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Tracy Jong

Tracy Jong’s Answers

25 total

  • In the patenting process how do I trust the attorney?

    I am trying to obtain a patent and am about to contact a attorney but how do I trust the attorney?

    Tracy’s Answer

    I agree with my colleagues. Trust is at the foundation of the attorney-client relationship. Personal referrals are helpful, or ask your business or family attorney for someone with a good reputation. Local colleagues can have good insight into experience and reputation of fellow attorneys.

    You can check to see if there any claims or client disputes involving the attorney (grievances) as well.

    Patent attorneys have all different personalities. Find one that has a bedside manner you like. Meet with them to learn a bit about their style to determine if he/she is a good fit.

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  • I have a friend who is a music artist who wants to protect his name. Which should he apply for a service mark or a trademark?

    i have a friend who is in the studio recording and wants to protect his stage name.Which should he apply for a service mark or a trademark?

    Tracy’s Answer

    I agree with the responses given by my colleagues. However, I want to simplify the matter. The federal statue covering trademark actually uses the term "mark" and there is not distinction between a trademark and a service mark.

    I agree that he probably will have a combination of goods and services protected.

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  • U.S. Patents: Can a Company alter mass produced equipment without notifying the patent office of the change?

    I was having trouble with welds breaking on a major medical company's specialty bed. Their web-site claims this special feature on this bed is a patented idea. The welds in question have to do with a bearing housing that supports the back section ...

    Tracy’s Answer

    I agree with the other answers. I would add that the issue of product liability has nothing to do with the patent issues. If you constructed it according to the design specifications, it is likely that the design defect liability would reside with the designer (not you as the manufacturer). If the manufacturing was inconsistent or defective (deviating from the specifications), the manufacturing defect probably is with the manufacturer.

    If the patent is already issued, the revised commercial embodiment may or may not be within the claim scope of the patent. It appears from you facts that the patent is not still pending, but I would at least mention that is there were and child applications still pending (continuations, divisionals, continuations in part, the attorney may be able to get the revised version covered within the claim scope of the still pending version.

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  • I want to use a trademark but a company owns the rights to it but is NOT and has NEVER used the name in the sale of products

    I registered a DBA in the city where I live and have been operating under a company name and selling merchandise under that name for over a year . This week , I was emailed from a company that stated they had trademark rights for that name and a...

    Tracy’s Answer

    I agree with this advice. I would add that an experienced attorney can look at a variety of options. You indicated that they have never sold under the name. If that is the case, and the competitor did not use the name in commerce, or as a mark, then the mark may be the subject of a cancellation proceeding. However, there a defense of excusable non-use. You'll want to more investigating to better understand the facts, potential defenses, and the chances of success.

    I do question if you already signed something. This could have unintentially waived your rights in some fashion.

    Lots of people claim (and believe they have) marks that are not subject to protection. It is worth evaluating. I can tell you from experience, some lawyers write a quick cease and desist letter for a good client without understanding trademark law (as a favor for the client or for a small fee). Just because you got a letter does not mean there is a viable claim out there.

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  • How does improving an already existing patent work?

    I worked really hard putting an idea together , but I just did a patent search and noticed that there is a product really similar to mine . There are , however , some slight differences that my product offers and their product does not offer ....

    Tracy’s Answer

    I agree with the other answers, but would make a distinction. If your improvement is non-obvious, and novel, it is potentially patentable as its own invention. The problem is that to practice your invention, you would simultaneously be infringing on the prior patent invention, or require a license from that inventor (or patent owner) to use yours.

    Sitting with an experienced patent practitioner is a good idea. First, I find most people misunderstand what the patent covers and make incorrect conclusions. The patent claims determine the scope of protection and what is infringing. There may be much more disclosed in the patent that isin the enforceable claims. While they are prior art against your invention, practicing it is not infringement. Second, an attorney could help you evaluate postential design around solutions so you are not infringing. Locating a patent is one part of the process. Analyzing its impact is another. That is something that takes some knowledge and experience. Third, there may be some ways to cross-license or even sell you patentable improvement to the other patent holder.

    In short, there are a vast array of issues and solutions. To make good decisions, you need good advice. It is an investment that will give you good ROI.

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  • Divisional application and declaration post employment and assignment

    While with a former employer, I filed for a design patent and subsequently assigned it to the company. Since leaving the company involuntarily, several revisions to the original application are now required. Am I under any obligation to sign this...

    Tracy’s Answer

    I agree with the other attorneys. It will depend on your employmet agreement and other company contracts. I suspect that you will be obligated to sign it. Most companies that have patents will have policies covering this situation.

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  • My wife and I have a home based sole proprietor business that we want to convert to an LLC .

    Would it be best to have a single member LLC or an LLC with my wife and I as partners ?

    Tracy’s Answer

    The answer depends on quite a few factors. The most important one is explained by the attorney above. However, there are other things to consider. For example, how risky is this business venture? You may want only one spouse involved if it has a high risk of failure. That way you still have some credit with the remaining spouse. What is your estate plan and will this impact your tax planning? Is there any benefit to having your wife as owner and being a woman owned business?

