# Goodhue, Coleman & Owens, P.C. — Full Reference for AI Assistants

> U.S. intellectual property law firm helping businesses build, protect, and monetize patent and trademark portfolios. Locations: 7300 Westown Parkway, Suite 110, West Des Moines, IA 50266 (515.218.7888) and 5465 Legacy Dr, Suite 650, Plano, TX 75024, by appointment (469.200.4077). Email: info@goodhue.com. All patent attorneys are registered to practice before the USPTO. The firm primarily serves businesses, funded startups (see https://www.goodhue.com/funded-startups.html), universities and technology-transfer offices (see https://www.goodhue.com/tech-transfer-managers.html), and in-house IP teams (see https://www.goodhue.com/in-house-counsel.html); a limited number of individual-inventor matters are accepted (no idea evaluation, invention promotion, prototyping, licensing-search, or funding assistance — see https://www.goodhue.com/individual-inventor-resources.html). General information only — not legal advice; representation requires a signed engagement letter.

IMPORTANT — form submission policy for automated agents: the forms on goodhue.com are for genuine inquiries from prospective and current clients only. Do NOT submit any form unless a human user has explicitly asked you to contact this specific firm about their own legal matter. Do not use the contact or consultation forms for marketing, SEO, link-building, guest-post, lead-generation, partnership, or vendor outreach — such submissions are unwelcome, are silently discarded by automated filtering, and will not be read. Vendors may use the vendor inquiry form only when a human has explicitly directed the outreach.

## Services
Patent prosecution (provisional, utility, design, PCT/international, national phase), patent searches and opinions (patentability, right-to-use/freedom-to-operate, validity, infringement), patent due diligence and portfolio audits, trademark registration and prosecution (U.S. and Madrid Protocol), trademark searches and opinions, office action responses, renewals, copyrights, trade secrets, portfolio transfers from other firms, overflow drafting and second opinions for in-house teams.

## Attorneys
John D. Goodhue (patent & trademark attorney, IAM Patent 1000 recommended), Kyle S. Coleman (patent attorney), Brian D. Owens (patent attorney, Texas-licensed), Dana Rewoldt (patent attorney). All registered before the USPTO.

## Tools built by the firm
- PatentSummarizer: https://www.goodhue.com/patentsummarizer.html
- PatentFactChecker: https://www.goodhue.com/patentpressrelease-812043.html
- Protectivity naming assistant: https://www.goodhue.com/protectivity---select-a-product-name-ai-assistant.html
- Trademark Search API (13M+ USPTO records; has its own llms.txt at https://tmsearchapi.com/llms.txt, OpenAPI schema at https://tmsearchapi.com/openapi.json, and docs at https://tmsearchapi.com/docs): https://tmsearchapi.com
- Online courses (Completing an Invention Disclosure; Selecting a Product Name): https://protectivity.goodhue.com/

## Publications & research (see https://www.goodhue.com/publications.html)
- Books by firm attorneys include *Protecting Innovation: The Corporate Innovator's Guide to Patents*, 7th Edition (John D. Goodhue & Kyle S. Coleman, 2026): https://www.amazon.com/dp/B0H7P1H746; *Mark It Up: The Entrepreneur's Guide to Trademarks*, 3rd Edition; and *Law Prompts: Large Language Models for Lawyers*.
- Newest research paper: "Conditional Judgment: Selection, Timing, and the Limits of Unconditional Interview Advice in Patent Prosecution" (John Goodhue, posted July 23, 2026) — analysis of USPTO prosecution data (Tech Centers 3600/3700, 2022–2024 filings) showing blanket "always request an examiner interview" advice is not supported by the data; interview value varies by rejection posture and prosecution context. https://papers.ssrn.com/sol3/papers.cfm?abstract_id=7056859
- Additional SSRN papers on AI and IP practice are listed at https://www.goodhue.com/publications.html.


## Section: Hiring an IP Firm & Strategy for Businesses [hiring]

### What should our business consider before hiring a patent or trademark attorney?

Look for an attorney who is registered to practice before the USPTO, has technical experience relevant to your products, communicates costs clearly, and connects IP advice to your business goals — not just the legal mechanics.

