Topics

1

Patent Questions and Advice / Patent protections while patent is still pending?

« on: January 08, 2017, 04:03:15 PM »

Hi Brad.

I've currently got a PPA in place and have been selling a product for a couple of months. An individual has recently started selling a copied product online. I've read that if they are notified of the pending patent and it's documented and certified, such as through a certified cease and desist letter, they can be held financially liable for sales and brand and product confusion after the patent is granted - for the period it was pending. Do you have any thoughts on this?

Would a cease and desist letter be warranted in this situation?

Thanks.

2

Patent Questions and Advice / Design Patent Question

« on: January 08, 2017, 02:40:43 PM »

Hi Brad,

I've filed a Utility PPA a few months ago, but haven't filed a design patent yet. I'd like to, but I've been selling my product online for a couple months now. Am I still able to file my design patent or did I need to do that before presenting it to the world for sale?

Thanks for any info.

3

Patent Questions and Advice / Did I abandon my PPA or can this be fixed?

« on: November 22, 2016, 07:09:28 PM »

Hi Brad,

I submitted a PPA, including my cover letter, micro entity form, etc. I received a letter back saying "Missing Parts" to my application. It referenced missing info on inventor city/state info and cover sheet and said I owed more money because I'm not getting the micro entity discount due to the missing parts.

The letter stated I had TWO MONTHS to submit the missing parts to avoid abandonment. The letter also stated I could file an extension. I went back and checked my documents and everything looked like it was submitted correctly. I tried to contact the patent office, but they were closed. I meant to follow up with them again after the weekend, but apparently I forgot. I just looked at the letter again and realized it was sent on Sept. 20. This is Nov. 22. I tried to call again today, but due to time difference between Pacific time and Eastern time, they were closed. I'll call back early tomorrow.

My question is: did I completely mess up and lose my filing date? Is my PPA now "Abandoned," or can I fix this? Is it possible to do the extension or address this after the technical TWO MONTH timeframe that was outlined in the letter? I'm still confused as to whether I truly had missing parts, since I submitted everything and it appeared everything was accepted electronically.

What are my options at this point? Are there ways to salvage my initial filing date or should I refile my PPA now? If I refile it now, will I have problems since I've had my invention/product for sale since filing the original PPA? I've been selling the invention/product on my website and I have a Facebook ad running for it now. There is also a small shop that is selling it and they posted a video of it online. Will the fact that it is currently for sale negate my option of filing a new PPA on it? If so, could I buy myself the option if I stop my facebook ad and have the shop pull down their video of the product for sale?

One final question: Can I file a design patent on it if I've already posted the invention/product for sale? I've only had it for sale for a few weeks.

Thanks for any info, insights or advice you can offer!

4

Patent Questions and Advice / Would method of attachment be significantly different/non-obvious?

« on: October 13, 2016, 12:51:08 PM »

Hi Brad,

I'm working on an idea that I believe is novel and non-obvious, but I wanted to run my thoughts by you.

I want to submit a PPA for a part I'm working on. It's an add-on part to an long established product. For a point of reference, I'll say it's a part that will be added onto golf clubs. Say a new study found that adding a fin down the spine the shaft of the golf club significantly increased velocity and accuracy.

The problem is there are now a couple of similar products that have recently come out that do this to varying degrees. The other products are considerably different than mine in the way they attach and the way they affect other components of the original product.

Currently the only commercial options for doing this involve a fin attached to a sleeve or wrap that encompasses the entire circumference of the club shaft. While this would add the desired fin to the club shaft, it would change the diameter, texture and feel of the club, which would negatively impact the golfer's swing. Additionally the current product fins are do not run down the center of the shaft, but off the left OR right side making it difficult to grasp both hands on the shaft. Finally, the current products are of a material/nature that they are very hard, stiff and non flexing limiting the natural movement of the hands.

My part adds the desired fin to the shaft, but it differs in the way it attaches: instead of a complete wrap-around sleeve or wrap that encircles the entire grip and changes the diameter, texture and feel of the grip, mine is simply a fin that runs down the center spine of the shaft and attaches at the ends of the club. It connects to the head of the club on one end and connects into the hollow portion of the shaft at the other end. This method keeps the original shaft diameter, texture and feel. My part is also centered along the center of the shaft instead of extending from the left or right side as the other versions. This allows ambidextrous use or easier grasping by both hands. Lastly, the because my part is added on to the rear spine of the shaft and attached to the club at either end instead of wrapping around the whole thing, it has some "give" to it allowing a little flex, so the hands can move and flex more naturally.

Are these differences significant enough to be considered "Novel" and "Non-Obvious"? If so, what do you think would be the best approach to focus on the PPA? Would focusing on the attachment points, which is what really is different and creates the improved features give me the best chance for later getting a full patent granted?   

Thanks for any thoughts you have on this. 

5

Patent Questions and Advice / Will PPA protections be compromised if product is marketed before NPA is granted

« on: October 11, 2016, 02:58:04 PM »

Hi Brad,

I just got my confirmation letter from the USPTO of my PPA filing date granted. I have a couple questions about it though.

1. With my PPA date now confirmed, can I start to market and sell my product now without compromising any of my PPA protections? My product helps the public comply with new state mandated statues that kick in Jan. 1, 2017, therefore, getting my product to market now can have not only be financially beneficial to me now, but will also establish my product as the main option in complying with the new laws. Will introducing my product to market compromise or jeopardize any future protections or options of converting my PPA to an NPA?

2. When I filed my PPA, I did so under micro-entity status. I did file the PPA Cover Sheet, and on the cover sheet under, "Inventor Residence" I entered my city and state. Under "Correspondence"  I checked the box that said, "The address corresponding to Customer Number," because I have a customer number since I've filed a previous PPA. When I received my USPTO letter granting my filing date it stated:
-The statutory basic filing fee is insufficent ($260 basic filing fee)
-The cover sheet required city and state of residence of each inventor.
-Surcharge of $60 is due for late submission of filing fee or cover sheet.

Does this mean they are saying my residence city and state was not on my cover sheet (I know I entered it on there)? And does this mean they are not allowing me micro entity status even though I meet the income criteria and have only filed one other PPA? Any suggestions on how to handle this without having to pay the extra amounts?

Thanks for any thoughts/info.