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Questions and Professional Answers

Questions and Professional Answers

  • Can I help a colleague with a provisional patent application?

    I have filed a number of provisional patent applications recently and have worked with filing formal patent applications in the past. A colleague has approached me about assisting him in filing a provisional patent application for a device he's working on. I explained that only a patent lawyer or agent could submit an application for him. However, he said he can't afford an attorney (we all know that is the gold standard but sometimes its just beyond our reach) and is determined on submitting the application as an inventor. He wants me to help with the proofreading and making sure the documents are in order. If he submits the documentation himself, can I help him in this capacity for a nominal fee?
    • Re: Can I help a colleague with a provisional patent application?

      YES and NO. You may help the colleague but you may not give legal advice, such as any assurance that the documents are in order. You may not communicate with the PTO or represent the colleague in any way before the PTO. You may not in any way infer you are qualified to advise any person concerning patent office procedure or patent law. Whether you charge a fee or do it for free generally makes little difference as to whether you are engaging in the unauthorized practice of law, but charging a fee is an aggravating factor which normally will increase the sanctions if you are caught. Aside from the restrictions on you due to lack of having been examined and licensed to practice before the USPTO, you have a serious fraud problem in passing yourself off as qualified to assist an inventor for a fee. If anything goes wrong due to faulty advice on your part, you will be personally liable for actual damages, and probably for punitive damages. Judges, who are lawyers, are not easy on make-believe lawyers.You may also run afoul of the American Inventors Protection Act if you are being paid to evaluate the invention or assist in its promotion and are not making the required affirmative disclosures, and that failure carries a $5,000 statutory damage that may be trebled if fraud exists. My advice is that, for your own protection and peace of mind, even if you assist the person, have him go to a real patent attorney (not just a patent agent) with the papers before they are submitted and have them reviewed and the overall strategy reviewed. I would suggest that getting advice from a patent attorney is not just the "gold standard", but the minimum standard. You wouldn't operate on your colleague's brain and you should not operate on the colleague's "brainchild" either. It is just too dangerous for both you and your colleague.

      Bruce Burdick
      Burdick Law Firm
      3656 Western Ave.
      Alton, IL 62002-3156
  • Out-sourcing for patent application help

    I want to find out if patent preparation can be out-sourced. The work of prior art search, preparing patent application, diagrams etc. can be out-sourced. The objective is to do 80 % of the work in an out-sourced modelat 20 % of the cost. Is it a viable option ? Do patent lawyers do this as their standard practice ?Thanks.
    • Re: Out-sourcing for patent application help

      The answer to your question depends upon your intended use of the term "out source." A patent attorney will typically subscribe to an electronic data repository from which a search of relevant prior art may be conducted. Additionally, he/she may engage the services of a diagram artist to prepare related drawings. Technically, this could be viewed as "out-sourcing." However, the analysis of the prior art search results, the preparation of the patent application, and review of the drawings for accuracy are all usually reviewed by the patent attorney with the client before any first application is submitted to the U.S. Patent Office. The client is paying good money to the patent attorney in exchange for the legal expertise the attorney hopefully brings to this analysis phase. By way of analogy, on a much simpler scale, there are instances where lay persons file their own federal trademark applications. While the process is fairly intuitive from a procedural standpoint, an experienced trademark attorney is usually able to provide greater value to the process based on his/her knowledge of trademark law, which may ultimately prove crucial. Many lay people that file their own trademark applications often miss some of the more subtle or esoteric issues that can later have a significant impact on their ability to obtain and/or enforce that trademark as against an opposing user/applicant. A skilled trademark attorney is usually able to spot these issues on a pre-filing basis, and can usually counsel the client in a way that may avoid many of the potential pitfalls that the client often would not see on their own. (E.g. proper performance and analysis of pre-filing trademark availability searches, proper classification of associated goods and services use or intended use, etc.)

