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William J. Hoofe IV

William Hoofe’s Answers

598 total


  • How to make my invention public domain to prevent anyone from patenting it?

    William’s Answer

    You are correct in that your invention can be placed in the public domain as a way to ensure that nobody else can obtain patent rights to your invention. Publication of an enabling disclosure of an invention with the purpose of creating prior art prevents anyone, and that includes the [publisher] inventor, obtaining a patent for the invention.

    However, to be clear, a "defensive publication" covering the disclosure should not be construed as a guarantee that "nobody could profit from the base idea and prevent others from iterating on it." —To the contrary, a competitor can certainly seek a patent for an improvement or modification over the invention disclosed in your publication.

    An option you may consider is filing a patent application, preserving the option to pursue patent protection; the published application would be prior art to later-filed applications.

    You are well-advised to consult a registered patent attorney before you decide to place your invention in the public domain.

  • Can a combined invention be patented or must it be registered as a utility model?

    William’s Answer

    Without specific details, which you should not disclose in a public forum, such as Avvo.com, it is difficult to evaluate patentability of your invention.

    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. —Utility model protection is not available in the United States.

    Note that under the current patentability regime in the United States, some claims for biotechnological inventions involving genes may be deemed to be directed to "natural phenomena" during examination and, therefore, patent ineligible. —Even if a claimed invention qualifies as eligible subject matter, it must also satisfy the other conditions and requirements of the patent law, including the requirements for novelty (35 U.S.C. § 102), non-obviousness (35 U.S.C. § 103), and adequate description and definite claiming (35 U.S.C. § 112).

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

  • Do I need to file a Patent Cooperation Treaty (PCT)

    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. —The rights granted by a U.S. patent extend only throughout the territory of the United States during the term of the patent and have no effect in a foreign country.

    The Patent Cooperation Treaty (PCT) makes it possible to preserve the option to seek patent protection for an invention simultaneously in a large number of countries by filing a single "international" patent application instead of filing several national or regional patent applications.

    Although the PCT system does not provide for the grant of “an international patent,” the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor(s) more time to assess the commercial viability of the invention. —The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase” (or “regional phase” when an international application comes before a regional body rather than a national one).

    Q: "Will a US patent prohibit not only manufacturing in the US, but sales in the US by companies manufacturing in another country?"

    Short answer: Yes. In the United States, a patent grants its owner the right to exclude others from making, using, offering for sale, or selling the invention throughout the U.S. or IMPORTING the invention into the U.S., during the term of the patent.

    "… due date for filing for the Patent Cooperation Treaty (PCT)"

    FYI: An international application under the PCT must be filed within 12 months after the filing of the first application directed to the same subject matter.

    For your interest:
    —"International Application under the Patent Cooperation Treaty (PCT)" available at: https://www.hoofeiplaw.com/pct-application-for-patent.html

  • Can you patent a device that uses software that you don't own?

    William’s Answer

    As is the case for inventions in any field, the United States Patent & Trademark Office (USPTO) examines claimed computer-implemented inventions to determine whether the statutory conditions of patentability have been satisfied. To be entitled to a patent, a claimed invention must be: comprised of patent-eligible subject matter; useful; novel; non-obvious; adequately described (to enable a person of ordinary skill in the art to make and use the invention); and claimed in clear and sufficiently definite terms.

    In the United States, computer hardware and software-related inventions can be protected by utility patents provided that patentability requirements are fulfilled. Note that under the current patentability regime, some claims for inventions involving software may be deemed to be directed to an abstract idea during examination and, therefore, patent ineligible. —Even if a claimed invention qualifies as eligible subject matter, it must also satisfy the other conditions and requirements of the patent law, including the requirements for novelty (35 U.S.C. § 102), non-obviousness (35 U.S.C. § 103), and adequate description and definite claiming (35 U.S.C. § 112).

    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.
    —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.

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

  • Is there an NDA need after nonprovisional utility patent filing?

    William’s Answer

    There are too many facts that you have not, and should not, disclose in a public forum such as Avvo.com, that are necessary to consider before anyone can give you actionable information. —As you may expect, to effectively answer your question an attorney would need to review the nonprovisional patent application.

    As a general rule, before divulging any confidential information, you should have a well-drafted confidentiality agreement (sometimes referred to as a "non-disclosure agreement" or "NDA") in place, obliging the signatories not to use or disclose specific information.

    FYI: With certain exceptions, a nonprovisional utility patent application will be published after 18 months from the earliest filing date, provided that no non-publication request was filed with the patent application. —Once published, a patent application becomes publicly available and no longer confidential.

    Consult a registered patent attorney to discuss your options. Only your own patent attorney can review the patent application—and possibly similar inventions in the prior art—to determine whether the disclosure of the invention in the patent application would adequately protect your invention.

