Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

Congratulations and Happy New Year, to Peter Carosa a 7th grader at the Honeoye Falls-Lima Middle School in Western New York who recently e-mailed me regarding his role as member of Gearfreeze, the robotics team which won the regional championship of the fifth annual Finger Lakes FIRST LEGO League Tournament hosted by the University of Rochester on December 6th, 2009. FIRST is the acronym For Inspiration and Recognition of Science and Technology.

Thirty six teams of children ages 9 to 14 competed with robots that they designed and built out of LEGO.

For the competition, each team designed a robot out of the classic plastic building blocks and performed a variety of tasks such as navigating to difficult-to-access places and retrieving objects in a 4-by-8-foot arena speckled with obstacles.

In addition to the robotic portion of the contest, the team gave a presentation, on the year's theme: transportation. The contestants were asked to pick a real-world transportation challenge, research it, and draw up a poster, skit, or other demonstration. Peter describes his team’s presentation:

"Our project is that GM fuel cell cars produce H2O in a warm gas and liquid form and emits it. This can cause black ice, because of our climate, and pot holes. This will cause accidents. So my idea during one of our brain storms was to make a pumping system to pump the water emissions to the windshield wiper reservoir."

The 36 teams which qualified to compete at the regional contest at the University of Rochester, first had to prove their engineering and communication prowess at one of six preliminary qualifying events at different locations around Western New York, where the field was winnowed down from a pool of more than 100 teams.

As winners at the regional championship they will travel to Atlanta, Georgia in April 2010 for the World Festival, where they will meet teams from more than 50 countries. Good Luck to Peter and his team!

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As a father of four, Richard P. Conway was helping one of his children learn how to ride a bike and while trying to hold on and run behind the bicycle, he thought, "there has to be a better way."

From there his journey as an Inventor to new product developer began. He has since received a United States Patent, registered the trademark (pdf) and brought his first invention the "Balance Buddy" to almost every national retailer in the country. Now he is helping other inventors do the same thing. To share his success, Richard founded, Ingenious Products Inc. to help other inventors bring their ideas to market.

He agrees it wasn't an easy road and he learned a lot of lessons the hard way, that's why he hopes to help other inventors avoid some of the same pitfalls. He graciously agreed to answer a few questions about what inventors need to know...

Tell me a little about you and how did you get started as an inventor? 

I got started solving common problems around the home. I was so excited and passionate about my inventions I immediately began presenting my inventions to companies that could sell my product. I quickly realized this was a huge error because I had not taken the necessary steps to properly protect my idea from being ripped off by others. That is exactly what happened. Because of those bad experiences.I now make sure each product has the necessary protection.

What is the first thing a new inventor should consider? 

I encourage all inventors to first take a hard and detailed look at their invention. At the idea stage it is very critical to determine there is a  large enough market/need to sell the product. Without  demand there is no retail/license opportunity. Most inventors rush into this process because of their passion and enthusiasm and overlook the real importance of their target market.  Remember it is all about selling your invention! Long-term financial success is market dependent. 

What should a new inventor do after they have determined the target market?

Determine sale price. Before a product can be manufactured you must estimate early on whether your target market can afford to purchase the product.

Determine the cost to manufacture the product. The cost estimate needs to be as accurate as possible. Underestimating the cost will lead to financial ruin! Some factors that enter into the equation and are often over looked by inventors: manufacturing materials; assembly; customs charges; freight-case boxes; barcodes-graphics; work-packaging design, packaging costs; inventory; warehousing; processing orders; fulfillment; logistics and much more…..

What are things an inventor should avoid? 

Most inventors rush into this process because of their excitement and passion. STOP everything and seek professional advice from a patent attorney first. This professional will be able to give you valuable insight and guidance early on whether your invention has initial merit. Then the inventor must answer some very critical questions: Who is going to manufacture their product? Can I afford to have the product made? How am I to sell the product? Is the target market big enough to make selling it worth while? What is the true cost of the invention? Will retailers be interested in the product? Can retailers make money selling the product? And much more…. 

How did you finance your business, and how have your finances changed as you've grown your business?

I was be able financed my business initially through my personal savings however it took much more than I had ever expected. Like most inventors capital is limited so deciding early on the direction you want to go is very critical to be successful in the whole process.

 There are only 3 options to this step: 

1. You fund the process totally by yourself (including family and friends) 
2. You sell or license your invention to a company that specifically handles that type of product for a very modest or low royalty. 
3. You partner with a company that has a variety of products and is interested in adding your invention /product to the products it currently sells. This is basically a hybrid of option1 &2. Here you still get a royalty however it is typically significantly higher.

Why is it higher you should ask? It is really quite simple, the company is interested in expanding into a new product segment/market to increase their sales and take market share from current competitors. Make no mistake about it, these are the only 3 options available. 

Are you selling your products, and what sorts of licensing deals do you have in place?

