Patent Attorney Charlotte

Patent Attorney Charlotte

Are you looking for a Patent Attorney in Charlotte?

Here are some tips for finding a Patent Attorney that will fit your needs:
• Patent attorneys are subject matter specific based on their technical degree. For example electrical engineer, software, physics, biology, biochemistry, chemistry, computer science, or mechanical engineering, etc.
• Specific job experience can create subject matter expertise.

• Most patent attorneys are capable of filing patents on mechanical devices and/or systems.
• Small law firms focusing exclusively on intellectual property often provide specialized attention and service.

• Look for an entrepreneurial patent attorney (one who has his/her own inventions, issued patents or one who participated in starting a new business).
• In general you get what you pay for, avoid on-line legal service offerings.

Call now to for a FREE consultation with Patent Attorney Jeff Watson in Charlotte.


Patent Attorney Charlotte

How to find a Great Patent Attorney

Grell & Watson Patent Attorneys, LLC, 1800 Camden Road, Charlotte, NC 28203. (704) 625-7747‎ phone (678) 373-4746 fax

Jeff Watson , 3911 Carmel Acres Dr Charlotte, NC 28226. (704) 625-7747 phone (678) 373-4746 fax

By Jeff  Watson

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How to Find a Patent Attorney in Charlotte NC

How to Find a Patent or Trademark Attorney in Charlotte NC

Small law firms focusing exclusively on intellectual property often
provide the best attention and service for filing patent and trademark applications.

Patent and Trademark Lawyers are subject matter specific based on their technical degree(s) earned in college. Look for a patent or trademark attorney with a technical degree that matches your idea invention, such as electrical engineering, computer science, software, physics, biology, biochemistry, chemistry, or mechanical engineering, etc.

Work experience creates subject matter expertise.  Look for a patent lawyer who has relevant work experience to your idea invention.

Look for a patent and trademark attorney who has his/her own inventions, issued patents, trademarks or who has participated in starting a new business.

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at

To search the US Patent & Trademark Office for a Patent Attorney near you click the link below or visit US Patent Office and search for “OED Patent Attorney/Agent Search.” Next enter your city/state or zip code into the USPTO search engine and the engine will generate a list of Attorney/Agents near you. Use the criteria above to find a Patent Lawyer right for you. US Patent Lawyer Search

find patent attorney, find a patent attorney, trademark attorney, trademark lawyer

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How exactly to Create the Launch of an Article

If you’re duplicating documents in the net then most probably another pupil can do the really same. This is exactly why your intention in writing your MBA essay has to end up like the purpose of an university entrance essay. If provided the opportunity to choose the subject for the essay, it’s wise to pick one that is going to emphasize you as an individual so that as a pupil. Continue reading

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Which should you choose: Provisional; or Utility (non-provisional)?

What They Are and Aren’t


A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single rare exception noted below. It automatically expires after twelve months following the day of filing and cannot be revived. It does provide a priority date for concurrent later-filed utility (non-provisional) applications for the content that is in the provisional. This means that references that could defeat the later-filed application as to the matter in the provisional (but which could not defeat the provisional filing date) will now not be utilized to defeat the later-filed application. Further, it does not subtract from the twenty year term of the later-filed application unless it is truly converted as discussed below. While patent attorneys often speak of “converting” a provisional into a non-provisional, this is not usually an accurate description of the case (with a single exception), since the provisional has no life beyond its twelve-month term and “converting” is usually done by filing a non-provisional application that claims benefit of the filing date of the provisional. Thus, the provisional is primarily a means for delaying the filing of a non-provisional patent application, while still getting benefit of the earlier filing date of the provisional. (The single exception as to “converting” is that a provisional patent application can be truly converted with an extra processing fee if it has a least one claim, or is amended to contain at least one claim, but this process is rarely done, since now the term of the resulting non-provisional will be twenty years from the date of the provisional filing, thereby losing a year.) A provisional patent application requires a full written specification and all the drawing figures, but does not require claims. It is never examined (unless truly converted) other than to ensure that the proper papers are present. Lastly, a provisional patent application never sees the light of day and remains confidential, unless a non-provisional patent application (or a Patent Cooperation Treaty application — to preserve foreign filing rights — or a design application) takes priority to it.

