MCED Blog

MCED helps innovators fill in the gaps between their deep industry expertise and the strategic business skills critical to launching a scalable, sustainable venture. Maine's unique economic and geographic challenges demand more that a traditional business incubator. They demand a catalyst.

5 Minutes with Attorney Karin Gregory

Partner: Furman, Gregory Deptula, LLC

Practice Areas: Corporate: Entity Formation, Intellectual Property, Corporate Management, Commercial Transactions Finance, Private Equity: Private Financings and Private Investment Funds, Alternative Investment Representation, Merger & Acquisitions and Other Liquidation Events

Ms. Gregory's career spans over 25 years in the healthcare field, as a basic scientist, healthcare administrator, lawyer and venture capitalist.

1. When should an entrepreneur file for a patent and/or trademark?

I recommend that an inventor file for a provisional patent before any public disclosure is made. For a trademark, either to secure the mark before it has been used in commerce, or soon after you can demonstrate that it is being used in commerce.

2. Do I need an attorney to file my trademark and/ or patent application?

In either case, the USPTO can assist in the initial filing, but the inventor should do some preliminary searching to see about prior art in the cases of patents and trademark applications or registrations already on file . Subsequent to the first filing of a patent, the invention should seek a patent attorney to ensure that the claims are well prepared. In the case of a trademark, once an office action is received, it is very useful to get some guidance and advice on how to reply. In either case, using an experienced IP lawyer will make the process go more smoothly.

3. How can an entrepreneur compete with, or "design around," a patent?

That's a very hard and complex question that requires a review of existing art, and even if there is an opportunity to avoid infringement, it is likely depending upon the industry, to be concerned about another company bringing suit for infringement. You need to have an enforcement and a mitigation strategy in place if the technology might have such risks. Trademarks, on the other hand, afford a company an opportunity to use the same mark in a different industry or for a different purpose so as to argue the ability to use a very similar mark that will not confuse the public if both are used in commerce.

4. If my patent is pending, is the information in it available for public consumption?

In the US, a provisional is only good at the present time for 12 months, and then a full application must be filed for the work to remain able to claim the priority date of the provisional filing. The application currently becomes public after 18 months, with some exceptions. Outside of the US, the patent applications are public almost immediately.

5. Am I violating a patent when the patent is written so vaguely that the patent covers a wide range of products?

If the patent is written vague, those claims will not likely be issued. Generally you should have an opinion about a possible infringement, so that there are no facts to support a later claim of willful infringement.

6. Should you trademark your brand name?

Trademarks are good for products, and positioning a company's name/logo, in order to have the public identify it the product with the company's name..such as the red bullseye for Target. A tag line or service type company would also do the same-Nike-"Just do it". Technically, that is a servicemark.

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