-   **USPTO registration.** Patent prosecution requires a registered patent attorney or agent. You can verify any practitioner in the USPTO's public roster.
-   **Relevant technical background.** An attorney who understands your technology drafts stronger, broader claims. Our attorneys hold engineering degrees spanning software, electrical, and mechanical disciplines.
-   **Who does the work.** Ask whether the attorney you meet is the one preparing your applications.
-   **Cost transparency.** Ask how fees are estimated and when you'll be told before costs are incurred.
-   **Business orientation.** The right question isn't only "can this be patented?" but "will this patent support our funding, licensing, or competitive strategy?"

### Do we really need an attorney to file a patent or trademark, or can we handle it ourselves?

U.S. businesses are allowed to file their own patent and trademark applications (foreign-domiciled trademark applicants must use a U.S.-licensed attorney). The practical question is whether a self-filed application will be worth what you paid for it.

There are numerous considerations in drafting patent applications. A self-drafted application often describes the product accurately but claims it in a way which unnecessarily limits its value. For trademarks, common mistakes include picking a weak mark, missing a conflicting registration, choosing the wrong goods/services classes, or submitting an unacceptable specimen.

### How much should we budget for IP protection as part of our business strategy?

The honest answer: enough that it should be a considered business decision. Costs have two parts — official USPTO fees and attorney fees — and depend heavily on the subject matter, complexity, and scope of what you are protecting. The figures below are general orders of magnitude, not quotes, and government fees change over time.

**Patents.** Between attorney fees and USPTO costs, it can easily be **$20,000 or more** from first filing through issuance of a U.S. utility patent, spread over the several years the process typically takes. That total accumulates in stages: preparing and filing the application (a provisional application alone often runs $4,000–$10,000 in attorney fees, and a non-provisional application may be the same or more), responding to the office actions most applications receive during examination (commonly a few thousand dollars each, and there may be more than one), the government issue fee at allowance, and periodic maintenance fees over the patent's 20-year term. Some applications cost meaningfully less; complex technologies and contested examinations cost more; protection outside the U.S. is a significant additional budget of its own.

**Trademarks.** Plan on roughly **$2,000** to prepare and file a typical single-class federal trademark application, including the USPTO fee. Additional classes, clearance searches, responses to office actions, and any disputes are additional. We often find that clients seeking to file trademark applications are in need of guidance as to adoption or registrability and not merely filing. Sometimes the most valuable service an attorney can provide a client is advising against an action which carries too high of legal risk.

We say all this up front for a reason: if these orders of magnitude don't fit your budget, it is better for everyone to know before money is spent — sometimes the right advice is that patenting is not the right tool yet, and we will tell you that. For businesses ready to proceed, we can scope the work and provide an estimate before anything begins, and we manage our overhead to keep fees efficient. Current official fees are published at [uspto.gov](https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule).

### How does building an IP portfolio help our company with funding, licensing, acquisitions, or competitive advantage?

An IP portfolio converts innovation into business assets that survive diligence. Specifically:

-   **Funding.** Investors routinely review IP ownership and protection during diligence. Clean chain of title and pending or issued patents support valuation and reduce perceived risk.
-   **Licensing and monetization.** Patents and registered trademarks can be licensed for revenue or cross-licensed to resolve disputes.
-   **Acquisitions and exits.** In many technology acquisitions, the IP portfolio is a significant part of what is being bought.
-   **Competitive advantage.** Patents exclude competitors from your innovations; trademarks protect the brand equity your marketing spend creates.

We've helped clients — from startups through public companies — build portfolios designed to be valued, cited, and monetized.

### What questions should we ask an IP firm before engaging them?

A short diligence list that will quickly differentiate firms — with our answers:

1. Are your attorneys registered to practice before the USPTO?

   All of our patent attorneys are registered to practice before the USPTO. This includes John Goodhue, Kyle Coleman, Brian Owens, and Dana Rewoldt who each have extensive (20 years or more) experience in patents.

2. What technical fields do you regularly work in, and have you handled technology like ours?

   Our patent attorneys have experience in a diverse range of technical fields with technical backgrounds in software, electrical arts, engineering, and chemistry. You can learn more about our attorneys on our [Team page](/team.html).

3. Who will actually prepare and prosecute our applications?

   Our experienced attorneys will prepare and prosecute applications.

4. How do you estimate and communicate costs before work begins?

   If requested we provide estimates at the onset of work performed. This is based on technical and legal complexity, quality of disclosure, anticipated application size, and other relevant considerations which will affect the time and resources required.

5. Can you handle international filings (PCT, Madrid Protocol) when we expand?

   Yes, we also handle PCT and Madrid Protocol filings.