      Jeff Lambert
      Attorney at Law
      5051 Ovid Place, Ste. 100
      San Diego, CA 92117
  • Required signatures from applicants applying for credit

    My company offers medical and pharmaceutical products to physicians via the Internet. As one payment option, we are allowing physicians to apply for credit directly on our website. However, I heard from other vendors that federal laws require the applicant to provide real signatures on the application. Is this law specific to my line of business or is this standard requirement for all credit application.
    • Re: Required signatures from applicants applying for credit

      Credit card companies have been taking phone applications for as long as I can remember. And now you can apply for a credit card online. So I do not see any problem with what you are doing. The only potential legal problem you may have is if a physician defaults on his payments he may claim he never signed anything so therefore there in no signed contract. So you might want to send something for them to sign after their credit is approved. But if they have to sign an invoice upon receipt of the product this would constitute a contract for the product that was charged to their account and this would be sufficient in a court of law. If you have any questions or problems in the future please feel free to email me directly. I specialize in business and contract law. Good luck.

      John Hayes
      The John Hayes Law Offices
      P.O. Box 3003
      San Luis Obispo, CA 93403
  • employment application

    my daughter put her application in at a company last fall. a young man who attends school with her, recently approached her and said, ''I saw your application at ---.'' she asked him if he worked there and he replied no, they let him use her application as a template because they were out of applications. this application had all her information on it, including her social security number, our unlisted telephone number, etc. is this illegal? who should something like this be reported to?
    • Re: employment application

      She can sue them immediately for damages for loss of privacy. Depending what field of business they are in there might be a regulatory or business overisght, but the damages come from a lawsuit...call me directly if you want.Joe Jacobs216-952-1990

      Joseph J. Jacobs Jr.
      The Jacobs Legal Group
      15614 Detroit Avenue
      Cleveland, OH 44107
  • Provisional patent application question

    About 2 years ago, a friend of mine filed a provisional patent application, and according to him, it was not supposed to be published. For some reason, he did not file a full application, and, as I understand the situation, the provisional application was abandoned because he did not file a full application within a year of filing the provisional one.He now claims that his new lawyer has told him that, since he has not sold, disclosed, etc., the idea behind the original application, he can file another application over the same material. I am a bit confused - can an application be ''abandoned'' and refiled at a later date as a new application, or, once the material has been submitted as any type of application that becomes abandoned, can it ever be refiled on? He is asking me to invest money once an application is filed and he can tell me more about his idea; can he even get a patent, though, under these circumstances?
    • Re: Provisional patent application question

      In general terms, so long as the inventor “has not sold, disclosed, etc.” the invention and largely treated the invention as a trade secret, he can refile the patent application. While most countries require no public disclosure of the invention prior to applying for the patent, in the US, the inventor has one year from the date of any sale, offer for sale or public disclosure to file for the patent, even if a previous provisional application was previously abandoned. There are a number of strategies and pitfalls to refiling the application in which a patent attorney should review the specific facts. One such pitfall is the danger of intervening rights. In other words, someone else unrelated to the inventor may come up with a similar invention that is publicly disclosed and/or issues as a patent. This activity with the similar invention may then intervene with the inventor’s patent rights to limit the scope of his/ her patent rights or to bar the patent in its entirety.Regards,Don Cox

      Donald Cox
      Law Offices of Donald Cox, LLC
      212 Carnegie Center, Suite 206
      Princeton, NJ 08540
  • h1b visa criteria

    Hi there,I recently got married..My wife in india has completed 3 years course (BCA- Bachelore in computer application) and 1 year(PGDCA - post graduate diploma in computer application) after her 12th standard....I know, we need 12+4 education to apply for H1B visa...is she eligible to apply for H1 visa as she has 12+4 (12+3+1) year education?Thanks very much in advance for your wonderful service..
    • Re: h1b visa criteria

      Your matter is complex and you should get an attorney. If you are located in Orange, San Diego or Imperial Counties, you can email me your contact info, so we can discuss your particular situation. There is no charge for consultation.

