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Avoid the Public Disclosure
Ward Law Office does not charge for initial consultations. If you have a question, do not hesitate to contact us via the below form. Our office will then be in touch with you as soon as possible.
Avoid the Public Disclosure
Hello again. In our previous video, we discussed how the first step of the patent process is to properly document your invention.
In this video we discuss the second step of the patent process which is to avoid the public disclosure.
Inventors are Proud People
And rightfully so.
They’ve created and brought something new to the world. The most natural tendency is to run down the street shouting: “Eureka! Look what I’ve made!”
Or, in the modern context, plaster the invention all over your social media and on the internet.
I’m here to tell you: avoid that urge.
In the United States, if you tell a third party about the invention, offer to sell it or actually sell the invention you have started a one year clock within which you must file a patent application or be barred from obtaining a patent.
Many other countries have absolute novelty requirements which means these types of activities can destroy any opportunity to seek foreign patent protections.
In view of this public disclosure or on sale bar, you would be wise to avoid telling third parties about the invention including: business advisors, prototypers, manufacturers without:
- Filing a patent application to become “patent pending”
- or, having a third party sign a non-disclosure agreement (NDA)
Indeed, this is why NDAs are most important early in development.
So to Recap
The first two steps before filing a patent application are to:
- Properly document your invention
- Avoid the public disclosure
In our next video we will be discussing the third step before filing a patent application.
The professionals at Ward Law Office are available to answer any questions you might have about patent, trademarks or copyrights.
WARD LAW OFFICE LLC
120 1/2 S. Washington Street
Suite 207
Tiffin, Ohio 44883
419-408-5500
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Contact
Ward Law Office LLC does not charge for initial consultations. If you have a question, do not hesitate to contact us via the below form. Our office will then be in touch with you as soon as possible.
Jacob “Jake” M. Ward is a registered patent attorney admitted to practice in the State of Michigan, before the United States District Court of the Eastern District of Michigan, and before the United States Patent and Trademark Office. He is also registered as a patent agent, non-resident, in Canada.
Mr. Ward received a Bachelor of Science degree in Biochemistry from the University of Dayton and a Juris Doctor degree, cum laude, from the University of Toledo, College of Law. At the University of Toledo, Mr. Ward was also awarded a certificate of concentration in Intellectual Property Law.
Mr. Ward is also the founding author of the Anticipate This!™ | Patent and Trademark Law Blog, which provides light commentary on the practice of patent law, trademark law, and science & technology.
Invention Disclosure Form
Ward Law Office LLC invites you to use our proprietary Invention Disclosure system to submit invention details to our law firm. There is no cost to use this system. All submissions through the system are secure and treated as confidential. If you would like to use the Invention Disclosure system, please request a password by sending us a message via the Contact form, or by calling our Ohio office at 419-408-5500 or our Michigan office at 248-579-2197.
Firm At A Glance
Attorneys
Jacob M. Ward
Founding Member
Jacob "Jake" M. Ward is a registered patent attorney admitted to practice before the United States Patent and Trademark Office, in the State of Michigan, and before the United States District Court of the Eastern District of Michigan. Mr. Ward is also a registered Canadian Patent Agent, non-resident, admitted to practice before the Canadian Intellectual Property Office.
Amy E. Rinaldo
Member and Managing Attorney
Ms. Rinaldo has extensive experience as a Registered Patent Attorney before the U.S. Patent and Trademark Office (USPTO). She has assisted corporations, small businesses, and individuals not only in protecting their intellectual property rights, but also in planning and executing a worldwide protection strategy. This has enabled her clients to effectively leverage their intellectual property portfolios (including patents, trademarks, copyrights, and trade secrets) in acquiring additional funding or acquisition.
Chloe Goodlive
Member
Chloe Goodlive is an attorney admitted to practice in the State of Ohio, and a Senior Associate at Ward Law Office. Her duties include, preparation and prosecution of patent applications in various technical arts, including the chemical, mechanical, and electrical arts. Ms. Goodlive also prepares legal opinions related to patentability, infringement, patent validity, and freedom to practice.
William A. Ziehler, PhD
Managing Attorney
Dr. William “Bill” Ziehler has extensive experience as a Registered Patent Attorney before the U.S. Patent and Trademark Office (USPTO). His practice focuses on the drafting and prosecution of patent applications, and provision of legal opinions on freedom-to-practice, infringement, and patentability. He also has substantial appellate experience before the Patent Trial and Appeal Board (PTAB) at the USPTO.
