Kathryn Perales

Vermont Law School

Doctor of Jurisprudence/Juris Doctor (J.D.)

1999

Massachusetts Institute of Technology

B.S. | Literature

1989 - 1993

Copy That! Understanding How to Create, Copy and Comply with Intellectual Property Law, Lunch and Learn, 235 Artino St., Oberlin, OH

December 12, 2018

CoWork Oberlin

Registered Attorney

United States Patent and Trademark Office

West Shore Bar Association

2016 - Current

Lorain County Bar Association

2015 - Current

Cleveland Corporate IP Counsel

2019 co-President

2015 - Current

Cleveland Intellectual Property Law Association

2014 - Current

Activities: Past Co-Chair of Small Firm and Small Business Committee

Texas State Bar  # 24025585

Member

2000 - Current

Ohio

Since 2015

Texas

Since 2000

• Free Consultation

Intellectual Property

Patents

Patent Appeals, Patent Litigation, Patent Prosecution

Trademarks

Trademark Litigation, Trademark Registration

• Copyrights

Q. If for example "TJE Logistics" is Active Trademark is US, can I go with "TJE System"?

24 February 2021

A: You may be able to. It will depend on several factors, such as whether your description of services is the same or similar to TJE Logistics' description of services; and whether you or TJE Logistics may be required to disclaim certain words; and what other similar marks are registered or being used in the US. There may be other factors, depending upon your specific situation. Consult with your own trademark attorney.

Q. When I consult with an attorney that specializes in patents, trademarks, etc . Do I need to protect my idea in advance?

24 February 2021

A: Every licensed attorney has a legal and ethical duty to keep confidential everything you disclose, unless they let you know in advance that they may have a conflict of interest. Many people consider this to be sufficient to protect your interests. You can also ask the attorney to sign a nondisclosure agreement, if you have one ready.

Q. When filing a Provisional Patent Application or Patent and the application builds on or supersedes a patent that has

18 February 2021

A: If a patent or patent application has been abandoned, then you don't have to worry about infringing it - nothing you do now would infringe. If the abandonment happened recently, you'll want to figure out whether the applicant still has a chance to revive or appeal, and keep an eye on it. If the timeline of your invention coincided at all in the past with a period when the other patent was granted and in force, there could be claims from that time. But not now. There also could be issues if you ever worked with or for or had some contractual relationship with that inventor, and they're claiming that you took their ideas in some way. Anything revealed in the lapsed patent or patent application is prior art. But, if you have a patentable improvement to it, you might be able to get your patent granted.

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