      Joseph La Costa
      Law Office of Joseph La Costa
      7840 Mission Center Court Ste. 104
      San Diego, CA 92108
    • Re: h1b visa criteria

      I don't know the nuances of the educational system in India, but as long as the your wife has the equivalent of a Bachelor's degree, she's eligible to apply for an H-1B visa (assuming the job position offered is a "specialty" occupation, as that term is defined in the Immigration law.)In real life, you or your attorney would hire one of the many educational-evaluation services out there to give an expert opinion on whether your wife's course work is equivalent to a Bachelor's degree granted by a U.S. college or university. Larry L. Doan, Esq.(Straight-talk on Immigration Law at www.GuruImmigration.com)Note: The above response is provided for information only and should not be construed as legal advice, nor to create an attorney-client relationship, which can only be established through payment of consideration.

      Larry L. Doan
      Law Office of Larry L. Doan
      11664 National Blvd., Suite 317
      Los Angeles, CA 90064
    • Re: h1b visa criteria

      Even people with education evaluations who are Indian and which show equivalent to U.S. bachelor's degree can be challenged by US CIS. There is a memorandum and case law on this issue that is a bit too complex for addressing online. If you would like to contact me offline for a consultation, I could do the analysis for you comparing your wife's facts to the case law and memo. It's important that you have the authority (i.e., know what the memo and cases say) behind a lawyer's opinion on this issue as it's so important to come to the right conclusion before making any application. You need to understand why she either is OK or not OK with the education she has.Check me out at http://www.yardum-hunter.com or email me at alice@yardum-hunter.com.Alice M. Yardum-Hunter, Attorney at Law, Certified Specialist, Immigration & Nationality Law, State Bar of CA, Bd. of Legal SpecializationST: 15915 Ventura Blvd., Penthouse #1, Encino, CA 91436EM: alice@yardum-hunter.com WEB: http://www.yardum-hunter.comA “Super Lawyer” 2004 – 2009, Los Angeles Magazine

      Alice Yardum-Hunter
      Alice M. Yardum-Hunter, a Law Corp.
      16055 Ventura Blvd., Suite 902
      Encino, CA 91436
  • Job Application

    If a generic application is already completed and has a resume attached and presented to a business for potential employment is it a state law that says if the business'OWN application is not filled out then it is against the law to consider the generic application. The business application is taken from a generic pad bought at the local supply store.
    • Re: Job Application

      I am not aware of any such state law.

      Michael E. Hendrickson
      Attorney & Counsellor at Law
      211 North Union Street Suite 100
      Alexandria, VA 22314
  • standard to prosecute

    Police only need probable cause to arrest and charge someone with a crime. What is the standard required of prosecutors to take that case to trial? Is it that the prosecutor needs ''a good-faith basis'' that the defendant committed the crime? What if there are two suspects? What's the standard used to determine which suspect is prosecuted?
    • Re: standard to prosecute

      The prosecutor's obligation is to fairly apply the law. If a defense attorney believes the allegation lacks probable cause, they can file a motion to dismiss and the judge will rule. If there are two suspects, either the law enforcement agency hasn't finished investigation by determining which of the two should be prosecuted, or there is a belief that both Defendants committed the crime. One crime can have co-consirators, co-defendants, etc.

      Gregory Casale
      Gregory Casale Attorney At Law
      316 Main St., Suite 400
      Worcester, MA 01608
    • Re: standard to prosecute

      Prosecutors can go to trial on the probable cause needed to arrest... that is sufficient for good faith. Where there are two suspects, they could each be convicted on the same evidence, either, or none. The standard to secure a conviction is proof beyond a reasonable doubt.

