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

As a Buffalo copyright attorney I meet many new authors. A childhood friend of mine recently published a book of songs he wrote and I asked him to share some of his thoughts about the publishing process with my LoTempio law blog readers.

Here is what Alan Gembola had to say:

Can you give us a little background about yourself and how you decided you wanted to be an author of a book?

I’ve always loved music and listening to the radio. In the early 70’s I heard the rock operas ‘Tommy’ & ‘Quadrophenia’ by The Who; at that point I wanted to write.

I eventually got some words down on paper (mostly trash) but kept trying. I was further motivated by Peter Gabriel’s (Genesis) ‘Lamb Lies Down on Broadway’ & bands like Roxy Music (plus a little encouragement from friends).

Eventually I just wrote because it was fun. Around 2001, I decided to make a serious attempt at writing a diverse collection of song lyrics; a unique collection that had a CD & perhaps author notes & illustrations, the seed for ‘Silver & Leather’ was planted.

Ten years later, and a lot of long writing & recording sessions, “Silver & Leather’ is in stock and ready to ship from  Amazon and released on Christmas Day 2011.

How did you find a publisher?

I self-published Silver & Leather. Trying to find a publisher (for a first book author) – I felt – would have taken a lot of resources, with no guarantee of success. I decided to direct what limited resources I did have into creating, publishing, promoting, & distributing ‘Silver & Leather’.

What are some of things you learned about getting the book published?

Besides the numerous technical challenges I faced (with software, printing techniques, font conflicts, CD creation, laptops crashing, etc.) the biggest thing I’ve learned is once you do publish, the project isn’t over; the hard work of marketing and distribution is just beginning.

Can you put together a checklist of things a new writer should know and do?

Here are a few tips that helped me write & publish ‘Silver & Leather’:

• I learned from lyric writing, a good first step is to have a title, theme, or concept.
• Visualize, based on your title/theme/concept, what the finished product will be.
• Start writing (and have fun doing it!) – try to do a little every day (if you’re waiting for “inspiration” to write, you will probably never publish your book).
• Once you feel confident that you’re actually on-track to finish the book, publicly announce a release date – this was a critical step for me and forced me to push myself, to the point of exhaustion, to meet this date.
• When your first draft is complete – edit, edit, edit, edit, edit!
• It doesn’t cost too much to write a song lyric or book; but, publishing does cost. Expect to spend a little money along the way – printing fees, ISBN purchases, copyrights, software needs, giveaways, promotions, and in my case, CD labeling & creation/packaging costs, etc., etc...
• Cut a pre-release (beta copy) and send it select individuals for feedback – this really helped me a lot!
• Once you have the final, final, final version of your book – assign it an ISBN number & bar-code – you are now considered published and can copyright your book as such.

What were the most difficult things you had to overcome to write the book and get it published? What were the things you enjoyed the most about putting the book together?

Silver & Leather was over 9 years in the making; so, most of the actual song lyrics were already written (and many of the vocal tracks were recorded in 2006) – but – organizing them all into a standard format, making last minute corrections, and adding the author notes & CD created some challenges.

As far as the actual publishing, the most difficult obstacle was creating a master file for printing; any little changes can really confuse the printing process. What was enjoyable throughout all this was watching, slowly but surely, my original vision for ‘Silver & Leather’ coming to fruition in every detail.

What would you do differently if you had to do it over again?

Next time I’ll use a lot more outside people and resources. For ‘Silver & Leather’ I’ve done almost every job in the writing, publishing, & producing processes. I won’t for example, edit the book myself or manufacture and package the CD’s for the next project.

What were some of the administrative challenges?

90% of the lyrics were previously registered with the US Copyright Office in 3 different volumes as “unpublished” works (2004, 2005, & 2011). I also was going to copyright a sound recording (‘Silver & Leather The CD’) for the first time with a few new lyrics and other contributing artists.

Somehow, I wanted to combine the entire package into a single copyright for ‘Silver & Leather’ – including the CD. Now that ISBN numbers are assigned, I can proceed with the single copyright for the “published” collection.

What are some of the marketing techniques you use to get your book noticed?

I started with teasers about the release date and progress of the project on Facebook. I then issued a pre-release package of materials to select individuals encouraging them to provide feedback to info@gembolalyrics.com and to share the materials with family & friends.

I opened a website gembolalyrics.com (which by the way is the official publishing company of ‘Silver & Leather’) that provides a link to my exclusive Amazon distributor, Insight Media.

Finally, I created a special workbook edition of ‘Silver & Leather’ designed specifically for my #1 target audience – musical composers. My distributor & I have a lot of great marketing ideas and will have the 2012 plan in place by the end of January.

Who proofread and edited your book for you?

I did the editing myself – never again – a very time consuming and inefficient process that I’m sure didn’t catch all the details it needed to. As far as the research of names, dates, and events called out in the author notes and song lyrics, they were checked by the new internet research company www.onlythefactsman.com.

Are you considering writing a second book? How did you get on Amazon? How did you get an ISBN number?

I have plenty of ideas for a second project but will probably spend most of 2012 promoting ‘Silver & Leather”

I was very fortunate to partner with the well-established, highly rated, Amazon seller, insight_media, who is currently the exclusive distributor for ‘Silver & Leather’s’ hardcover edition, special workbook edition, and electronic edition; insight_media specializes in books and CD’s.

No book critic, retail or online book outlet, library, or school is going to recognize your work without an ISBN number (along with a bar-code, indicating the retail price) assigned to each edition; this serves to clearly identify the details (like binding & number of pages) of your book for the buyers’ information.

ISBN numbers and bar-codes are sold to publishers. In my case I self-published (Gembolalyrics.com) and purchased a block of 10 ISBN numbers and three bar-codes from Bowker (an authorized broker company); as far as I know, this is the only place you can get an ISBN in the United States. If you have a publisher, they will probably have a number & barcode for you.

Is there anything that you would like to share that I didn't ask regarding the process of writing a book and getting it published for sale?

I just want to say thank you to LoTempioLaw.com for the interview and suggest we get together again in a year to see how the marketing plans have worked out. 

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Ronald L. Docie Sr is the president of Docie Development, LLC, an international company that provides services for inventors and corporations. His inventions are featured in Wal-Mart, Kmart and thousands of other distribution channels.

As an agent for inventors, Docie has negotiated license deals with many companies including General Motors, and he’s a consultant to Johnson & Johnson on idea submission.

When I first started blogging about two years ago I wrote a book review for the book "The Inventor's" Bible by Ronald L. Docie Sr. and a couple of months ago Ron found me on the Internet and contacted and thanked me for writing the book review.

When I spoke with him I found out what a gentleman he was and he agreed to answer some questions for this interview. And here are the questions and answers:

Ron can you tell me a little bit about yourself?

I am involved in four different entities, all which help inventors:

• Docie Marketing,
• Docie Development,
• DIMWIT - Self Help for Inventors, and i
• nventorinsider.com.

Docie Marketing performs market research for inventors to help them identify markets, potential licensees, manufacturers, and the market potential for their invention. This is a fee based service.

Docie Development is a commission based service and it works with inventors to seek potential licensing agreements from manufacturers.

What type of company is DIMWIT?

DIMWIT - Self Help for Inventors, has a lot of free information for inventors about how to go through the patent process, the confidential disclosure process and lots of articles and tips for inventors to help them throughout the commercialization process.

How does your company help inventors help themselves?

Inventorinsider.com has a free downloadable e-book that I created to help inventors better understand the invention commercialization process from start to finish. More importantly, it helps inventors to understand the difference between scam artists that are trying to rip off inventors, and legitimate invention companies.

The precursor to this work is from a grant that I received from the US Department of Energy, Inventors Initiative Program to help inventors understand the difference between the good guys and the bad guys with respect to invention service providers. Sadly, there are still more bad guys out there taking money from inventors than there are good and this is a situation that will probably remain. Therefore, it is very important to understand the lay of the land before dumping lots of money into your invention.

Do you have a checklist of things an inventor needs to do once they've come up with an idea?

The Inventor’s Bible; How to Market and License Your Brilliant Ideas, is in its third edition and is a book that I wrote that is a complete how-to get through the invention commercialization process and is available at Amazon, Barnes and Noble, local bookstores, and all three editions are in the reference section of every US Patent Office, Patent Depository Library in the US and its possessions.

There is also a Kindle edition that’s the third edition of the Inventor’s Bible along with a workbook that take an inventor step by step through the process of finding and prequalifying appropriate manufacturers and potential licensees.

Contained in these writings are a checklist of things that inventors should do and the order that they should do them in. This checklist is in the appendix of all three editions of the Inventor’s Bible.

What are the most important things an inventor needs to know?

The most important thing an inventor needs to know is that the world has existed this long without their invention and will continue to exist for quite sometime without it. Most inventions are incremental improvements and not life necessities. Therefore, they fall within a pecking order of millions of other inventions, all which are trying to get the attention of the buying consumer. Obviously only a choice few of these are going to make it to the retail shelf.

Those that make it are not necessarily the most beneficial for mankind, however, they are the products that the consumer wishes to purchase. As such, there is not necessarily a direct relationship between the invention’s benefit to mankind, and its ability to create sales.

This is a very frustrating phenomenon because most of my clients know that they have invented something of great benefit to mankind, and yet while their invention collects dust, they see plastic crap selling like hotcakes.

How does your company compare with a “Patent/invention Submission” company? What knowledge have you gained based upon your first-hand experience with these types of companies?

My company operates under the philosophy that an inventor should spend no more time or money than is necessary to find out that the invention is not worth pursuing. Since we know that 1 in 100 or 1 in 1000 inventions ever succeed commercially, the remaining 99 or 999 would be remiss to not realize sooner, rather than later, that they are indeed part of the majority.

For this reason, I have designed a tiered-risk program that takes inventors through the step by step process in a manner where they lay out the least amount of money initially and if the invention continues to make it through the various stages, then all the ingredients are there to also have it be a commercial success. Therefore, the process is a win win regardless of which the direction takes.

How bad are the odds stacked against an independent inventor?

How bad are the odds stacked against an independent inventor? Pretty damn bad.

Do you have any ideas for patent reform that could help the independent inventor?

I really have no ideas regarding patent reform that could help the independent inventor. The patent office is a big animal and is probably doing as well as it can under the circumstances.

Can an inventor get a license for a new product without Patent protection?

An inventor certainly can receive money from their invention without patent protection. In certain fields such as housewares and others, designers are paid royalties not unlike an inventor would be paid a royalty. Instead, the designer is being paid for the ornamental design feature that may even be covered under a copyright, trade dress or simply a design patent.

I have received royalties based on my design improvements because those designs were favored more by the consumer and I realized this through doing independent market research that no one else had done. This was of sufficient value to the companies that they agreed to pay for these design improvements. I happened to have a patent to cover a part of that invention; however the patent did not cover my design improvements so the patent really didn’t totally enter into the equation.

Patents are a tool and you have to look at them as such. Most people think they have patent “protection” when in fact they do not because very few patents are so tight that they cannot be designed around by someone who would come out with a similar product without infringing your patent.

Rarely do you have a slam dunk patent where a person can simply rely on their patent rights and everyone flocks to their door. The odds of this are probably more like 1 in 100,000 or more. Even so, the patent may be of value because it may help to influence a company to pay you to use its rights. These situations vary drastically depending on the product category, the companies involved, and your individual situation.

Can you work a deal with a nondisclosure agreement?

Deals can be negotiated with only a non-disclosure agreement in place, and I have used non-disclosure agreements, or confidential disclosure agreements, to help control circumstances so that I could influence companies to pay a royalty or commission when they otherwise may not.

There are several factors that need to be taken into consideration, however, such as whether the non-disclosure agreement also contains a non-compete clause so it can survive after the public disclosure of the invention and other technical issues to numerous to cover here. However, in today’s world of consolidation of big box retail stores and the consolidation of manufacturers, inventors largely do not have choice with respect to the signing of a non-disclosure agreement.

Many, if not most, Fortune 100 companies will demand that you sign their disclosure agreement which is a non-confidential disclosure agreement, or rely strictly on your US patent rights in order to even submit the invention to them. I am seeing a trend towards this.

On the flip side, there is also a growing number of companies who are so disenchanted about the patent process that they simply invite inventors to submit the invention, and if they use the invention they will pay the inventor a royalty such as 3% or 5% with a standard royalty agreement.

They typically will not sign any type of disclosure or confidentiality agreement, period. This is because these companies find that many inventions last for just a short time on the market, less than the amount of time it would take to have a patent issued. Therefore, they don’t even bother with the patenting expense.

Also, these companies realize that with the average cost per side in a patent infringement case being over a million dollars, many small to medium size companies have products that would even justify pursuing any type of legal action. In most cases it would be more cost effective to simply drop the item from the line and keep on going with the other thousand or ten thousand items that they may have in their product line. An inventor needs to keep these things in perspective when they are getting too overly concerned about disclosure agreements and patents.

Further, some of the companies that are willing to sign disclosure agreements for inventors have a record of not working with outside inventors at all. They simply take whatever information they can glean from your invention submission and use it to the extent they want to without infringing the patent.

Then you have these other companies that will not sign disclosure agreements what-so-ever, and yet they have a rich, positive track record of paying outside inventors. Therefore, using a disclosure agreement as a means of qualifying a company is not always the best indicator.

What type of industries are the hardest/easiest for inventors to break into?

The ability for an inventor to break into an industry is different from industry to industry. I think industries that involve retail consumer products tend to be a bit easier because the proof is on the retailer’s shelf and there is a well-oiled machine for getting product there. It is a matter of just selecting the right company to help get you there.

There are also plenty of companies that are willing to pay inventors in the retail industry. In those industries involving medical products, industrial products, and others that require a great deal of initial time and investment,

I believe there is more chance for a ‘slip between the cup and lip’, and as such it may be harder for the inventor to navigate in those industries, especially since more upfront investment is required before any company knows whether the product will be commercially successful.

Yet, with that being said, if an inventor is knowledgeable in their industry and has conceived a unique product or technology that is desired by those in the industry, it would not be uncommon for a company to pick up that invention and run with it. This would be a very streamline path for the inventor. So, there are exceptions to every rule.

Can you help a small or medium sized companies with new innovation?

The process of helping inventors, or helping companies to commercialize innovative products, particularly through licensing, is a very similar process regardless of the size of the company or the type of customer. The way licensing departments operate in Fortune 100 companies is, in principle, not unlike the way I operate for independent inventors.

If a large company wants to license out the technology or intellectual property t another company, it must go through steps to identify those companies that hold the market position for the part category, they need to determine the potential value of an invention, and they need develop the terms of a licensing agreement. The terms and principles are similar, the number of zeros behind the final figure changes.

I noticed on your website that you advertise the Patent Wizard, are you associated with that company?

I don’t make any money from the Patent Wizard software that is advertised on my website and I am not associated with that company. Michael Neustel, a patent attorney from Fargo, ND, created Patent Wizard as easy and convenient software for inventors to use to file a provisional patent application at very low cost.

Even then, I always suggest that the inventor have a patent attorney review the final patent application before submitting it to the patent office. I normally suggest that inventors work with a patent attorney or patent agent as they go through this process.

Knowing when to use patent attorneys and for which service is part of the key to making no more expenditures than are necessary at any given step. Docie Marketing helps inventors to understand which steps to take and when. The DIMWIT- Self Help for Inventors website also provides information about this, as does the Inventor’s Bible. The free ebook on www.inventorinsider.com is also a compendium of advice regarding steps to take.

Do you refer inventors to patent attorneys like myself?

I do refer inventors to patent attorneys all the time, however I try to avoid advising about specific patent attorneys because I think eventually the inventor needs to have the right chemistry with the patent attorney that they end up working with and this is something they need to determine for themselves.

Do you advise inventors to file a provisional patent application?

I am not an attorney and I do not give legal advice, nor do I give advice regarding patenting. However, I do give business advice as it relates to the patent strategy and how one might go about affecting such a strategy.

For example, lets say it is determined that an inventor wants to elect to not publish their patent after 18 months and keep their patent application secret for as long as possible while they go through development and pre-commercialization. In this case, they could potentially keep their invention a trade secret for five years or more.

In this case, they may want to extend the patent prosecution process as much as possible by not responding to the patent office until the last minute for every deadline that must be meant, filing a provisional application in anticipation of the utility application, filing continuations-in-part and any number of other strategic ploys that may be condoned by the clients patent attorney.

Therefore I work in concert with my clients patent attorneys to help develop a strategy that incorporates the best from both the business perspective and the patenting and legal perspective in order to have a wholistic strategic plan to provide the greatest and most secure benefit for the client. It takes very little extra effort and very little extra cash expenditure on behalf of the inventor in order to do it the right way, versus doing it the wrong way.

The bottom line is, with appropriate knowledge, all inventors can minimize their risk and increase opportunity for financial gain from their invention. Certainly it is best to obtain a wealth of knowledge from those people who have a depth of experience and effective results in this field.

That certainly is what the inventor should be seeking out, and not listening to the numerous flimflam artists who are only stroking the inventor’s ego in one breath and holding their hand out for heavy financial outlay at the next moment.

It is necessary for inventors to spend money at certain junctures whether it be for patent attorneys, invention brokers, prototype makers or any other number of legitimate services that the inventor should hire. The inventor just needs to be prudent in this process and not spend too much, too soon, and for the wrong things.

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One of the things I enjoy about law blogging is my opportunity to interview thought leaders in the intellectual property arena. Recently I had the opportunity to be introduced to Brian Wagner who is a co-founder of a company called "Packaging & Technology Integrated Solutions"(PTIS).

PTIS is a group of “Global Management and Packaging Consultants.” I got a chance to discuss how packaging is relevant to intellectual property such as trademarks, trade dress and patents.

PTIS' serves nearly 100 Fortune 500 companies from around the globe, and from all areas of industry, trade organizations, government, and academia. Packaging is also vital to the sustainability of our environment. PTIS consults corporate America with regard to new and innovative ways to preserve both the IP rights of their clients and the environment without sacrificing profitability.

Thank you, Brian Wagner for participating in the interview. Here are the Q&A's:

What type of company is Packaging & Technology Integrated Solutions (PTIS)?

PTIS is a management consultancy providing strategic and tactical professional services.

Some areas of specialization include innovation, organization strategy and sustainability.

Can you tell me a little about your background and how you started in the packaging industry?

After graduating from Canisius High School, I left Buffalo in 1979 for Michigan State University to study business, intending to return some day to join my father’s Insurance Agency (R.A. Wagner Agency). A series of circumstances and dislike for accounting led to a program switch into the School of Packaging where I joined 1200 undergrads and a thriving program.

I interned with IBM in Rochester, MN learning I had made a great choice and learning a lot about a great corporation. When I graduated in 2004, the “rust belt” was earning its name and jobs in western NY and Michigan were scarce. IBM offered great opportunities, but an opportunity with consumer products and General Foods (now part of Kraft) was more enticing – so I moved to Cranbury, NJ to begin my career.

Since then, I have worked for great companies including Burger King, Multisorb Technologies (Buffalo, NY), Sara Lee and Kellogg’s. In December of 2000 I co-founded PTIS, and we have now led consulting efforts for over 200 leading companies and brands including many of the Fortune 500.

Why is the packaging of a product so important?

Packaging is estimated to be a $650bn global industry, though estimates range as high as $3tn. Depending on the industry and what is being packaged, packaging serves a number of functions – and quite often is “the product.”

When it works well, consistent with delivering the product and brand promise, we take it for granted. When something is wrong, we quickly recognize it and the product and brand value are damaged as well.

Some studies suggest that if all food could be packaged as it is in the western world, we would solve world hunger. The amount of waste, spoilage and disease that exists in much of the world’s food supply chain is due in large part to inferior or even no packaging.

E. Bryan Finison, Jr., in his monthly column on business concepts called the “Finison Corner" wrote a book review about Malcolm Gladwell's book Blink entitled "Finison Corner – Blink – The Power of Thinking without Thinking" (PDF) he highlighted the idea that "Package design will impact the consumers’ perception of how a product will perform, and even impact the way a product tastes."

I found this description of packaging on Scrib– it is simple and not bad:

• Packaging is the science, art and technology of enclosing or protecting products for distribution, storage, sale and use.
• Packaging is a coordinated system of preparing goods for transport, warehousing, logistics, sale and use.
• Packaging helps the consumer quickly understand what the product is all about
• Packaging is a silent salesman

How have you been able to use your own expertise in the packaging field to help other companies better market their products?

I have been blessed with learnings and lessons from some of the best researchers, designers and packaging professionals in the world – starting with consumer insight and understanding. We regularly teach companies how to do research on packaging and how best to extract meaningful and relevant insights that can be translated into successful package designs.

Much consumer product research focuses on products, brands and advertising – packaging is taken for granted and can be the reason a product succeeds, or fails. Over 150,000 new products are launched globally every year, and over 80% fail in 6 months. I believe poor understanding of packaging is one of the key reasons.

How can a company protect the packaging and display of its products?

As you know, the world of packaging design patents is very crowded. However, patents (design, utility and process), trade secrets and trade dress are commonly used to protect inventions in the packaging space. Of course graphic elements are protected with copyrights and trademarks.

Note that Trade Dress is increasingly used by major national brands to defend their package size, shape, and overall design versus private label competitors attempting to copy them in the marketplace.

Why is it so important for a company to protect its Intellectual Property? How does this relate back to the packaging industry?

Packaging is similar to other industries in this regard. A significant amount of time, resources and money are expended to invent and innovate – and without IP protection, it would be simple for competitors to copy package (and packaging machinery) designs and processes. In the end, without IP protection, innovation would likely cease.

Have you filed for patents or trademarks in the past?

I only have my name on one patent (US Patent 6,641,854 PDF), but have been very involved in the process many times.

The kinds of companies we work with all value IP protection, with policies and processes, so being involved in these processes is unavoidable.

Why is it so important for a company to differentiate its product's trade dress? How does this contribute to its overall success?

As mentioned previously, the use of Trade Dress protection has increased in recent years, in particular where large national brands such as Procter & Gamble have worked to fend off copycat private label competitors.

In many cases, design elements such as shape, texture and color are clearly associated by consumers with a specific brand (ex. Coke red and their contoured can) – so these can be leveraged to protect brands through package designs. The best companies recognize these opportunities when they go to market, but Trade Dress is still largely underleveraged.

On your webpage, you asked the question "Are you fully differentiating your product's trade dress, and protecting its IP?" How does packaging differentiate trade dress of a company and how does that help in the overall profitability and marketing of the company?

My firm does a lot of work in “Experiential Packaging” recognizing that the more senses we engage, the more memorable a brand and product and the stronger the emotional connection. All consumers make purchase decisions with their emotional right brain and analytical left brain.

Shape, visual design elements, texture, aroma, taste and sound throughout the use experience are all critical – most companies focus only on graphics. Companies we work with have demonstrated sales increases and decreases when, for example, removing ridges and nubs on a bottle, intended to save cost. These elements became over time, part of the unconscious consumer experience.

As previously noted, national/global brands are under attack by companies with often inferior products, who simple develop copycat package designs and place them on the store shelf in close proximity but at discount prices. These copycat companies spend virtually no money on research and development, allowing them to charge less – an unfair advantage. So, identifying and proving trade dress protection is a valuable defense.

Sustainability is becoming a growing concern for many consumers and companies alike. How does PTIS help companies to balance both financial and sustainable goals? Have you come up with any new ideas regarding sustainability as it pertains to intellectual property law?

Sustainability is about considering unintended consequences on future generations. Responsible members of the packaging industry have always worked to minimize packaging relative to the use and distribution requirements of the product – and keeping the three Ps in balance.

 The Sustainability "three Ps":

• People (Society, Equity),
• Planet (Ecology) and
• Profit (Economics)

It makes sense to minimize/optimize packaging and it is well known that packaging has a small ecological foot print, and in fact, more packaging can reduce product waste and spoilage, and most “products” have a far more significant environmental footprint.

Regardless, packaging is visible and receives significant negative press. The attention on packaging as well as on the world’s finite resources has led to new materials development (renewable resources, made from recycled materials, more recycleable, etc), new methods of automatically identifying materials for waste separation and recycling, etc. This is a great area for IP protection and innovation.

What is your position on Open Innovation?

Another topic worth mention and discussion is “Open Innovation.” For decades, companies have realized that regardless of how many dozens, hundreds or even thousands of smart people they have – there are millions more outside their four walls.

An MIT professor I have worked with, Eric Von Hipple, studied the source of inventions and innovations, and found that in many industries, less than 50% of the successes were actually invented by the company. Instead, they were acquired or discovered and commercialized.

In 2003, Henry Chesbrough published the first of three books (so far) on what he calls “Open Innovation.” P&G says “Connect and Develop” – and there are other names.

So now, at least hundreds of companies of all sizes are creating open innovation programs and web site portals that welcome new ideas and inventions. One of the biggest hurdles our benchmarking research has identified in innovation programs has to do with IP, and lack of willingness to share ownership.

My firm PTIS specializes in helping companies to build successful innovation and Open Innovation programs and processes – often starting with development of IP strategies and policies that lead to winning programs and efforts.

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I am a Buffalo attorney who focuses on intellectual property law and I rarely get an opportunity to discuss fashion branding with other intellectual property attorneys.

However recently I needed to find a Canadian attorney to help me file a trademark assignment for one of my clients in Canada, and I enlisted the help of Ashlee Froese a branding lawyer and Trade-mark Agent at Keyser Mason Ball LLP, a law firm in the Toronto area.

As it turns out Ashlee started a new website called canadafashionlaw.com and through the miracle of modern technology we connected on twitter and LinkedIn.

When I noticed Ashlee's moniker on twitter was @BrandFashionLaw I asked her if I could interview her for a blog post and she most graciously answered all of my questions. Thank you so much Ashlee!

And here is that interview:

Can you tell me a little about your background and your law firm in Canada?

I am a lawyer called to the Ontario bar in Canada and a Canadian trade-mark agent. I am an associate at Keyser Mason Ball LLP, a medium sized full-service law firm based in Mississauga, Ontario.

I am an active committee member with the International Trademarks Association and the Intellectual Property Institute of Canada. I am also an executive member of the Toronto Intellectual Property Group. I am a regular guest lecturer at various universities and colleges in Toronto, Canada on intellectual property and branding law.

Why did you become an intellectual property attorney and in particular a fashion trademark attorney?

From the first time I watched L.A. Law, I knew I wanted to be a lawyer. However, I fell into intellectual property law. Ever eager to ensure that I would get into law school, I worked at a law firm throughout the 4 years of my undergraduate degree. It happened to specialize in anti-counterfeiting enforcement, a niche area of trade-marks law.

During law school I studied other areas of law, however, intellectual property (especially trade-marks law) always held an interest. After an internship with the United Nations, I was fortunate to join a pre-eminent Toronto-based intellectual property law boutique. This allowed me the opportunity to hone in on trade-marks law from all aspects (prosecution, litigation, licensing etc.)

Although trade-marks are important for every business, I believe that trade-mark protection is especially critical in the consumer products industry. Couple the fact that the fashion industry is a heavy weight in the consumer products industry with my passion for fashion, becoming a fashion trade-mark lawyer was a natural step for me. If you are fortunate to be find passion in your job, it ceases being “work”.

How does a fashion law trademark attorney differentiate themselves from any other trademark attorney?

The fundamentals of trade-mark law are applicable to every industry. The law is the law, irrespective of the industry. However, there are certain nuances within each industry that may change your application of the law to the business or alter ever present “business considerations” that govern clients’ decision-making. As a lawyer, understanding those nuances can be of great assistance to your client. I hope to bring these insights to the fashion industry. Such specialization is not uncommon in the intellectual property field. For example, you oftentimes come across patent lawyers that focus on the pharmaceutical industry. I believe this can be applied to the fashion industry.

How important is it for a company to develop brand recognition through trademark?

Very! I cannot overstate this enough. A trade-mark is more than just a slogan or a pretty design. It represents the quality, reputation and character of the company. Ultimately, the trade-mark symbolizes an unspoken dialogue between the consumer and the company, otherwise known as “goodwill”. The goodwill generated by the trade-mark is what keeps the consumer coming back for more. Moreover, an important function of a trade-mark is to ensure that your company’s brand is distinctive, thereby setting it apart from its competitors. Simply put, without trade-mark protection your company is merely another company selling a widget. It is an uphill climb to generate market presence without brand recognition.

Why is it necessary for companies in the fashion industry to protect their product through trademark registration?

This goes back to my previous statement that trade-mark protection is especially critical in the consumer products industry.

But trade-mark protection goes beyond logos and slogans, which can serve the fashion industry well. For example, Canada’s legal trade-mark system allows a company to protect colors, three-dimensional trade-marks, distinguishing guises, certification marks etc. If you are creative in your company’s trade-mark protection strategy, you can go above and beyond merely protecting the label.

In the fashion industry, licensing is the cash cow. At the most basic level, trade-mark protection is fundamental to ensuring that the brand remains strong. Before you can let others play in your fashion house, you have to make sure that your fashion house is secure. Dependent upon the jurisdiction, governing trade-marks legislation will mandate that further steps need be taken to ensure that, in a licensing arrangement, the trade-mark still remains distinctive of one source.

You wrote an interesting article on your website canadafashionlaw.com recently regarding the Christian Louboutin red soled shoes which gave rise to a trademark dispute. How is it that a color of shoe can be the basis of a trademark dispute? Is this also known as trade dress?

The Christian Louboutin v. Yves Saint Laurent (PDF) case is really interesting. As previously mentioned, in certain jurisdictions color can constitute a trade-mark. Take Ikea for example: there is no doubt that blue and yellow comprise part of the distinguishing and distinctive elements of its brand. The same can be said of red soles for Christian Louboutin.

Any fashionista worth her Prada will easily recognize a Christian Louboutin shoe. The red sole has inextricably become linked with Christian Louboutin. Therefore, it functions as a trade-mark.

In a recent fashion show, Yves Saint Laurent displayed a variety of shoes (i.e. purple shoes with purple soles, green shoes with green soles and, finally, red shoes with red soles). It was this last color combination that got Christian Louboutin’s attention.

Christian Louboutin was able to secure a US trademark registration for the red sole in association with, inter alia, footwear. (Trade-mark applications are still pending in Canada and Europe).

A US trade-mark registration grants exclusivity throughout the US for the trade-mark in relation to those wares/services.

It is Christian Louboutin’s belief that Yves Saint Laurent is infringing on that exclusivity. 

Yves Saint Laurent, on the other hand, will likely contest the granting of the trade-mark, on the basis that a red sole is common within the fashion industry and, therefore, cannot be exclusively proprietary to Christian Louboutin.

