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Kevin E. Flynn

Kevin E. Flynn

Patent Attorney For US Startups Serious About Seeking Patents
  • Patents
  • New York, North Carolina, United State Patent & Trademark Office
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Summary

Still an engineer at heart, I help companies seek strong patent protection to arm against me-too products and stay clear of third-party patent rights.

I am the right choice for the right client, but not everyone needs the same sort of patent attorney.

Some clients want to just file something so that the client can say "patent pending" without caring about actually getting a useful patent. I am not a good fit for such clients as I want to be in it to win it.

Some clients want to file a patent application although they have no idea how to make the novel product. They see the patent process as a lottery ticket where you stake a claim for a type of product and hope for a big payoff. That is not how the system works and not how I work.

Some clients want to crank out lots of very narrow patent applications where the patent attorney essentially re-formats a fairly comprehensive invention disclosure form that has been vetted by the internal patent attorneys on a patent committee. They want someone to crank out narrow applications while minimizing expenses. They have reduced new patents to a numbers game as the company has lots of patents already. No budget for creativity. Someone with less skill than me can handle that routine work.

Some clients are building a business and know that having a strong set of patents will move the needle on the value of their company as strong patents will help protect margin and market share by keeping others from selling me-too products. They want a patent attorney that is an external team member that helps the company spend money wisely while seeking patents that have commercial significance. They want someone with sufficient engineering skills to understand their technology and communicate the technology to a patent examiner. This is the type of client that I am well-suited to help.

if you want an engineer with a broad set of skills to help you seek patents or stay clear of others' patent rights, then we should talk.