Utility (non-provisional)

A utility (non-provisional) patent application, sometimes called a “regular” patent application or just a “patent application”, is a “real” application for a patent. It will be examined, and ultimately, through the examination process can mature into a patent. It’s “term” or life ends twenty years from the earliest priority date, which may be the date it is filed or the date that an application from which it takes priority benefit is filed. (See above for the effect of a provisional priority date.) A complete non-provisional patent application contains at least a specification, all the drawing figures and at least one claim. Claims are the meats and bounds of the invention, or in other words the deed to the owner’s intellectual property. The specification and drawings must disclose what is in the claims, but they do not comprise the invention, only the claims do. Twenty claims are paid for with the filing fee, of which three may be independent claims. (Independent claims stand alone. The remaining are dependent claims which refer to another claim and thus cannot stand alone.) There are various types of non-provisional utility patent applications, including the “parent” application and such “children” as divisional patent applications (occasionally the USPTO examiner requires restriction between more than one invention in the patent application; after proceeding with one selected invention, the other or others can be filed as divisionals), continuation patent applications (typically only a new set of claims to the original invention) and continuation-in-part patent applications (the original patent application plus some new matter added — this is the only way to add new matter to a patent application).

Which Costs Less

Many people think that a provisional patent application is less costly way to get a patent than a non-provisional patent application. However, this is not the case. Again, because the provisional expires and a non-provisional must be filed to take priority to the provisional, this two-step process is more expensive in the long run. It is true that a provisional patent application is the least expensive way to get “Patent Pending” status, but that will expire after a year unless the non-provisional is filed within that time. Further, in order to be fully enabling and not just a waste of time and money, the provisional must contain everything that a non-provisional would include except the claims. That constitutes about ninety percent of the cost of a patent. Later, the non-provisional that is filed taking priority to the provisional will cost about twenty to thirty percent more. Thus, the provisional route is the more expensive route to obtaining a patent. Notwithstanding, as noted below, there are sometimes good reasons to file a provisional patent application and incur the additional costs.

How to Select

When to use a provisional

There are at least three good reasons to file a provisional patent application: 1. When an invention is fully definable, but will likely require further improvements that can be accomplished within a year, that is a good time to file a provisional patent application on the existing invention. The key is that the improvements must be completed within a year so that the non-provisional can be filed with the improvements during the pendency of the provisional so that priority as to the matter of the original invention defined in the provisional can be taken before the provisional expires. 2. On occasion, someone has an invention that they merely want to sell or license and are certain that they will have found someone to buy or license within the one-year pendency of the provisional patent application. Alternately, if they do not find someone, they plan to let the provisional patent application expire without filing a non-provisional patent application and incur no further expenses.  3.  On occasion, someone has an idea or invention that they want to present, like at a trade show, competition, sales pitch etc, where the date of the presentation is approaching quickly.  In this case, preparing and filing the informal provisional application quickly can get the inventor patent pending status in time for the presentation.  This would be an added expense in the long run, but would get patent pending protection in place quickly and allow the inventor to spend more time on utility (non-provisional) patent application that will be filed.

When to use a non-provisional

Pretty much any other reason than those three above will be a good reason for filing a non-provisional. Namely, if you want to get a patent and reason 1 above doesn’t apply, you should immediately file a non-provisional patent application and get the process going.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Jeff Watson is a Patent Attorney practicing in Charlotte, North Carolina.

Grell & Watson Patent Attorneys, LLC
3911 Carmel Acres Dr.
Charlotte, NC 28226
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PCT – Foreign Patent Filing Using the Patent Cooperation Treaty

If you intend to file a patent in multiple countries other than the US, but are closing in on the one year date from the filing of your United States patent application and aren’t sure yet which countries to file in, the Patent Cooperation Treaty (PCT) may be your best option. The traditional patent system requires filing a patent application for each country for which protection is sought, with a few exceptions, within twelve (12) months of the filing date of the initial application. This means the applicant must draft and file an application for each country where a patent is desired. This requires significant resources to be spent for translations and for patent attorneys in each of the various countries and fees for each of the countries, all while the applicant is unsure if the first patent will even issue. Once filed in foreign countries, formal examination of the patent is then carried out in each of the countries individually. Thus, a more efficient system was needed for filing international applications, which resulted in the Patent Cooperation Treaty patent application.

The PCT is administered by the World Intellectual Property Organization (WIPO) and has other benefits than simply delaying the time for filing in a foreign country. It also may save the applicant money and the patent attorney time. Although these latter two reasons alone are usually enough to convince an applicant to use the PCT system, additionally, the PCT application allows you to delay the costs associated with foreign prosecution from twelve (12) months up to at least thirty (30) months from the date of your original US application. This allows an inventor time to ensure his U.S. patent issues and time to test or develop a market for the applicant’s goods and/or services. After the thirty (30) months, you can then decide if you wish to pursue an application in any of the 137 contracting states of the PCT. Further, if you filed a Provisional Application in the United States, you would normally be required to file a non-provisional patent application within twelve (12) months. If you missed this date prior to the coming of the PCT, then you would have lost the ability to patent the subject matter within the provisional application. With the use of a PCT filing, you can file your PCT application within twelve (12) months and list the U.S. as a Designated Office (DO). Your U.S. patent application then only needs to be filed before the thirty (30) months deadline of the PCT. Thus, your application and filing date back to your original provisional application are both retained.

In effect, the PCT allows you to delay the selection of countries in which you would like to file and their associated costs for up to thirty (30) months. Thus, you essentially gain an extra eighteen (18) months to make your decision in which foreign countries you wish to file. In addition to the ease of filing, more time to make final filing decisions and holding your geographic filing options open for a longer time, there are other reasons one would consider filing a PCT application. The publication of the application can often provide much needed publicity for the invention. This may be particularly important for new technologies, universities, small businesses and/or start up companies. Additionally, a single search report and considered examination report affords the opportunity to subsequently advance prosecution in many foreign states with the effort of a single Office Action Response.

Although there is no such thing as a truly world wide patent, the PCT facilitates filing in multiple countries by providing a single office at which to file your application. The PCT system is a patent filing system, not a patent granting system and thus, there is no granted PCT Patent. Specifically, the PCT system provides for an international phase during which the application is filed, an international search is conducted, and the international application is published, and optionally an international preliminary examination. After the international phase, the application is sent to each Designed Office (DO) or Elected Office (EO) and, upon payment of filing fees and/or provision of translated documents, the decision on granting patents is taken exclusively by the national or regional offices in their respective national phase. Each of these steps will be addressed in greater detail below.

The Request – The first step is the filing of the Request, which means that a PCT application is being filed with a request for a search. The PCT application, also known as an international application, is filed at a single Receiving Office (RO), thereby reducing the duplication of efforts both for the applicants and the national patent offices. If you are a citizen or resident of the U.S., you may file either with the United States Patent and Trademark Office (USPTO) or directly with the International Bureau (IB) at the World Intellectual Property Organization’s headquarters in Geneva, Switzerland. If you file the U.S. application first, you then have up to twelve (12) months in which to file the PCT application. Alternatively, if you file directly with the International Bureau, you may later elect the U.S. as a Designated Office (DO). Thus, it is beneficial to file the U.S. application first and gain an extra twelve (12) months before filing the PCT application, although the thirty (30) month time period still runs from the time of filing of the U.S. application. If you file your PCT application within twelve (12) months of filing your U.S. application, you are accorded the same filing date on the PCT application as you were on your U.S. application. That is, your PCT application will be treated in all countries in which you later file as if it was filed on the same day as your U.S. application. Further, your PCT application may automatically be designated to all 137 countries and as an added benefit, you only need to file in one of the approved languages (although translations may later be required). After the filing of the PCT application, an international search is conducted.

The search is conducted by the International Search Authority (ISA) to find the most relevant prior-art documents regarding the application. Relevant prior art, under the PCT, can briefly be described as consisting of everything which has been made available to the public anywhere in the world by means of a written disclosure, including the Internet, drawings and other illustrations. The International Search Authority (ISA) also checks unity of invention, the title of the application, the abstract of the application and the selected figure of the application. Additionally, the International Search Authority (ISA) authorizes rectification of obvious errors if the error is in any part of the international application other than the request or in any paper submitted to the ISA. After the international search is conducted on the application, an International Search Report (ISR) and an International Preliminary Report on Patentability (IPRP) will be issued.

The ISR (International Search Report) – The International Search Report (ISR) is normally provided by the International Search Authority (ISA) to the applicant three (3) months from the date of receipt of the search copy by the ISA, nine (9) months after filing the application in the event of a first filing, or sixteen (16) months after the priority date in the event the application claims priority to a previous filing. The International Search Report (ISR) contains the International Patent Classification (IPC) for the invention, indications on the technical areas searched, indications relating to any finding of lack of unity, a list of relevant prior art documents and indication relating to any findings that a meaningful search could not be carried out in respect to certain, but not all, claims. The International Search Report (ISR) is published together with the international application (or as soon as possible afterwards). Any relevant prior art located will be addressed in the International Preliminary Report on Patentability (IPRP).

The IPRP (International Preliminary Report on Patentability) – The International Preliminary Report on Patentability – Chapter I (IPRP – Chapter I) contains an initial non-binding opinion regarding the patentability of the claims of a PCT application. Specifically, the IPRP gives an opinion as to the novelty, inventive step (non-obviousness) and industrial applicability (narrowed utility) of an application. The IPRP – Chapter I will be sent along with the International Search Report (ISR) to the applicant. Although there is no formal procedure for responding to the IPRP – Chapter I, once it is received, the applicant may submit informal comments on the written opinion to the International Bureau, which then accompany the application to the Designed Offices (DO).

Upon receipt of the ISR and IPRP, a patent applicant has the opportunity to amend their claims (typically to overcome the references found in the ISR and the opinion as to the claims in the IPRP). This amendment via Article 19 must be accomplished within the later of two months of receipt of the ISR or 16 months from the priority date. Notwithstanding, even if not timely filed, the amendment may still be permitted if the technical preparation for publication of the application have not been completed.

All of the preceding processes are typical to almost all PCT applications filed within the US. However, after the International Search Report (ISR) and the International Preliminary Report on Patentability issue, an applicant may choose PCT Chapter I in which the IPRP and any informal comments by the applicant, although initially confidential, are sent to all Designated Offices (DO) and become publicly available after thirty (30) months from the priority date. Before the expiration of thirty (30) months from the priority date, the applicant may also enter the national phase as described in greater detail below. Alternatively, the applicant may choose to enter PCT Chapter II via filing a Demand.

The Demand – An applicant may optionally choose to proceed with PCT Chapter II. In this case, the applicant demands an International Preliminary Examination (IPE), the fees are paid and the International Preliminary Examination Authority (IPEA) issues a preliminary, non-binding opinion on novelty, inventive step (non-obviousness) and industrial applicability (narrowed utility) referred to as the International Preliminary Report on Patentability – Chapter II (IPRP – Chapter II). The International Preliminary Examination (IPE) does not, however, give an opinion on patentability according to the national laws of the various Elected Offices (EO) due to the differentiation of the laws. One of the major advantages of taking the Chapter II route is that the applicant is provided an opportunity to amend the entire PCT application under Article 34 before entering the national phase in the elected Offices, versus just attaching informal comments to the PCT application. Article 34 permits not only amendment of the claims, but also of the drawings and written specification, items that are not permitted under Article 19.

Further, the applicant also has the option to reply to the opinion and possibly have an oral interview with the Examiner. The International Preliminary Report on Patentability – Chapter II (IPRP – Chapter II) should be established by the International Preliminary Examining Authority (IPEA) within the latest of twenty-eight (28) months from the priority date, eight (8) months from date of payment of fees or eight (8) months from the date of receipt by International Preliminary Examining Authority (IPEA) of the translation. Once the IPRP – Chapter II is completed, the International Preliminary Examining Authority (IPEA) sends copies of the report to the applicant and to the International Bureau (IB). The International Bureau (IB) then forwards copies of the report and any required translations to the Elected Offices (EO) in which the applicant wishes to obtain a patent. Once the International Preliminary Report on Patentability – Chapter II is received at the Elected Offices, the National Phase begins.

National Phase Entry – National Phase begins as either Chapter I or Chapter II, dependant on route, and ends with the filing of the application in the selected countries. National Phase begins no later than thirty (30) months from the priority date for the PCT application (except for European Patent Application – 31 months – and a Canadian Patent Application 42 months with surcharges) and the applicant may select any or all of the 137 countries. This selection typically depends on which markets are most viable and where there is the highest likelihood of counterfeiting and/or infringement. National Phase entry simplifies many of the requirements of the Designated Offices (DO) or the Elected Offices (EO). Specifically, all priority documents will be transmitted by the International Bureau, the drawings will be transmitted to the Designated Offices (DO) or the Elected Offices (EO) unless there is text in the drawings which requires translation and very few Offices require legalized or certified translations and simple translations generally suffice. Once in the National Phase, the prosecution of the patent begins and progresses as if the applicant had filed in that country originally. This means obtaining foreign counsel will likely be necessary and the application is subject to the formalities and examination of the Designated Offices (DO) or the Elected Offices (EO). Assuming all goes well, a foreign patent will issue in each of the offices as time progresses.

If you intend to file for patent protection in multiple countries, the PCT Application is often the best route to take to begin the process; however, it is recommended that you contact an attorney to discuss your options and obtain a legal opinion before making any final decision.

If you have any questions about this article, are interested in trying to obtain a patent in the United States, abroad and/or through the Patent Cooperation Treaty, please feel free to contact Grell & Watson Patent Attorneys LLC of Charlotte, NC. Alternatively, feel free to read the other articles on similar subjects relating to both foreign and United States patent, trademark and copyright law.

(C) 2016, Grell & Watson Patent Attorneys LLC; all rights reserved, world-wide.

This article, and/or the reading thereof, shall not be construed as offering, containing or receiving of legal advice, and shall not create any attorney-client relationship or privilege. If you are considering protecting your intellectual property, you should consult with an attorney of your choice.

Grell & Watson Patent Attorneys LLC serves clients nationwide from its home offices in Atlanta, Georgia and Charlotte, NC for patent, trademark, copyright and corporate matters. Grell & Watson Patent Attorneys LLC is an intellectual property law firm providing a full range of services for patent searches, preparation and filing patent applications, trademark searches, preparation and filing trademark and service mark applications, preparation and filing copyright registration applications, licensing of patents, trademarks, copyrights, trade secrets, and litigation of patent, trademark, copyright and trade secret infringements. With staff experience in numerous intellectual property matters, Grell & Watson Patent Attorneys LLC can provide the necessary corporate services and expertise to your small or large company.

Grell & Watson Patent Attorneys LLC
3911 Carmel Acres Dr.
Charlotte, NC 28226

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Intellectual Property (“IP”) – What is the difference between Patents, Trademarks and Copyrights?

Intellectual Property (“IP”) – What is the difference between Patents, Trademarks and Copyrights?

Intellectual property, also known as IP, according to the World Intellectual Property Organization (WIPO) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.  IP is protected by most national laws, including the US, by patents, trademarks, copyrights and trade secrets.  Below is a breakdown of these four mechanisms for protecting IP and how they differ:


A patent protects your invention through federal law giving you a monopoly to exclude others from practicing the invention, including the right to prevent others from making, using, selling and/or importing your invention in the US. Inventions are your creative ideas for new products (articles of manufacture), machines, processes, methods, compositions of matter, ornamentation on, or shape of, products, or new plants. An improvement on an existing product may also be patented. Utility patents protect the majority of these. To be patentable, your invention must be useful, novel and non-obvious. Design patents protect the ornamentation on, or shape of, devices. Plant patents protect new plant varieties. Utility patents give you an exclusive right or monopoly for twenty years from the date of filing. Design patents give you a monopoly for fourteen years from the date of issue, and prevent others from making the patented device with your ornamentation on them or made of your shape. As an illustrative example, a chair is a useful device. If you could obtain a utility patent on a chair with a seat and supporting legs, you could stop anyone from making a chair. That would be a utility patent and would be very powerful. If your chair had an unusual ornamental shape or seat design pattern, and obtained a design patent on it, you would be able to prevent others from making chairs with that shape or surface pattern, but they could still make other tables. Plant patents last for twenty years from the filing date of the patent application. Infringement of your patent allows you to obtain damages adequate to compensate for the infringement no less than a reasonable royalty plus interest and costs.  If the infringement is willful, damages can potentially be  enhanced to obtain treble damages plus attorney fees.


A trademark (or service mark for services) protects names, slogans, logos and other like marks through both federal law and common law, or state laws. Your name, slogan, logo, etc. that is used to identify your product or service to your prospective customers as the source of the goods and/or services that you are offering is the subject of trademark protection. Even your business name or website address is a trademark if you use it with your goods or services. There are both federal trademarks and state trademark registration systems. There are also common law trademarks that are not registered at either the federal or state level. Trademark protection is typically based on when you start using the mark on the goods and/or services.  However, federal trademark applications can be filed even before you are using the trademark name, slogan, logo, etc. to reserve your trademark. These are called “Intent to Use” trademark applications. Federal and state trademarks must periodically be renewed. Trademark protections is valid forever as long as you continuously use the mark and keep the registration renewed.  Federal trademarks must be renewed every ten years. If you no longer use the trademark, you lose your rights. Infringement of your trademark allows you to potentially obtain treble damages and attorney fees.


Copyright protection is for protecting your creative artistic expression, but only once it is set into a tangible form. For instance, you create and write a poem. There is no copyright unless the poem is recorded or written, because there is no tangible representation of your artistic expression. However, once you write, record, photograph, draw, or otherwise create a tangible record of your artistic expression, you automatically have copyright. That is, you are the only one who has the right to make or sell copies. Ideas cannot be copyrighted as useful ideas are the subject for patent protection. Examples of copyrightable materials are written words, such as in books, magazines, poems, songs; written music; performances of music; paintings and drawings; photographs, videos, architectural plans, website content and layouts, and computer software. Copyright lasts for 70 years plus the life of the creator (or last to die for multiple authors) for new works under current law. If the work is made for hire, then the term is the shorter of 95 years from publication or 120 years from creation. Copyright protection for works of authorship is automatically granted once put into tangible form.  However, only once the work is registered with the Library of Congress does federal law provide you with the right to enforce your copyright. There is the possibility of obtaining statutory damages of up to $150,000.00, plus the possibility of being awarded attorney fees. Thus, it is very important to register your copyright as soon as practicable.

Trade Secrets

Finally, trade secret protection is another means of providing protection to ideas. However, the key word here is “secret” and protection is only provided for ideas that are actively kept secret. That is, you should have policies in place that prevent its disclosure. If the owner of a trade secret lets someone who has no need to know in on the secret, it is no longer protected. Trade secrets are most suitable to keep secret formulas or processes protected, i.e. think the formula for Coca-Cola. However, if it can easily be reverse engineered independently, it won’t remain protected for long.

f you are considering protecting your intellectual property, you should consult with an attorney of your choice. For more information, please visit or

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Amending Trademarks – USPTO Technology Evolution Pilot Program

On September 1, 2015, the USPTO began a pilot program to allow amendments to identifications of goods/services in trademark registrations that would otherwise be beyond the scope of the current identification. The program also provides an opportunity for IP owners to avoid abandoning existing registrations the goods and services of which are no longer offered as described in the registration.

Under the program, amendments will be permitted where they are deemed necessary because evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers.

Trademark owners and their counsel should review their trademark portfolio to see if they should take advantage of the pilot program with respect to any registrations covering outdated technology. Counsel may be able to get greater protection for their marks if they can amend the goods and services identifications rather than delete out any obsolete technology.

