Patent and Trademark Archives - Omni Legal Group Blog

Do patents or trade secrets better protect artificial intelligence?

The Interplay between Patents and Trade Secrets for Utilizing Artificial Intelligence

When it comes to effectively protecting valuable technology and products based on artificial intelligence (“AI”), it is important to understand the complex interplay between patent law and trade secret law. There are advantages and potential pitfalls related to both patents and trade secret law. For example, trade secret law can offer protection where patent law does not, and vice versa.

The Challenge is Securing an AI-based Patent

It is commonly said that an invention is only as valuable as the patent that protects the invention. However, this old adage becomes moot if you are unable to secure a patent. When it comes to inventors seeking a patent for a product that utilizes AI technology, the hurdles are quite challenging to overcome in the journey to obtain a USPTO-approved patent.

The difficulties associated with securing a patent for a product predicated on AI goes to the heart of the legal definition for a patent. For example, according to 35 U.S.C. § 101, a patentable subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The difficulty associated with AI technology and a patent application is that many patent examiners with the USPTO often consider this type of technology to be more of abstract ideas. In an effort to address this issue, the USPTO established multiple categories to refine the definition, but the overarching theme amongst the categories set forth by the USPTO is that if a human mind can accomplish the task, then it is likely an abstract idea.

Trade Secret Law

If an inventor of an AI product or technology is rebuffed by USPTO when applying for a patent, it may be worthwhile to review relevant trade secret laws. Why? Because the protections afforded to trade secrets were bolstered by the enactment of the Defend Trade Secrets Act (DTSA). This federal law was passed in 2016 and contains an array of features focused on reinvigorating what had become a set of stale and ineffective laws that were not very effective in protecting trade secrets.

According to the DTSA, specifically 18 U.S.C. § 1839(3)(B), a secret only needs to have “actual or potential” value derived from the secrecy to be deemed a trade secret for a business. As a result, a trade secret can now cover a plethora of potential subjects, as long as the trade secret meets this new legal standard.

**Navigating the Patent Application Process is Not Easy. Take Action by Contacting an Experienced Patent Attorney in Los Angeles Today**

Securing a patent for an invention is extremely important. Nevertheless, the patent application process is complex and can be intimidating to navigate. This is where Omni Legal Group comes in. Whether you are looking for a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, you can always count on the professionals at Omni Legal Group to give you and your invention the care and attention it deserves. 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.

How to Reduce the Risk of Engaging in an Illegal Trademark Assignment

Owning a trademark is widely viewed as one of the most valuable and important assets for any business. Hence, it is so important not to be cavalier about engaging in a trademark assignment. When a business owner mishandles or violates the law while engaging in a trademark assignment, it could completely negate the enforceability of the trademark, thereby torpedoing its value.

When an illegal trademark assignment occurs, it is typically the product of carelessness and neglect, or it could very well be deemed an assignment-in-gross.

What is an Assignment-in-Gross?

An assignment-in-gross occurs when a business owner assigns their trademark without including the underlying goodwill (i.e. the inherent value and name recognition associated with the mark) and any other accompanying assets. When a business owner commits an assignment-in-gross, the ramifications are severe since a court could invalidate the assignment and would result in the trademark being deemed abandoned. As a result, both parties (i.e. the owner of the mark and party attempting to secure the mark) will lose any rights to the trademark.

To prevent such circumstances, an assignment must include (i) other related business assets and (ii) must be completed with genuine goodwill.

Assets that are deemed eligible to accompany a trademark assignment include:

Company shares;
Trade secrets; and/or
Management or other financial assets

Analyzing whether a trademark assignment was completed with genuine goodwill can be extremely difficult to measure. Courts tackle this issue by using the “substantial similarity” test. This test assesses both the quality and description of the goods and/or services prior to, and after, the transfer of the trademark.

When a business owner attempts to simply assign their trademark without any accompanying business assets or without sufficient evidence of genuine goodwill, it is a violation of federal law since a trademark, in and of itself, does not possess actual value. When a trademark transfer occurs without meeting the two-part standard described above, it is an illegal trademark transfer under the Lanham Trademark Act, which is codified under 15 U.S.C. § 1060.

**Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today**

It is incredibly important to protect your brand identity; hence it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive right to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark assignment the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the 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.

Landlord May be Held Liable for Trademark Infringement

If you are a landlord renting a property to a tenant who is found to be selling counterfeit goods, you may be held liable for trademark infringement. However, a landlord can only be held liable if there is evidence that the landlord had actual knowledge that the tenant was engaged in infringing acts, or they were willfully negligent to the infringing activities.

Court Decision in Eleventh Circuit Highlights Landlord Liability

An actual case of a landlord being held liable for a tenant’s trademark infringing activities can be found in Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019). In this case, a subsidiary corporation Oakley, Inc. and its parent company Luxottica Group filed a civil lawsuit against the owners of a shopping mall in Georgia. The basis for the lawsuit was alleging the shopping mall owners were liable based on contributory trademark infringement under a federal law known as the Lanham Act.