      Raymond Weicker
      Qua, Hall, Harvey & Walsh
      25 Fletcher Street
      Chelmsford, MA 01824-2746
    • Re: standard to prosecute

      functionally there is no standard. By the time the trial is pending, the DA thinks there is sufficient evidence to convict. It varies with each person. There is no rule of tumb.

      henry lebensbaum
      Law Offices of Henry Lebensbaum (978-749-3606)
      300 Brickstone Square, Suite 201
      Andover, MA 01810
  • Application patenting; rights to an application

    re: patenting an applicationGiven that a technology has become protected under patent, and other, law, can an application of that technology be patented by someone other than the owner of the original technology patent? What if the new application is very dissimilar from the applications for which the technology was originally developed? What if it is similar?(I think that is all; I wanted to be sure to thank you for this service.)
    • Re: Application patenting; rights to an application

      Yes. Nearly all inventions are improvements or modifications of things done before. The question for patentability is whether or not the improvement or modification is obvious to one of ordinary skill in the relevant technical field knowing what is in the original patent. If not obvious, the modification or improvement is probably separately patentable (there are other requirements). However, you need to understand the difference between dominant and subservient patents and that patents do not give permission but rather give the right to exclude. So, the original patent owner may have the right to stop you from making using or selling your "application of that technology" even if you have modified or improved it. That would be called a "dominant patent." That is a question of checking the claims of the original patent and comparing them to your "application of that technology", and is something you should have an experienced patent attorney evaluate, as that is what we patent attorneys are trained to do.But, you may be able to patent your modification and exclude anyone, including the original patentee, from making using or selling the original technology modified per your invention. That is called a "subservient patent", since it can't be used without permission of the owner of the dominant patent. That means no one can use the technology of the subservient patent without a deal of some sort between the two owners. If all of this seems confusing, and you want to pursue your "application of that technology", you need to see a patent attorney and get advice. It will be money well spent, as not doing it means you are likely to run into legal problems of either infringement or failing to protect your own invention properly.If I can help in that regard let me know.

      Bruce Burdick
      Burdick Law Firm
      3656 Western Ave.
      Alton, IL 62002-3156
  • death benefit denial by insurance company

    Just prior to passing away my father took out a $20,000 life insurance policy. I helped him fill out and send in the application with the standard medical questions. He was also required to do a personal phone interview. All information on the application was accurate to the best of my knowledge and he answered all questions asked by the insurance company truthfully. After he passed away, because the policy was less than 2 years old the insurance company did an investigation to contend the claim. They have denied payment of the claim based on information received from the V.A. stating that my father was treated for and received nitroglycerine therapy for a heart condition. This information was not on the application for insurance. I contend that the information was not intentionally left off the application because he did not remember everything he had been treated for over the last 2 year period. Also, the insurance representative had an opportunity to ask these questions during the phone interview. I feel that the insurance was purchased in good faith without intention to defraud. My question is do I have any recoarse or am I at the mercy of the insurance company?
    • Re: death benefit denial by insurance company

      An accurate and reliable reply cannot be given without examining the application, the policy and the VA records. You are only at the mercy of the insurance company if you fail to consult with an attorney experienced in these matters. Even if all the things you say are true the insurance company has a clear obligation to return all premiums paid by your father. I have won cases solely on the basis of the failure to return the payments within a reasonable time. Other attorneys had declined the case because the misrepresentation was obvious. But every case has its own unique facts and even judges may disagree on the same facts. Litigation is an art, not a science. Insurance companies will routinely deny claims hoping their answers will be blindly accepted and dropped. Free attorney consults are available and in Florida the insurance company can be tagged with your attorneys fee on top of the policy benefit. You have nothing to lose but your time and effort. Call me at 305-445-5475 if you want a review and I can suggest a lawyer in your home area.

      Michael Tobin
      Michael M. Tobin, P.A.
      9400 South Dadeland Blvd. Penthouse 5
      Miami, FL 33156
    • Re: death benefit denial by insurance company

      Althought to be sure I would have to read the policy, I am sure the carrier reserved a contestability clause. It wouldn't matter if your father intentionally or unintentionally failed to inform them of a heart condition. It is a material omission. Sorry.

      David Slater
      David P. Slater, Esq.
      5154 Windsor Parke Dr.
      Boca Raton, FL 33496