A worldwide attorney network serving inventors and entrepreneurs.
John J. Connors
Protecting and patenting Your Inventions
Patent Attorney John Connors devotes his career to the power of innovation. As a speaker and author of Patent It and Grow Rich, his mission is to ensure that organizations and entrepreneurs retain their rights to inventions… and profit from them!
Patent prosecution, Copyright registration, and Trademark applications
With a background in music, Thomas Connors enjoys blending art with science to create intellectual property that withstands the test of time. His expertise includes patent prosecution, copyright registration, and trademark applications. Thomas holds a bachelor’s degree from UCLA and a law degree from the University of La Verne College of Law.
Dylan Connors heads the IT department at Connors & Associates, while completing his Bachelors degree in Computer Science at CSUF. Dylan is leading the firms charge into the future helping it adjust to the latest technologies (software programs) necessary to communicate, compete, track and protect with speed, accuracy and agility in the patent law world.
WHAT MAKES US DIFFERENT FROM OTHER LAW FIRMS?
OUR FAMILY REPUTATION, a tradition of excellence that stands behind the patents, trademarks, and copyright registrations obtained through Connors & Associatespc. We are a team of dedicated and expert intellectual property and patent law professionals, including the founder and patent attorney, John Connors, his son Thomas, attorney at law, and his grandson, Dylan, a patent intern and the firm’s IT director.
John Connors drafts one or more of claims for the patent applications filed by the firm. As a former lead director of ICU Medical, Inc. (NASDAQ) and the author of that company’s foundational patents, he knows first hand that the initial patent drafting work is vital to the success of a startup company, or an independent inventor’s licensing program for that matter. Many law firms assign junior attorneys to do this foundational patent drafting work. Not so with patents obtained through Connors & Associatespc.
We expect that each issued patent obtained through Connors & Associatespc is recognized by potential infringers as valid and that the patent’s claims cannot be easily circumvented. Patents that can withstand potential challenges of competitors is our objective. Only such patents can guarantee market exclusivity for the protected invention. We consider the long-term and prepare the inventor to discuss the invention with the Examiner when prosecuting the claims before the United States Patent and Trademark Office (USPTO), and to be a star witness in a lawsuit enforcing the granted patent, if necessary. This increases the likelihood that a lawsuit can be avoided and infringers will pay up or stop infringing.
Each patent application we draft is a team effort, especially in drafting the claims. The written specification must provide an adequate disclosure so a person skilled in the art to which the invention is related can practice the invention. In other words, just by reading the written specification anyone skilled in the related art can make and use the disclosed invention without any additional experimentation. This is the enabling disclosure requirement. Since no new matter may be added to a patent application after filed, we work closely with our clients to develop claims that provide the maximum protection available under the patent law and a comprehensive, enabling, written disclosure supporting these claims. The preparation of an Information Disclosure Statement that presents to the Examiner the relevant prior art known to patent applicant is very important. In view of the America Invent Act, the best way to prevent an Inter Parties Review in the USPTO is the have the Examiner consider the best prior art available for review by the Examiner during prosecution of the application.
Thomas Connors is responsible for the firm’s business operations and all clients’ matters. He joined the firm in 2005 and began working with his father in filing and prosecuting trademark and patent applications. Thomas reviews the specification, claims, and drawings before filing the patent application and confirms inventorship and ownership of the invention. He sees to it that the proper documents are filed with the patent and trademark applications, and keeps the firm’s clients informed as to the status of their applications and their other legal matters handled by the firm. In the case of provisional patent applications he alerts the client that a non-provisional application and possibly foreign patent applications must be filed within one year of the provisional application filing date in order to obtain the benefit of this earlier filing date of the provisional application.
Foreign or international trademark and patent applications should also be filed if protection is desired outside the United States. Thomas contacts the firm’s foreign associates in those countries in which our clients desire foreign patents and trademark registrations. Typically, an international patent application under the Patent Cooperation Treaty (PCT) is filed in order to defer substantial foreign filing costs for about 18 additional months. Beth Ellison, who has been with Connors & Associatespc since 1994, assists Thomas in communicating with our clients and foreign associates and makes sure maters are handled on time. Dylan Connors helps his grandfather write the patent applications, and will be taking the examination to qualify as a patent agent upon acquiring sufficient college credits in science and technology.
The reason you hire a patent attorney is to write the legal definition of your invention, namely, the claims. A claim identifies the crucial elements of the invention that distinguish the invention from the prior art. The “words” of the patent claim are critical. The wording of the claim must “read on” a commercially competitive product that utilizes the invention. Ultimately, the claims will be scrutinized by investors providing funding of a startup company, or the lawyers of a prospective licensee or infringer. Sometimes the issued patent document is all a client can present to a prospective investor or licensee or infringer.
In drafting claims, the firm draws upon the years of experience John brings to bear in writing the “story of the invention” that is presented for examination. Thomas and Dylan assist in preparing a written specification describing the invention. This specification is used to interpret the meaning of the claims, but the claims only accompany the specification upon the filing of a non-provisional patent application. Provisional patent applications are prepared in the same manner as a non-provisional application except the claims are not filed when the provisional application is filed. Typically a drawing illustrating the invention is included in the patent application.
Thomas, in consultation with his father, prepares responses to office actions issued by the United States Patent and Trademark Office. When the non-provisional patent application is filed, it is assigned to an Examiner. Prior to assigning the application to the Examiner, however, an application clerk checks that the required formal documents are signed, the filing fees are paid, the written specification nominally appears to be acceptable, and any drawing meets the formal requirements. In many applications the Examiner makes an initial determination that the claims are directed to more than one invention. Consequently, an election must be made as to which group of claims are to be examined at this time. A divisional application may subsequently be filed prior to issuance of a patent on the elected claims.
Almost always the patent Examiner finds some prior art that is used to reject the original claims as lacking novelty or simply covering obvious subject matter. Sometimes the Examiner also rejects the claims as directed to non-patentable subject matter, namely, a phenomenon of nature, an abstract idea, or a mental process. At this stage, we work with the client to develop a strategy designed to overcome the Examiner’s objections. Frequently, the client is the person best qualified to present the reasons why the prior art is deficient. After discussing the prior art with the client, new claims are many times submitted. Commonly, a telephone interview is frequently conducted with the Examiner. Sometimes prior to replying to an office action in writing as is ultimately required. Thomas prepares these written responses, which are filed after being reviewed by the client and his father. Sometimes, though infrequently, it is necessary to appeal the Examiner’s decision to the Patent Trial and Appeal Board (PTAB), or even to the Court of Appeals for the Federal District (CAFC). Thomas, in collaboration with the client and his father, does this appellate work.
Thomas is responsible for all trademark work, and started working with his father on trademark matters while attending law school. Unlike patents, trademark rights are ultimately established by use of the client. A federal registration is highly desirable if a client is using or intends to use the mark in interstate or international commerce. Often Thomas guides the clients through the 6-step process of selection and registration of their marks as outlines in the attached download
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