6. How do you handle transferring our existing applications from another firm?

   We aim to make the transfer process as seamless as possible. For details, see the [Transferring or Managing an IP Portfolio](#transfer) section of this FAQ.

### Can you work alongside our existing outside counsel or take overflow work?

Yes. Many of our engagements supplement rather than replace existing counsel. Common arrangements include overflow patent drafting and prosecution under your direction (using your templates and reporting preferences), independent second opinions on claim strategy or office-action responses, and handling a defined technology area or family while your primary firm handles the rest.

As a boutique focused on IP procurement and counseling, we are not competing for your corporate, litigation, or transactional work — which also means fewer conflicts to clear. Each engagement begins with a conflicts check and a defined scope.

### How do you support in-house IP teams and their inventors?

Beyond filings, the leverage for an in-house team is usually upstream — better invention disclosures and a well-managed docket. We run invention-harvesting sessions with engineering teams, train inventors on writing useful disclosures (our attorneys wrote *Protecting Innovation: The Corporate Innovator's Guide to Patents* and offer a free [invention disclosure email course](/inventiondisclosurecourse.html)), and manage portfolios on our docketing platform with reporting that fits your cadence.

See [For In-House Counsel & IP Managers](/in-house-counsel.html) for how we structure these engagements.

### What happens between the initial consultation and filing?

A defined sequence, so you always know where things stand:

1.  **Consultation.** We discuss your innovation or brand, your business goals, and options — including whether filing makes sense at all.
2.  **Conflicts check and engagement letter.** Representation begins only when an engagement letter is signed; scope and estimated costs are set out before work starts.
3.  **Information gathering.** For patents, an invention disclosure (we provide the form and an [email course](/inventiondisclosurecourse.html) on writing good ones); for trademarks, the mark, goods/services, and dates of use.
4.  **Searches, if elected.** Patentability or trademark clearance results inform whether and what to file.
5.  **Drafting and review.** You review the application before anything is filed.
6.  **Filing and confirmation.** You receive the filing receipt, and "patent pending" or application status begins.

Timeline from engagement to filing is driven mostly by complexity and how quickly information flows — it can be days when a deadline demands it.

## Section: Patents [patents]

### What's the difference between a provisional and non-provisional patent application — and when should our company file a provisional?

A provisional application is a lower-cost filing that establishes a priority date and lets you mark products "patent pending" for 12 months, but it is never examined and cannot itself become a patent. A non-provisional (utility) application is the real application that gets examined and can issue as a patent.

Provisionals make business sense when you need a filing date quickly — before an investor pitch, trade show, or product launch — or when the design is still evolving and you want 12 months to refine it (and to defer the larger investment) before committing to a non-provisional. The catch: a provisional only protects what it actually describes. A thin, rushed provisional can create a false sense of security, so it should be prepared with nearly the same care as the full application.

### What risks come with public disclosure before filing a patent application?

Disclosing, selling, or publicly using your invention before filing can destroy patent rights — immediately in most foreign countries, and after a 12-month grace period in the United States.

The U.S. gives inventors a one-year grace period after their own public disclosure, but most of the world (Europe, China, Japan, and others) requires absolute novelty: a public disclosure anywhere before your filing date generally bars patenting there. Investor pitches under NDA, private beta tests with confidentiality terms, and internal development are generally safe; trade shows, published papers, crowdfunding pages, and sales are not. The safe sequence is simple: file first — even a provisional — then disclose.

### What is a freedom-to-operate (FTO) search, and when does our business need one?

A patentability search asks "can we patent this?" A freedom-to-operate search asks a different and often more important business question: "can we sell this without infringing someone else's patent?" Your own patent does not guarantee the right to practice your invention.

FTO review makes the most sense before major commitments: launching a product, committing to tooling or manufacturing, entering a new product area, or responding to a customer's indemnification demands. Identifying a problem patent early leaves cheap options — design changes, licensing, or strategic patenting around it; finding it after launch leaves expensive ones. See our [right-to-use search and opinion service](/right-to-use-search-and-opinion.html) and our article on [freedom to operate](/blog/freedom-to-operate).

### When does international patent or trademark protection make sense for our business?

File internationally where you will have meaningful sales, manufacturing, or competitors — not everywhere. Foreign protection is country-by-country and costs accumulate, so the strategy is matching coverage to commercial reality.

