Patent and Invention Help Forum

Recent Posts

Pages: 1 [2] 3 4 ... 10
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.

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?
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?
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.

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.
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.

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.
Patent Questions and Advice / Re: Continuation applications
« Last post by Brad on June 01, 2021, 02:33:04 PM »
Each continuation could be its own separate patent with a separate patent number so I would first look at each one to see if it is truly a valid and issued patent and then if so look at each claim from each of the different continuations plus the original.

Patent Questions and Advice / Continuation applications
« Last post by Mariem on June 01, 2021, 12:45:29 PM »
Do patent continuation applications and continuation in part applications replace the earlier application?

Meaning that if there was an "earlier application" that was filed in 2010 and then there was a continuation application of it in 2013 and then in 2015, do we only take the 2015 version into consideration, or do we take into consideration the 3 versions (and then only one of them would be granted)?

(Take into consideration= study it to avoid claim infringement)

Thank you!

Patent Questions and Advice / Re: Use of a part of a competitor patent claim
« Last post by Brad on May 24, 2021, 03:58:00 PM »
This type of question cannot be answered properly over the internet

The type of advice you are looking for is called a "freedom to operate opinion" or sometimes called a "clearance opinion".  They can be quite expensive as attorneys and law firms take on a lot of risk and liability telling you that you are free and clear to do something, if they are wrong, they could be in a lot of trouble.   

In general, in order to violate a claim you would have to copy every limitation in that claim. 

Adding in extra features to your product would not help.

Pages: 1 [2] 3 4 ... 10
Menu Editor Pro 1.0.2 | Copyright 2014, Matthew Kerle