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First-to-File vs. First-to-Invent

On March 16, 2013, with the enactment of the America Invents Act, the United States Patent Office has switched from a first-to-Invent system to a first-to-file system. Previously, with the first-to-invent system, patent rights were granted to an entity or person that is the first to invent a new, non-obivous and useful invention. However, the switch by the US conforms to the rest of the world, which already followed a First-to-File system, wherein patent rights are granted to the person or entity who is the first to file a patent application.

Proponents of the Act argued that the United States should adopt the First-to-File system to harmonize the United States patent system with the rest of the world. Additionally, proponents argue the First-to-File system is beneficial because it provides a clear, bright-line approach in determining the owner of a patent by simply looking to who filed the patent application paperwork.

On the other hand, opponents to the Act argued that the First-to-File structure will hurt small businesses and individual inventors. They argue the First-to File system is harmful to small business owners and individual inventors because they have limited resources to file a patent application. As such, opponents argue the First-to File system benefits big businesses that can afford filing patent applications, which can cost anywhere from $5,000 to $25,000.

Nonetheless, the United States currently follows the first-to-file system, or FTF, where it is obviously an advantage to get an application on file as soon as possible, as the right to the grant of a patent for a given invention lies with the first person to file a patent application for protection of that invention, regardless of the date of actual invention.

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NCBA Intellectual Property Law section’s Patent law subcommittee announce: A United States Patent and Trademark Office Fall Patent Quality Discussion Series

The NCBA Intellectual Property Law section’s Patent law subcommittee announces: A United States Patent and Trademark Office Fall Patent Quality Discussion Series

Live or Webcast | Friday, November 6, 2015 | North Carolina Central University School of Law | Durham, NC

CLE Credit | 7.0 Hours

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Should I file for a patent NOW or can I wait?

Unfortunately, there is no straightforward answer but “maybe.” Before we begin, the general rule of thumb is that it is beneficial for you to file your patent application now or as soon as possible. First, there is a very important statutory time limit, i.e. a “time bar,” which may prevent you from obtaining a United States patent. 35 U.S.C. § 102 (b) states: “a person shall be entitled to a patent…unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” In sum, if you have “publicly disclosed” your invention, then you have one year from the date of such disclosure to file for U.S. patent or else you lose the right altogether.

So what constitutes “publicly disclosing” your invention? Public disclosure generally refers to publicly using the invention, offering the invention for sale or disclosing the invention in a publication that is in general circulation. Public disclosure generally does not refer to disclosing your invention to family members or close friends. As such, if you disclose your invention to your mother, then the “time bar” is likely not to be triggered. On the other hand, if you attend a trade show and discuss your invention, then the “time bar” is triggered and starts the one year clock to file a U.S. application. Please note that generally it takes our firm 4-6 weeks to prepare an application. As such, if you are approaching the one year time bar, then it is wise to act quickly.

Secondly, it may not be beneficial to wait to file your application, as the US has switched to a first to file system, wherein patent rights are granted to the person or entity who is the first to file a patent application. Under such a system, there could be a race to file at the U.S. Patent Office in order to establish protection for your invention. As such, similar to the rest of the world, the U.S. Patent Office grants patents to the person or entity that is first to the Patent Office. As such, it is beneficial to file for a patent now, rather than later, because even if you are the first to invent something, you must also file it first to get protection.

Some countries do not allow a period of time after use to file a patent application. Once you publicly use your invention, you can no longer obtain a patent. However, if you have previously filed a U.S. patent application, you will have a year before you must file your patent application in the foreign jurisdiction.

As you can see, there are clear benefits to filing a patent application as soon as possible. Certainly, it guarantees you getthe earliest possible filing date and protects you from losing patent rights. Even in the event that you do not feel ready to start the patent application process immediately, we suggest you call to discuss strategies to best protect your intellectual property rights in the early stages of development.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Jeff Watson is a Patent Attorney practicing in Charlotte, North Carolina.