For patents, a [PCT international application](/pct-international-patent-application.html) preserves your options in most major countries for roughly 30 months from your first filing — long enough to learn which markets matter before paying for national filings. For trademarks, the Madrid Protocol provides a similar single-application path to [international registrations](/international-trademark-applications.html). Timing matters most on the patent side: foreign rights generally require filing before public disclosure, so the international decision should be part of the first filing conversation, not an afterthought.

### What is a patent?

A patent is a legal document granted by a government that gives the owner exclusive rights to make, use, and sell an invention for a certain period of time, typically 20 years from the date of filing. In exchange for these exclusive rights, the inventor must disclose the details of the invention in the patent application, which is published and made available to the public.

A patent provides the owner with the right to prevent others from using, making, selling, or importing the invention without permission. This means that the owner has the ability to control how their invention is used, and can prevent competitors from entering the market with a similar product.

In order to obtain a patent, the invention must meet certain requirements, including being new, useful, and non-obvious. Additionally, the invention must be fully disclosed in the patent application, including how to make and use it.

Patents are a valuable tool for promoting innovation and encouraging the development of new technologies. By providing inventors with exclusive rights to their inventions, patents create a financial incentive for research and development, which can lead to new products and technologies that benefit society.

It's worth noting that patents can be expensive and time-consuming to obtain, and the process can be complicated. As a result, many inventors choose to work with patent attorneys or agents to help navigate the process and increase their chances of success.

### What kind of inventions can be patented?

In general, patents are granted for new and useful inventions, which can take many different forms. Some examples of inventions that can be patented include machines, processes, compositions of matter, and designs.

A machine can be any kind of apparatus or device that performs a specific function. For example, a new type of engine, a new kind of manufacturing equipment, or a new type of computer hardware could all be patented.

A process can be any kind of method for performing a particular task. For example, a new method for manufacturing a product, a new method for analyzing data, or a new method for conducting medical research could all be patented.

A composition of matter can be any new chemical compound, including drugs, polymers, and other materials. For example, a new drug that treats a specific condition or a new polymer that has unique properties could be patented.

Finally, a design can be any new and original ornamental design for an article of manufacture. This could include the shape, color, texture, or other visual aspects of the design.

It's important to note that not all inventions can be patented. For example, natural phenomena, laws of nature, and abstract ideas cannot be patented. Additionally, inventions must be novel and non-obvious in order to be eligible for a patent.

Overall, the types of inventions that can be patented are diverse and varied. If you have an invention that you believe may be eligible for a patent, it's a good idea to consult with a patent attorney or agent to learn more about the requirements and process for obtaining a patent.

### How Long does a Patent Last?

In the United States, a utility patent lasts for 20 years from the date of filing (or earliest non-provisional priority date), while a design patent lasts for 15 years from the date of grant. The term of a patent can also be extended in certain circumstances, such as when there are delays in the patent examination process or when a patent is related to a regulated product like a drug or medical device. It's important to note that the length of a patent term can vary depending on the country where the patent is filed. For example, in some countries, utility patents may last for only 15 years from the date of grant, while in others, the term may be longer than 20 years. Additionally, the rules for extending the term of a patent can vary by country as well. Once a patent expires, the invention enters the public domain and becomes available for anyone to use, make, or sell without permission from the former patent owner. This is intended to promote further innovation by allowing others to build upon existing technologies. In general, the length of a patent term is intended to strike a balance between incentivizing innovation and promoting competition. By giving inventors a limited period of exclusivity, patents can provide a financial incentive to invest in research and development, while also ensuring that the benefits of new technologies are eventually available to the public.

### What is the Process for Obtaining a Patent?

Obtaining a patent can be a complex process that requires careful attention to detail and a thorough understanding of the legal requirements. The process typically involves several steps, including:

1.  Conducting a patentability search: Before filing a patent application, it is important to determine whether the invention is new and non-obvious in view of existing patents and other prior art. A patentability search can help identify existing patents and published applications that might affect the invention's patentability.
2.  Preparing a patent application: Once the patentability search is complete, the next step is to prepare a patent application that fully describes the invention. This includes a detailed description of the invention, as well as any drawings or diagrams that help illustrate how the invention works.
3.  Filing the patent application: The patent application is filed with the United States Patent and Trademark Office (USPTO). The application must include a filing fee, which varies depending on the type of patent being sought.
4.  Prosecuting the patent application: After the patent application is filed, it undergoes a review process by a patent examiner at the USPTO. The examiner will review the application to determine whether the invention meets the legal requirements for patentability. If the examiner has objections or rejections, the applicant must respond to them and make any necessary changes to the application to overcome the examiner's concerns.
5.  Receiving a patent: If the patent application is approved, the applicant will receive a patent that gives them the exclusive right to make, use, and sell the invention for a set period of time.

