Recent Posts

1

Patent Questions and Advice / Re: How do I get a copy of my file with the USPTO?

« Last post by Brad on July 22, 2021, 11:38:32 AM »

If they are unavailable that usually means those applications are not properly linked to your account so it will not give you access.  You should call the USPTO and ask them how to give you access to each of those application numbers.   

2

Patent Questions and Advice / Re: How do I get a copy of my file with the USPTO?

« Last post by PPage on July 22, 2021, 08:44:25 AM »

I've tried that.  It tells me 'Data is Unavailable'.  I also have numbers for provisional and utility applications which cannot be found, they've been unavailable for about two years now. 

3

Patent Questions and Advice / Re: How do I get a copy of my file with the USPTO?

« Last post by Brad on July 21, 2021, 10:11:14 AM »

You must first have an account with the patent office and link the application to your account.  Once you have that, you can view it through Patent Center or PAIR:  https://www.uspto.gov/sites/default/files/documents/Patent%20Center%20User%20Guide_Beta.pdf

I would call the USPTO Assistance group and have them walk you through the process and needed forms step by step: 1-866-767-3848

4

Patent Questions and Advice / Re: Previous application considered abandoned, now have significant improvements.

« Last post by Brad on July 21, 2021, 10:08:34 AM »

You would have to file this as a new (stand alone) application.  The main challenge here is that your old patent can be used as "prior art" to reject your new version.  If you are only changing minor things like the color or the dimensions that will not be approved but if you are adding in new components or new functionality that may have a chance of being approved as a new patent.

5

Patent Questions and Advice / How do I get a copy of my file with the USPTO?

« Last post by PPage on July 15, 2021, 02:30:09 PM »

I've spoken with USPTO by phone awhile ago, and was told it is possible to get a copy of my file, possibly just the correspondence.  How do I go about this?

6

Patent Questions and Advice / Previous application considered abandoned, now have significant improvements.

« Last post by PPage on July 15, 2021, 02:27:58 PM »

Previous utility non-provisional patent application is considered abandoned due to not correcting errors in first filing.  I now have significant improvements to the invention, and would like to file further applications. How does having made significant improvements affect the previous abandonment?

7

Patent Questions and Advice / Re: Should I sell my patent as an individual owner or through my LLC?

« Last post by Brad on July 15, 2021, 11:11:39 AM »

Sorry this is more of a legal question that we cannot answer here nor should you get advice like this from some guy on the internet.   Please think about hiring your own local attorney that has worked on deals like this before.

I don't know of any patent reasons why you could not proceed as an individual to work with Nike although it may make you appear to be more legit if you approach them as a business rather than as a person.  Just remember that if you transfer ownership to your company then the company (not you) is the legal owner.  This becomes complicated if you ever lose control of the company or forget to pay your registration fees, etc.   For that reason I normally suggest most inventors keep the patent in their name unless absolutely necessary.

8

Patent Questions and Advice / Should I sell my patent as an individual owner or through my LLC?

« Last post by dpark7686 on July 14, 2021, 07:38:52 PM »

I am currently thinking about submitting my utility patent to NIKE in hopes of possibly selling them my patent or having it licensed to them.

My patent is actually assigned to me as the inventor. However, I also have an LLC which has not engaged in any business under the new LLC (I did have sales and used the patent under my previous LLC which was dissolved in 2016).

Anyhow, NIKE has a contract that I must fill out in order to submit my invention to them for an analysis. One of the contracts is for a business, and the other is for an individual inventor. What would you recommend I sign the contract as? Should I present them my idea as through a company or simply as a sole proprietor?

I'm not sure if this matters but I am already late paying the maintenance fee. I have 1 month left as the deadline to renew the patent by paying the fee.

9

Patent Questions and Advice / Re: Using US provisional application for PCT priority date: are claims needed?

« Last post by Brad on July 02, 2021, 08:39:26 AM »

I can only answer that from a USA perspective in which case you don't need claims as that is not required for USA rules.  However, there may be other countries or regions that require claims in a priority application is you may want to add 1 or 2 just to be safe.

The provisional does not have to "formal" but it should at least clearly describe the invention, how to make and use it, and have good figures showing each key element that you intend to claim.

10

Patent Questions and Advice / Using US provisional application for PCT priority date: are claims needed?

« Last post by plingane on June 30, 2021, 07:34:42 PM »

My understanding is that a US provisional application can be used to establish the priority date for a PCT application. To do so, must the provisional application contain claims and be a formal application just as would be required for the PCT application? Or is it acceptable, for the PCT purposes, for the provisional application to be less formal and no claims.