Stephen E. Zweig

Experienced patent attorney with a strong technical background, over 250+ issued patents, and many trademarks.

In addition to my legal background, I have a Biophysics STEM background (PhD) and experience with medical devices, software, electronics, and biotech. I have a lot of experience with startups, due diligence, and litigation support.

Patents

Patent Prosecution

Trademarks

Trademark Registration

Intellectual Property

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California

State Bar of California

ID Number: 283095

Since 2012

USPTO patent bar (Federal Jurisdiction)

ID Number: 60144

Since 2007

American Bar Association  # 02064556

Member

Current

Q. Dear Ms./Mr.,In order to have an international patent, what is the procedure, aprox. time and costs?Thank you!

March 6, 2023

A: The international patent process starts simple, but then gets more complex. Ultimately most countries (with the EU acting as a block) want to process patent applications through their local offices and correspond to local law firms. By treaty, the initial patent application in most countries also protects your international rights for the first 12 months after filing. However there are a large number of countries, and 12 months is not very long. As a result, a second "Patent Cooperation Treaty" (PCT) allows members of participating countries to have more time to think -- up to about 30 months from the initial patent application. To do this, you fill out a PCT patent application within 12 months of the first filing date, send them a reformatted version of your initial patent, along with additional fees and paperwork. You then have up to about 30 months to decide where you want to go next. After 30 months, you then have to make difficult and expensive decisions as to which specific countries you want to file in for national phase protection. Local firms will have to be contacted, and many countries will also require translations. The EU is an exception, and you can elect for an EU wide patent examination if you want. There are service agencies that can help you do the national phase filings. I use RWS IP services (Inovia) but there are a fair number of others. But after the initial filing, you need to set your calendar, and file a PCT application within 12 months. Then don't forget to make the national phase decisions by 30 months.

Q. Dear sir, How to disclose the entity as Small Scale unit in granted patent for paying renewal fees

February 13, 2023

A: The USPTO classifies applicants as large entity, small entity, and micro entity. Assuming you qualify, then even after the patent was granted, it is possible to change your status to small or micro entity and get a substantial discount on the renewal fees. Small entities are often small businesses with fewer than 500 employees, or businesses/individuals who don't qualify for micro entity status. See: https://www.uspto.gov/blog/director/entry/ensuring-the-validity-of-micro#:~:text=A%20small%20entity%20is%20generally,to%20a%20non%2Dsmall%20entity. Micro entities are usually very early stage startups, lower income inventors who have not filed much before, or educational institutions. The micro entity requirements are here: https://www.uspto.gov/patents/laws/micro-entity-status As you can see from the first article, the USPTO does have a problem with erroneous filings. Regardless of if you can do this for yourself or not, consider asking your original attorney or other US patent attorney to help.

Q. If I have an investor , and the patentholder dies, is it possible for the investor to file claim to that patent?

February 6, 2023

A: It depends on how ownership of the patent is structured, and the terms of the investment. For example, investors often require that the inventor assign the patent to a company. The inventor will presumably own shares in the company. When the investor invests, then the investor owns shares in the company as well. If the inventor dies, the inventors heirs will own the investor's shares, and the investor will continue to own their shares. Alternatively, the investor may have required that the inventor assign some or all of the patent to the investor. Again, if the inventor dies, the inventor's heirs will own the inventor's percentage ownership, and the investor will continue to own their percentage ownership. If things are informal, it gets more confusing. However it is possible that the investor may still have a claim on at least part of the invention as well.