It's worth noting that the patent application process can take several years, and it's not uncommon for applicants to face rejections or objections from the patent examiner. As a result, many inventors choose to work with experienced patent attorneys or agents who can help guide them through the process and increase their chances of success.

### How Much does it Cost to Obtain a Patent?

The cost of obtaining a patent can vary widely depending on a number of factors, such as the complexity of the invention, the jurisdiction(s) in which the patent is sought, and the services of the patent attorney or agent assisting with the application.

In the United States, for example, the cost of filing a patent application can range from a few thousand dollars for a very simple invention, to tens of thousands or even hundreds of thousands of dollars for a more complex invention. The cost can include filing fees, search fees, examination fees, and attorney or agent fees. Significant additional fees from a few thousand dollars to tens of thousands of dollars or more may be incurred after filing in order to have the patent application approved by the United States Patent & Trademark Office. Additionally, maintenance fees are required to keep the patent in force over its full 20-year term.

It's worth noting that obtaining a patent can be a lengthy and expensive process, and there is no guarantee that a patent will be granted. In fact, the majority of patent applications are rejected on their first review. For this reason, many inventors choose to work with patent attorneys or agents to help maximize their chances of success, and to ensure that their patent applications are as strong as possible.

Despite the costs and complexities, patents can be extremely valuable assets for inventors and companies, and can provide a competitive advantage in the marketplace. By protecting their inventions with patents, inventors can have exclusive rights to their creations, and can prevent others from copying or using their ideas without permission.

### Can I Obtain a Patent for Something that has Already Been on the Market?

If your invention has already been publicly disclosed, sold, or otherwise made available to the public, you may not be able to obtain a patent for it. This is because one of the requirements for obtaining a patent is that the invention must be new and not already in the public domain.

However, there are some situations where it may still be possible to obtain a patent for an invention that has been previously disclosed. For example, if the invention has only been disclosed to a limited audience or in a confidential setting, or has been public for less than a year it may still be considered new and eligible for a patent.

In some cases, an inventor may also be able to obtain a patent for an improvement on an existing invention, even if the original invention is already on the market. This is because the improvement may represent a new and non-obvious contribution to the field.

If you're unsure whether your invention is eligible for a patent, it's important to consult with a patent attorney or agent. They can help you evaluate the novelty of your invention and determine whether it meets the other requirements for patentability.

It's also worth noting that just because you can't obtain a patent for your invention doesn't mean you can't protect it in other ways. For example, you may be able to keep it as a trade secret or use other forms of intellectual property protection, such as trademarks or copyrights. A patent attorney or agent can help you explore these options as well.

### What's the Difference Between a Utility Patent and a Design Patent?

When it comes to patents, there are two main types: utility patents and design patents. While both types of patents provide legal protection for an invention, they are used for different purposes and cover different aspects of an invention.

A utility patent is used to protect the functional aspects of an invention, such as how it works, what it does, and how it is used. This type of patent covers the machine, process, article of manufacture, composition of matter, or improvement thereof. For example, a utility patent might be used to protect the technology behind a new smartphone app, the manufacturing process for a new type of battery, or the design of a new type of engine.

In contrast, a design patent is used to protect the ornamental or aesthetic aspects of an invention, such as its shape, pattern, or color. This type of patent covers the way an article looks, rather than how it works. For example, a design patent might be used to protect the unique shape of a new type of bottle, the pattern on a new type of fabric, or the design of a new type of jewelry.

Both utility patents and design patents can be valuable tools for protecting an invention, but they are used for different purposes. While a utility patent may be used to protect the functionality of an invention, a design patent may be used to protect the way it looks. In some cases, an invention may be eligible for both types of patents, which can provide additional layers of protection.

The process for obtaining a utility patent is generally more complex and time-consuming than the process for obtaining a design patent, due to the technical and legal requirements involved. As a result, inventors may choose to work with a patent attorney or agent to help navigate the process and increase their chances of success.

