Stuart James West’s Answers

Stuart James West

Walnut Creek Patent Application Attorney.

Contributor Level 10
  1. Cease and Desist over similar company names - Neither company has any trademarks

    Answered almost 3 years ago.

    1. Stuart James West
    2. Michael Anthony DiNardo
    3. Sharon Lee Toerek
    4. Daniel Nathan Ballard
    5. Kevin Brendan Murphy
    6. ···
    8 lawyer answers

    My colleague is correct that there are a lot of facts that are unknown in the factual scenario you have set up. A general rule of trademark law is "First in Use, First in Right." However, geography plays into this analysis--for example, if Company one is based in and uses only in NY and Company two is based in and only uses in CA, then the geographic use of the competing marks is really not problematic. However as the companies' uses of the marks expand, then a situation may arise in which...

    8 lawyers agreed with this answer

  2. Legal liability of using film school equipment.

    Answered over 2 years ago.

    1. Stuart James West
    2. Christine C McCall
    3. Gordon Philip Firemark
    4. Mario Sergio Golab
    5. Susan P. Salas
    5 lawyer answers

    Each university, school and college is different, so you will have to check the school's policies and rules to be sure. However as a general rule for a vast majority of universities, works or other intellectual property created by undergraduate students are owned by the students, but works created by graduate students are typcally owned by the university (unless there is another agreement in place). Once again, these are not strict rules and are subject to the terms of the particular school'...

    6 lawyers agreed with this answer

    1 person marked this answer as helpful

  3. What is the standard or recommended citation format for unpublished TTAB citations available in their public databases?

    Answered over 1 year ago.

    1. Stuart James West
    2. James Juo
    3. Bruce E. Burdick
    3 lawyer answers

    TBMP 801.03 When cases are cited in a brief, thecase citation should include a citation to The United States Patent Quarterly (USPQ), if the case has appeared in that publication. [Note 6.] See TBMP § 101.03. As of December 27, 2006, the Board permits, but does not encourage, the citation of non-precedential final decisions. A decision that is not designated as precedential is not binding on the Board, but may be cited for whatever persuasive value it might have. If a non-precedential...

    7 lawyers agreed with this answer

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

    Answered 3 months ago.

    1. Stuart James West
    2. Elizabeth Swanson
    3. Mario Sergio Golab
    4. Dariush G. Adli
    5. Kendra L. A. Stephen
    5 lawyer answers

    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...

    5 lawyers agreed with this answer

  5. Patent and trademark question

    Answered about 2 years ago.

    1. Stuart James West
    2. Angela Small Booth
    3. Konrad V. Sherinian
    4. Milena Stoyanova Mishev
    5. Bruce E. Burdick
    5 lawyer answers

    Trademark questions such as this are highly fact sensitive. Whether the use of a single word of a trademark constitutes trademark infringement not only depends on the uniqueness of the trademark and the similarity of your goods/services to their goods/services, but also several other factors. Generically, the factors in determining whether your use of a trademark may be considered trademark infringement are referred to as DuPont factors. However, in California our Federal courts have...

    5 lawyers agreed with this answer

  6. Risk of drafting your own provisional patent when seeking out a licensing deal?

    Answered 10 months ago.

    1. Maurice N Ross
    2. Stuart James West
    3. Brian Kenneth Dinicola
    4. Daniel Nathan Ballard
    5. Bruce E. Burdick
    5 lawyer answers

    First, public disclosure will not necessarily destroy your US patent rights. Under US patent laws you have a one year grace period after first public disclosure to file your patent application. However, public disclosures prior to filing an application will generally destroy rights outside the US. Second, failing to disclose to the USPTO items that may be relevant to patentability is generally termed inequitable conduct and is potentially grounds for cancellation of your patent. If this...

    6 lawyers agreed with this answer

  7. First-to-file provisions make copying easy?

    Answered over 2 years ago.

    1. Stuart James West
    2. Mario Sergio Golab
    3. Tyler Joseph Barrett
    3 lawyer answers

    No. The AIA changes the law to the first INVENTOR to file. One must still be an inventor in order to file an application and not simply one who saw and copied another's invention.

    6 lawyers agreed with this answer

  8. In submitting an IDS for a US patent application, do I need to include entire copies of non-US patents or just cited portions?

    Answered about 3 years ago.

    1. Stuart James West
    2. James Juo
    3. Maurice N Ross
    3 lawyer answers

    Although the tone of my collegue's answer is a little harsh, the answer is correct. There is also a second burden--if the cited reference is not in English, then you may need to take additional steps beyond just providing the patent office with the reference. "37 CFR 1.98(a)(3)(ii) states that if a written English language translation of a non-English language document, or portion thereof, is within the possession, custody or control of, or is readily available to any individual designated...

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

    Answered 3 months ago.

    1. Ronald Ethan Perez
    2. Stuart James West
    3. Kendra L. A. Stephen
    4. Bruce E. Burdick
    5. Dariush G. Adli
    6. ···
    6 lawyer answers

    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.

    4 lawyers agreed with this answer

  10. I want to get a patent but it looks too expensive

    Answered over 1 year ago.

    1. Stuart James West
    2. Bruce E. Burdick
    3. Dariush G. Adli
    3 lawyer answers

    I agree with my colleague Mr. Burdick. I'll address each of the issues in individual headings: Guarantee--The patent attorney can render a basic opinion on patentability. However, that opinion is hindered by the fact that, unless published early (which is unusual) patent applications are held in secrecy for at least 18 months (or until issue). Therefore, your patent attorney may not have access to all the relevant prior art. Additionally since the examiner ultimately must agree, it is...

    4 lawyers agreed with this answer

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