    In most situatoins, I believe the end result will be that you should both be equity owners in the business. But there is no one size fits all solution. Each situation needs to be looked at to determine the positive and negative aspects of each option.

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  • Advice needed for business visa

    I want to own / lease / partner a running business in USA . Can the company owner comes to USA or can send current employee to run the business . Which visa option are available and what is the criteria ?

    Tracy’s Answer

    You have not provided much information but I would direct you to the E and L visas. To work in the U.S., you need an employment visa, which will allow you to legally come to the U.S. on a temporary basis. Generally, you need your prospective employer to file a nonimmigrant petition on your behalf with USCIS. Below is detailed information about the more common employment visa classifications.

    There is also the option to invest money in a U.S. business instead of working at one. There must be a substantial amount of capital (money) invested in the business and the investor must be a national of treaty country. To be a “treaty country” the country must have a treaty of commerce and navigation with the U.S. Certain employees of such a person or of a qualifying organization may also be eligible for this classification.
    What do I need to get an E-2 visa?

    Unlike most non-immigrant visa categories, the E-2 investor visa does not require a preliminary application to be filed with the USCIS in the U.S. Instead, an application may be made exclusively through the U.S. consulate abroad. Additionally, the E-2 investor visa applicant does not need to maintain a residence with the home country during the time in the U.S. Rather, the applicant must state an intention to leave the U.S. (non-immigrant intent) once the authorized period of stay (including any extensions) expires.

    Generally, three conditions must be met in order for an investor to qualify for an E-2 visa:
    There must be a treaty between the US and the investor’s country (a current of list of these countries can be found at:
    Nationals/citizens of the investor’s country must hold majority ownership or have majority control of the investment; and
    Those seeking E-2 status must be citizens of the investor’s country.
    Once these three conditions have been met, the applicant must then demonstrate that the investment being made qualifies him (the investor) for an E-2 visa. A qualifying investment must meet the following conditions :
    Actual investment: The investor must make an irrevocable commitment of money, representing that there is an intention of an actual investment in an operating business (investment to open up a location with plans on how to achieve that goal).
    Substantial investment: There is no minimum dollar amount necessary in order for the investment to be considered substantial. The amount invested must be proportional to the total value of the enterprise in question or must be an amount that is customarily required in order to establish the type of enterprise in question.
    Creation of jobs: The investment must be able to not only support the investor and his/her family, but it should also have the ability to provide job opportunities for U.S. workers.
    Essential role in enterprise: The applicant must hold a significant role within the investment company who will continue to assist with the development and direction of the investment or is a manager who is highly trained to manage and operate the company independently on behalf of the company.
    This category is available to international companies that need to bring their foreign employees to the U.S. for employment purposes. The basic requirements of the two primary L categories are similar (other than what qualifications/positions the employee must have). These categories are:

    L-1A – Managers and executives of the international company

    L-1B – Employees with specialized knowledge

    Something to keep in mind is that these visas are considered non-immigrant visas and thus the duration of stay range from a maximum initial period of stay of up to 3 years with extensions of stay of up to 7 years based on the employee’s classification. If the alien does not stay continuously in the U.S. during his employment in L-1 status, this time-limit does not apply to him. (This is usually the case for seasonal workers who work up to 6 months intermittently through-out the year, or those al

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  • What can I do?

    I submitted my idea to Davidson on sept 18 , 2012 started a payment plan with Philip cots I have tried to contact him with no success . I see that the idea was filed for patent 10 - 18 2012 . and publication date was 2 / 14 - 2013 . I can n...

    Tracy’s Answer

    Davidson is a well known invention company. I am sorry to say you are working with a company the USPTO warns about. However, all may not be lost. Assuming the patent that was filed had you as the inventor AND assuming it was a utility patent application (you mentioned it was published), you may be able to to the USPTO public PAIR website and view the file history to see the status. You can switch attorneys or even represent yourself by filing a revocation of power of attorney and appointment of a new one. KNowing that you worked with Davidson, I suggest that you take your filing receipt to a licensed patent attorney and have them review your case. Davidson usually subs out the patent work. You may want to look at your papers to see if there is an attorney name and number you can contact. It is hard to say if it went abandoned or if the patent that was filed is of any quality or value. It may be only a design patent. Consulting an experienced attorney will help you get the answers you need. In the interim, go to the USPTO Public PAIR and look up the application to see what you can learn yourself.

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  • Is it possible to add inventor names after the patent is published?

    We missed the major inventors name.. What is the procedure for adding inventors name after the patent is published.

    Tracy’s Answer

    Correction of inventorship in an application is permitted by amendment under 35 U.S.C. 116. The applicant can make a request under 37 CFR 1.48 will generally correct the inventorship in the application in which it is filed. 37 CFR 1.48(a) is directed at correcting the inventorship in an application where the inventorship was improperly set forth in the executed oath or declaration filed in the application.

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