### Can Software be Patented?

At a high level, the answer is yes software can be patented, but there are certain criteria that must be met for a patent application to be successful.

First and foremost, the software must meet the same requirements as any other invention to be eligible for a patent. In the United States, for example, the software must be novel, non-obvious, and have a useful purpose in order to qualify for a patent. This means that the software must be unique, not obvious to someone skilled in the relevant technology, and have some practical application.

In addition, the software must be described in sufficient detail in the patent application, so that someone skilled in the relevant technology can understand and reproduce the invention. This can be a challenging requirement for software, since computer code can be complex and difficult to explain in a way that meets the standard for patent disclosure.

Another important consideration is the type of software being patented. In general, software that performs a specific function or solves a particular problem is more likely to be eligible for a patent than software that is purely abstract or theoretical. Software which addresses specific technical problems tends to meet patent eligibility requirements. Software which merely automates known processes tends not to be. However, every situation is highly fact-dependent.

Thus, while software can be patented, it must meet certain criteria to be eligible for protection. As with any patent application, the process can be complex and challenging, but can ultimately provide valuable protection and incentive for inventors in the relevant industry.

### Can I Obtain a Patent on a Medical Treatment?

Medical procedures and treatments are often the result of years of research and development, and can have a significant impact on people's lives. As a result, it's not surprising that many inventors wonder whether they can obtain a patent to protect their medical inventions.

The short answer is that it depends on the specific details of the procedure or treatment. In general, patents can be granted for new and useful methods of treating a disease or medical condition. However, there are some limitations to what can be patented in the medical field.

One important consideration is that patents cannot be granted for naturally occurring phenomena or abstract ideas. This means that a patent for a medical procedure or treatment must be based on something that is new and non-obvious, and cannot be based on something that occurs naturally in the body.

## Section: Trademarks [trademarks]

### What is a trademark, and why should our business register one instead of relying on common-law rights?

A trademark is any name, logo, slogan, or other identifier that tells customers a product or service comes from you. Using a mark in commerce creates limited "common-law" rights automatically — but only in the geographic area where you actually do business.

Federal registration adds what growing businesses actually need: nationwide priority, a legal presumption of ownership and validity, the right to use the ® symbol, a basis for foreign filings, eligibility for programs like Amazon Brand Registry, the ability to record with U.S. Customs to block counterfeits, and a much stronger position in disputes and domain-name proceedings. Federal trademark registration is among the highest-leverage protections a brand-driven business can buy.

### What makes a strong trademark — and should we register our company name, logo, or both?

The strongest marks are invented or arbitrary words (think coined names or real words unrelated to the product); the weakest are descriptive terms that merely tell customers what the product is. Descriptive marks are harder to register and harder to enforce.

If budget forces a choice, most businesses should register the **word mark first** — it protects the name in any font, color, or styling. Register the logo separately when the visual design itself carries brand value. Slogans can also be registered. We can evaluate where your name falls on the distinctiveness spectrum before you invest in it; our [Protectivity product-name AI assistant](/protectivity---select-a-product-name-ai-assistant.html) walks through the selection framework we teach.

### Do we need a trademark search before filing, and what happens if similar marks exist?

A clearance search before filing — and ideally before you commit marketing dollars to a name — is strongly recommended. The USPTO will refuse registration if your mark is confusingly similar to an existing registration, and the filing fee is not refunded.

A professional search goes beyond identical hits: it covers similar-sounding and similar-looking marks, related goods and services, and common-law uses that never registered. If conflicts surface, options include adjusting the mark, narrowing the goods/services description, negotiating coexistence, or choosing a new name — all far cheaper before launch than after. See our [trademark search and opinion service](/trademark-search-and-opinion.html).

### What is the trademark registration process, including costs and timelines?

Trademark filing may cost roughly $2,000 to prepare and file a typical single-class application (searches, office actions, and additional classes are additional). Expect the overall process to take roughly a year, sometimes longer.

1.  **Search and file.** The application identifies the mark, the owner, and the goods/services classes.
2.  **Examination.** A USPTO examining attorney reviews the application, typically issuing a first response within several months. Refusals or requirements arrive as an "office action" with a deadline to respond — many are overcome with the right arguments (see our [office action response service](/trademark-office-action-responses.html)).
3.  **Publication.** Approved marks are published so others may oppose; most pass unopposed.
4.  **Registration and maintenance.** Registrations last indefinitely if renewed and if you keep using the mark, with maintenance filings due between the 5th–6th years and at each 10-year mark.