  • Can I patent entire device that composes of multiple individual inventions and have each protected?

    William’s Answer

    Q: "Can I patent entire device that composes of multiple individual inventions and have each protected?”

    Perhaps yes, and there might be an opportunity for multiple patents. —In filing a patent application, there is no guarantee that the application will be allowed so that a patent will issue.

    Q: Can my multiple individual inventions be a single patent application?

    Short answer is "yes," multiple individual inventions can be combined in a single patent application—but the patent examiner may require you to split the inventions out later.

    If two or more independent and distinct inventions are claimed in one patent application, a patent examiner at the United States Patent and Trademark Office (USPTO) may require the application to be restricted to one of the inventions. In responding to a restriction requirement, an applicant (often by way of a registered patent practitioner) is required to elect claims drawn to one invention for continued prosecution in the application. Restriction requirements are often raised when an application contains claims to both a device—e.g., a computer mouse with "a new type of switch mechanism"—and a process or method of using the device—e.g., "new methods of processing data within the mouse itself."

    Q: "In case one of these subinventions is declined, will the other remain?"

    A divisional application claiming non-elected inventions is often filed as a result of a restriction requirement made by the examiner. Note that a divisional application must be filed before the original (nonprovisional) application that received the restriction requirement (or a pending application in the application family that received the restriction) ceases to be pending, either because it issues or goes abandoned.

    The preparation of a patent application and the conducting of the proceedings in the USPTO to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures. —While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

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

  • Multi-Embodiment And Single-View Design Filing

    William’s Answer

    You should be aware that the drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, may be illustrated in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). As you may be aware, claims can be the most difficult part of a patent application to draft. Inventors are well-advised to seek help from a registered patent practitioner in drafting quality claims.

    The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and USPTO practice and procedures. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

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

  • How can I patent an educational idea? What steps do I need?

    William’s Answer

    Strictly speaking, an idea alone cannot be protected by a patent. —Patents protect inventions. The claimed invention must be: comprised of patent-eligible subject matter; useful; novel; non-obvious; adequately described or enabled (for one of ordinary skill in the art to make and use the invention); and claimed in clear and sufficiently definite terms.

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

    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.

    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.

    Many patent attorneys throughout the United States offer free consultations. You can use Avvo's "Find a Lawyer" search function (https://www.avvo.com/find-a-lawyer). Browse lawyers by practice area (e.g., patent application) to see attorneys who can help.

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

  • Can a company apply for a patent for my invention they mass produced from my blueprint and sell it?

    William’s Answer

    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.
    —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.

    FYI: The United States Patent and Trademark Office (USPTO) presumes that the named inventor (or joint inventors) in the application is the actual inventor(s) to be named on the patent.

    A patent application is best filed before any public disclosure of the invention. In the U.S., 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 U.S. may foreclose the grant of patent protection in those countries having an "absolute novelty" requirement.

    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.

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

  • How can i sue davison inventions for the patent to my invention or for my $800.00?

    William’s Answer

    An all too frequent occurrence: Instead of providing the patent and invention promotion services promised, some invention submission companies do nothing for you.

    If you can prove that the invention submission company lied to you or omitted information that was crucial for you to know, you may be able to successfully sue the company under the "American Inventors Protection Act of 1999."
    —"American Inventors Protection Act – Summary" at: https://www.uspto.gov/patents/laws/american-inventors-protection-act-1999/american-inventors-protection-a-2

    The United States Patent and Trademark Office (USPTO) accepts complaints from the public against invention promoters and promotion firms. While the USPTO does not investigate complaints or participate in any legal proceedings against invention promoters/promotion firms, the USPTO will forward your complaint to the promoter and publish its response online.
    —"Scam Prevention" at: https://www.uspto.gov/patents/basics/using-legal-services/scam-prevention

    ReportFraud.ftc.gov is the federal government's website where you can report fraud, scams, and bad business practices.

    For your interest:
    —"What to Do If You Paid an Invention Promotion Scammer" at: https://consumer.ftc.gov/articles/invention-promotion-scams#what%20to%20do
    —"Can I file a lawsuit against Davison Design?" at: https://www.avvo.com/legal-answers/authorized/can-i-file-a-lawsuit-against-davison-design--4186877.html#answer_9147037
    —"How can i sue davison inventions for the patent to my invention or for my $800.00?" at: https://www.avvo.com/legal-answers/authorized/how-can-i-sue-davison-inventions-for-the-patent-to-3980447.html
    —"Can I Sue The Davison Invention Company" at: https://www.avvo.com/legal-answers/can-i-sue-the-davison-invention-company--3024153.html