Chip Dusseau
Managing Attorney
William "Chip" Dusseau is a Registered Patent Attorney. Mr. Dusseau has 15 years of experience in intellectual property law. He has worked in both private practice and in-house counsel. Mr. Dusseau has extensive experience in developing and executing intellectual property strategy and the management of patent and trademark portfolios.
Fernando Alberdi, PhD
Managing Attorney
Dr. Fernando Alberdi has extensive experience in intellectual property law, with a focus on patent preparation and prosecution in the life sciences sector. His practice encompasses counseling public and private companies, as well as non-profit institutions including hospitals, research institutions and universities on the full spectrum of patent-related matters.
Courtney Cannell
Senior Associate
Courtney Cannell is a registered patent attorney admitted to practice before the United States Patent and Trademark Office and in the State of Ohio. Ms. Cannell received a Bachelor of Science degree in Chemistry from the University of Pittsburgh and a Juris Doctor degree from the University of Akron, School of Law. At the University of Akron, Ms. Cannell was also awarded a certificate of concentration in Intellectual Property Law.
Zachary Proch
Associate
Zachary Proch is an attorney licensed to practice in the State of Ohio. He holds a Bachelor of Science in Chemical Engineering and a Certificate in Polymer Engineering from The University of Akron. Before embarking on his legal career, Zachary gained valuable experience as a Materials Engineer at Hankook Tire ATC. He earned his Juris Doctor and a Certificate in Intellectual Property Law from The University of Akron School of Law.
Jon Shackelford
Senior Attorney
Jon Shackelford is a Registered U.S. Patent Attorney practicing in Michigan. Jon began his training in the IP-legal field in 1986. After graduating from law school in 1990, Jon entered private practice as a licensed attorney. In 1997, Jon took a position to head the IP Department for global automotive supplier Federal-Mogul Corporation (Southfield, Michigan). In 2004, Jon returned to private practice and since that time has served as legal counsel to a wide spectrum of clients on matters of IP strategy and implementation.
Matt Binkowski
Senior Attorney
Matt Binkowski is an experienced patent attorney admitted to practice before the United States Patent and Trademark Office, in the State of Michigan, and before the United States District Court of the Eastern District of Michigan. His practice consists of preparation and prosecution of patent applications in electrical, software, mechanical, and electro-mechanical technologies. Mr. Binkowski also prepares legal opinions in relation to patentability, infringement, patent validity, and freedom to operate. He is also experienced in patent litigation, obtaining trademark registrations, as well as copyright matters. He received a Bachelor of Science degree in Electrical Engineering from Michigan State University and a Juris Doctor degree from Wayne State University Law School.
Shweta Dharap
Patent Specialist
Shweta Dharap works as a Patent Specialist at Ward Law Office. She has limited recognition to practice before the US Patent and Trademark Office and holds a Master’s degree in Biotechnology and a Master of Science in Law (MSL) degree from Northwestern University. At the firm, she handles filing of patent applications, responses and Information Disclosure Statements.
Kristina Montanez
Of Counsel
Kristina Montanez is a Registered Patent Attorney before the U.S. Patent and Trademark Office, and is licensed to practice in Washington State and the United States District Courts for the Western & Eastern Districts of Washington. Ms. Montanez received a Bachelor degree in Computer Science from Oregon State University, a Bachelor degree in Government from Eastern Washington University, and a Juris Doctor degree from Gonzaga, School of Law.
Matt Rykels
Of Counsel
Mr. Rykels has experience as a Registered Patent Attorney before the U.S. Patent and Trademark Office (USPTO) and is Senior Counsel with Ward Law Office. He has experience working with large organizations, start-ups, and entrepreneurs to develop and execute patent and trademark strategies including identification of potentially protectible inventions, trademark identification, prosecution, appeals, pre-litigation investigations, post-grant proceedings, and preparing patent portfolios for enforcement and sale.
Mandy Sinclair-Nitschke
Of Counsel
Mandy Sinclair-Nitschke is an attorney admitted to practice in the State of Ohio. Her practice focuses on the drafting and prosecution of trademark and patent applications, and provision of legal opinions relating to trademark clearance, freedom to practice, patent infringement, and patentability.
James J. Dottavio
Of Counsel
James (“Jim”) Dottavio is a registered patent attorney, admitted to practice before the United States Patent and Trademark Office and before the United States District Court of the Eastern District of Michigan. Mr. Dottavio served as the Director of Technology Transfer at West Virginia University, and previously served as in-house IP Counsel for the Ford Motor Company and Owens Corning.