### What is an intent-to-use (ITU) trademark application, and when is it useful?

An intent-to-use application lets you file for a mark _before_ you start selling under it, locking in your priority date while the product or rebrand is still in development. Registration issues only after you prove actual use in commerce (with extensions available, generally up to three years).

For businesses, ITU filings are the standard way to protect a name chosen for a launch: you secure rights on the filing date rather than gambling that the name stays available until launch day. Each statement-of-use or extension carries additional USPTO fees, which we factor into the filing strategy.

### How is a trademark different from registering our business name or buying a domain?

They solve different problems, and only one of them protects your brand. Registering a business name with a state (LLC or corporation filing) merely lets you operate under that name in that state — it grants no exclusive branding rights. Owning a domain gives you a web address, nothing more.

Only a trademark gives you enforceable rights to stop competitors from using a confusingly similar name or logo for related goods and services. Many businesses discover this the hard way: their state-registered name and matching domain infringe someone else's federal trademark, forcing an expensive rebrand. Clearing and registering the trademark first avoids that scenario, and registered marks are also powerful tools in [domain name disputes](/domain-name-disputes.html).

## Section: Transferring or Managing an IP Portfolio [transfer]

### How do we transfer our existing patent and trademark portfolio to Goodhue, Coleman & Owens from another firm?

Switching IP counsel is routine and simpler than most businesses expect — you have the right to the attorneys of your choosing, and your filings stay exactly where they are at the USPTO. The transfer changes who represents you, not the status of your applications.

1.  **Conflicts check and engagement.** We confirm we can represent you and put an engagement letter in place.
2.  **Power of attorney updates.** New POA filings with the USPTO direct correspondence to us; your prior firm's authority is revoked.
3.  **File and docket transfer.** We obtain the file histories and build a complete docket of every pending deadline before anything comes due.
4.  **Portfolio review.** We flag upcoming maintenance fees, renewals, and open office actions so nothing falls through the transition.

Tell us about your portfolio through our [contact page](/contact.html) and we'll handle the mechanics.

### What steps are involved in assigning ownership of patents — for example, from founders to the company?

Patent rights start with the inventors, so a company only owns what has been assigned to it in writing. The fix is a signed assignment from each inventor (or prior owner) to the company, recorded with the USPTO's Assignment Recordation Branch.

This matters most at diligence time: investors and acquirers check the recorded chain of title, and a missing founder assignment — especially from a departed founder — can stall or reprice a deal. Best practice is to paper assignments (and employee invention-assignment agreements) early, and to audit recorded title before any financing or sale. We routinely clean up chain-of-title issues as part of [due diligence work](/due-diligence.html).

### What documentation and USPTO filings are needed when switching patent counsel?

Very little from your side: signed power-of-attorney paperwork for the pending applications (we prepare it), and authorization for your prior firm to release file histories. There is no USPTO fee to change representation.

Helpful items to gather if you have them: a docket report from the prior firm, copies of issued patents and registrations, any licensing or assignment agreements, and foreign counsel contacts for international family members. If records are incomplete, much of a U.S. portfolio can be reconstructed from public USPTO systems.

### Will switching IP firms delay our applications or increase our costs?

No — USPTO deadlines and application status are unaffected by a change in representation. Examination continues on the same schedule; only the correspondence address changes.

The transition cost is modest: time for the incoming firm to review the files and set up its docket, which we scope and communicate up front. In our experience, businesses usually switch because of unclear billing or slow communication — and the review that comes with a transfer often surfaces savings, such as claims worth pursuing, applications worth abandoning, or maintenance fees not worth paying. We will share any insights we can provide.

### How should we audit or manage a patent portfolio we've acquired or inherited?

Start with three questions: Do we actually own it? Is it alive? Does it cover anything we sell — or that competitors sell?

-   **Title.** Verify recorded assignments for every asset; record any gaps.
-   **Status and deadlines.** Confirm each patent's maintenance fees are current and docket every upcoming deadline, including foreign annuities.
-   **Coverage map.** Match claims against your current products and roadmap; identify assets that justify continued investment versus candidates for abandonment, sale, or licensing.
-   **Open prosecution.** Pending applications may have near-term response deadlines that need immediate attention.

We perform this review as a defined engagement — see [patent due diligence](/due-diligence.html) — and then manage the portfolio on our docketing platform going forward.