Patent Pending Made Simple

In this episode of Patent Pending Made Simple, Jaime and Samar tell you what a notice of allowance is, how it should be treated, and what you need to do after receiving one.

Summary
In this episode, the hosts discuss what to do after receiving a notice of allowance on a patent application. They explain a notice of allowance and how long it typically takes to receive one. They emphasize the importance of reviewing the notice of allowance and any examiner's amendments and paying the issue fee. They also discuss the duty of disclosure, the need to file an information disclosure statement (IDS), and a request for continued examination (RCE) if new relevant references are discovered. The hosts also recommend considering filing a continuation application and discussing the timeline for patent issuance. They mention the importance of patent marking and needing maintenance fees to keep the patent in force. The episode concludes with a reminder that the podcast does not provide legal advice.

Takeaways
Review the notice of allowance and any examiner's amendments carefully

Pay the issue fee to move forward with the patent application

Disclose any new relevant references through an information disclosure statement (IDS) and a request for continued examination (RCE)

Consider filing a continuation application to capture different claim scopes

Be aware of the timeline for patent issuance and the need to pay maintenance fees

Mark the product as patented to access certain types of damages

Remember that the podcast does not provide legal advice

Chapters
00:00 Introduction and Overview

00:20 Explanation of Notice of Allowance

01:33 Timeline for Receiving a Notice of Allowance

03:27 What to Do After Receiving a Notice of Allowance

04:43 Duty of Disclosure and Information Disclosure Statement (IDS)

06:06 Importance of Meeting Duty of Disclosure

07:18 Request for Continued Examination (RCE)

08:09 Considerations for Filing a Continuation Application

10:08 Timeline for Patent Issuance

11:22 Importance of Filing a Continuation Application

13:48 Patent Marking and Maintenance Fees

16:22 Conclusion and Disclaimer

In this Patent Pending Made Simple episode, Jaime and Samar debate whether to amend claims or argue against rejections in a patent application. It is common to receive rejections in the patent process, but determining whether or not you should fight those rejections or amend claims in your application is a difficult dance. Listen in to get some insights into your potential options.

Summary
The conversation discusses the decision-making process of whether to amend claims or argue against rejections in a patent application. The main factors to consider are the legal doctrines of prosecution history estoppel and doctrine of equivalence, the likelihood of competitors practicing the added feature, the strength of the argument, the examiner's disposition, and the overall strategy of the prosecution. The conversation also touches on the option of filing an appeal and the potential timeline and costs associated with it.

Takeaways
When deciding whether to amend claims or argue against rejections, consider the likelihood of competitors practicing the added feature.

The strength of the argument and the examiner's disposition are important factors to consider.

Filing an appeal may be necessary if the examiner is unreasonable or unwilling to listen to arguments.

The appeal process can take time, but it can also be a cost-effective option.

Setting realistic expectations of multiple rounds of rejections can help manage the budget.

Chapters
00:00 Introduction and Topic Introduction

00:58 Receiving a Rejection and Considering Amendments vs. Arguments

09:03 Considering Competitor Practices in Decision-Making

13:25 The Importance of Strong Arguments and Examiner Disposition

22:44 Managing Expectations and Budget in Patent Prosecution

25:57 Conclusion

Who is an inventor when it comes to a patent? Can there be multiple inventors? What rights do they have? These questions will be answered in this insightful episode of Patent Pending Made Simple, where our hosts, Jamie Brophy and Samar Shah, delve into the intricacies of inventorship claims and their implications in the realm of patent applications and legal protections.

Summary
In this episode, Jamie Brophy and Samar Shah discuss the topic of inventorship. They explain that an inventor is anyone who helped come up with the idea behind a patent and, specifically, anyone who helped come up with the idea written in the claims. They also discuss the importance of understanding inventorship from a legal perspective, as the person who came up with the invention is presumed to have ownership of the invention. They highlight the need to carefully review employment agreements, as many of them state that any inventions made during the course of employment belong to the company. They also discuss the complexities of determining inventorship and the importance of including all potential inventors to avoid future legal issues. Finally, they mention the additional obligations and paperwork that arise when multiple inventors are involved.

Takeaways
An inventor is anyone who helped develop the idea behind a patent, specifically the idea written in the claims.

Understanding inventorship from a legal perspective is important, as the person who invented the invention is presumed to own it.

Employment agreements often state that any inventions made during the course of employment belong to the company, so it is important to review these agreements carefully.

Including all potential inventors is recommended to avoid future legal issues and ensure the patent's validity.

When there are multiple inventors, additional obligations and paperwork regarding ownership may arise.

Chapters
00:00 Understanding Inventorship

02:28 Ownership of Inventions in Different Countries

03:54 Importance of Determining Co-Inventors' Responsibilities

06:44 Analyzing Inventorship on a Claim-by-Claim Basis

10:33 Including Potential Inventors to Avoid Legal Issues

13:23 Additional Obligations and Paperwork with Multiple Inventors

What are the key differences between a patent attorney and a patent agent? 
In this episode, Jamie and Samar dispel the myths surrounding patent attorneys and patent agents. They specify the qualifications a patent attorney and patent agent must have and what actions fall under their jurisdictions, respectively.  

