CAT | licensing
1 Comment · Posted by Bob Brill in budgets, business sense, constructive reduction to practice, licensing, ownership, patent licensing, patent marking, patent preparation, patent prosecution, patents, priority date, utility patent
A teacher invited me to speak to students in the Chicago Public Schools (CPS) about inventions, in connection with assignments for the students to research and prepare presentations on inventions. Following my standing suggestion on talks, I asked for a list of questions from the students for me to review at least a couple of days beforehand. Related posts also employed the advance-questions arrangement:
Since the entrepreneurial community is part of my interests, I enjoy the freshness of the current questions about inventions in the marketplace. Many of the questions address commercialization of inventions, which topic I consider highly-related to, yet distinct from, my representation of client interests in US and international patent and trademark application preparation and prosecution. I will provide insights in responding to each question, while the details of commercialization are a step over from my frequent legal work in obtaining patents and trademarks by government application procedures. Please note for context that the type of patent understood to be under primary discussion is a US Non-Provisional Utility Patent Application.
1. By being a patent lawyer, do you ever get inventive ideas of your own? What are they?
I approach the patent work as developing a legal tool that the client has decided will be an asset for the client’s business interests in line with the budget which the client has allocated to the work. My regular approach is collaborative. The client and I keep the legal work advancing in a way that will yield a benefit to the client. Active questioning and suggesting of thoughts for client feedback serve to capture and inspire direction in the written work product with illustrations. In preparing patent applications, I flesh out and probe client ideas, rather than participate in the raw technical engineering product development or business direction. Under special circumstances, I may participate more closely in the engineering or business efforts, such as in legal opinion work.
Following is language that has appeared in my client engagement agreements.
As an attorney, I am under obligations of law to maintain any information that you communicate to me in confidence, and not to discuss matters that you disclose to me with third parties without your consent. I will maintain in confidence the information that you disclose to me and not discuss matters that you disclose to me with third parties without your consent. I agree not to use any such information for any purpose other than for your benefit, unless you otherwise direct, or unless otherwise required by law. You agree I may identify you and/or list non-confidential information about your matters I handle, in my promotional materials.
Where ideas of my own are available outside client confidentiality, I make a decision to invest my time and skills as I expect the benefits to be aligned with my efforts. So, I would consider my own business interests in scrutinizing opportunities related to the idea, including whether legal protection of the idea makes sense in terms of allocation of my time for legal work and funds for out-of-pocket costs.
A person may be well served to understand the approach desired before affecting the confidentiality of innovations. A person can make money in different frameworks, for example, under patent protection or open source licensing. Some frameworks, at least in part, can be overlapping and/or incompatible.
Statutory Patent Bar Dates
I will talk through the discussion under “Dates” from my earlier post.
Open Source Licensing
Another approach to profitable innovation involves licensing of permissions under an open source framework. In maintaining and advancing the business objectives, a review of open source may extend to the available licensing forms. More information on open source appears in my earlier posts on open source software, where the open source framework can extend to a variety of technologies.
2. What do most inventors experiment with?
Many inventors I encounter experiment with the same or comparable tools as used in industry. The tools may involve modeling programs, at least for a cost-effective threshold testing ground. Many times, the invention results from a desire for a product that the inventor would like to purchase for use in business, but the product does not exist in the marketplace. Similarly, the inventor may identify a market need where prospective customers would purchase the product if available in the marketplace. Economics from a future standpoint as well as an immediate view of resources, play in the experimentation decisions. A good approach may be to find someone or someplace that will permit you to temporarily use their tools at their convenience.
3. How do you do it so no one steals your idea?
I will talk through the discussion under “What are the steps to secure my new idea?” from my earlier post.
4. How do you sell the invention, once you have the idea?
Your order of thought is fantastic. Yes, think how you can profit from an idea before investing in development, marketing, or legal protection. Once you have figured out the profit mechanism, proceed with the business and/or legal steps to reach and maintain the profitable event. I will touch on points in the following earlier posts.
Also, I happened to see discussion of a South by Southwest Interactive Conference (SXSWi) panel that inspired my related comment: startups who pitch/sell to customers before investors have a sharper and more compelling message.
