intellectual property

Do it yourself (DIY) Patents

Many a times I have come across inventors who believe they have the necessary skill sets to write and prosecute their own patent applications after reading patent-it-your-self guides. After all, most patent attorneys were once engineers themselves, hence no reason for a bright engineer to not go ahead and file the application himself. Also, who better understands the invention besides the inventor himself, right?

Well-usually not. The important thing to consider are details in a patent application. In many instances a patent prosecutor must not only have the technical skill set but also the legal back ground. Any errors and omissions can count heavily against you and make the difference between getting a granted application or refusal upon refusal in the prosecution stage.

Furthermore, the most important focus on any application is upon the claim set. The claims are where a patent’s protection comes from. Claims that are too narrow may be worthless, whereas, claims that are too broad may infringe on other patents. Patent claims are one of the most essential element of any application, and – as being a hybrid of technical and legal language -- are significantly difficult to craft. It is an art mastered only after a great deal of experience, and only with a continuous monitoring of the ever-changing landscape of patent law. Experience in writing patent claims is a key difference between a good patent attorney and a DIY inventor.

From a legal stand point, as well as from an investor/competitor stand point, claims are heavily focused upon. The USPTO reviews the claims to determine novelty/non-obviousness. The courts look at claims to determine infringement. Potential investors look at claims when deciding whether the invention is worth investing into. Competitors looks at claims when deciding if their invention would be too similar.

Therefore, the next time you are thinking about drafting your own patent application, after reading a few DIY guides, remember that a little knowledge is never sufficient to become an expert. It is best to seek the guidance of someone practicing in/familiar with the field to attain the most favorable results. 

Contact us today for a 30-minute free consultation on how we can assist in fulfilling your patent needs.

Trademark the Business Name or Logo?

Trademarks protect brand names- things like your business name and your logo that you put on your products so that your customers can associate them with you. For a really big business, their brand is their business and the cost associated with registration is small in comparison. Hence, for a big company it is a no brainer to register all their branding- business name and logos included.

But smaller businesses are often working on a limited budget. So, many business owners decide that they want to limit their registration to a single trademark, and have to decide between registering their business name or their logo.

Registering Your Business Name

If, you have come to the conclusion, that you would only like one trademark registration, usually, I recommend registering your business name. A business name should be registered with standard marks, meaning that your registration covers your name regardless of the font and any stylistic or graphic elements used. This gives you broad protection and prevents an infringer from claiming no confusion would be likely because its mark uses a different font, etc.

Registering your business name with a standard character claim protects you against any use of the name, inside or outside of a logo or design. And for many businesses, their name is the most important aspect in need of protection. After all, your name is what identifies your business. And if your logo is minimalist, the other visual elements may not be that memorable anyway.

The downside of registering your business name alone is that it offers no protection for the design elements of your logo. You still may have common-law rights to your logo, but you would lack the important benefits of trademark registration. Another business could begin using a similar logo with a different business name, and you may not have many avenues to stop it from doing so.

Registering Your Logo

If instead you decide you would like your protect your logo, the advantage of registration is that it protects both the design elements of your logo and your business name (assuming that your logo incorporates your business name). However, there are many disadvantages.

Firstly, your protection for your name will be somewhat weakened. Another business seeking to register a logo with a similar name can argue, under the likelihood of confusion standard, that such confusion would not arise because of the stylistic/design differences between the two marks. Such an argument can succeed, particularly if your business name might be considered descriptive of the business you are in.

Another potential problem is that logos are fluid and can change over time. Even the largest corporations rebrand and modify their logos over time. One example would be Pepsi, that has rebranded their logo over the years. When your logo changes, your old logo trademark registration is not worth much. Now you have to file a new registration for your new logo. Your old registration, if it was in use for fiveyears, may have become incontestable, greatly strengthening it in legal disputes. Your new registration will not have the same protection.

For the above stated reasons, I usually recommend that my clients register their business names-if they only want to file one registration and cost is critical. An exception might be if their name could run into a conflict that their logo would have a better chance of avoiding, or if the design element of their logo is critical or especially distinctive. However, even if you really want to protect the design element of your logo, I would strongly suggest looking into registering both your logo and your business name. If you have any questions about the costs vs. benefits, please get in touch and our firm would be happy to answer them!