The infringing activities involved high-end luxury sunglasses. The lawsuit alleged that Luxottica and Oakley, Inc. sold luxury sunglasses using Ray-Ban and Oakley trademarks. The owners of the shopping mall also managed the interior of the mall and were the landlords for businesses within the mall. The lawsuit revealed that the shopping mall owners were aware of three separate raids by law enforcement officials of businesses within the mall that were actively selling counterfeit sunglasses.

The shopping mall owners reportedly gained actual knowledge of the infringing activities since they received copies of search warrants from law enforcement and knew which businesses were the focus of the raids. In addition, there is evidence of correspondence sent from Luxottica to the shopping mall owners informing them that some of their subtenants were engaged in selling counterfeit sunglasses that infringed upon the trademarks owned by Ray-Ban and Oakley.

Another key factor is that the shopping mall owners apparently failed to take any action to remedy or halt the subtenants from engaging in the sale of counterfeit products within their property. For example, the shopping mall owners never even attempted to evict the subtenants or terminate their leases.

The lawsuit went to trial and a jury found the shopping mall owners liable for contributory trademark infringement. The jury awarded $1.9 million in damages to Luxottica as a result. The shopping mall owners appealed the jury verdict. Nevertheless, the Eleventh Circuit Court of Appeals affirmed the nearly-two-million-dollar jury verdict.

The Lanham Act

The Lanham Act is a federal law that establishes a defendant can be held liable for contributory infringement when the defendant induces or knowingly facilitates the trademark infringement.

In order to establish contributory trademark infringement under the Lanham Act, a plaintiff bears the burden of establishing the following during a lawsuit:

There was direct trademark infringement by someone; and
A defendant intentionally induces the infringer, or supplied a product to the infringer, with either actual knowledge or constructive knowledge of the infringing acts.

If you are wondering, “what is constructive knowledge? Well, a prime example is willful blindness, which occurs when a defendant suspects a wrongful act but deliberately fails to investigate the act.

Have Questions About How to Protect Your Trademark? Contact the Highly Reputable Trademark Lawyer in Los Angeles

If you have a trademark that you suspect is being infringed, or you want to ensure proper protection, the trademark lawyers at Omni Legal Group is here to help. 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.

The Federal Government Can Be Held Liable for Patent Infringement

If you have ever asked yourself, “can the U.S. government be held liable in a civil action for patent infringement?” Here is the answer – Yes. This is because the federal government has effectively waived sovereign immunity when it comes to civil claims alleging patent infringement. As a result, the federal government can be the named defendant in a civil action alleging patent infringement, in certain circumstances.

Legal Basis to File a Civil Action against the Government

The legal basis to file a civil lawsuit against the U.S. government for patent infringement is 28 U.S.C. § 1498. This federal statute states that whenever an invention is protected by a registered patent and is used or manufactured by or for the United States without license of the patent owner, then the patent owner is afforded a civil remedy by filing a civil action against the federal government in the United States Court of Federal Claims. A civil claim can demand recovery of reasonable compensatory damages associated with the government’s use and manufacture of a patent-protected product.

Court of Federal Claims Maintains Jurisdiction over Patent Infringement

If a patent owner is looking to file a patent infringement lawsuit against the federal government, it is important to understand that you cannot simply file a lawsuit in any federal court. The civil action must be filed specifically within the U.S. Court of Federal Claims. Why? Because this is a unique court established to adjudicate civil claims based upon “the Constitution, federal statutes, executive regulations, or contracts, express or implied in fact, with the United States.”

Exception for Federal Contractors

There is an important exception you need to be aware of if you are looking to file a civil action against the federal government for patent infringement. The exception is that a patent owner is prohibited from suing a federal contractor who produced the allegedly infringing product or performed the allegedly infringing method. Instead, any civil action must be filed against the federal government. Though, it is worth noting that the federal government’s contract with the allegedly infringing contractor may require the contractor to indemnify the government for liability and costs associated with the litigation.

**Have Questions About Securing a Patent or Protecting Your Current Patent? Take Action by Contacting a Patent Attorney in Los Angeles Today**

If you have a registered patent that you suspect is being infringed, whether by a private competitor or federal government, one of the most important things you can do is take proactive steps to assess your legal options and determine what can be done to protect your patent. Thus, it is in your best interest to retain the services of a reputable patent in attorney Los Angeles such as the 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.

Filing an Information Disclosure Statement (IDS)

When filing a patent application, you have a legal obligation to disclose all information known to you that is material to the “patentability” of your device, product, idea, etc. These disclosures must be formally conveyed to the U.S. Patent and Trademark Office (USPTO) in accordance with 35 C.F.R. §1.56. You may be asking, “what exactly constitutes material information for my patent application?” Well, the governing standard is that any information that a reasonable patent application examiner would consider important in assessing whether to grant the application is deemed to be material. It is also important to understand that this disclosure duty is ongoing from the moment you file the application all the way to the issuance of the U.S. Patent.

