Denver Patent Attorney Discusses Patent Trolls – Part 2 of 3

Denver Patent Attorney Discusses Patent Trolls – Part 2 of 3

View the video interview here: Denver Patent Attorney Discusses Patent Trolls

Interviewer: Why aren’t they considered to be patent trolls?

Patent Attorney: Universities and research laboratories are generally considered to be making developments and advancements for the good of the people. While they have the resources and capabilities to conduct important research, such as cancer and other preventative disease research, they typically are not well suited to deploy any products. Instead, these laboratories collaborate with businesses that do have the means to develop, test, and bring products to market. So no, these laboratories are generally not considered to be patent trolls.

Interviewer: I see, so why the negative connotation for patent trolls?

Patent Attorney: Well you’ve probably read in some of the articles I’ve linked to on my Twitter account, that these patent trolls obtain patents and then go after companies that are actually making products, and seek out damages, even though there was really no damage to the patent troll. The patent troll never tried to bring a product to market. They are just trying to collect money and even worse, stop legitimate companies from manufacturing products.

Interviewer: So what are states doing to stop these patent trolls?

Patent Attorney: It’s interesting, the article says that Nebraska sent a letter to one of the law firms allegedly representing patent trolls, to leave Nebraska businesses alone. The article says that the letter apparently “warned [the law firm] that it would face serious consequences under Nebraska law if it engaged in ‘baseless harassment’ of Nebraska businesses or pursued ‘costly and destructive litigation’.”

For Part 3 of 3 Follow This Link: Denver Patent Attorney Discusses Patent Trolls – Part 3 of 3

Denver Patent Attorney Discusses Patent Trolls – Part 1 of 3

Denver Patent Attorney Discusses Patent Trolls – Part 1 of 3

View the video interview here: Denver Patent Attorney Discusses Patent Trolls

Introduction: This morning we are interviewing Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney in Colorado for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The Washington Post recently published an article titled “How Vermont could save the nation from patent trolls.” What do they mean by “trolls?”

Patent Attorney: Patent trolls have been in the news a lot lately. In fact, if you follow me on Twitter, then you’ve probably seen links to some interesting articles. Wikipedia gives a good definition of patent troll: “A patent troll, also called a patent assertion entity (PAE), is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question.” Sometimes, patent trolls are called patent holding companies.

Interviewer: I’ve heard that universities and government research laboratories do essentially the same thing.

Patent Attorney: You mean they develop technology, patent it, and then license the technology to companies.

Interviewer: Right, but universities aren’t in the business of making products. So are they patent trolls?

Patent Attorney: No, universities and government laboratories are not typically labeled as patent trolls. Instead, they are referred to as a non-practicing entity (NPE).

For Part 2 of 3 Follow This Link: Denver Patent Attorney Discusses Patent Trolls – Part 2 of 3

Patent Asset and Insurance Q & A – Part 4 of 4

Part 4 of Q &A session with experienced Patent Attorney, Denver‘s Mark Trenner.

Watch Entire Interview at Once Here: Patents as Investment and Insurance Video

Interviewer: I see. So you can use a patent as a bargaining chip, right?Patent Attorney

Patent Attorney: Exactly. That’s why I say that the term “insurance” isn’t 100% accurate. But a patent can be used as a negotiating tool.

Interviewer: Good analysis of this article. So what’s the takeaway to those watching to this interview?

Patent Attorney: Thank you. In summary, all businesses should at least consider the role of patents as an investment or asset to the company. The best strategy is for business owners to talk to a patent attorney about their business objectives, budget, and goals for their products. The patent attorney can help the business owner evaluate their product line and competing products, and help put a patent development program in place that best suits the business.

