Patent Litigation

When an individual inventor or a company is granted a patent, it means that they have the legal right to prevent others from benefitting from their hard work. Any competitor that is making or selling an infringing product may be sued by the patent holder.

Litigation is always a risky, expensive and time-consuming process. Nonetheless, it also is a critical component of protecting intellectual property rights. When two parties enter into a serious dispute, sometimes a lawsuit is the only way to settle their differences.

If you are a patent owner and you believe that your rights are being infringed by a competitor, then contact Williams IP Law to learn more about your legal rights and options.

What Is Patent Litigation?

This type of action is a lawsuit that is filed in civil, rather than criminal, court. Usually, these types of lawsuits are filed when someone who holds a patent believes that another person is using their invention without permission.

Keep in mind that litigation is not the first step in the process when infringement is suspected. It is common for a lawsuit to be filed only as a last resort after the alleged infringer absolutely refuses to acknowledge or address the concerns of the patent holder.

Most patent litigation matters only come to a lawsuit after months of back and forth between attorneys. Once a lawsuit is filed, it may be months, and most likely years, before the matter is resolved.

How Does Patent Litigation Work?

Neither party is likely to enter the patent litigation process lightly. Typically, a lawsuit only becomes necessary when both parties have dug in their proverbial heels, with both sides insisting that they are the rightful owner of the technology at issue.

Like other civil lawsuits, these matters begin with the filing of a Complaint by the plaintiff, who usually is the patent owner. Then, the defendant is required to file an Answer.

What follows is usually many months of research, depositions and discovery. It may be necessary to sift through thousands of documents, depose critical witnesses and locate experts who can help to shore up either side of the case.

Frequently, the claims in the lawsuit come down to whether or not the patent is valid. The patent owner naturally claims that their patent is valid while the attorney for the defendant must argue why the patent is invalid. This can be a complex determination that rests on detailed knowledge of technical and patent-related matters.

This is a complicated and time-consuming process. However, it’s also a critical component of any patent lawsuit. In fact, many of these lawsuits are settled at the discovery stage because some evidence or testimony comes to light that illustrates the validity of the claim of one party or the other. There may even be a mountain of evidence proving the claims of one party.

Even if such evidence never comes to light, this stage of the lawsuit can be a war of attrition. One party or the other may conclude that continuing the fight just isn’t worth their time and money. Occasionally, both parties reach this decision and come up with a settlement agreement that at least partially satisfies everyone.

Will Your Case End up in Court?

Like other civil litigation matters, most patent lawsuits never make it to their court date. If your lawsuit does go the distance, this means significantly increased expenses for both parties. However, if they are unable to reach any kind of accord before the trial begins, they are left with no other choice.

Do You Need Patent Litigation?

Whether you are an individual inventor or work for a company that owns an important patent, then it is crucial for you to protect your rights. Unfortunately, this sometimes means being faced with the decision to file a patent lawsuit.

Given that such litigation is costly, complicated and time-consuming, the representation that you choose matters. It’s essential that you seek legal counsel with the right kind of knowledge and experience to see you through the process from beginning to end.

At Williams IP Law, our legal professionals work with inventors every day. Not only do we help people and companies to obtain the intellectual property protection that they need but also we represent them when it’s time to enforce their rights.

With considerable patent litigation experience, Williams IP Law is the firm that you need when you’re concerned that your intellectual property rights have been violated.

Patents 101: Patent Thicket’s

What is a patent thicket and how does it affect you?

If you have ever seen an overgrown garden, then you probably know what a thicket is. That tangled mass of brush and branches looks as if it would be impossible to sort out. Pull on one branch and a dozen others might come along with it.

A patent thicket is a lot like the thicket in a neglected garden. It’s a cluster or grouping of patents that are more or less dependent upon each other. When a single entity constructs a thicket of patents it can be argued that they are doing so in an effort to prevent competitors from entering the market. Alternatively, several entities that are all in the same or a similar industry can create a patent thicket as they all compete to own the most innovations.

Notible Patent Thicket

One of the more recent and recognizable patent thickets concerns smart phone technology. The cell phone industry has a lot of major players including Apple, Motorola, Google, Samsung, HTC, Nokia and others. Each of these companies continuously files patent applications aimed at protecting even incremental improvements in their technology. At the same time, they are busily filing lawsuits against each other. For instance, the “swipe to unlock” feature that is common on many smart phones is the subject of U.S. Patent No. 8,046,721 to Apple. However, this feature is found on the smart phones of many other manufacturers. Some of those manufacturers have doubtless licensed the right to use the technology, but others may have simply made use of it without asking permission. It’s behavior like that which leads to lawsuits.

In the cell phone technology field alone there are thousands of patents. Each time an inventor makes an improvement a new patent application is filed. Imagine that a new manufacturer wants to get into the game. They have some unique, innovative ideas, but they’re going to have to borrow some technology from Apple, Samsung, Google and others to get the job done. After already pouring perhaps thousands or millions of dollars into their own invention, this new entrant to the industry is faced with having to make licensing deals with all of these heavy-hitters, some of whom may not agree to let the upstart use their technology at any price.

Ugly Side of Patent Thickets

Faced with this kind of daunting task, many entrepreneurs decide that the effort simply isn’t worthwhile. They can’t come to terms with the big corporations who ask for ridiculous amounts to use their technology, and any product they bring to market is certain to infringe a number of patents which will undoubtedly lead to lawsuits.

That’s why economists and inventors tend to get concerned when they see a patent thicket. There’s a fear that all those closely related patents may stifle creativity. However, there may be other ways to capitalize on an invention that’s aimed at technology where a patent thicket exists. With the help of an experienced intellectual property attorney it may be possible to explore other avenues for getting a new innovation off the ground.

If you need any patent assistance in Texas please contact the Law Offices of Jeff Williams for a free intellectual property consultation.

4 Common Patent Mistakes

The United States patent system is arcane and convoluted. Its intricacies are boundless, sometimes leaving even seasoned patent attorneys scratching their heads.

Although the processes for filing a patent application and obtaining an issued patent are complex, it is almost always a worthwhile endeavor. This is because a patent grants the owner the exclusive right to produce and sell their invention.

Unfortunately, many mistakes are commonly made throughout the patent prosecution process. Avoiding these mistakes helps to ensure that your intellectual property gets the protection it deserves.

Let’s examine some of the most common mistakes that are made in connection with patent applications.

Waiting Too Long to File

The process of obtaining patents is time sensitive. Waiting too long to file an application may mean that the inventor entirely misses out on the opportunity to obtain a patent.

The U.S. patent system is a “first to file” system. This means that the first person to file an application for an invention has the right to obtain patent protection. Also in play is the one-year grace period that is available under U.S. law.

This grace period makes it possible for a company or individual inventor to market, sell or otherwise publicly disclose their invention up to one year before they file a patent application. For example, if you announce a new product at a trade show in June of 2021, you’ll need to file a patent application in the U.S. covering that product before June of 2022.

The problem with publicly announcing an invention and filing a patent application subsequently is that someone else might steal your idea. If they are able to file a patent application for your invention before you do, then they may be legally entitled to a patent.

This is bad enough, but here is an additional reason to consider filing a U.S. patent application before public disclosure of your invention. Patent protection may not be available in many foreign countries if your product was publicly announced before a patent application was filed. If you expect to have an overseas market for your product, then it’s smart to get a U.S. patent application filed as one of your first steps.

Forgetting Deadlines

It’s vital that you file a patent application before publicly disclosing your invention, but that’s not the only deadline that it’s necessary to bear in mind.

For instance, examiners at the U.S. Patent and Trademark Office minutely examine the claims of each patent application. These claims are compared to the claims of existing patents and patent publications. If the examiner determines that the claims of your patent application are too similar to the claims of an existing patent or publication, then an Office action is issued.

The applicant has an opportunity to respond to these Office actions with amendments and arguments, but it is essential that this is done within the deadlines. When you receive an Office action, pay special attention to the issue date of the document. Typically, you will need to respond to the Office action within two or three months of this date. Extended deadlines are available, but you have to pay increasingly expensive extension fees depending upon when you respond. If you fail to respond to the Office action by the final extended deadline, your patent application will be abandoned.

Another deadline to be aware of is the deadline to file a non-provisional or foreign patent application. If you file a provisional patent application in the U.S., then it is necessary to file a non-provisional patent application within one year of the filing date of the provisional patent application. Similarly, foreign patent applications must be filed within one year of filing a provisional patent application or a non-provisional patent application that does not claim priority to a provisional patent application.

Inaccurate or Vague Descriptions

It’s an unfortunate reality that many patent applications are filed without including sufficient detail. This makes them vulnerable to cancellation or other issues that may make the patent unenforceable. Accordingly, it is imperative that the invention disclosure be as precise and detailed as possible. Accurately describe each component, and ensure that you include drawings that fully illustrate the invention.

If drawings are included as part of the patent application, make certain that you include a brief description of the figures in the specification. This is a requirement of the U.S. Patent and Trademark Office.

Failing to Pay Required Fees

When inventors file patent applications without benefit of legal counsel, they frequently forget to pay the necessary fees. Examples of some fees include those that are due upon filing of the application. These include fees for filing, search and examination of the application. Additional fees may be due depending upon the number of claims that are included in the application. Failure to pay the fees within the designated time period will result in the abandonment of the application.

Ask Williams IP Law to Help with Filing Patent Applications

These and other common patent mistakes can be avoided when you work with a qualified intellectual property attorney. Your lawyer will use the invention disclosure that you provide to craft the application’s specification and claims. Thanks to training and experience, he can draft a patent application that provides a meaningful scope of enforceable patent protection.

If you want to make certain that your patent application is timely filed, appropriately detailed and doesn’t become abandoned through a failure to pay required fees, work with the patent prosecution professionals at Williams IP Law. Call us today to set up a complimentary consultation.

5 Patents that were made by mistake

Some inventions only come into being after months or years of innovation, research and development. Others come about quite by accident. In fact, some inventions that come about by accident are among those that are the most famous and enduring.

Here’s a look at a few of those inventions. Remember, when you’re creating something new, you don’t always arrive at your intended destination. Nonetheless, you just might find that you’ve invented something that is of benefit to everyone.

Post-It Notes

It’s hard to believe that Post-It Notes haven’t been a part of the office forever. Believe it or not, the now-ubiquitous little slips of paper that are equipped with just the right amount of adhesive first came on the scene in the 1970s.

In 1968, scientist Dr. Spencer Silver was trying to formulate an extremely strong adhesive, but his efforts unintentionally resulted in an extremely weak adhesive. Despite things not going according to plan, Silver suspected that his new invention was worthwhile. Unfortunately, his colleagues didn’t agree at first.

One of those colleagues eventually decided that the adhesive might be useful if it were applied to bookmarks. This colleague, Arthur Fry, worked with Silver to develop these adhesive bookmarks, and this later evolved into adhesive notes that could be written on.

Post-It Notes debuted on the market in 1979, and the rest is history.

Velcro

Swiss engineer George de Mestral was frustrated by the stubborn burrs that always stuck to his clothing and his pet’s fur when he was out on dog walks. Closer inspection revealed that the burrs were equipped with tiny hooks that enabled them to stick to almost anything with ease. Using this natural design as inspiration, de Mestral developed a new fastening system that was built upon this concept. Eventually, that fastening system was named Velcro, and it’s now familiar to people all around the globe.

Penicillin

Scottish bacteriologist Dr. Alexander Fleming was merely returning from vacation when he discovered cultures of Staphylococcus aureus in his lab. He’d intended to throw away those cultures before leaving for vacation, and when he examined them now, he found that some of them had died.

Fleming studied this development, only to learn that a certain fungus had grown within the cultures, and that this fungus had actually destroyed the bacteria. The fungus was a mold known as Penicillium notatum.

Fleming received assistance from Australian pathologist Howard Walter Florey and British biochemist Sir Ernst Boris Chain, who were responsible for isolating and purifying penicillin so that it could be prepared for clinical use.

Initially, Fleming called his discovery “mold juice” before deciding on the less objectionable name “penicillin. This accidental discovery has since saved countless lives.

Implantable Pacemaker

Irregular heartbeat is a health concern for many people, but an implantable pacemaker can help to regulate a strong, steady and predictable beat.

Implantable pacemakers are battery-powered devices that are inserted beneath a patient’s skin. As it delivers electrical pulses, the pacemaker induces the heart to beat in a regular rhythm.

Believe it or not, the implantable pacemaker also is an accidental invention. Engineer Wilson Greatbatch was hoping to invent a device that could record the rhythm of people’s heartbeats. However, during his experiments, Greatbatch employed a resistor in the circuit that was the wrong size. This caused the device to create intermittent electrical impulses that sounded a lot like the human heartbeat.

Pacemaker machines were already in use in medical facilities, but they were impossible to move, painful and inconveniently large.

Greatbatch soon learned that it was possible for his invention to be used to place electrodes directly to the heart’s muscle tissue, which would keep the patient’s heart beating in the appropriate rhythm. This meant that patients could benefit from a pacemaker without being stuck at the hospital.

Working with Dr. William Chardack and Dr. Ander Gage, Greatbatch made the pacemaker smaller and implanted it in a dog as an experiment. By 1960, the first portable pacemaker was implanted in a patient. He lived for an additional 18 months. Since then, the technology has been extensively refined and perfected.

Play-Doh

Most adults today grew up playing with Play-Doh, but this wasn’t always the case. In fact, Play-Doh wasn’t even a toy in the beginning.

Instead, it was a cleaning product developed by soap maker Kutol Products for use in households across the country. Kutol Products wasn’t doing well, and they were faced with going out of business by the end of the 1920s. Nonetheless, employee Cleo McVicker entered into a contract with grocery store chain known as Kroger to develop a wallpaper cleaner.

Using ordinary ingredients like flour, salt and water, Kutol Products produced a compound that could safely and efficiently clean wallpaper. This product kept the company afloat for a few decades, but sales were floundering again by the 1950s. McVicker’s son, Joseph, was inspired to re-imagine the cleaning product as a children’s toy.

Joseph’s sister-in-law, Kay Zufall, was a teacher, and she invited Joseph to bring the wallpaper cleaner to her classroom to see how the children played with it. After seeing how much the students enjoyed it, Joseph knew he had an idea that was destined for success.

The ingredients were altered, and Kutol Products established another entity, Rainbow Crafts Company Inc., to market Play-Doh.

When Play-Doh was introduced to a national audience on the Captain Kangaroo television show, history was made.

Take the Next Steps with Williams IP Law

Do you have an invention that you think is poised to be the next big deal? If so, then you need the guidance and advice of an experienced intellectual property attorney. Contact Williams IP Law today to schedule a free consultation.

Independent vs. Dependent Patent Claims

A patent application, as well as an issued patent, consists of multiple parts. These basic components may include drawings, a specification and an abstract.

However, it is the claims that are perhaps the most critical part of the patent.

What are patent claims? More specifically, what is the difference between an independent claim and a dependent claim?

Patent attorneys spend a great deal of their time learning to craft patent claims that will provide adequate protection for the subject invention. There is definitely an art to it, but it also is possible for the layperson to gain some insight into patent claims and why they are so important. In fact, it is a good idea for inventors and entrepreneurs to become familiar with patent claims so that they can help to approve proposed claims or suggest revisions that will help to clarify the protection sought in the disclosure.

What Are Patent Claims?

Non-provisional utility and design patent applications in the U.S. must contain at least one claim. Although design patents typically only include a single claim, it is not uncommon for utility patent applications to contain ten, 20 or even more claims.

The claims are an essential part of the patent. This is where the inventor spells out in detail what is being claimed by the invention and precisely what they want to protect.

In simpler terms, the claims define the scope of protection that a patent provides. This means that the claims may articulate both what the patent covers and what it does not.

Patent claims are written as a statement or description including technical facts and relying heavily on legal terminology to outline the invention.

Are Patent Claims Really that Important?

A seasoned patent attorney will spend a great deal of time working on the specification of the patent application, but he will put in even more effort when it comes to drafting the claims. This is because they are of primary importance to the issued patent.

The claims of an issued patent are what your competitors will look at when they are trying to determine what they can and cannot do if they want to create a competing product but don’t want to infringe your patent rights. The more specific your issued patent claims are, the harder it may be for your competitors to find a way to “design around” your rights.

Remember that a patent gives the patent owner or a licensee the exclusive right to make, sell, import, use or otherwise produce the technology covered in the patent. It is the claims that spell out exactly what is exclusive about this technology.

Patent claims similarly are crucial from a legal perspective. This is because it is the claims that will be examined by attorneys in a patent infringement lawsuit. As an example, the patent owner’s attorney will point out the specific scope of the patent claims and how the competitor’s product infringes these claims. It is the job of the accused infringer’s attorney to look for errors or holes in the issued patent claims that may demonstrate that the patent holder is not entitled to rights that are as broad as is being claimed.

If there are any errors in the issued patent claims, this can render the patent worthless. Accordingly, it is extremely important that patent claims are initially drafted with care and then amended with equal care during the process of obtaining a patent to ensure that no errors are introduced.

Independent and Dependent Claims

Most utility patents have a mixture of independent and dependent claims. The independent claims are those that stand on their own. In other words, they are not attached to the other claims. Accordingly, they do not refer to any of the other claims.

Independent claims follow a predictable format with a preamble and a list of all of the components that are necessary to define the invention.

It is common to see that the first claim in a patent is an independent claim. This claim sets a precedent with regard to the protection that the inventor is seeking. In general, independent claims are broader than dependent claims, with a view toward deterring infringers from finding a way to bypass the independent claim.

Three types of independent claims frequently are seen. These include a claim for an item, a claim for a method of making an item and a claim for a method of using an item.

Dependent claims rely either on an earlier independent or dependent claim. They are used to comparatively narrow the scope of the claims on which they depend. This type of claim additionally is used to further sharpen the focus on the protection that the inventor is seeking.

Some dependent claims even add nonessential characteristics or introduce trivial aspects and optional features that do not appear in the independent claim.

How Are Claims Written?

Claims are expressed in the patent as sentences, with each claim being a single sentence. The claims are consecutively numbered in ascending order.

This all sounds straightforward, but the claims actually can be pretty hard for a layperson to decipher. This is because claims must adhere to certain grammatical rules.

Accordingly, it generally is unwise for inventors or entrepreneurs to try to write patent claims. The rules are extremely tricky, and any mistakes can mean that any resulting patent is invalid.

Work with a Patent Attorney

The best way to ensure that any issued patent you own has a meaningful scope of protection is to work with a seasoned patent attorney like the professionals at Williams IP Law. When it’s time to protect your innovative technology, call Williams IP Law for competent and reliable drafting of patent claims.

Can you patent or copyright product packaging?

How important is the packaging for your product? Packaging not only protects the contents but also functions as a calling card for your business.

Consider how distinctive the shape of the classic glass Coca-Cola bottle is. It’s instantly recognizable around the world. Clearly, you want your packaging to make a similar first impression on your customers.

When packaging is really distinctive and unique, it is critical to protect it as proprietary intellectual property. In fact, many entrepreneurs are not aware that it is possible to protect their packaging with rights under patent, trademark and copyright laws.

Of course, it is appropriate to obtain intellectual property protection on the items that you manufacture as well, so make certain that you stay focused on all aspects of your business when it comes to intellectual property.

Design Patents

In the United States, a design patent is aimed toward protecting an ornamental design of an invention. To put it more simply, a design patent protects the appearance of an invention or product packaging.

Most people are more familiar with utility patents. These are patents that protect the functional or utilitarian aspects of an invention. Accordingly, they usually are directed to apparatus and methods. Design patents are something else because they protect the appearance of an item, which makes it the perfect choice for protecting a unique packaging style.

Let’s go back to that Coca-Cola bottle for a moment. The company obtained U.S. Design Patent No. D48160 in 1915 for their innovative design. More recently, U.S. design patents have been granted to Starbucks for coffee cups and coffee lids, to Kraft for a salad dressing bottle and to Chobani for their boxes for yogurt.

How do you know when you need to consider design patent protection for your company’s packaging? It’s always best to explore this with an experienced intellectual property lawyer. If you simply are using off-the-shelf cardboard boxes, you don’t need to be concerned about design patent protection. On the other hand, companies that develop and design entirely new and innovative packaging definitely need to take a closer look at their available options.

Trademark Protection

Businesses frequently choose a name, logo or other device that indicates the source of particular goods. One example of a trademark is “Coca-Cola.” However, trademark protection also may be granted to items of “trade dress.”

Trade dress refers to the overall image and appearance of a product. This can encompass numerous characteristics of packaging such as graphics, texture, color combinations, size and shape. Continuing with our Coca-Cola theme, the company has registered their bottle design as U.S. Trademark Registration No. 696,147.

A federal trademark registration for trade dress must meet certain standards. For instance, it cannot be functional and it has to be distinctive. When it comes to trade dress, “functionality” is a bit of a contradiction. After all, the Coca-Cola bottle possesses functionality in that it contains liquid. However, the U.S. Patent and Trademark Office is looking for something a little different with regard to trade dress. Namely, they are examining whether or not the applied-for trade dress is essential to the purpose or use of the product or if it might affect the quality or the cost of the product.

In the example of the Coca-Cola bottle, the shape of the bottle does nothing to improve the flavor of the contents, nor is it less expensive to manufacture. This means that the design is not functional.

Additionally, the bottle’s design is distinctive in that it helps to identify that it comes from a particular source.

Some trade dress is immediately and inherently distinctive. Other trade dress acquires distinctiveness through many years of use. It is always wise to work with an intellectual property lawyer to determine the distinctiveness of your company’s trade dress. When your trade dress is truly original, it’s wise to seek immediate protection.

Protection Through Copyrights

Creative expressions like books and songs are protected with copyrights. Product packaging may not be a film or a painting, but it can still be protected by a copyright.

Copyrights are fairly versatile, making it possible to protect things like the graphics, layout and two-dimensional text on packaging. Further, copyright registration may be obtained on the packaging itself if it possesses unique or creative three-dimensional components.

Before anything can be formally protected under United States copyright law, it is necessary for it to be fixed in a tangible medium. Moreover, the protected creation must be an original work of authorship. In the case of product packaging, this means that the packaging was not copied from someone or somewhere else and possesses some degree of inherent creativity.

In general, the Copyright Office’s requirements for creativity are relatively low. This means that it is fairly easy for almost any aspect of product packaging to be eligible for at least some copyright protection.

Take the Next Step

For too many entrepreneurs, protection of intellectual property is an afterthought. This is true not only for inventions but also for the packaging that they design.

If you have questions about patents, trademarks, copyrights and how they can protect your creativity and ideas, contact Williams IP Law today.

Why patents are useless

Most patents are useless. Does that sound like a nonsensical thing for a patent attorney to say?

It might at first glance, but the unfortunate reality is that many patents are so poorly drafted that they do not do an adequate job of actually protecting the subject invention. Other patents are worthless because they are aimed at inventions that are not marketable or products that are just too expensive to manufacture.

This means that an inventor could spend tens of thousands of dollars obtaining a patent that isn’t worth the paper it’s printed on.

That runs contrary to the hopes and dreams of most inventors who visualize being able to make back the money they spent on research, development and pursuing patent protection once they have a patent that they can monetize.

Patent attorneys have a rare perspective on this phenomenon. On an almost daily basis, we get to speak to inventors at all stages of the process. Many of them are hopeful and filled with dreams. These usually are the individuals who have not been through the process of obtaining a patent before. Maybe they don’t know much about the process. Perhaps they think that it will be quick and easy, and that they will soon recoup their expenses once they have a marketable product.

Other inventors are quite different. Feeling frustrated and cynical, they’ve been through the process before. What began as a hopeful venture eventually became an exercise in consternation. They got a patent, but it was expensive and painful to do so. Even with an issued patent, they haven’t been able to get their product off the ground.

Rare individuals have obtained patent protection and were able to successfully bring a product to market. They may have made their fortune through licensing deals, and they technically don’t have to work for a living anymore. What makes their patents different?

Reasons Why Patents Can Be Worthless

Why did the inventor who is feeling frustrated end up in this situation? Frequently, it’s because the invention just isn’t marketable.

Imagine you’re an inventor with a great idea. You feel a rush of exhilaration, and you want to be certain that no one steals your idea. Patent protection is essential, right? So the inventor rushes through the process, filing a patent application as quickly as possible.

However, it’s wise for the inventor to press the pause button instead of rushing forward. The most critical question to answer is: “Is this idea marketable?”

In general, this is not a question that a patent attorney can answer for you. An inventor probably knows more about the particular industry and customer base to which this product might appeal.

Or do they?

Too many inventors don’t take the time to research the market. In other words, it is essential to test the market before rushing into things like expensive prototypes and equally expensive patenting.

While the inventor may believe that they have solved a problem, it is critical to determine if others are looking for a similar solution. If the inventor skips this, then they won’t be able to license their invention, and crowdfunding efforts are likely to be for naught.

Another reason why a patent may be worthless is that the inventor lacks manufacturing knowledge. It’s imperative for inventors to possess manufacturing know-how or to work with someone who has this knowledge. This is because it is crucial to determine whether or not the invented product can be manufactured at a price point that people realistically will pay.

Many inventions are the victims of overdesigning. In fact, it’s not unusual for a patent to give little or no thought to manufacturing. Does a machine exist that can make that product? Can an existing machine be retooled to manufacture the invention? If so, how expensive will that be? Prohibitive costs may mean that no company wants to try to make the product, leaving the inventor to perhaps go it alone. Becoming a manufacturer is no small feat in itself. Most inventors just don’t have the budget for it.

When people apply for patents for products that no one wants or are too expensive to make, the only entity that makes money is the United States Patent and Trademark Office.

Is Your Invention Patent Ready?

Before you pay filing fees to the patent office, do your homework. A simple Google image search may be enough to tell you that your invention already exists. In order for any idea to be patentable it must be new and distinctive when compared to existing products.

You’ll also want to take steps to find out how much it might cost to manufacture your invention. Begin by looking for any similar or related products online. Amazon and Google can be helpful in this. How much are other products in this category selling for?

Then, try to contact U.S. manufacturers to obtain a quote, taking care to obtain a signed work-for-hire agreement first. You can learn more about manufacturing by viewing videos on YouTube or visiting factories in person.

For this next step, you’ll want to work with a qualified patent attorney. A prior art search in the records of at least the U.S. Patent and Trademark Office will uncover earlier patents and applications that may be the same as or similar to your invention. A patent attorney can help to put these prior art references into perspective. Does your invention infringe the subject matter of any of these patents? Having a legal opinion can help you determine whether or not it’s worth moving forward.

Take the Next Steps

Contact Williams IP Law today at (817) 225-6561 to schedule a free initial consultation with an experienced patent attorney.

4 Ways to Prevent Chinese Counterfeiters

The Counterfeit Epidemic

An ever-growing number of U.S. companies are seeing their products being ripped off online or in the various trade channels. One major contributor has been China. The counterfeiting industry there isn’t new. In fact, it’s been rampant there for many years. It’s has been admittedly difficult to police every product that comes out of China, but that doesn’t mean it’s impossible. With good intellectual property protection, and by following a few steps, it’s possible to reduce the flow of counterfeit goods coming out of China.

Steps to Protect Yourself

  • One of the most important steps toward protecting valuable intellectual property is to seek patents and trademark registrations in the U.S. and China. If every right of protection was an arrow, you want a quiver full of potential rights. The idea is to gain as many potential advantages you can. There have been some ingrained skepticism regarding the value of intellectual property protection in China. However, recently there have been some real changes in the way China looks to enforce intellectual property. China has made steady improvement in the enforcement of patent and trademark rights in recent years and in many ways, intellectual property rights in China are one of the strongest chances you may have to curtail counterfeiting.
  • In regards to trademarks specifically, a two-fold approach is recommended. We suggest that after you obtain a federal registration, you look to formally register the trademark with the respective national customs agency (China Customs – General Administration of Customs or GAC for short). The same strategy goes for the United States (US Customs – may register both Trademarks and Copyrights). Statistics show that of all the goods confiscated by Chinese Customs, most all of them involved trademarks registered in China and registered with Chinese Customs. It is important to register your marks with Chinese Customs to prevent the export of counterfeits.
  • Below is a simple timeline to go by for Chinese Customs registration. It can take around 14 months for a Chinese trademark to become registered. You need a registered mark prior to registering with Chinese Customs. Chinese customs may take anywhere from 3-4 months to complete the registration process. This means it can take at least 18 months to get full trademark protection in China. It is best not to wait.
  • Keep in mind that the Chinese trademark system operates on a first-to-file doctrine. This means that registration must occur prior to any enforcement. In the end, the U.S. and China customs will monitor incoming and outgoing shipments for counterfeit goods. The owner of the trademark registration is informed whenever counterfeit goods are found, providing an opportunity for the owner to cease the transportation of any counterfeit goods.
  • It’s also advisable for American companies to be very careful about who they are doing business with in China. Frequently, the perpetrator of counterfeit goods is in some way related to the legitimate product or business you are working with in China. Be it a distributor, manufacturer, retailer or someone who used to be connected to one of those business partners. These are most often the parties behind knock offs. Accordingly, it pays to not only develop a close relationship with these organizations, but also to keep a good handle on some portions of intellectual property. If you don’t provide business partners with all of the secrets to your success, then they will have a much more difficult time duplicating your product.
  • Monitoring the Internet for counterfeits is another essential component. Some companies ask employees to periodically check certain e-commerce websites to see if knock offs are being sold. When the task becomes too onerous to do in house, some organizations turn to an intellectual property attorney who can perform a monitoring service for them. This is frequently a smart move since the attorney probably has access to helpful tools that make monitoring the market much more efficient.
  • Of course, when that monitoring uncovers someone who is actually counterfeiting goods, it’s time to contact them with a cease and desist letter. This is sometimes all that is required to get the counterfeiting to stop. A U.S. intellectual property attorney may work in conjunction with an attorney in China to send the letter, backing it up with proof of patents and trademarks both in the U.S. and in China. Cease and desist letters sometimes result in a genuine apology and a promise to stop. However, the need to threaten legal action, like a lawsuit, may also be necessary if the counterfeiter is resistant.

It may never be possible to completely stem the flow of counterfeit goods coming out of China, but if U.S. owners and manufacturers do their part, it is possible to reduce that flow to a trickle. If you a need intellectual property litigation expert contact the Williams IP Law for a free consultation.