Gerry J. Elman’s Answers

Gerry J. Elman

Media Internet Lawyer.

Contributor Level 15
  1. Do all attorneys who practice intellectual property law take the Patent Bar?

    Answered 10 months ago.

    1. Gerry J. Elman
    2. Mark Raafat Malek
    3. Bruce E. Burdick
    4. Michael Charles Doland
    5. Michael P Matesky II
    6. ···
    12 lawyer answers

    No. To file and prosecute a US patent application for someone else, an individual must take and pass the Patent Bar Exam and meet certain other requirements. That individual may be an attorney but need not be. Someone with requisite scientific or technical training may become another kind of patent practitioner, namely a "patent agent." Some patent agents later become lawyers and then automatically are redesignated as "patent attorneys." The field of intellectual property includes much...

    18 lawyers agreed with this answer

  2. What is the safest most effective way to patent my invention?

    Answered about 2 years ago.

    1. Mario Sergio Golab
    2. Gerry J. Elman
    3. Konrad V. Sherinian
    4. Daniel Nathan Ballard
    5. Maurice N Ross
    6. ···
    7 lawyer answers

    A mere "idea" cannot be protected by a patent. Only an invention that meets a complex set of requirements stated in the U.S. patent law and described by a written paragraph called a "claim" can be protected by a patent. Sorry to have to give out the bad news, but there is no such thing as "full protection" by a patent. Even after it's granted by the U.S. Patent and Trademark Office ("PTO") after a complex set of interactions with a technology specialist called a Patent Examiner, the...

    13 lawyers agreed with this answer

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  3. How do i go about getting a patent on an idea on a food product

    Answered about 2 years ago.

    1. Bruce E. Burdick
    2. Gerry J. Elman
    3. Pamela Koslyn
    4. Jonathan Marcos Kaplan
    5. Curtis Lamar Harrington Jr
    5 lawyer answers

    Coincidentally, blogger/patent attorney Gene Quinn posted a couple of days ago his own answer to questions such as yours on his helpful blog: IP Watchdog. I also agree with my colleague Bruce Burdick's answer regarding David Pressman's book Patent It Yourself. That excellent book, however, hasn't yet been updated to incorporate changes to patent practice mandated by Congress in September 2011 (the America Invents Act) nor the more recent court decisions such as that of Mayo Collaborative...

    15 lawyers agreed with this answer

  4. Does the use of TM really help protect a brand before a mark application is filed?

    Answered 10 months ago.

    1. Gerry J. Elman
    2. Alexander H Butterman
    3. James Scott Anderson
    4. Zachary Aaron Scott
    5. Bruce E. Burdick
    5 lawyer answers

    When you say you have not "trademarked" your "company name," I infer that you meant to convey that you haven't sought to register it as a trademark with the US Patent & Trademark Office "USPTO" (or with New York State). And it is true that a "company name" isn't necessarily a trademark, if the company name isn't used as an indicator of source or sponsorship of its goods or services. However, the good news is that actual use of a trademark on goods that you sell and ship does start to...

    13 lawyers agreed with this answer

  5. I created a "word" that I want trademarked. Once trademarked, is it easy to solicit to companies to sell the rights?

    Answered about 2 years ago.

    1. Gerry J. Elman
    2. Mario Sergio Golab
    3. Maurice N Ross
    4. Michael Charles Doland
    5. Michael Alan Shimokaji
    6. ···
    6 lawyer answers

    Let's see if I understand your question. You are a copy writer at an advertising agency (like in the Mad Men TV series) and have figured out that a dynamite name for Kodak's slide projector would be Kodak CAROUSEL - The Time Machine. You wonder if you should recommend to Kodak that they endeavor to register as their trademark for the product just the word CAROUSEL for slide projectors, or also "CAROUSEL - The Time Machine." Waitaminit! On rereading the question, I wonder if you are...

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  6. What do i need to register an idea? Is about phrases written on an existing common item.

    Answered about 1 year ago.

    1. Gerry J. Elman
    2. Daniel Nathan Ballard
    3. Frank Anthony Natoli
    4. Mario Sergio Golab
    4 lawyer answers

    If you are serious about this, you need to communicate your idea confidentially to an intellectual property attorney whom you engage to advise you. Probably, there isn't an efficient way to translate your "idea" into something that would be remunerative to you. Mere "ideas" are cheaper than a dime a dozen. However, depending on the specifics, your alternatives might range among seeking a utility patent or design patent or a trademark registration, or obtaining a non-disclosure/non-use...

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  7. Companies claiming trademark infringement

    Answered over 2 years ago.

    1. Gerry J. Elman
    2. Mario Sergio Golab
    3. Gordon Philip Firemark
    4. Christopher Edward Ezold
    5. Christopher R Kinkade
    5 lawyer answers

    This is something that experienced trademark counsel can and should help you with. It might be possible to resolve the issue, or it might escalate into litigation if not dealt with effectively.

    10 lawyers agreed with this answer

  8. Provisional patent application

    Answered about 2 years ago.

    1. Gerry J. Elman
    2. Xavier S Pillai
    3. Ilya I. Libenzon
    4. Maurice N Ross
    5. Mario Sergio Golab
    5 lawyer answers

    In general, if a company sells product that infringes your pending U.S. patent application, you won't have the right to sue the company until your patent is granted. Assuming that your product is marked with the patent number as soon as it is granted or that you've notified the infringer of your patent by then, any damages for infringement that you might be awarded in such a suit would be based on the infringer's activities from and after the date the patent is granted. In addition, if your...

    11 lawyers agreed with this answer

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  9. Does the attorney who performed a trademark search have any liability (trademark infringement)?

    Answered 12 months ago.

    1. Alexander H Butterman
    2. Gerry J. Elman
    3. Daniel Nathan Ballard
    4. Frank Anthony Natoli
    5. Bruce E. Burdick
    5 lawyer answers

    Waitaminit. So your company is a defendant in a lawsuit for trademark infringement, but a year ago it had not even begun to use the trademark and had dropped prosecution of the Intent to Use trademark application. Seems to me from what you say, that the plaintiff doesn't have a valid claim for relief. So it should be a trivial matter to settle the case or get it dismissed. If so, where's the harm to your company? I infer that you figure that if the attorney you write about had rung...

    11 lawyers agreed with this answer

  10. Can i use a partial name that a competitor has for my business?

    Answered about 2 years ago.

    1. Ray Beckerman
    2. Gerry J. Elman
    3. William Leroy Montague Jr.
    4. Maurice N Ross
    5. Bruce E. Burdick
    5 lawyer answers

    A key problem is that the question being asked doesn't have an answer ... except for the common reply that "it depends on the facts, you need to consult an attorney and confidentially provide the facts." In this particular issue, there are no shortcuts. Or, as we are taught in law school, there isn't a "bright line" test that yields a definitive answer, given the facts that the questioner has input. The important point is that the questioner recognizes that there is a legal issue that...

    11 lawyers agreed with this answer

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