Takeaways:
Both patent attorneys and agents are required to take the patent bar exam, which qualifies them to represent people in front of the USPTO. Patent agents are restricted strictly to the legal representation of clients in front of the patent office. However, patent attorneys can operate anywhere the law and the patent office intersect. Regarding more complex legal consultations that are not confined to the patent office, an attorney is often better equipped to handle them. Generally, attorneys charge more than agents, but this varies depending on the agent's or attorney's experience and market.

Timestamps:
0:00 - Introduction 
2:11 - How do patent agents get registration numbers?
2:49 - Patent bar exams 
4:00 - Qualifications to take the exam
4:45 - What can agents and attorneys do and not do?
5:50 - Cost differences
6:56 - Appeal Briefs 
7:49 - At what stage do you need to get an attorney?
8:50 - Closing thoughts

In this episode of Patent Pending Made Simple, Jamie and Samar talk about the ins and outs of prototyping and whether you should have one before filing your patent application. They discuss the costs of prototyping, how it can help you in the product development process, and what you should consider before prototyping your invention.

Summary

The conversation discusses whether a prototype is necessary before filing a patent application. It is clarified that there is no legal requirement to have a prototype before filing a patent application as long as the invention is described in sufficient detail. However, prototyping can be beneficial in working out kinks in the invention and discovering potential changes that may need to be made. The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.

Takeaways
There is no legal requirement to have a prototype before filing a patent application.
Prototyping can help work out kinks in the invention and discover potential changes.
The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.

Chapters

00:00 Introduction and Background

03:49 Is a Prototype Necessary Before Filing a Patent Application?

07:34 The Benefits of Prototyping in the Patent Process

10:17 Factors to Consider When Deciding to Prototype Before Filing a Patent Application

In this episode of Patent Pending Made Simple, Jamie and Samar interview Stephen Key, one of the foremost experts in the world of patent licensing.  They discuss the patent licensing process, the role of a provisional patent application in that process, steps to bringing an idea to market, prototyping, prior art searches, and so much more!

Summary
Stephen Key, a patent licensing expert, shares his insights on how to protect and commercialize ideas. He emphasizes the importance of focusing on the benefits of an idea rather than just the features. Key recommends starting with a Google search to see if the idea already exists and then reaching out to companies that may be interested in licensing the idea. He suggests using tools like provisional patent applications, sell sheets, and videos to test the market interest before investing in prototypes. Key also discusses the importance of teamwork with patent attorneys and agents to create a valuable patent.

Takeaways
Focus on the benefits of an idea rather than just the features.
Start with a Google search to see if the idea already exists.
Reach out to companies that may be interested in licensing the idea.
Use tools like provisional patent applications, sell sheets, and videos to test market interest before investing in prototypes.
Work with patent attorneys and agents as a team to create a valuable patent.

00:00 Welcome to the Patent Pending Made Simple Podcast
00:15 Introducing Stephen Key: The Patent Licensing Expert
00:48 Stephen's Journey: From Ideas to Innovation
03:16 Demystifying the Patent Process for Inventors
04:35 The Initial Steps of Bringing an Idea to Market
07:12 Licensing Ideas: Stephen's Strategy for Success
08:42 Prototyping and Testing: Essential Steps Before Patenting
11:38 The Power of Provisional Patent Applications
14:05 Testing Your Invention in the Real World
17:17 Stephen's Advice on Prototyping and Filing for Patents
19:55 Navigating Patent Applications: Insights and Strategies
20:40 The Importance of Matching Claims with Business Objectives
22:10 Leveraging Patents as Negotiation Tools
23:29 Crafting Patents with Manufacturing and Detail in Mind
27:01 The Role of Prior Art in Shaping Patent Strategy
27:28 Building a Strong Team Beyond the Patent
28:28 A Real-World Example: Overcoming Prior Art Challenges
33:32 The Art of Patent Writing: A Collaborative Approach
36:55 Closing Thoughts and Appreciation

What is the difference between a patent and a license?
In this episode, Jamie and Samar discuss the differences between a patent and a license.  Topics include:

• Key differences
• Do you need an issued patent to get a licensing deal?
• Are there benefits of securing a licensing deal during the patent pending phase?
• Overcoming fears and uncertainties around licensing an invention
• What is a license (a contract that allows someone to use your patented invention in exchange for payment)
• Licenses can be exclusive or non-exclusive
• Most common patent licensing deal structures (lump sum payment, royalty rate per unit sold, percentage of profits)
• Finding potential licensing partners
• Tips for writing a patent application with licensing in mind (understand potential partners’ portfolios, draft claims accordingly)

Timestamps:
0:00 - Introduction
2:30 - Do you need an issued patent to get a licensing deal?
5:15 - Overcoming inventor fears about licensing
7:00 - Defining what a license agreement is
10:30 - Exclusive vs. non-exclusive licensing
12:45 - Typical licensing payment structures
15:00 - Finding potential licensing partners (teaser for future episode)
17:30 - Writing patents with licensing in mind

Happy Thanksgiving to all! On today's episode, Jamie and Samar discuss the top mistakes that inventors make in writing and filing their provisional patent applications. For show notes, visit: https://outlierpatentattorneys.com/top-mistakes-provisional-applications

In this episode of the Patent Pending Made Simple Podcast, Jamie and Samar discuss patent related deadlines, including: