California Patents (Intellectual Property) Questions & Answers

Q: Good evening, I need some help to know if I can challenge a alleged patent infringement. Can someone help? Thanks

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Apr 19, 2019
Kevin E. Flynn's answer
If someone has asserted that you have infringed their patent. then there are two principle ways to defend your actions. You can assert that your product or service does not infringe any claim of the patent. You can also assert that the patent claims of the patent are so broad that they read on the prior art and are thus invalid.

This is not a DIY project. You will need help from competent patent counsel.

I hope that this helps.

Kevin E Flynn

Q: Good morning, I am researching the patent for Cookie Break Cookies by Nabisco. They changed the receipe.

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Apr 13, 2019
Kevin E. Flynn's answer
I am sorry, all that Justia passed along was three statements. I did not see a question.

1) Good morning, I am researching the patent for Cookie Break Cookies by Nabisco.

2) They changed the receipe.

3) I found that P&G sued them over the patent for Soft Baked cookies and I'm wondering if this lead them to revamp their receipes to avoid further litigation.

It is not clear what your question is. If you found an article about P&G asserting a patent on...

Q: How can I move my patent from application to grant stage? Thank you.

2 Answers | Asked in Patents (Intellectual Property) for California on
Answered on Apr 8, 2019
Ahaji Kirk Amos' answer
Unless you request expedited prosecution, you will wait about 18 months after you file a patent application before your application is examined. The typical prosecution phase is about 36 months. The best way to move it forward is to respond to USPTO office actions as soon as possible. You get 6 months to respond, responding as soon as the action is received will result in a quicker prosecution phase.

Q: My friend patented in Mexico a new way to clean water in the oceans. Would like to sell here in USA.

1 Answer | Asked in Environmental and Patents (Intellectual Property) for California on
Answered on Apr 7, 2019
Peter D. Mlynek's answer
Your friend's patent will only protect him/her from the competition within Mexico. If your friend did not patent it with the USPTO, anyone will be able to practice the invention in the US, but so nothing for your friend to sell. What does your friend want to sell?

Q: Dear Madam/Sir, I am Radek Nachev, inventor an owner Pat. N. 8264179. Couple of years ago I contacted the company

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Apr 6, 2019
Peter D. Mlynek's answer
Dear Mr. Nachev--

Your patent has been issued, all the maintenance fees have been paid, and it looks like that the patent is enforceable. It thus appears that you are in a good position.

As you likely know, a patent lawsuit will cost you several million dollars. Unfortunately, unlike personal injury lawsuits, patent lawsuits are generally not done on a contingency basis. Some law firms may represent you on a partial contingency basis (they'll charge you only half of their...

Q: How do i contact the holder of this patent?

2 Answers | Asked in Patents (Intellectual Property) for California on
Answered on Mar 14, 2019
Kevin E. Flynn's answer
Step 1 -- make sure that you are looking at an issued patent not a published application (Justia did not pass along whatever you are looking at).

Step 2 -- make sure that the patent has not expired, lapsed, or been invalidated.

Step 3-- be sure that you need the patent. Do you plan to do something that have every noun, every verb, and every relationship in at least one of the independent claims (the claims that start from scratch rather than adding something to another claim)....

Q: Hello, I don't see Digirad patent # 5,677,539, date of patent Oct. 14, 1997

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Feb 15, 2019
Peter D. Mlynek's answer
Try: https://patents.justia.com/patent/5677539

Q: Can you patent an idea?

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Feb 13, 2019
Kevin E. Flynn's answer
I think you need to look at actual patents that have been issued for apps. The Supreme Court does not like mere efforts to organize human behavior with a marketplace or other app to modify human behavior. You need to show that what you did would impress an engineer that makes apps.

http://bit.ly/Patent_Searching will get you started.

You need to patent specific ways of making equipment do something of value. General concepts of what you may want to accomplish are generally...

Q: Hello, do product patents cover all similar designs or just the design of the patented item?

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Jan 23, 2019
Kevin E. Flynn's answer
The focus needs to be on the patent claims. Not the title of the patent. Not the drawings. Not the abstract. Not the details in the specification. You cannot make something that has all the nouns, verbs, and other requirements that exist in an independent claim in a patent. Some claims are dependent claims that reference another claim and add another limitation. To infringe a dependent claim you have to infringe an independent claim and have the details of the dependent claim too....

Q: I am looking for a patent attorney to research and file a design patent.

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Jan 23, 2019
Kevin E. Flynn's answer
First, you are lucky as there are far fewer patent attorneys than attorneys as a patent attorney needs two different things, a bar license from a state and a patent registration from the United States Patent and Trademark Office. But, you can pick a patent attorney from anywhere in the country. You may want to ask your trusted general business attorney for a recommendation. Most of my new clients come from a referral from their attorney.

Another way to attack this is to look at some...

Q: how to see if a design is patent able?

2 Answers | Asked in Copyright, Intellectual Property and Patents (Intellectual Property) for California on
Answered on Jan 16, 2019
Griffin Klema's answer
Hire an attorney to conduct a prior art search and provide an opinion about whether your design is patentably distinct over the prior art. I recommend you budget about $2,000 for this work. Good luck!

Q: How can I determine if a patent i'm purchasing has been involved in a lawsuit since I can't search Justia by patent #?

2 Answers | Asked in Patents (Intellectual Property) for California on
Answered on Dec 29, 2018
Peter D. Mlynek's answer
Buying a patent, or a portfolio of patents, is in many ways similar to buying a business, or a car, or a house. Before you agree to purchase the patent, you really need to have someone look at it. Someone who understands patent law, understands patent prosecution, patent litigation, etc. This process is called "due diligence."

Unless you are a patent lawyer, you really should not be doing due diligence yourself. At the end of the due diligence analysis, the patent attorney will...

Q: Are patents able to be assigned to other people in a will?

2 Answers | Asked in Patents (Intellectual Property) and Estate Planning for California on
Answered on Dec 26, 2018
Peter D. Mlynek's answer
Yes. A patent is a personal property that one can assign in a will just like an art collection, a car, or a stock portfolio.

How often does a patent pass through will in practice, is a different question. Typically patents are owned by companies, and not by the inventors themselves. Further, for most people who die at an advanced age, the days of inventing is in their distant past, so I would think that most patents expire before their inventors do.

Q: I have an aluminum foil idea but is it already patented? Or am I allowed to find a manufacturer with my new addition..

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Nov 29, 2018
Kevin E. Flynn's answer
It sounds like you need to do some searching to see if your new idea is already the subject of an issued patent or a pending application that has been published but not yet allowed. If I am right, then you may want to look at my slide set on patent searching. http://bit.ly/Patent_Searching

You may want to follow up with having a professional search done but it is a good idea to do some initial searching for low hanging fruit so you do not pay for a search when it would be easy to find...

Q: Am I allowed to patent an ingredient in a recipe my bakery business manufactured?

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Nov 19, 2018
Peter D. Mlynek's answer
The ingredient itself, as opposed to the recipe? Yes, you should be able to, provided, of course, that it is new. If you, for example, came up with a new type of a shortening, or new crystalline form of some sugar, etc. then it should be patentable.

You are facing two hurdles, though. You have to make sure that the ingredient is really new.

If, for example, it is some composition that nobody used in cooking before, but it was already known, then you won't be able to get a...

Q: My company has a few IP patents that are important to me as its CEO. If we merge with another company, how will that

1 Answer | Asked in Mergers & Acquisitions and Patents (Intellectual Property) for California on
Answered on Nov 17, 2018
Peter D. Mlynek's answer
Typically, if there is a merger, the patents will belong to the new company.

But it does not have to be that way. Issued patents are treated just like any other business asset. Your company can sell the patents along with all the other business assets such as inventory, production facilities, tooling, etc., or it can spin them off into another entity.

The question that needs to be answered is: how valuable are the patents to you, vs. how valuable are they to the buyer? If...

Q: US Patent number 7,855,232, maintenance fee is due. This application is a continuation application. Pay will cover all?

1 Answer | Asked in Patents (Intellectual Property) for California on
Answered on Nov 4, 2018
Kevin E. Flynn's answer
There are often families of patents. They may have an initial provisional application or non-provisional application and then a set of branches with divisional applications, continuation in part (CIP) applications, and continuation applications.

Some of these may issue as patents. There may be several patents that issue in a family. Each patent will need periodic payments of maintenance fees by year 4, 8 and 12 to stay in force. Paying a maintenance fee for one patent in a family...

Q: What does California's "ARTICLE 3.5. Inventions Made by an Employee" protect?

1 Answer | Asked in Contracts, Copyright, Intellectual Property and Patents (Intellectual Property) for California on
Answered on Oct 23, 2018
Peter D. Mlynek's answer
Well, you are going to have to talk to a California employment attorney to get the best answer. I am not a California attorney, nor an employment attorney, but here are a few points.

(1) You are correct that the trademarks, logos, brand names, sales copies, and like, are likely not considered "inventions". However, the California Law does not limit inventions only to _patentable_ inventions, so I would expect California to interpret the word "invention" a bit more broadly than the US...

Q: Hi, is there a patent for stainless steel straws? I would like to sell on Amazon in different color variation.

2 Answers | Asked in Patents (Intellectual Property) for California on
Answered on Oct 23, 2018
Peter D. Mlynek's answer
There likely is not a patent on stainless steel straws. The Gauchos of Patagonia have been using steel straws for generations. There may be a patent on some small variation of it, but you should be able to make and sell stainless steel straws.

But to make sure, buy a package of them, and examine the straws. There should be some sort of patent mark on the straw. If there is not, the patent marking may be on the packaging. Finally, go look for patent information on the manufacturer's...

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