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Jeff Lloyd

Jeff Lloyd’s Answers

5 total

  • Does The Applicant For A Pending Patent Have Any Legal Basis For Demanding That Others Stop Selling The Patented Product?

    I reside in Los Angeles & sell a type of makeup accessory through a website I own. All the products for sale on my website are variations of the same one accessory. I buy wholesale from a Chinese company & sell them to customers worldwide who pl...

    Jeff’s Answer

    The two answers already posted have done a very good job advising you. I just want to clarify one aspect:

    A patent owner can be entitled to damages from an accused infringer for infringing activity that occurred before the patent issued and after the LATER of (1) the date the application was officially published by the USPTO, and (2) the date you were first put on notice of the pending application; BUT the patent owner is only entitled to these pre-issuance damages IF the claims in the patent that are being asserted against you are substantially the same as the claims that were published earlier.

    It is usually the case that during the course of "prosecution" of the patent application (the process of the application being examined in the patent office and the back-and-forth arguing and amending of the application that results in it ultimately being allowed to issue as a patent) the claims are amended and are no longer exactly the same as when they were first filed or first published. If the claims asserted against you were amended enough to be sustantially different from their original (published) format, the patent owner will not be entitled to pre-issuance damages. Of course, since in your case the patent has not yet issued, you cannot know ahead of time what claims will eventually issue, or even if any will EVER issue. This is why it is so important for you to seek the advice of a qualified attorney NOW.

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  • For joint inventions, if one of the inventors can commercialize the invention, what should other inventors do to benefit from it

    Should all the inventors sign an agreement specifying how much each inventor can benefit from the invention if the patent produces profit in the future?

    Jeff’s Answer

    I strongly recommend you retain an experienced patent attorney to maximize your opportunity to benefit from an invention on which you are a co-inventor.

    There are many important details left out of your question, but assuming that you are a co-inventor and are properly named on a pending application or issued patent, you should raise this issue with your attorney right away.

    In general, I believe it is a very good idea for co-inventors to reach agreement at the earliest possible time on how they will commercialize the patent. I have been involved in a number of situations where co-inventors start out all having good intentions, and often being very close to finalizing an agreement, when things deteriorate and the relationship evolves from amicable to hostile. Without agreement, it is impossible for any one inventor to convey an exclusive license or exclusive title to the patent, and there is usually a substantial premium associated with the ability to convey exclusivity. I wish you good luck in commercializing your invention.

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  • New Use Patent?

    I have a product that I have found a new use for. It's not an improvement but a new use. Basically, I can take it and just fold it to create a new use/uses for it. The existing item's patent has expired but is still sold today. I am positive if I ...

    Jeff’s Answer

    A new use for something old in the art is certainly patentable if it is also a non-obvious use. You do not give very much detail, but the fact that your new use is for a product that was previously patented and for which the patent term has expired could weigh heavily in your favor--assuming that the new use is in connection with a need that previously existed even while the product's patent term was still in force, then the fact that no one else discovered the new use is an indication that the new use is not obvious. On the other hand, if the new use is in respect to a need that has recently arisen, your argument that the new use is not obvious may be a bit more difficult to win. The more changes that you can make to the existing product might be a good thing if they also serve to improve the performance of the product in the new use, but more information is needed to be sure about this as well. I recommend that you consult with a registered patent attorney for a more informed opinion.

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  • What are my chances of an Utility Patent that looks similar to Prior Art.

    I have an idea that looks exactly the same and would do the same thing as a patent I found but mine would be made out of disposable paper instead of plastic. The prior art only mentions it is made out of plastic. My idea would do the same thing bu...

    Jeff’s Answer

    It is tough to be optimistic for you without more information.

    To obtain a utility patent, your invention must be new, useful, and non-obvious. If your invention has truly never been made out of paper before, then what you have is new. It sounds as if it does something useful (this is a very easy threshold to meet--it doesn't need to work better than other things that are out there, it just needs to have some level of practical utility. "Non-obvious" will likely be your biggest issue. IF it is already in the prior art in a plastic version, then you will need to be able to show that your paper version has some surprising or unexpected benefit as compared to the prior art. When you say it "looks exactly the same and would do the same thing," that leads me to believe that your paper version would be an obvious variation of the prior art. You do say that yours has "other uses not mentioned in the claims of the prior art"--that MIGHT give you something to hope for if you want to claim new uses that are not disclosed anywhere in the prior art (not just in the claims of the prior art, but ANYWHERE), but those other uses must not have been readily apparent to one of ordinary skill in the art to which your invention pertains. If you can show that there was no suggestion or motivation in the prior art to modify the prior art in a way that leads to your invention, you might have a chance, especially if paper provides a surprising or unexpected benefit. I suggest you see a registered patent attorney and fully disclose your invention and what you know about the prior art to the attorney so you can get more informed legal advice.

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  • Can I as the owner of a mark file another trademark for the same mark that has a letter change. ex.

    ex. JJ House of Cards to House of Cards. If we own the first mark can we reapply for the second mark under the same class?

    Jeff’s Answer

    Yes, you can certainly apply for the second mark, but it will be examined according to the same standards as if you were a first-time applicant. You will need to claim ownership of the first mark in the second application (if you have not done so in the first place, then the examiner should request that you do). If your previously registered mark is the closest one found, the only one with any likelihood of confusion, then it will be OK to register the second mark.

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