Q. If I create a new invention and later find out that someone has patented it, can I still make it?

A. It depends. If you invented it first, you may be able to challenge the validity of the patent. If you did not, then you cannot make the invention without risking liability for patent infringement. If you knowingly infringe, you may be liable for up to three times regular infringement damages. If you find that you have an invention which someone has also invented, contact us for a consultation. You may also be able to take advantage of interference proceedings before the U.S. Patent and Trademark Office.

Q. I saw a picture of a wonderful Yosemite waterfall last summer. If I go back to Yosemite next summer and take a picture of the same waterfall from the same location, will I be liable for copyright infringement?

A. No. You will have independently created the photo, so no liability for copyright infringement should lie. Not that the original picture taker might not try, but he or she should be able to discover the differences between photos and know yours is not a copy of his or her work. If you were to copy his or her photos, then you would face liability unless you could successfully raise a defense.

Q. I want patent protection overseas. How do I get this protection?  In

A. You must file applications with the patent offices in the countries where you seek patent protection. If you file with the U.S. Patent and Trademark Office, your patent rights are limited. If someone makes your invention outside the United States, and this product does not reach the United States, you have no recourse. You must have patent rights in the other country to have protection.

There is a procedure used under the Patent Cooperation Treaty (PCT) to allow you to make multiple patent application filings. You must take care when you make multiple applications because a patent application in one country may be used as prior art to bar another of your patents, based on the same application, in another country. Consult our office before filing any patent application if you seek protection outside the United States.

Q. I have a trade secret. Can I get a patent on it?

A. It depends. Is the trade secret an invention? Does it meet the requirements of a patent? A primary concern is whether the trade secret has been in "public use" for more than 1 year before the patent application is filed. It does not have to be revealed to be in public use. The same is true is you offered for sale or sold an item with the invention more than 1 year before filing your application. If so, then you are barred by statute. Consult with our office to determine whether you may be able to obtain a patent and, if you used the trade secret in public, or sold it or put it up for sale, more than 1 year ago, whether you qualify for the experimental use exception.