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Stuart James West
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Stuart West’s Answers

70 total


  • If I license know-what to a manufacturer, will they ask me to indemnify them for manufacturability, operability, or safety?

    An inventor can't always be expected to know that an invention will have no snags or problems. It's as if companies expect it to have already been manufactured and test marketed, but rarely does an inventor sell his own product before he licenses...

    Stuart’s Answer

    Actually, in my experience it is very rare that a "naked" idea or patent/patent application is licensed by a legitimate manufacturer. Most licensees are quite risk averse and do not want to invest in products/ideas that have not been market tested.

    Regarding the indemnity requirements in the agreement, these are quite common--every agreement i can remember drafting has had some form of liability-shifting section in it. However, these terms are negotiable and do vary. Almost everything in a license agreement is negotiable.

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  • Attorney filing amendment after final followed by Notice of Appeal and Pre-Appeal Conference Request. What is this process?

    Attorney filing amendment after final followed by Notice of Appeal and Pre-Appeal Conference Request. What is this process and how much should it cost?

    Stuart’s Answer

    Unfortunately, there is really no way answer the first part of this question without seeing the final office action and knowing the prosecution history. A response after final could be as short as a few pages or many pages with exhibits and declarations and cost would vary dramatically based on the amount of work and level of complexity of the office action and required response. Moreover, every practitioner is free to set his/her own fees and should do so depending on education, expertise and experience.

    However, the filing if a notice of appeal is a simple process. So, the preparation and filing of that document should not have taken much time at all. I would say maybe between .3 and .5 would likely be reasonable as it is a simple document. That being said, the decision regarding whether to file a notice of appeal, pre-appeal pilot interview request, request for continued examination or do something else might have taken some time and required significant analysis.

    Regarding the examiner interview, once again without the office action and the prosecution history, it is really impossible to say how long the preparation would have taken. That being said, the interview itself would not likely have lasted more than an hour.

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  • Own registered trademark in USA. Ex agents using two websites that is under my trademark and gets directed to their copy brand

    My trademark is Chipstix with Registration Number 3904960 (http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:x7yj58.4.) One of my main websites is www.chipstix.org They are using a copy name called Tatostix, it is not registe...

    Stuart’s Answer

    Any analysis of whether the use of mark by another begins with a comparison of not only the trademarks, but also a comparison of the goods/services that are associated with the mark.

    Assuming for one moment that the goods that the competitor manufactures are identical to the goods associated with your trademark, the analysis would then turn to the a comparison of the marks "Chipstix" and "Tatostix" The question is whether to a consumer there is a reasonable likelihood of confusion between the two marks. Given the significant differences in spelling and the fact that the differences are at the initial part of the mark (understanding that the terminal portions of the marks are identical), it would likely be challenging to make a case that consumers would likely confuse one mark with the other and/or that a consumer would be reasonably likely to confuse the products based on the two marks.

    There are other factors that also bear on the analysis of whether there is a likelihood of confusion. If you search the terms "DuPont factors" or "Sleekcraft factors" you will find the relevant factors that are weighed in the likelihood of confusion analysis.

    In addition to the trademark issues, there may be other potential causes of action (unrelated to the trademark) that may give rise to a claim against the former agent/competitor. Any potential alternate claims would depend on the specific facts surrounding the split between your agents and your company and 1) may vary based on state law and 2) should be discussed in a private setting with your attorney.

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  • What is the "clear" demarcation between fair use and copyright violation?

    Do you have any representative cases that can attest these statements in a binary manner?

    Stuart’s Answer

    There is no "bright line" or clear demarcation regarding when a use is considered a fair use. The law regarding the fair use exception can be found at 17 USC §107 and identifies 4 factors that must be considered and balanced in making a determination as to whether the use qualifies as a fair us. The factors to we weighed and considered are:

    1.the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
    2.the nature of the copyrighted work;
    3.the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
    4.the effect of the use upon the potential market for or value of the copyrighted work.

    Each use requires its own independent analysis of the relevant facts and factors.