Practice Area
  • Patents
Fees
  • Free Consultation
    Selecting a patent attorney is a major decision as the process is expensive and you will need to work closely with your patent attorney. You should definitely check to ensure that you have good working chemistry with a patent attorney before deciding on an attorney. I am happy to talk with you about the process and the costs without charging you for this general information. This general discussion will not go into your invention in depth and the chances that your particular innovation will be deemed patentable over the relevant prior art.
  • Rates, Retainers and Additional Information
    I have been doing patent work since 1992 and worked as an engineer for years before going to law school. My hourly rate is not as low as someone just out of law school. On the other hand, I am much more efficient than someone still learning the craft. You total cost is impacted by efficiency. As I own my firm, I can cut a bill when that is the right thing to do. Large firms often have lots of barriers to preclude cutting a bill even when the bill is larger than it should have been. My clients stay with me for years as they see my fees as reasonable in light of the value I provide.
Jurisdictions Admitted to Practice
New York
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North Carolina
North Carolina State Bar
ID Number: 23395
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United State Patent & Trademark Office
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Languages
  • English: Spoken, Written
Professional Experience
Patent Attorney
FLYNN IP LAW
- Current
In 2011, founded a law firm to provide specialized legal advice regarding intellectual property, particularly domestic and foreign patent rights, and related business issues. NOTE -- the legal name of the firm is The Law Offices of Kevin E. Flynn, PLLC.
Patent Attorney
The Eclipse Group
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Joined The Eclipse Group LLP, a national law firm of seasoned attorneys that specialize in intellectual property with an aim to provide exceptional results at reasonable rates. Helped create and maintain a large portfolio of patents relating to spine surgery and spinal implants. Worked with a number of other medical device clients. Worked to manage patent firms outside of the United States to help clients acquire patent assets in both the US and abroad.
Patent Attorney
Daniels Daniels & Verdonik
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Patent attorney at a firm that specialized in helping set up and support the growth of high technology companies. Obtained extensive experience helping companies examine patent issues for the first time. Helped companies prioritize IP expenditures to get the most bang for their limited budget. Handles all aspects of patent prosecution from strategy and initial patent drafting through the patent prosecution in both the United States and outside the United States.
Patent Attorney
Moore & Van Allen
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Patent litigation and patent prosecution, general intellectual property counseling for a range of clients from small start-ups to sizeable longstanding companies.
Patent Litgation Associate
Fish & Neave
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Patent attorney, primarily patent litigation support for large patent litigation such as the disputes between Altera and Xilinx; also wrote patent applications and responses to office actions from patent agencies; opinion work on scope of claim coverage and infringement or non-infringement.
Engineer -- series of positions with increasing responsibility.
Duke Power Company - Now Duke Energy
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Series of postions over years working with industrial equipment to generate electricity, instruments to measure thermodynamic performance, computer systems to monitor and control projects. Obtained North Carolina Professional Engineer License while working for Duke Power.
Education
Duke University School of Law
J.D. (1992)
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Honors: Graduated cum laude Winner of Melvin G. Shimm Award for work as Articles Editor.
Activities: Editor on Law Journal - Law & Contemporary Problems.
Duke University School of Law Logo
California State University - San Jose State University
M.S. (1985) | Industrial & Systems Engineering
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Honors: Graduated summa cum laude and admitted into Tau Beta Pi
California State University - San Jose State University Logo
Duke University
B.S. (1982) | Completed the requirements for a BSE in both Biomedical Engineering and Mechanical Engineering.
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Honors: Elected Dormitory President 1978.
Duke University Logo
Awards
Patents I wrote were allowed and Issued
United States Patent & Trademark Office
I am most proud of the work I do for my clients to draft and often obtain patents that describe and claim their inventions. The award link takes you to the USPTO site to see a sample of my issued patents.
AV Preeminent®--the highest rating awarded
Martindale-Hubbell
The Martindale-Hubbell® Peer Review Ratings™ help you, the consumer of legal services, identify, evaluate and select the appropriate lawyer for your legal issue. Peer Review Ratings™ identify lawyers with the highest ethical standards and professional ability. The ratings can be a useful aid when hiring an attorney.