Limitation of Disclosure Requirement

It is worth noting that the disclosure requirement set forth in 35 C.F.R. §1.56 only obligates an applicant to disclose material information that is “actually known” to the applicant and does not require a search to be conducted. This is an important, and necessary, limitation since the USPTO wants to avoid disclosures that are based purely on conjecture or speculation.

Satisfying the Duty to Disclose

The duty of disclosure is satisfied when you submit an Information Disclosure Statement (IDS) to the USPTO listing relevant patents, patent applications, and other published documents or information. Depending on the nature of the disclosure, a copy of the document may also need to be provided to the USPTO.

Ramifications Associated with Failing to Disclose Material Information

The ramifications from failing to comply with the duty of disclose can be quite severe. For example, if it is determined that you willfully failed to provide material information to the USPTO, it can result in a later ruling of “unequitable conduct” that ultimately renders your issued patent unenforceable. If that was not bad enough, when there is evidence of willful failure to disclose, it exposes you to being sued for damages in federal court.

Supplemental Examination

If you are applying for a patent or currently own a patent and, at some point, you discover material information that should have been disclosed to the USPTO, you can request a “supplemental examination” which affords the opportunity to consider, reconsider, or correct information believed to be relevant to the patent. The ability to request a supplemental examination is available at any point during the period of enforceability for the patent.

There are various benefits associated with a request for supplemental examination. Once your supplemental examination materials are filed with the USPTO, a review will be undertaken, and you will usually get a response from the federal agency within three months. The response will typically come in the form of a certificate indicating whether the information you provided raises a “substantial new question of patentability.” If that is the case, an ex parte, re-examination of the patent will be required. If not, the request ends there. Another benefit associated with a request for supplemental examination is that a patent cannot be deemed unenforceable based solely on information that was considered, reconsidered, or corrected during a supplemental examination, so you can have a level of confidence during this process that you will not, sua sponte, lose your patent protections.

**Contact an Experienced Patent Attorney in Los Angeles Today**

As you can see, the process of applying for a patent is complex, time-intensive, and involves an array of different rules and regulations. Hence, it is in your best interest to retain the services of a patent in attorney Los Angeles such as the highly reputable 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.

Helpful Tips for Drafting a Licensing Agreement

When you register a trademark for your business, there is a crucial next step you need to be prepared to address – licensing the rights to that trademark so other individuals and companies collaborating with you to manufacture or sell your product featuring that mark are legally compliant. It is important to understand the impact of a trademark license agreement. If this agreement is detailed and well-crafted, it can play a big role in determining how much you, the owner of the trademark, will benefit financially from the commercial success of the product. A trademark license agreement will also help in protecting both your registered trademark and the resources you invested into building goodwill and a positive affiliation with the consuming public.

To help ensure your trademark licensing agreement is valid and detailed, here are some helpful tips to consider when drafting a licensing agreement.

No. 1 – Clearly Establish the Licensee Requirements

In a trademark license agreement, you, the owner of the registered trademark, are known as the licensor. The party that pays you money in exchange for the right to market or manufacture products bearing your trademark is known as the licensee. In the trademark license agreement, you should be as specific as possible about what trademark rights you are licensing and what the licensee is and is not allowed to do with your trademark. If, for example, you own the trademark to a children’s character, and you want to preserve their child-friendly image, say so. Don’t want your trademark adorning beer bottles? Specify this in the agreement. Don’t want your character hawking weight loss supplements? Put it in writing.

No. 2 – Ensure All Key Pieces of Information are Included in the Agreement

Relying on a cookie-cutter printout of a license agreement you found online, or hastily drafting an agreement, is often a recipe for disaster and heightens the risk that vitally important pieces of information are not included in the final agreement. Do not make this mistake. You need to ensure the license agreement clearly addresses the following issues:

Who owns any new intellectual property that the licensee creates incorporating your trademark;
The geographic region where the licensee may sell the licensed products; and
Which state will have jurisdiction to decide legal disputes that may arise from the trademark license agreement (this is often referred to as a “choice of law” provision).

No. 3 – Be Transparent About Duration of the Agreement and the Timetable for Payments

Mistakes and oversights regarding the duration and payment terms in a trademark licensing agreement can lead to costly disputes and glaring loopholes. Hence, it is imperative to not gloss over these sections of the agreement or merely state, in broad terms, how long the agreement lasts. You need to provide specific details about what happens at the end of the established license period. For example, you should address what happens if the parties take no further action. Does the licensing agreement automatically terminate, or does it automatically renew? Likewise, does the licensee pay a fixed amount or a share of their sales? Do they pay a lump sum at the beginning of the contract period, or do they pay you in monthly or quarterly installments? These are critically important questions and issues that need to be fully fleshed out in the licensing agreement.

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

It is extremely important to draft a detailed, airtight trademark license agreement to help safeguard your financial and brand interests, as well as the interests of the licensee, or licensees. Hence, it is in your best interest to retain the services of a skilled and knowledgeable trademark lawyer in Los Angeles such as the professionals at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles, California. 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.

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.

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.

How are patent term adjustments calculated?

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.

How Effective is a Provisional Patent?

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.