Sixteen questions clients ask on a first call.
These are the questions clients ask on a first call. Where the honest answer is unhelpful, we say that rather than dressing it up.
Patents
What rights does a patent give me?
A patent gives you the right to stop others from making, using, offering for sale, selling, or importing your invention for the term of the patent.
It does not give you the right to practice your own invention. Someone else's patent may still cover a component of what you built. Freedom to operate is a separate question from patentability, and it takes a separate analysis.
Do I need a patent attorney, or can I file myself?
You may file your own application. The risk is structural rather than clerical: a patent is only as broad as its claims, and no new matter can be added after the filing date.
Two years into examination you will want to amend a claim to get around a reference the examiner cited. Whether you can depends entirely on what your specification already described on the day you filed. That is the failure we saw most often from the examining side, and it cannot be fixed afterward.
What is the difference between a provisional and a non-provisional patent application?
A provisional application secures a filing date and permits the phrase "patent pending" for twelve months. It is never examined and never becomes a patent on its own.
A non-provisional application enters the examination queue and is the filing that can issue as a patent. A provisional only protects what it actually describes, so filing a thin provisional to postpone hard drafting decisions buys a date that may not cover the invention you eventually claim.
How long does it take to get a patent?
Preparing and filing a non-provisional application typically takes four to eight weeks from your first disclosure to us, depending on the complexity of the technology and how quickly you can review the draft.
After filing, the USPTO controls the schedule. First examination commonly arrives one to two years after filing, and total pendency to grant is frequently two to three years. Timelines vary widely by art unit, and some technology areas run considerably longer.
What does a patent cost?
Two separate costs apply, and treating them as one number hides where your money goes. Attorney fees cover searching, drafting, filing, and prosecution. USPTO fees are paid to the government for filing, search, examination, issue, and maintenance.
USPTO fees scale with entity size. Independent inventors and small companies frequently qualify as small or micro entities and pay substantially reduced rates, and a surprising number of applicants never find out. We check entity status before filing.
What is an office action, and is it bad news?
An office action is a written communication from a USPTO examiner explaining why some or all of your claims are being rejected or objected to. Most applications receive at least one.
Receiving one says very little about whether your application will issue. It opens a negotiation. The work is separating the rejections that are correct from the ones resting on a strained reading of your claims, then amending where amendment costs little and arguing where it does not.
Will a patent make me money?
No patent guarantees a commercial outcome, and anyone who suggests otherwise is selling something. A patent creates leverage in licensing, in fundraising, and in negotiation.
What that leverage is worth depends on your market, your competitors, and your willingness to enforce. Deciding whether the leverage justifies the cost is part of what we do before any filing.
What happens if I have already sold or published my invention?
United States law provides a one-year grace period running from an inventor's own public disclosure, sale, or offer for sale. Filing within that year keeps your own disclosure from being counted against you. It does not shield you from anything a third party independently published in the meantime.
Most foreign countries provide no grace period at all. A public disclosure before filing usually forfeits patent rights abroad permanently, so tell us about any disclosure early rather than after we start drafting.
Should I keep my invention as a trade secret instead?
A trade secret has no filing fee and no expiry date, but it only exists while you take reasonable measures to keep the information secret, and those measures cost something. It also gives no protection against a competitor who independently develops the same thing or lawfully reverse-engineers your product.
A patent requires publishing how your invention works, in exchange for a limited term of exclusion you can enforce. A process nobody can inspect from the outside is usually the better trade secret, and a product that ships and can be taken apart is usually the better patent.
Trademarks
What is the difference between a patent, a trademark, and a copyright?
A patent protects how an invention works, or in the case of a design patent, how an article looks. A trademark protects a name, logo, slogan, or other indicator that tells buyers where goods or services come from. A copyright protects original creative expression, including writing, music, images, and software code.
Most businesses end up needing more than one. The product is patented, the name on it is a trademark, and the manual and marketing copy are copyrighted.
Do I have trademark rights without registering?
Using a mark in commerce creates common-law rights, but only in the geographic area where you actually sell. A competitor two states away can adopt the same name without infringing anything.
Federal registration extends presumptive rights nationwide, puts your claim on a public register competitors have to clear around, and unlocks enforcement tools unregistered marks do not have. For any business planning to grow past its current footprint, registering early costs far less than renaming later.
Does registering an LLC or buying a domain name give me trademark rights?
No. Forming an entity with a state and registering a domain with a registrar are administrative acts. Neither office checks whether your name conflicts with anyone's trademark, and neither grants you rights in the name.
Businesses discover this in an unpleasant way: they incorporate, buy the domain, print the packaging, and then receive a demand letter from a company that registered the mark years earlier. A clearance search before the launch is the cheap version of that conversation.
How long does trademark registration take?
An uncontested federal application commonly takes around a year from filing to registration. Several months pass before an examining attorney reviews it at all.
An office action, a published opposition, or an intent-to-use basis awaiting proof of use will extend that. Applications filed on intent to use do not register until the mark is actually used in commerce and a statement of use is accepted.
What does it mean when my trademark is refused?
A refusal is a written objection from the examining attorney, and it carries a response deadline of three months. You can buy one three-month extension, but only by filing the request and its fee before the original deadline runs out. Applications filed through the Madrid Protocol get six months and cannot extend at all. Missing the deadline abandons the application.
Most refusals fall into a few categories: likelihood of confusion with an existing registration, a finding that the mark merely describes the goods, or a problem with the specimen showing use. All three are usually answerable with the right evidence and argument.
Can I trademark a common word?
Often yes, provided the word is not describing the goods you sell under it. Marks are judged on a spectrum: made-up words receive the strongest protection, arbitrary words applied to unrelated goods are strong, suggestive marks are protectable, descriptive marks require proof of acquired distinctiveness to reach the Principal Register, and generic terms can never be registered.
APPLE for computers is arbitrary and strong. APPLE for apples is generic and cannot be registered at all.
How do I keep a registration once I have it?
A declaration of continued use falls due between the fifth and sixth years after registration. After that, the year before every tenth anniversary needs a combined declaration of use and renewal. Missing a deadline opens a six-month surcharge window, and missing that cancels the registration.
Rights also erode through non-use and through tolerating infringement. A mark you never police stops distinguishing your goods from everyone else's, which is the entire basis of the right. We docket the deadlines and watch the register for encroaching filings.
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