Named as being in the Legal Elite for the category of Patents
Business North Carolina
Since 2002, Business North Carolina magazine has honored Tar Heel lawyers by publishing Business North Carolina’s Legal Elite, a listing of the state’s top lawyers in business-related categories. Winners are chosen not by BNC editors but by the state’s lawyers. Business North Carolina’s Legal Elite has become the model for other awards and lists, but it remains unique as the only award that gives every active lawyer in the state the opportunity to participate. Business North Carolina’s Legal Elite includes the top lawyers chosen using this statewide ballot. Each year, BNC sends ballot notices to every member of the N.C. State Bar living in North Carolina — asking each a simple question: Of the Tar Heel lawyers whose work you have observed firsthand, whom would you rate among the current best in these categories? Voters are not allowed to vote for themselves. They may select members of their firms only if they pick out-of-firm lawyers in the same categories, with the latter votes weighted more heavily. The top vote-getter in each category becomes a member of Business North Carolina’s Legal Elite Hall of Fame and is ineligible to win again.
Granted Admission to Tau Beta Pi for my work while a graduate student at San Jose State University
Tau Beta Pi - The Engineering Honor Society
Admitted 1985 for my work while seeking masters degree in engineering in for Industrial and Systems Engineering at San Jose State University, San Jose, California.
Professional Associations
Biomedical Engineering Society
Member
- Current
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North Carolina State Bar # 23395
Member
- Current
Activities: Member of 15B Judicial District (Orange and Chatham Counties)
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North Carolina State Bar Association # 22186
Member
- Current
Activities: Member - Intellectual Property Law Section.
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North Carolina Bar Association-Section on Intellectual Property Law
Member
- Current
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North Carolina Sustainable Energy Association
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Council for Entrepreneurial Development
Co-Chair of Demo Room Selection Committee, Invited Speaker
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Piedmont Entrepreneurial Network ("PEN")
President
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North Carolina Professional Engineering Society (Charlotte Chapter)
Social Chairman
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Publications
Articles & Publications
Samples of Issued Patents
United States Patent and Trademark Office
Provisional Patent Applications, The Good, The Bad, and The Ugly.
North Carolina Small Business Technology Develpment Center
Patent Searching for Entrepreneurs
Triange TechBreakfast Lecture Series
Protecting Your Competitive Advantages
Presentation at You Grow Girl Annual Business Summit
CREATE ACT -- New Legistlation Protects Joint Resarch Efforts, But With a Price
WRAL TechWire
What Happened to Free Speech? Changes Are Needed to Squelch SLAPP Suits
WRAL TechWire
Madey v. Duke University - The Scrap About Patents Heard Around the World
WRAL TechWire
PTO Reexamination Proceeding ... An Inexpensive Alternative to Patent Litigation
WRAL TechWire
US Patent and Trademark Office Celebrates a Pair of Milestones
WRAL TechWire
'Shop Rights' -- Another Trap That Inventors Must Be Aware of and Deal With Early
WRAL TechWire
Inventors Beware: Don't Make a Mistake and Leave Your Patent Rights at the Office
WRAL TechWire
Inventors Beware: Don't Be in a Rush To Hire an Invention Promotion Firm
WRAL TechWire
Design Patents for Computer Screen Icons - Another Tool to Protect Your Innovation
WRAL TechWire
Protecting Discoveries: House of Representatives Passes CREATE Act
WRAL TechWire
Design Patents ... Are You Overlooking This Tool to Protect Your Invention?
WRAL TechWire
Patent Fees: Misapproriation by Any Other Name Smells Just as Rotten
WRAL TechWire
Speaking Engagements
Provisional Patent Applications, The Good, The Bad, and the Ugly, SBTDC Webinar, Webinar
SBTDC (North Carolina Small Business Technology Development Center)
Address the proper use of a provisional patent application and the problems when an inadequate disclosure is submitted.
Patent Issues for Triangle Angels Partners., Presentation to Monthly Meeting of Triangle Angel Partners, Research Triangle Park, North Carolina
Triangle Angel Partners
Overview of intellectual property tools and strategies.
Protecting Your Competitive Advantages., You Grow Girl Annual Business Summit, Charlotte, North Carolina
Discuss the concept of a competitive advantage and the various intellectual property tools for protecting the competitive advantages.
Teach entrepreneurs DIY skills with online tools for patent searching.
Patent Searching for Entrepreneurs, Triangle TechBreakfast Event at RTP Frontier, Research Triangle Park, North Carolina
Triangle TechBreakfast
Teach entrepreneurs DIY skills with online tools for patent searching.
Patent Primer for Non-Patent Attorneys, Law to the People - Continuing Education Webinar for Attorneys, Webinar
Law to the People
Three-hour continuing education course for attorneys to explain patent concepts.
Finding and Assessing Relevant Patents and Pending Applications, Launch the Venture Progam Series, Kenan-Flagler Business School- University of North Carolina at Chapel Hill
