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How are patent term adjustments calculated?

Patent Lawyer Beverly Hills

If you encounter a delay during a patent prosecution, you have the ability to seek a Patent Term Adjustment (PTA). If your PTA request is approved, you will receive an extension of time on the standard patent term. This type of extension is sought most often with products that have long regulatory approval lifecycles. A common example is a company that holds a patent on a pharmaceutical drug.

The onus for offering PTAs in the United States can be traced back to the adoption of the General Agreement on Tariffs and Trade in 1995. The U.S. adopted GATT in an effort to harmonize the U.S. patent term with other developed countries. This is why the patent term in the U.S. is now limited to 20 years from the earliest effective filing date.  However, this also means that any delays during examination would erode a patent’s period of enforceability. This exposes a patent applicant to losing potentially millions of dollars or more. When the U.S. adopted GATT, the burden was placed on the applicant to avoid delays during examination. This meant a delay caused by the USPTO could cost an applicant days or years of patent term without any recourse. Congress created the PTA to remedy this issue.

The objective of a PTA is to modify the patent term in an effort to compensate for a delay caused by the U.S. Patent and Trademark Office (USPTO) during the patent examination process. In basic terms, the calculation used for a PTA is taking the number of days of USPTO delay and subtracting the number of days that the application has been delayed.

Acceptance of Patent Term Adjustment

It is not possible to obtain a PTA randomly. There need to be specific factual scenarios in order to qualify for a PTA. Such scenarios include:

  • When the USPTO failed to issue a notice within fourteen months after the application filing date
  • When the USPTO failed to respond to an applicant’s Reply within four months
  • When the USPTO failed to respond to a decision rendered by the Patent Trial and Appeal Board (PTAB) within four months
  • When the USPTO failed to issue a patent within four months after the issue fee is paid

Petition for PTA Correction

The amount of time afforded under a PTA is initially determined by the USPTO. However, if you are unhappy with the PTA calculation provided, you have the option to file a petition for reconsideration. Bear in mind that you would need to file this petition no later than two months from the date the patent was issued. However, this deadline can be extended by up to five months if you agree to pay certain extension fees.

Have Questions? Contact an Experienced Patent Attorney in Los Angeles Today

If you have questions about the laws and regulations governing patents, take action by contacting the highly reputable patent attorneys at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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How Effective is a Provisional Patent?

Patent Attorney Los Angeles

The process of filing the necessary paperwork and materials for a patent application is time-consuming and potentially labor intensive. When a company does not have the luxury of time on their side, they may consider filing a provisional application that enables the company to legally use the phrase “patent pending” for their intellectual property.

A provisional patent enables you to establish an early filing date for your patent by supplying only basic information about your invention. For example, unlike non provisional patents, which require claims, when you file a provisional patent application, you only have to provide specifications on the invention. This information can be provided in virtually any format. Those specifications will not undergo any type of review by a U.S. Patent and Trademark Office (USPTO) examiner.

When a provisional patent is secured, it provides you with a full year to file the standard, non provisional patent application. Although a provisional patent is only preliminary (i.e., not a full patent) it still offers the same intellectual property protections as a full patent in that it effectively reserves your invention’s space in line. As a result, you are provided some time to complete other necessary tasks without having to worry that other individuals or companies will infringe on your invention in the interim.

Provisional Patents vs. Non-Provisional Patents

A provisional patent is not actually a patent. It simply allows you to start using the term “patent pending” to refer to your invention and to preserve your intellectual property rights while you decipher when to file the full patent application.

When you pursue a non provisional patent, all documents and materials must be formalized and ready for review, including formal patent claims and other disclosure documents.

Advantages

There are generally two advantages associated with securing a provisional patent. The first advantage is that it allows you to establish an early filing date for your intellectual property. This provides you time to secure funding for your invention and otherwise develop the technology before you finalize your invention. The second advantage is that a provisional patent is far less expensive and time-consuming to file, as opposed to a non provisional patent application.

When it comes to patents, time is extremely important. This is because the United States is a “first to file” country. This means that whoever files for the patent first receives the intellectual property protections, regardless of who had the idea first. Hence, it is extremely important to begin filing for a patent – or a provisional patent – as soon as possible.

Potential Problems

One of the potential problems with pursuing a provisional patent is that you need to get it right the first time. As mentioned, when someone is pursuing a provisional patent, time is usually not on their side so the paperwork for the provisional patent needs to be filed correctly. While you only need to specify the technical specs and drawings related to your invention, any inaccuracies or issues could potentially undo the protections that the provisional patent application would otherwise provide.

One of the best ways to avoid these potential problems is to retain the services of an experienced patent lawyer such as the highly reputable Omni Legal Group.

Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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