Grell & Watson Patent Attorneys LLC
3911 Carmel Acres Dr.
Charlotte, NC 28226

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Patent Case Summaries

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Patent, Trademark and Copyright Cases To Watch In 2015

Patent, Trademark and Copyright Cases To Watch In 2015

Patent Cases To Watch In 2015

The U.S. Supreme Court will decide three patent cases involving claim construction, induced infringement and patent royalties in 2015, while the Federal Circuit grapples with the fallout from the high court’s recent patent-eligibility rulings and the standards for America Invents Act reviews.

Patent Legislation To Watch In 2015

After a bill aimed at cracking down on so-called patent trolls stalled in Congress last year, attorneys expect lawmakers to make a major push to enact legislation on the issue in the coming months, and also possibly weigh measures to clarify patent eligibility and extend the life of some drug patents.

Copyright And Trademark Cases To Watch In 2015

The worlds of copyright and trademark law are going to be anything but soft in 2015, with two trademark cases pending before the U.S. Supreme Court, a showdown between Google and Oracle over software copyrights looming, and more.

Fed. Circ. To Weigh Patent Impact Of ‘Raging Bull’

The Federal Circuit will consider whether the U.S. Supreme Court’s “Raging Bull” decision limiting laches as a defense in copyright cases applies equally to patent law, agreeing to conduct an en banc rehearing of its decision that an adult diaper patent suit was barred by laches because the patent owner waited too long to file suit.

Motorola Urges 9th Circ. To Overturn Landmark RAND Ruling

Motorola Inc. has hit back at Microsoft Corp.’s attempts to kill Motorola’s Ninth Circuit appeal of a decision that Motorola had breached an obligation to license its standard-essential patents to Microsoft on fair terms, saying that Microsoft is trying to evade infringement liability by hiding behind a breach-of-contract suit.


PTAB Says Filing Misstep Dooms Movie Studios’ AIA Bids

The Patent Trial and Appeal Board has rejected petitions by Paramount Pictures Corp. and other Hollywood studios seeking inter partes review of two DVD patents owned by Nissim Corp., ruling that the petitions failed to list all of the interested parties in the dispute.

DC Circ. Voids $200M Judgment In Cuba Torture Row

The D.C. Circuit has refused to let a man who was allegedly tortured while incarcerated in Cuba in the early 1970s execute a $200 million default judgment upon patents and trademark registrations issued to nearly two dozen Cuban research institutes and enterprises, voiding the judgment.

Nexium Buyers Seek New Trial In Pay-For-Delay Case

A group of Nexium buyers has asked a Massachusetts federal court for a new trial over antitrust claims that AstraZeneca PLC and Ranbaxy Inc. used a patent settlement to delay the launch of a cheaper generic version of the heartburn treatment.

NY AG Says Actavis Can’t Suspend Antitrust Injunction

The New York attorney general has urged the Second Circuit to deny Actavis PLC’s bid to hit the brakes on an injunction that prevents it from halting sales of immediate-release dementia drug Namenda while the drugmaker pursues an appeal in the antitrust case, saying patients would be irreparably harmed.


Turtles Say It’s Game Over For Sirius’ ‘Fictional Analysis’

Three weeks after a New York federal refused to reverse her ruling that Sirius XM needs to pay to play pre-1972 records, the band that’s suing the satcaster is urging her to grant it full victory in the case.

9th Circ. Overturns ‘Pom’ Trademark Ruling

The Ninth Circuit this week vacated a lower court’s decision to deny Pom Wonderful LLC a preliminary injunction blocking the sale of a “pur pom” energy drink, saying the trial judge botched the likelihood of confusion analysis.

Google Pushes High Court To Take Up Java Copyright Row

Google Inc. recently told the U.S. Supreme Court that it isn’t trying to undermine copyright protection for all computer code in its battle with Oracle Corp. over the use of its Java programming language, saying only certain parts of the language aren’t copyright-eligible.

Shopping App Maker InMarket Ducks Injunction Bid In TM Suit

A New York federal judge has denied a request by Berkley Networks Corp. to bar rival InMarket Media LLC from using the “inMarket” trademark for its shopping discount app for smartphones, ruling that Berkley Networks can’t get swift court action after years of “lassitude.”

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