Kenan-Flagler Business School- University of North Carolina at Chapel Hill
Review what a patent is and how it can be used. Emphasize the difference between: Patentability--Ability to get a new patent and Freedom-to-Operate against existing patents and patent applications ahead of you in the pipeline. Work with finding patents and applications. Use PTO Public PAIR to get additional details on the patent application.
Finding and Assessing Relevant Patents and Pending Applications, SBTDC Webinar, Webinar
SBTDC (North Carolina Small Business Technology Development Center)
Patent process including the public tools to search for issued patents and published patent applications.
High Level View of the Patent Process., Presentation to Class of ECE 299, Pratt School of Engineeing, Duke University, Durham, North Carolina
Pratt Engineering School, Duke University
Teach engineers how the patent system can be used to protect innovations.
If you want them to hear you, speak their language., Lunch Presentation to Duke Law and Entrepreneurship Society, Duke Law School, Durham, North Carolina
Law and Entrepreneurship Society
Teach law students how to speak to entrepreneurs in an accessible way rather than making the lawyer-like noises that they learn in law school.
Protecting Your Competitive Edge, ProductCampRTP Weekend, Research Triangle Park, North Carolina
ProductCampRTP.org
An element of success in a new product is that the product is in higher demand than competing products or can be made less expensively than competing products (or both). Those elements form a competitive edge that your company can convert to increased margins or increased market share (or both). But a failure to protect these competitive edges may lead to their erosion as they are adopted by others. Learn to identify and protect competitive edges.
Protecting Your Competitive Edge, North Carolina Nanotechnology Commercialization Conference, Raleigh, North Carolina
NC Board of Science & Technology & SBTDC
Provide insights on why a company should seek patent protection and when they need to initiate contact with a patent attorney.
Protecting Your Competitve Edge, 2007 SBIR National Conference, Research Triangle Park, North Carolina
SBIR National Conference
The end goal of an SBIR/STTR project is a commercialized product that is profitable. Above average profits come from having a competitive advantage. To protect the competitive advantage and to be attractive to investors, the idea may need intellectual property protection. Come learn the big picture concepts you need know now and learn the how to avoid SBIR pitfalls that can hurt long-term viability. Session will also cover issues revolving around the ownership of your intellectual property.
Protecting Your Competitive Edge, CED Entrepreneurs Only Workshop: IP Protection, Research Triangle Park, North Carolina
CEDNC.org
Explanation of the concept of a competitive edge and how the patent process can protect a competitive edge. Include guidance on the timing for seeking patent protection before it is too late.
Information Disclosure Statement Filings, Masters Engineerng Management Course of Patent Process, Pratt School of Engineeing, Duke University, Durham, North Carolina
Pratt Engineering School, Duke University
Practical advice on the process of selecting material for information disclosure statements and the duties of disclosure under 37 CFR 1.56.
Patent Law Tricks, Treats, and Scary Things, Conference hosted by Aurora Funds, Durham, North Carolina
Aurora Funds
Tricks, treats, and scary things with respect to the patent process and early stage companies.
Being Creative When Prosecuting Patents and Writing Agreements, American Intellectual Property Law Association Annual Meeting, Washington DC
American Intellectual Property Law Association (AIPLA)
A presentation and paper co-authored by Shannon Mrksich, Brinks Hofer Gilson Lione on the Create Act and the impact on joint research agreements with respect to the patent process.
Turning Your IP Into Dollars, Forum 2003- Emerging Intelligence, Chapel Hill, North Carolina
North Carolina Electronics Information Technology Association -
The ongoing cycle of identifying, protecting, using and commercializing intellectual property to increase corporate revenues. Kevin Flynn and Caroline Rockafellow will give practical advice on obtaining maximum value from intellectual property assets.
Intellectual Property Issues: Opportunities and Pitfalls, SBTDC SBIR Workshop, Research Triangle Park, North Carolina
SBTDC (North Carolina Small Business Technology Development Center)
Explanation of the intellectual property and regulatory framework that envelopes the SBIR grant recipient company. Goal is to provide practical advice and triggers for when it is time to get help from a patent attorney.
Certifications
AV Preeminent™ Peer Review Rated
Results of Peer Reviews compiled by Martindale-Hubbell
Professional Engineer License (now expired)
North Carolina Board of Examiners for Engineers and Surveyors
Registration as Patent Attorney
United States Patent & Trademark Office
Websites & Blogs
Website
FLYNN IP LAW website
Website
LinkedIn Profile
Blog
Samples of My Patent Work
Blog
PowerPoint slide set on Patent Searching for Entrepreneurs
Blog
PowerPoint slide set on what should be in Provisional Patent Applications
Blog
PowerPoint slide set on Protecting Your Competitive Advantages
Legal Answers
448 Questions Answered

