Xavier S Pillai's Answers

Filing U.S. Patent Application

Yes, since the provisional application will not be examined, it can include multiple inventions. The PTO will not ask the provisional application to be divided into separate applications. It is also a good way to save money on filing fees since you have to pay only one filing fee rather than multiple filing fees. However, please make sure that the multiple inventions are somewhat related to each other. You don't to want to put apples and oranges together in one basket. When you later file...

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Changes to the product post filing of a Provisional Application.

You are correct that your first filing should be as broad as possible in its description so that later improvements could be potentially covered by it. If, however, the first provisional application does not cover your improvement, you should consider filing a second provisional application as soon as possible to include the improved design. You can file a regular non-provisional application at the end of the 12 month period from the first provisional and claim the benefit of both the...

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How do you challenge a patent?

There are very few options at this moment. Under the existing laws, inventor can file a patent application with identical claims and ask the Patent Office to declare an interference with the patent application of A. The PTO will determine who invented first and award the patent to that party. Under the new law enacted last year, there is a proceeding called Derivation Proceeding which should be initiated by B against A. There may be other options. Please consult an attorney.

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I have recently come up with a new invention, do I need a lawyer?

There have been many instances where inventors have been disappointed (to say the least) with invention promotion companies. Even the USPTO regards them quite skeptically. I would recommend that you speak with a qualified patent attorney, for example, in a national law firm, and there are many good ones. Some inventors have attempted to file their own patent applications without a lawyer, most often with less than satisfactory results. Patent application is a serious document and should not...

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Can I patent I white box product from China after rebranding, reboxing and customizing installation?

To obtain a patent in the US, you have to have an invention that is useful, novel, and non-obvious. It is not clear whether there is any such in your idea. Your question also seems to be quite vague. There could be aspects of what you are planning to do that could merit patenting, either as a design patent or utility patent. There could also exist other intellectual property here such as trademark, trade dress, etc. Please consult an IP attorney.

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A patent expired for a device. I improved it drastically. Can I patent my new device and be protected?

Yes, you can patent the new device as long as the improved device is novel and is not obvious over the previous device itself (e.g., common sense improvement) or in combination with other devices or disclosures in patents. If your improvement has something unexpected or superior property or advantage, that would certainly help. Utility may be the same but its performance can be better, e.g., greater efficicency. Please work with a patent attorney in determining whether it would be possible...

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Can I manufacture and sell my product under a patent pending procedure and be protected.

As indicated by the previous answer, you can manufacture and sell your product even when the patent application is pending. While you may have to wait until the patent is aactually granted to sue an infringer, you do have a provisional right to put the infringer on notice that you have a pending patent application which covers the infringer's product. Patent applications are normally published after 18 months from the earliest filing date. As soon as the patent application becomes published,...

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If the patent office issues the patent since it does not know the applicant sold the product over the 1 year grace peroid, does

If the patent has been granted, then a third party must sue to invalidate the patent based on evidence relating to prior sale or offer to sale. This cannot be done at present at the USPTO. Under the new law that goes into effect soon, there are some provisions to challenge the patent at the USPTO. However, with the present law, the party who is concerned about the patent, for example, if the party is concerned about infringment, it should challenge the validity of the patent in a district...

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How to patent a device that uses a computer algorithm process for which a licence is required from a 3rd party?

This question needs a more detailed analysis which would be possible when you sit down with a patent attorney. However, for now, it is possible to say that the invention you are contemplating, that is a device that uses a computer algorithm of a third party in a novel way might be patentable. To obtain a patent, the device, like any invention, must meet the utility, novelty, and non-obviousness tests. As long as these three criteria are met, the patent office is likely to grant a patent. You...

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I have an approved Patent that we are trying to get manufactured. What must I be aware legally before proceeding?

You should make sure your product does not step on anyone else's patent even if you have a patent covering your product. You need to speak with a counsel about an infringement clearance search. Willful infringement of a patent can lead to triple damages to the infringer. Remember, a patent is not a license to manufacture or sell. It only gives you the right to exclude others from manufacturing or selling anything covered by your patent. In addition, make sure that any maintenance fee due in...

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