Yes, our company focuses on seeking out new innovative products that are potentially in demand in large markets. Product demand first and foremost. We nearly exclusively prefer to partner with inventors and their products where we provide the depth and resources needed to develop and sell a product in national and international markets. We  have placed products with most of the major national retailers targeted to the mainstream consumer. We seldom target niche markets or the specialty retail segment.

For for the rest of the interview, see after the jump.

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Inventors should know...

A lab notebook containing accurate records can preserve patent rights. A laboratory notebook should include information such as:  how the inventor came up with the idea; when the idea was "reduced to practice;" and evidence of invention such a hard copy of e-mail  communications.

Two of the most visible inventions from the last two centuries were disputed in court as to who invented it first. Philo Farnsworth invented the television and RCA argued against the patent.

Alexander Graham Bell filed a patent application and later that same day Elisha Gray  filed a patent caveat for the telephone.

A few tips on maintaining a laboratory notebook:

1. Use permanently bound, numbered laboratory notebook

2. Describe the work so that it can be repeated in your absence

3. Write in ink

4. Permanently attach any printouts

5. Have your notebook witnessed regularly

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Thanks to @ipwatchdog for tweeting this week about the pitfalls of inventors representing themselves and the USPTO effectively advancing "submarine patents" through Patent Office delay.

"Inventors who represent themselves always wind up with rights more narrow than they should."

@ipwatchdog makes two points I would like to comment on:

First, when the USPTO causes long delays for an unpublished patent application, it essentially creates a "submarine patent."  The problem with "submarine patents" is that when issued, it forces companies already using the newly patented technology to pay retroactive licensing or rights fees. US Patent No. 7,631,368, was a pending application out of the public eye for about five years before it issued.

The second point is that the patent claim is so darn long and  "narrow" because it has so many elements, it would be almost impossible for anyone to infringe upon it. Therefore making it not only a "submarine patent" but a "wallpaper patent" as well,  essentially having no value. The only thing it is good for is to  hang it on the wall. The submarine was sunk by the heavy load of elements in the claim.

Inventors should know...

The lesson here is, make sure you are represented by a registered patent attorney or agent that knows how to draft broad claims.

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I have volunteered to speak at the first annual Inventor Exposition here in Western New York. The event is sponsored by the Small Business Development Center. The event is targeted to help inventors and entrepreneurs who wish to commercialize a product. There will be panelists speaking on topics relevant to manufacturing, marketing and distribution.
 

                    Expo Date:  January 19th, 2010
                    Time:  9:00 am to1:00 pm
                    Location:  Buffalo State College Auditorium
                    Register:  WNYinvents.com      Sign up sheet (.PDF)

I plan on speaking about the basics of filing a patent application.Those who attend will learn how to: 

• recognize what is a patentable invention;
• differentiate between a patent, trademark and copyright;
• keep necessary records for patent purposes; and
• take the necessary steps to avoid forfeiture of patent rights.

I'm looking forward to meeting all the other panelists who will speak on many subjects relevant to commercialization of intellectual property such as:

• Product Design
• Business Plan and Development
• Retail Sales
• Website Development
• International Trade
• New Product Development and Innovation

I believe this event is a great free service (small $15 fee for refreshments) for all the local inventors who attend. I think inventors should be aware of the free resources available to them such as those provided by the Small Business Development Center here in Western New York.

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What Inventors Need to Know...

An inventor does not need a prototype to file for patent protection. Many inventors incorrectly believe they need a working prototype in order to file an application for a patent. The law requires that a patent application include a description of the invention so that somebody skilled in the art can make and use it. However, prototypes can be useful to prove whether the invention will work properly.

I spoke with Merry R. Constantino, a former Product Design Manager at Fisher-Price and currently the president of a "new product development company" called Product Logic and she said that,

A common problem when making a prototype after a patent application has been filed, is that all of the bugs have not been worked out of the product and often the 'end product' that we produce is not the same thing that was described in the patent.

Inventors should know that no "new matter" can be added to a patent application after it is filed.

There are many manufacturing and marketing factors that an inventor should consider in the initial idea stage. Here are a few of the things that Product Logic brainstorms when making a prototype:

• Human Factors/Ergonomics
• How can it be made with the fewest possible number of parts?
• What is best way to mass produce (labor sensitive)?
• What is a cost-effective way to produce?
• Can it be made in a way that others cannot easily copy?
• What is the best material it should be made from?

Another thing that an inventor should know is that when working to prepare a prototype with a new product development company is that if the company makes changes which improve the product it is possible that the company becomes a co-inventor.

Merry stated that "our company assigns all rights over to the inventor for any product that we work on." It's important to understand that when an inventor retains the services of  a company to produce a prototype there is a risk of loss of intellectual property rights unless a written assignment of rights document is prepared and executed by the parties.

If an inventor plans to license or sell their "patent rights" to an invention,  it may be necessary to build a prototype to demonstrate  to a potential licensee how great it works. In order to mass produce a product it may be necessary to design a working prototype as a model of reference for the manufacturer to duplicate.

Although an inventor does not need a prototype to get a patent, working out all the potential manufacturing issues before filing appears to be a logical step in the invention process.