Mustafa Nahhas
Law Clerk
Mustafa Nahhas is a patent law clerk interested in pursuing a career in Intellectual Property Law. Mustafa received a Bachelor of Science degree in mechanical engineering from Wayne State University and is currently employed as a mechanical engineer. He is scheduled to begin law school this year.
Griselda Gjikolaj
Law Clerk
Griselda Gjikolaj is a patent law clerk interested in pursuing a career in Intellectual Property Law. Griselda received a Bachelor of Science degree in Human Biology at Michigan State University where she is currently working towards her Juris Doctor degree. (Go Green!) Prior to working at Ward Law Office, Griselda worked as a law clerk for approximately 4 years. She is now working towards becoming a Registered Patent Attorney.
Legal Services
Jenn Howard
Business Manager
Jenn Howard is the Business Manager at Ward Law Office LLC. As the Business Manager, Jenn is responsible for maintaining client information, managing the docketing and renewals systems of the firm, overseeing daily office tasks, and managing and distributing inbound communication from clients, foreign associates and the United States Patent and Trademark Office.
Christine Golupski
Docketing Manager
Christine Golupski has over 12 years of experience working in the field of Intellectual Property Law. During this time she has prepared and filed U.S. and PCT patent applications with the United States Patent and Trademark Office (USPTO), reports USPTO correspondence and filings to the client, maintains communication with foreign associates, assists with docketing, and has attended to payment of annuity and maintenance fees.
Samantha Yahn
Senior Legal Assistant
Samantha Yahn works as a Legal Assistant at Ward Law Office. She is skilled in the filing of patent applications and communicating with clients and foreign associates. Ms. Yahn manages incoming correspondence for the law firm and is responsible for the opening of new matters at the firm.
Katie Steinhauser
Administrative Assistant
Katie Steinhauser works as an Administrative Assistant at Ward Law Office. Ms. Steinhauser manages outgoing correspondence for the law firm and is responsible for client communications regarding updates to patent and trademark prosecution.
Kendre Daniels
Legal Assistant
Kendre is a Legal Assistant at Ward Law Office, PLLC, with 20 years of experience in intellectual property law. She is passionate about supporting artists, entrepreneurs, and inventors in protecting their brands, inventions, and creative works through her work in IP prosecution.
Kristin Baker
Docketing Specialist
Ms. Baker is a Docketing Specialist responsible for monitoring deadlines and maintaining accurate docketing records for intellectual property matters.
Anne Fisher
Legal Assistant
Anne Fisher is a Legal Assistant at Ward Law Office LLC and has over 10 years of experience working in the field of Intellectual Property Law. As an Administrative Assistant, her expertise is in researching and filing prior art disclosures with the United States Patent and Trademark Office. She also handles filing patent applications and communicating with clients and foreign associates.
Operations/Accounting
Kristi Ward
Firm Administrator
Kristi Ward is the Firm Administrator of Ward Law Office LLC. Kristi is responsible for billing, accounts receivable, payroll, human resources, technology and managing the daily operations of the law firm. She is also the wife of Jacob, the Founding Member of Ward Law Office.
Jeri Fasig
Accounting Advisor
Ms. Fasig is an experienced accounting professional based in Ohio with a background in financial management, accounting operations, and business advisory support. She is a Certified Public Accountant licensed in the State of Ohio and experienced in senior financial leadership roles, including serving as Chief Financial Officer for an established marketing and media organization headquartered in Toledo, Ohio.
Craig Watson
Accounting Assistant
Craig Watson is an Accounting Assistant for Ward Law Office LLC. As Accounting Assistant, he is responsible for billing, accounts receivable, accounts payable, and other accounting-related duties.
Lisa VanKlingeren
Accounting Assistant
Ms. VanKlingeren is an Accounting Assistant who assists with accounting and financial administration at Ward Law Office. She has experience supporting financial operations for business organizations and prior to joining the firm worked in accounting‑related roles in the Toledo, Ohio area, where her responsibilities included managing accounts and supporting day‑to‑day financial administration.
Kaelyn Ruas
Executive Assistant
Kaelyn Ruas works as a Legal Assistant at Ward Law Office. She is currently pursuing a Bachelor of Art's Degree in Political Science and International Relations at Florida Atlantic University. She has worked at various firms and takes inspiration from her diverse work experience, including earning a scholarship for her essay on the relationship between language barriers and medical malpractice from her local County Chapter Association of Legal Administrators.