Q. Best way for me to go about finding out if there are any current patents or pending patents for my dry fly floatant?
A: Best starting place is to do some searching using Google Patents and the USPTO Search tools. My slide set at http://bit.ly/Patent_Searching has some useful tips. Once you find one relevant patent on the topic, that one should lead you to other patents. Those patents will lead you to still more. Another way to look is to search for reference to patents on the containers of existing dry fly floatants as they should list the patents that cover that product. You can also search for the word patent on the company web sites of the major producers in this space. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. What happens if I received my patent already and another person just received theirs but their filing date was earlier?
A: I used to work for a firm that defended the original Bell telephone patent court (long long before I was born). So I am well aware that improvements to a particular device such as a telephone may continue to come out for a hundred years or so. It is possible that your patent claims one set of improvements to a particular device and this other patent claims different improvements for the same device. So even though the title of the patents may be close or the overall description and introductory figures for the device may be close when comparing the two patents--it is possible that the specific thing you claimed is different than the specific thing claimed in this other patent. Your patent attorney should be able to answer that question. If for some reason, the patent office made a mistake and there are two issued patents for the same good idea, then one patent will prevail over the other. A patent application may claim priority back to one or more earlier patent applications. As the earliest patent applications may have less detail than the later applications, it can take a bit of work to sort out which family of patents had the first application on file that had adequate details to support the issued claims. The general rule is that patent application family with the earliest filing date of a sufficiently detailed application would win any disputes on overlapping claims. There is a further complication. If one person filing a patent application (call him A) received information that came from the other person (call her B). To the extent that the first person-A to file a patent application was actually filing a patent application on the ideas of the second person-B who later files a patent application -- then the real inventor-B who was the second to file a patent application can prove those facts and prevail. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. Why trade secrets level of protection is considerably weaker than for patents?
A: Patents provide a heavy hammer to punish unauthorized use of an idea -- but only for a limited time. Trade secret protection is valuable too. Ask Uber -- they paid $245 million to Google for theft of trade secrets on self-driving cars. The person that stole the ideas was criminally prosecuted. https://www.nbcnews.com/tech/tech-news/former-google-self-driving-engineer-pleads-guilty-trade-secrets-theft-n1164491 https://www.npr.org/sections/thetwo-way/2018/02/09/584522541/uber-googles-waymo-settle-case-over-trade-secrets-for-self-driving-cars If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. Why is it not possible to maintain at the same time a patent and ensure non-disclosure of confidential information?
A: It is possible to go partway through the process with your proprietary information as a secret. However, if you let the patent application publish or you pay an issue fee to get a granted patent then your information becomes public knowledge. You have patent rights to protect the unauthorized use of your idea. The patent system requires a trade. You provide enough information on how to make and use your invention as part of the trade for getting a patent. Once your patent expires, then people can use your patent document to teach them how to make and use your invention. With some clients with certain types of inventions, we push to get a decision from the patent office before we commit to allow an application to publish. If the process does not seem likely to lead to a useful patent, then we abandon the application and retain the idea as a secret. Unfortunately, many products can be easily reversed engineered so many good ideas cannot be maintained as a secret once you start selling to the public. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. I wish to patent a simple bandage that is not at all simple in its utility.
A: I suggest as a first step that you read some patents on bandages so that you can see the level of detail that is common and get a good feel for what sort of innovations have already been patented. \ My slide set on searching tricks may be helpful. http://bit.ly/Patent_Searching You will still need to work with a patent attorney to get this done but you will be more comfortable engaging in the process if you have actually read a number or relevant patents. Depending on what new features your bandage has, you may want a patent attorney with knowledge of biochemistry or you may want a patent attorney that is familiar with material science (how much the bandage stretches or how the adhesive works). Your innovation may be something else but the point remains that you need a patent attorney that is conversant in the terminology of the particular part of science and technology that is relevant. With a patent attorney, you can seek someone out that is not in your particular state as patent attorneys can help anyone seek US patent protection. So feel free to look at Justia and other tools to find someone that is a match. NOTE -- you may not be able to hire the patent attorney that wrote the bandage patent that you find online and consider well-written as that person may still work for a bandage inventor client and may not be able to take on your work. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Good luck. Kevin E Flynn
Q. When you file a patent in a jurisdiction, lets say US. But not in Canada. The prior art in US does not impact Canada
A: With respect to a printed publication or a patent application, the impact is not limited by national borders. There may be instances where the US laws on the one year grace period means somethings are not prior art in the US but are prior art in other countries (like a post by the inventor on web site which becomes prior art immediately in many systems is not prior art in the US until the end of a one year grace period). In other instances, a quote under an NDA from a vendor to make a patented product for an inventor counts in the US after one year but never counts in some other systems. A separate issue is what is your duty to tell an examiner in a second country what prior art was considered in a first country. This varies from country to country. In the United States you normally need to disclose prior art that turned up in other pending applications in other countries. But the US rules are not replicated in all other countries. Some systems require listing of previously considered prior art but many do not. You will need to work with your patent attorneys to synchronize what you do across several systems. I hope that this helps. Kevin E Flynn
Q. Looking to know if I violated a patent
A: First Question is whether you will be doing anything in the United States. If your clients are not taking delivery in the US and you are not making the product in the US, then you may not need to worry about a US patent. On the other hand, looking for US patents is often a quick way to learn of patent rights that may be duplicated in other countries. A patent attorney can use a US patent or published application to look for other members of that patent family. For a really new product, there is a risk that the newly filed patent application is not visible yet as the norm is that the applications publish at 18 months and can stay hidden longer than that in some situations. I hope that this helps. Kevin E Flynn
Q. A guy says I’m infringing on his patent but I don’t believe I am. I also don’t want to go to court over it.
A: Step one is you need to work with a patent attorney to dive deeply into the patent and make a detailed comparison of the independent claims to your product. This is often called a claim chart and this work is called clearance or freedom-to-operate analysis. If you clearly do not have one of the many nouns or one of the many verbs required in the patent (or their legal equivalent), then you do not infringe. Your patent attorney can send a letter to tell them that you do not infringe and why. This may not immediately end the problem as they may be stubborn or have a whacky interpretation of the scope of their claims. Sometimes people do not really care whether their patent actually reads on your product if they think that they can get you to pay them to go away as that is cheaper than fighting them. (sorry about that). Further details about Freedom-to-Operate can be found at https://www.flynniplaw.com/services/legal-services/freedom-to-operate/opinions. If the patent claims might read on your product, you have several options. 1) stop selling the product 2) seek a license to the patent 3) revise the product to avoid the patent -- see https://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance 4) work to invalidate (kill) or at least narrow their patent if the patent office was not aware of relevant prior art that should have led to narrower claims. You may commission searches for prior art to find things that the examiner did not consider. There are a number of paths to make this challenge in the US Patent & Trademark Office and this is less expensive than going to court but still not cheap. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. May I know what type of patent the patent 8,395,875 belongs?
A: The general type of patent is an issued United States Utility Patent (not a design patent and not a plant patent). The claims are written a number of different ways but they cover articles of manufacture that have a feature to protect electrical components from excessive electrical surges. I hope that this helps. Kevin E Flynn
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Contact & Map
Mailing
Post Office Box 4655
Chapel Hill, NC 27514
USA
Telephone: (919) 818-9147
Cell: (919) 818-9147