5. Who is your favorite inventor and why?
I can plan to talk about a few examples. Current clients are most in my mind as involved in mutually-beneficial work relationships plus their own business interests that fit well with our current legal projects.
6. What are some of the expensive inventions you see?
Inventions in the physical sciences many times consume a relatively large amount of resources in development and/or manufacture. From another financial standpoint, technical fields of high margin products and perhaps involving relatively few if any additional resources, such as various software applications, can consume relatively high effort in the legal work. Technical fields of crowded development similarly may increase the effort needed in the legal services. Whatever the circumstances, I communicate with the client so the time and/or legal work for the process in the governmental office are consistent with the business objectives of the client.
7. How do people make some of the inventions themselves?
Training your mind and studying the marketplace are great approaches to inventing. A variety of resources may or may not be available for physical construction of an invention. I had mentioned borrowing resources in the discussion above at Question 2. As far as applying to the government for a patent, you need not have a physical embodiment of your invention. Sufficient text and drawings describing how a person of ordinary skill in the art would make and use the invention and enabling the best mode you know for practicing the invention, qualify for a constructive reduction to practice in the US Patent and Trademark Office (USPTO).
8. What were the youngest and oldest inventors you know?
Great ideas come from people of all ages. I would suggest focus your mind where you see a lot of money flowing and understand the improvements people would pay to own. Let the business case lead your innovation, whether or not you would decide a patent fits with your plans. Of course, perform a confidential review if you have thoughts about patenting your invention. Avoid tripping yourself by disclosure or commercial exploitation, as noted at Question 1 under “Statutory Patent Bar Dates.” Studying the marketplace is a great approach to inventing. I’ve helped inventors obtain patents on their inventions whose ages at the time were in their twenties to at least their sixties.
9. Who invented inventions?
Necessity is the mother of invention, so the earliest form of life that adapted may be viewed as practicing an invention. Government recognition of inventions apparently dates from 500 BC, according to Wikipedia.
10. What happens if you can’t sell an invention?
A valid patent will expire for failure to pay maintenance fees and in any event after the end of the patent lifetime, such as 20 years from the priority date for a US Patent. If a product fails in the marketplace, then losses result in terms of time and cost.
11. What is the most memorable invention you worked with?
Memories relate to interactions with inventors, clients, mentors, and patent examiners. I will plan to provide some examples during our talk while preserving client confidences. I will refrain from details that someone may compare against my patent samples to suggest documentation of any context that might otherwise be argued to affect rights.
12. How many of the invention do people make once they invent something?
As far as the government is concerned, constructive or actual reduction to practice a single time is sufficient, as already noted above at Question 7. As far as the marketplace, business strategies drive investment in creation of an amount of supply of the product relative to an expected demand for the product.
13. What things are invented more than once? How do you decide who gets the patent?
Here come the cups! I will talk through the discussion under “Lightning Rod/Bug – Friendly Confines” and “Better Mousetrap” and bring along the cups pictured in my earlier post.
14. How do you get your invention in the store?
As already noted above at Question 12, business dynamics drive sales channels. Also, we can touch on my earlier post Use of Patents in Social Media Marketing.
15. Where are most inventions sold?
Financially successful inventions many times appear in popular products, as noted above at Question 14. A complementary intellectual property right can be a trademark, as discussed in my earlier post “That’s an iPod®!”
16. What is it like doing your work? Is it ever scary? Do people try to get you to give them a patent?
I am energized by good clients for whom our work together plays a positive role in their business. Additionally, the interpersonal, professional interactions with cordial and effective use of time starting with the inventor and client and later involving patent examiners generate a satisfying experience. The opportunity to learn the patent craft through skilled mentors leading to my own service as mentor, responsible attorney for client matters, and business owner have many rewards on personal and professional levels.
On the lawyer’s role in navigation of the patent process through the government, please see my discussion above, including links to earlier posts at Questions 4 and 13, as well as my earlier post Patent Prosecution – Live.
17. How do we know who invented it, once it gets to the store?
A patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.
The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.
18. What are some useful tools for inventing?
Atop the suggestions above, please see the discussion under “What free resources are there for limited budget ventures?” from my earlier post.
Text Copyright © 2010 Bob Brill