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  • If I wanted to get a logo patented what can I do?

    I am not an American citizen but I live in the United States. Will it be an issue for me?

    Stuart’s Answer

    The advice provided by others here is all directly on point. However if your "logo" has an artistic component, you may also want to consider registering the copyright on the logo in addition to seeking trademark protection.

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  • I have an invention and I'm filing papers with the US Patent and Trade Office. I want protection outside the US as well.

    I was told that I have to file a NONPUBLICATION REQUEST UNDER 35 U.S.C. 122(b)(2)(B)(i) : I hereby certify that the invention disclosed in the attached application has not and will not be the subject of an application filed in another countr...

    Stuart’s Answer

    Yes an npr is related to your international rights.
    I'm not sure who told you that you have to file an npr, but that is not correct--an npr is not required as part of a U.S. patent application filing.
    If you file an npr with your your U.S. Application, you may still file overseas, but you must withdraw the npr. If you fail to do so within the required timeframe, your U.S. Application will become abandoned.

    I do strongly recommend that if you are filing a patent application that you consult with a fully qualified and experienced patent practitioner as there are multiple things that an inventor can do that may inadvertently, damage, limit and/destroy patent rights.

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  • What are a couple of the most absurdly basic utility patents you've seen issued in the 21st century?

    Patents that just made you think "Wow, I can't believe that was patented!"

    Stuart’s Answer

    One of the most famous issued patents of this sort is the Method of Swinging on a Swing. US Patent No. 6368227

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  • Do patent examiners search for prior art in books, magazines and articles?

    That's my question.

    Stuart’s Answer

    Yes, patent examiners do have access to this type of material. Additionally, if the applicants/inventors or Patent Practitioners are aware of or become aware of any relevant prior art documents, they are under an obligation to disclose the material to the USPTO examiner by filing an Information Disclosure Statement (IDS) together with a copy of the document if it is anything other than a US Patent or Published US Patent Application.

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  • I need to find a patent attorney. How do I find a patent attorney?

    Trying to create a device that save lives. I am a teacher who needs a patent attorney to work with me, guild me and look out for my interest.

    Stuart’s Answer

    Word of mouth/recommendation is one of the best things I would recommend. Additionally, the United States Patent and Trademark Office maintains a record of all registered patent attorneys and agents--my colleague has provided a direct link already.

    Aside from this, you should interview the prospective patent attorney or agent. Not all patent attorneys are competent in the same areas. For example, you do not necessarily want a patent attorney with an electrical engineering degree to work on a patent application for your invention if it is a new chemical compound that is a cure for cancer. You'll want to seek out a patent attorney or agent that has appropriate technical training and experience that is relevant to your invention. I would also recommend that you ask for samples of issued patents (hopefully related to the technology area of your invention).

    I noted that this question was flagged with a "design patent" flag. So, I would request that the patent attorney or agent provide you with examples of the issued design patents. Additionally, I would ask about whether the patent attorney/agent prepares the drawings in-house or if the drawings will be outsourced (which is not uncommon). I would also ask about cost per drawing sheet.

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  • Trademarked a domain but I see similar ones that sell my product

    I am a new startup and just filed all the paperwork: the LLC, Operating Agreement and Registered my domain and trademark. Upon doing a simple Google search, I see other websites very similar to mine selling similar products. I say similar because ...

    Stuart’s Answer

    While we would like to believe that the USPTO's determination regarding registrations is a final determination on rights, it actually isn't. The overarching rule in trademark law is "first in use, first in right."

    The general problem is that the Examining Attorneys at the USPTO do not always locate all common law or state registrations that may pre-date your first use and/or your tm application filing date.

    If the company was in business using the same or a confusingly similar trademark before you're filing, it is possible that if you "go after them" they may seek to cancel your mark.

    If a comprehensive search was not conducted prior to filing the tm application, I would recommend that you conduct that search now before taking any action. Alternately, you'll want to at least investigate the uses of the parties you want to go after before you take any action to be sure that you are, in fact, the senior user.

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