Interviewer: Thank you, I think that’s all we have time for today. For more information, be sure to visit Trenner Law Firm’s website at and Mark Trenner’s blog over at


What is a Patent? Part 2 of 3

Brought to you buy Colorado patent attorney Mark Trenner

patent attorney
The most common patent is the “utility” patent, which, in the United States is effective for a period of 20 years from the date of filing (unless it was filed before1995, in which case it is effective for 17 years from date of issue, or 20 years from date of application, whichever is later).  You can also apply for a “provisional” patent which is less expensive to file than a utility patent.  However, the protection last for only one year, after which time you must file for the more common patent.  Provisional patents are seen as a cost effective way to get a grace period before filing for a non-provisional patent.  This will allow the inventor some time to market their invention before incurring the cost of a non-provisional patent.
There are some other types of patents not as common:
A “design” patent only protects a new, original ornamental shape and appearance of a specific class of objects (such as shoe treads, perfume bottles, household appliances), and only for a limited time of 14 years from date of grant.
A “plant” patent covers a new and distinct, asexually reproduced species of plant, for the same period of years as for a utility patent (i.e., 17 or 20 years). Some forms of patents have periodic payments after they are issued, and they can not be enforced if they lapse.

What is a patent? Part 3

What is a Patent? Part 1 of 3

Brought to you by Denver patent attorney Mark Trenner…

A patent is a property right granted by the Government of the United States of America to an inventor for this purpose only- “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

what is a patent
It is commonly thought that a patent is a ‘government grant’ that gives the patent owner exclusive rights to a process, design, plant or new invention for a set period of time.”  In fact, a patent is not an exclusive right to anything at all. What it does is exclude someone else from: Making, copying, using, selling, offering to sell, or importing in to the U.S.A. any infringing articles or processes, from the time the patent is published to the time it lapses.

Therefore, just because you are granted a patent, it does not allow you any certain right to create your own invention, particularly if parts of your invention have already been patented by others.

The public policy essential to patents is that inventors should have the chance to gain an advantage from their invention, to the exclusion of others or by licensing to others, in exchange for publishing a complete description of the invention and how it was created. By doing this, inventive know how is expressed willingly, and cannot be abused directly by others without the risk of penalties. In order to take advantage of someone else’s patented invention, you would need to find your own way to do the same thing, but at least the process for creativity has started.

What is a patent?  Part 2 of 3


The Patent Application (Part II) –Background Section

The Patent Application (Part II) –Background Section

From Denver Patent Attorney Mark Trenner

Patent Attorney: Denver's Mark Trenner
The Background section of a patent application is intended to give the reader (first, the Patent Office Examiner, then perhaps others who may read your patent application) a general understanding of the technology space of your invention. Unfortunately, I’ve seen many patent applications with Background sections that are overdone.

How can you overdo the Background section of a patent application? Easy – by stating too much. You might be thinking “but if it’s just background, how can that hurt?” It can hurt, because the person writing the Background section may think that everything they are saying is “background” material or “prior art” (that is, already known or in the public domain). But often, the inventor has special knowledge of their field that may not necessarily be known by others. For example, most engineers and scientists read a wide variety of technical articles in their field of study, attend conferences, discuss their technology with other scientists with specialized knowledge. And those engineers and scientists “synthesize” this knowledge. Thus, what may seem known or obvious to an engineer or scientist, may not be generally known by others, perhaps not even by other engineers or scientists. Indeed, it is this synthesis of knowledge that leads to many great inventions.

So what do you include in a Background section of a patent application? As little as possible. Set the stage for your invention, by saying what is indisputably in the public domain and no more. For example, it is generally acceptable to state that computers exist if your invention is related to a computer. But if you say too much in the Background section of your patent application, this may be considered an admission that your invention was already known, or obvious in view of what is commonly known.

As I said in the introduction, it is best to work with a patent attorney when preparing a patent application. And if your patent attorney tells you that “the less said, the better” at least as it applies to the Background section of a patent application, heed their advice.

The Patent Application (Part I) – Introduction

The Patent Application (Part I) – Introduction

From Denver Patent Attorney Mark Trenner

Patent Attorney: Denver's Mark Trenner
When you file for a patent for an invention, the Patent Office does not issue a patent immediately. In fact, it can take several  years to have a patent issue. And the Patent Office does not issue patents for all inventions. The invention must be patentable subject matter, and must be unique and non-obvious over prior inventions and other products in the public domain. But this article is not about the patent process, but rather the patent application.

