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William J. Hoofe IV

William Hoofe’s Answers

545 total


  • Return from pre -exam not yet docketed?

    William’s Answer

    See https://www.uspto.gov/web/offices/pac/mpep/s702.html and (3) attorney answers to previously posted question:
    "What does application dispatched From pre exam, not yet docket?"
    Asked in Sarasota, FL | August 20, 2021 https://www.avvo.com/legal-answers/authorized/what-does-application-dispatched---from-pre-exam---5326557.html

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  • Does a person making an invoice on behalf of someone own the rights for the service?

    William’s Answer

    Short answer: A person who makes only a financial contribution is not a joint inventor and cannot be joined in the patent application as an inventor.

    In the United States, a patent may be applied for only in the name(s) of the actual inventor(s). It is a basic patent law tenet in the United States that an inventor is the person(s) who contribute to the conception of the invention as claimed.
    —It is important to thoroughly analyze who should be named on the patent application. You should be aware that it is enough for one to contribute conception to a single claim in order to be considered a joint inventor.

    FYI: The United States Patent and Trademark Office (USPTO) presumes that the named inventor or joint inventors in the application are the actual inventor or joint inventors to be named on the patent.
    —Failure to correctly name the inventor(s) of a claimed invention in a U.S. patent application is a proper ground for rejecting the application or invalidating any patent that may issue from the application.

    For help correctly identifying the inventors that should be named in a patent application, consult a registered patent attorney.

    For your interest:
    —"Inventor's Patent Guide" available at: https://www.hoofeiplaw.com/inventors-patent-guide.html

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  • Patent

    William’s Answer

    You should be aware that an idea alone cannot be protected by a patent. Patents protect inventions. A qualified patent attorney can help you describe various options, combinations, and characteristics that make up several different versions (or, in patent parlance, "embodiments") of the invention.

    A prior art search of previous public disclosures including, but not limited to, previously patented inventions in the U.S. may be conducted to determine if your invention has been publicly disclosed and, thus, is not patentable.
    —You should be aware that even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences, a patent may still be refused if a person having ordinary skill in the area of technology related to the invention would find it obvious to make the change.

    A patent application is best filed before any public disclosure of the invention. In the United States, there is a one-year grace period from the inventor's own public disclosures of the invention to file a patent application. Certain international jurisdictions do not afford a grace period and any prior enabling disclosure of the invention in the United States may foreclose the grant of patent protection in those countries having an "absolute novelty" requirement.

    Before you decide to file a patent application, you should discuss your invention with a registered patent attorney.

    For your interest:
    —"Can I Patent My Idea?" at: https://hoofeiplaw.com/can-i-patent-my-idea.html

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  • I was just wondering if my situation is intellectual property theft?

    William’s Answer

    Optimistically, it is conceivable that the manufacturer will not move forward with implementing your technology in their products… if, indeed, you "did not give any critical details, just a general overview" as you indicated.

    You may want to consider filing a provisional application for patent. In your dealings with third parties, it may be appropriate to have a well-drafted NDA (also referred to as a confidentiality agreement) in place, obliging the signatories not to use or disclose specific information, AND to file a provisional application, as early as possible, to establish a U.S. filing date for an invention.

    You should be aware that not all invention promotion firms or invention submission companies are legitimate. You can check the company's reputation by:
    — looking for complaints listed on the USPTO Scam Prevention web page at: www.uspto.gov/patents-getting-started/using-legal-services/scam-prevention; and
    — consulting the Better Business Bureau.

    Before you decide to file a provisional patent application, you should discuss your invention with a registered patent attorney or agent.

    For your interest:
    —"Provisional Patent Application" available at: https://hoofeiplaw.com/provisional-application-for-patent.html

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  • Ideas aren't copyright but just the original explanation and description but my question how does that work and what is idea ?

    William’s Answer

    Copyright law does not protect ideas—that's correct. Also, for your information, note-taking to aid your own study may qualify as a "fair use."

    The use of copyrighted materials for certain purposes such as criticism, comment, news reporting, teaching, scholarship, and research may qualify as "fair use." Fair use is a legal doctrine that promotes freedom of expression by permitting the use of copyright-protected materials without permission from the copyright holder in certain circumstances. —Fair use is only a defense, not a guarantee of not being sued for infringement.

    You may want to avoid publishing the notes (e.g., study guides) or sharing the notes, as this can decrease the likelihood that your note-taking to aid your own study qualifies as a fair use.

    Consult an intellectual property attorney to discuss any intended use of the notes, to avoid copyright infringement issues.

    For your interest:
    —"Copyright Basics" available on the Copyright Office website at: https://www.copyright.gov/circs/circ01.pdf
    —"The Difference Between Copyright Infringement and Plagiarism" available at: https://www.plagiarismtoday.com/2013/10/07/difference-copyright-infringement-plagiarism
    —"Give Credit Where Credit is Due: Avoiding Plagiarism and Copyright Infringement" available at: http://library.alliant.edu/screens/plagiarism.pdf

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  • What is IP/patent ownership assignment?

    William’s Answer

    In many cases, employment agreements contain clauses that assign all of the employee inventor’s patent rights for inventions that relate to the employer’s business to the employer and require the employee to assist the employer in securing patent rights.

    If you have questions concerning whether an invention falls within a patent assignment agreement between yourself and your employer, consult a registered patent attorney.

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  • I have an active patent in which many companies have used the item listed in the patent in their designs? Can I do anything?

    William’s Answer

    You should be aware that a patent grants its owner a territorial right to exclude others from practicing the patented invention during the term of the patent and within the country that issued the patent, and infringement is only possible in a country where a patent is in force.

    So long as the patent has not expired, a patent owner may initiate a lawsuit for patent infringement if the patent owner believes that an alleged infringer's product or process practices the patent owner's patented invention without authorization.

    Consult with your own patent attorney to discuss your options.

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  • I have a unique practical method to acquire customers for home mortgage industry. Can my method be an IP and patentable ?

    William’s Answer

    Under certain circumstances, a method by which home mortgage lenders may acquire mortgage customers may be protectable by a business method patent.

    However, it may be difficult to distinguish a patentable business method claim from an abstract idea about a way of doing business, which may make it difficult to obtain patent protection.
    —Current case law in the United States requires that that in order for a business method to be patentable, the business method claims must recite "significantly more" than simply implementing a well-known business process on a computer.

    Before you decide to decide to file a patent application, you should discuss your innovation with a registered patent attorney or agent.

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  • Can I use the information learned from the video which I didn't pay for that?

    William’s Answer

    Copyright law provides authors of original works exclusive rights to use their works, including the right to reproduce, distribute, perform and display the protected work.

    What copyright protects is expression, and never ideas, procedures, methods, systems, processes, concepts, principles, or discoveries.

    For your interest:
    —"Copyrights" available at: https://www.hoofeiplaw.com/copyrights.html
    —"Copyright Basics" available on the Copyright Office website at: https://www.copyright.gov/circs/circ01.pdf
    —"Circular 33: Works Not Protected by Copyright" at https://www.copyright.gov/circs/circ33.pdf

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  • Can I sell my abandoned patent application?

    William’s Answer

    You are correct in so far as the United States Patent and Trademark Office (USPTO) provides for "petitions to revive" an abandoned U.S. patent application.

    However, you should be aware that where the petition to revive is filed more than two years after the date the application became abandoned, the USPTO requires an explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional.

    Petitions to revive filed up to two years after abandonment may succeed. —After two years, petitions to revive an abandoned patent application are significantly less likely to be grantable.

    One option you might consider is filing a patent application for an improvement or modification over the invention disclosed in your abandoned patent application.

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