U.S. Patents

 

Any company becomes international when id exports or imports goods or services. No change in the corporate structure is required for transactions across the US borders.

Our firm can prepare joint venture agreements between the US and Ukrainian companies and other intellectual property or corporate law firms can do the same.

U.S. patents have a life of 20 years from the date of filing a patent application in the US Patent and Trademark Office. There are no international patents covering all countries. Each country issues its own patent, which may be processed (examined) by either a European Patent Office, or US or Japanese government patent offices.

Inventions may be sold on the market with a notice “Patent Pending” after obtaining a filing date and a serial number of a patent application. A patent may be issued after about one to three years or even longer after the filing date.

The issued patent will expire unless its maintenance fees are paid to the patent office after 3.5, 7 and 11 years from the issuance date.

Each country has its patent requirements and fees. We employ our foreign associates to file, process and maintain patents and trademarks worldwide. You need to select countries in which you believe your products will be sold. Local patents protect from infringement by competitors in the respective countries.

We recommend to conduct a state of the art and novelty patent search prior to filing a patent application in order to determine whether the invention is new, novel and non-obvious in comparison with the existing discoveries. Patent Offices conduct their own research when they examine applications, but it is better to distinguish your invention from the rest of the crowd in the initial disclosure and invention description. The preliminary search (about $1,500 including legal opinion as to patentable subject matter) may save a lot of money, time and aggravation in time and may prevent potential infringement of the existing “live” patents.

US patents may preclude entry of counterfeit products into the United States as the US Customs would block them at the port of entry into the USA. Sometimes it is even profitable to disgorge the patent infringer’s profits earned by a competitor as a result of their significant marketing efforts.

Inventor who wins the race to the patent office enjoys the benefits and priority of the invention as the inventor could block similar inventions made anywhere in the world.In the United States (unlike the rest of the world), inventors are given one year grace period starting to run from the date an invention prototype’s commercial availability or publication (e.g. an article published in a local newspaper or magazine and even if it was authored by the inventor himself).

Patents are issued on evolutionary and revolutionary discoveries. It is harder to design around “pioneer” patents having a broad protection of the “staked territory” defined by patent claims. Full disclosure of the best modes of invention operation is required in exchange for 20-year patent “monopoly.” There are design patents (covering only a shape of a product), plant, utility (disclosing a product structure and operation) and method (disclosing steps to be taken to achieve a result). Lately, business model patents have been granted.

Inventors cannot modify (except minor clarifications) an invention best mode description (“specification”) after the application has been filed. Additions can be granted a status of ‘continuation-in-part” and patents may be issued on these derivatives.

You need a legal counsel guiding you through various legal labyrinths (contracts, licenses, customs, technology transfer, etc.). Your counsel would engage experts and connect you with the right parties in legal and business matters. Each contract or license is negotiated between businessmen with continuous assistance of their attorneys.

Municipal, state and federal government filing and other charges are usually listed on the Internet, e.g. U.S. patent and trademark office charges are listed at the www.uspto.gov and European patent office charges and procedures are listed at www.wipo.com.

Attorneys usually charge their fees on an hourly basis against a retainer pre-paid in advance. Our firm charges $350.00/hr and request the clients to replenish a $10,000 retainer upon its exhaustion.

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