To start the patent process, you must first file a patent application with the Patent Office.

A patent application is a technical document that describes your invention. The patent application includes several parts, that I will attempt to describe in this multi-part series. Keep in mind, however, that you should not attempt to write your own patent application unless you have considerable experience doing so (in which case, you are probably not reading this article).

Patent applications are best written by patent attorneys. Why? Because a patent application is more than just a technical paper that engineers and scientists are comfortable writing. A patent application must meet certain legal requirements in order for the Patent Office to grant a patent. If you get any of these requirements wrong, any patent that issues may not provide sufficient legal protection for your invention. In addition, some deficiencies cannot be corrected after the initial filing of a patent application in the Patent Office.

Instead, this article series is meant as a high-level overview of the patent application, and the different sections of a patent application, so that when you work with a patent attorney and he or she asks you to review a draft of the patent application, you will have a better understanding of what exactly it is you are looking at.

When should I apply for a patent?

When should I apply for a patent?

There are conflicting opinions of when an inventor should file a patent application for their invention. Some say inventors should wait until all of the details of their invention have been worked out before filing a patent application. The reason being that if you make changes to your invention during product development, the inventor may need to file another patent application. Others say inventors should file a patent application as soon as possible to lock in rights to the invention.

Both answers are correct to some extent. So how do you know what you should do? Talk to a patent attorney early on, so that the patent attorney can help guide your decision based on your particular circumstances. Some patent attorneys offer a free consultation to first-time inventors. Other patent attorneys charge a nominal fee to meet with them. Either way, you can get specific advice for your particular situation.

But be wary of anyone other than a patent attorney telling you to wait to file a patent application for an invention.
Even more importantly, the patent law changes in the United States in 2013 from a first to invent patent system to a first to file patent system. That means even if you can prove that you invented something before someone else, if they filed their patent application before you filed your patent application, then the first to file inventor gets the patent.

Remember, there are low-cost ways to get a filing date with the Patent Office, such as filing a provisional patent application. Talk to a patent attorney about your options and don’t rely on others who may not have your best interests in mind.

Patent Attorney Denver – Inventor Information

Patent Attorney Denver – Foreign Patents – Inventor Information

Should Inventors File Foreign Patent Applications?
A U.S. Patent Application does not offer any protection for your invention outside of the United States. If you want to protect your invention outside of the United States, then you will need to file a patent application in the particular country or countries of interest, or a PCT patent application.
Filing foreign patent applications can be costly. The international phase of a PCT patent application can cost thousands of dollars alone. Then in the national phase, you can quickly incur thousands of dollars (and significantly more, depending on the number of countries you decide to file in) – and none of this assures you that a patent will even issue.
For more individual inventors, start-ups, and small businesses, the money saved by not filing international patent applications can better be used for marketing your invention in the United States. It’s always disappointing when someone has to stop pursuing their invention everywhere, even in the United States, because they blew their entire budget filing patent applications all over the world.
While this is not to say that inventors shouldn’t consider filing foreign patent applications for your invention, inventors with limited budgets need to think seriously about the impact this will have on their budget and their ability to effectively advance an invention in the United States.
There are certain deadlines that apply, therefore you must notify your patent attorney immediately if you want to file any foreign patent applications.

Denver Patent Attorney Information for Inventors

What Happens After Inventors File A Regular Patent Application?

After filing a regular patent application, the U.S. Patent Office examines the patent application and either issues an Office Action or a Notice of Allowance. While a Notice of Allowance would be nice, it is rare that the Examiner will issue a Notice of Allowance after the first examination. It’s more likely that you will get an Office Action.
In the Office Action, the Examiner may reject the claims in the patent application, or reject a portion of the claims in the patent application and indicate those portions which may be allowable. Applicants have an opportunity to respond to the Office Action. Typically, applicants will have 3 months in which to file a formal written Response. Applicants can typically buy extensions of time for an additional 3 months (for a total of 6 months to file a Response).

Failure to file a Response within the allotted time can result in a patent application going abandoned.

Get a copy of our Inventor’s Guide here: Inventor’s Guide

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