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Thanks to Mark Tutton, CNN technology columnist for writing this week about how anyone can learn the Five Secrets of Innovation.

Studies conclude that innovation is not an inherent trait, uncovering good ideas is a set of skills that anyone can learn. By looking for new ideas and as they relate to the world around you, anyone can come up new resolutions to old problems.

Researchers say they have identified five skills that drive innovation: 

1. Questioning: Innovators constantly ask questions that challenge the common wisdom. They ask "why?", "why not?" and "what if?"

Questioning is a key factor in thinking outside of the box which defines the very profession of inventing. Albert Einstein once said, "To raise new questions, new possibilities, to regard old problems from a new angle, requires creative imagination and marks real advance in science."
 

2. Observing: Discovery-driven executives scrutinize common phenomena, particularly the behavior of potential customers.

Observing market shifts, the consumer's attitude, and the client's needs are building blocks to achieving success.
 

3. Experimenting: Innovative entrepreneurs actively try out new ideas by creating prototypes and launching pilots.

Experimenting is just a fancy way of saying learning. Inventing is not about succeeding with every prototype, it's about moving forward and learning with each failure.

4. Networking: innovators go out of their way to meet people with different ideas and perspectives.

Networking will achieve connections along with perspectives. Learning your peers ideas and standpoints will help mold and sophisticate yours. Mark Ventresca, a professor at Oxford, told CNN "Data says that people who have more varied connections hear more diverse information, and see patterns before other people."
 

5. Associating: The ability to connect seemingly unrelated questions, problems or ideas from different fields. 

Associate ideas by utilizing all of your knowledge and experience gained from the previous secrets you can more easily make connections and problem solve.

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Guest Blogger: Registered Patent Agent, Gerald F. Gibbs Jr.

Practical Patent Prosecution Training for New Lawyers Seminar

I am Gerald F Gibbs Jr., a Registered Patent Agent. I am a native of Buffalo, N.Y. For the past 13+ years I have served as an industrial electrician for General Motors Corporation. Recently  I passed the patent bar examination on my first attempt and began my second career in intellectual property as a patent agent. I qualified to take the patent bar exam based upon my technical background and a Bachelor of Science degree in Physics.

On August 26 - 28, 2009, I attended the annual Practical Patent Prosecution Training for New Lawyers Seminar sponsored by the American Intellectual Property Law Association (AIPLA). The three-day event was held at the Westin Hotel, in Alexandria, Virginia which is in close proximity to the United States Patent and Trademark Office (USPTO).

The 2009 Practical Patent Prosecution Training for New Lawyers Seminar also referred to as “boot camp” is designed for new practitioners (i.e., those having about 0-2 years of experience), that want to learn the basics of patent application preparation and prosecution.

I attended the patent “boot camp” to have the opportunity to learn directly from experienced practitioners. Patent practitioners from all across the country lectured on an array of topics associated with patent law over a 3-day period. Topics included (just to name a few):

• Requirements for Patentability
• Application Drafting
• Provisional Applications
• Petitions
• Appeals & Interferences
• Responding to Examiner Actions & Affidavit Practice

The lecture portion of the seminar was by far the best part of the event.

A reception was held after each of the first two days of lecturing that gave the attendees and lecturers an opportunity to network. Many of the attendees that I met were very cordial and friendly, but many didn’t have business cards to exchange and didn’t seem interested or prepared to further a relationship beyond the 3-day event. As a result I focused on networking with the guest lecturers and I found that every practitioner was very helpful to provide career advice, exchange business cards and offer words of encouragement. 

As a result of this networking I have since communicated with and received helpful career advice from practitioners that I met at the boot camp. One of the connections I made was with Denise M. Kettelberger, PhD, JD of Faegre & Benson, LLP. She is an established and experienced patent practitioner from Minneapolis who gave an interesting and informative lecture on Responding to Examiner Actions & Affidavit Practice. She opened her lecture by saying, “This is the year of compact prosecution....compact prosecution requires that the patent practitioner get to know your examiner and vise versa.” This, she explains, provides a more friendly exchange during patent prosecution. 

On the last day of the seminar I attended the “hands on” claim-drafting workshop. It was a little disappointing because it was far from “hands on” and consisted of mostly lecturing.

AIPLA provided each attendee with a binder with valuable information on all the topics discussed and a hard copy of the power point presentation of each lecture. I also received a copy of the entire seminar on CD-ROM, which includes the audio portion of the program. I found this to be a very valuable resource to review key points of the lecture and discover information that I may have missed.

Overall the seminar was very informative and insightful and well worth the 7 hour drive from Buffalo, New York. I would recommend attending this annual event to anyone who is interested in a career in patent law.

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We are living exponential times.

Did you know? Technologies are changing so exponentially fast the stuff freshmen and sophomores are learning in school today will be obsolete before they graduate in two years.

Did you know?  It took radio 38 years, television 14 years,  the Internet 4 years and Facebook only 2 years to reach an audience of 50 million people.

Where are we headed? Share your thoughts in the comments below

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