Can you help companies identify and protect their trademark like the red bottom of a shoe in the fashion industry or any other industry for that matter?

Absolutely. I encourage clients to look beyond their traditional view of trade-mark protection to take advantage of brand protection via distinguishing guises and color, for example. I believe that trade-mark protection functions as both a shield and a sword for the business. Fundamentally, trade-mark protection functions to create a fence around your fashion house. It stakes your territory. This is the shield aspect to trade-mark protection.

But the trade-mark also functions as a sword: the exclusive proprietary aspect to the trade-mark ensures that competitors cannot get too close to your brand. The more creative you are in protecting your brand means the greater the “brand monopoly” your company may enjoy in the marketplace.

Do you think the copyright laws should be changed to help the fashion industry? Or is the fact that knockoffs keep the industry constantly looking for better designs to keep in front of the copycats a good thing for consumers?

If the designer was secure in the fact that nobody would be able to copy a fashion design, they might not be so anxious to come up with the next best thing. Can it be argued that the common practice of copying new fashion designs in affect forces designers to come up with fresh new ideas?

This is hot topic of debate. Really this boils down to whether you believe that fashion is a function of utility or a piece of art. Whereas a pair of standard jeans may not be especially note-worthy, a one-of-a-kind haute couture evening gown is a different creature.

If you look at some countries that very clearly have a thriving, profitable and note-worthy fashion industry, you will note that those intellectual property laws specifically protect fashion articles. France, for example, has a well-established legislative history (since 1793) of protecting fashion designs through copyright legislation. It is logical that fashion industries will thrive in jurisdictions where intellectual property laws explicitly protect the fashion industry.

As technology advances, the necessity of garnering protection for fashion designs increases. There are known instances where infringers attend fashion shows, digitally record three-dimensional images of the fashion designs from the runway and instantly e-mail those images to “knock-off” manufacturing sites, all before the fashion show has ended. Often times, the high street store is able to produce and market these inspired knock-offs much quicker than the haute couture designers.

But, there is the counterargument that the haute couture clientele and the high street shopper are separate and distinct consumers that rarely intersect in the marketplace. Thus, the fashion house does not suffer from lost revenue due to fashion design piracy. In fact, its brand is promulgated to a wider market thanks to fashion design piracy. In essence, mainstreaming unique fashion designs injects a revenue stream into the fashion industry at all levels.

Furthermore, some even claim that fashion design piracy is beneficial to the creativity of the fashion industry, as your question suggested. As the unique fashion design disseminates throughout various income brackets of fashion consumers, the fashion design is “mainstreamed” and the uniqueness of the design diminishes. This creative exhaustion leads to an impetus to further creativity and so a new fashion trend is created. Under this rationale, fashion design piracy constantly pushes the creative envelope.

Ultimately, this line of reasoning negates the fundamental purpose of intellectual property law, namely to encourage development and creativity through protection of those ideas and inventions. What impetus is there to create, knowing that the creations are free for all to benefit from? But, with anything, there needs to be limits and a system of checks and balances in granting certain companies a monopoly through intellectual property protection.

Is there anything else you'd like to add that is currently a hot topic in the fashion trademark industry?

ICANN’s eventual roll-out of new gTLD domain names is causing quite a stir in the trade-marks industry, which may impact any business that has an online presence (which is basically everyone).

I will be addressing this topic and other emerging hot topics on canadafashionlaw.com or on my twitter account @brandfashionlaw. Feel free to follow me there.

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Inventors often come to my office looking for help to not only protect their intellectual property by filing a patent application, but to get help to sell their idea to a big company.

I often ask inventors that come to me why do invention submission companies charge you if your idea is so good? Why don’t they represent you on a contingency basis? Well that's exactly what Lambert and Lambert does.

So I figured I would reach out to Trevor Lambert founder and owner of Lambert & Lambert and ask him a few questions about his company.

What type of company is Lambert and Lambert?

Lambert & Lambert is a company directed at licensing inventions. At its basics, licensing is the selling of intellectual property to a person or business that wishes to produce it for a profit. The intellectual property could be a patent, copyright, or an idea.

We charge an initial evaluation fee to perform an analysis of the product. If the product passes the test in the analysis we work on a contingency basis and only get paid if the product makes money.

We employ attorneys, engineers, and those with expertise in market research, marketing and promotion, video production, drafting, CAD, industrial design, prototyping, and manufacturing. The only time that we get paid is when the product sales generate royalties from a licensing agreement. From that point our share of licensing revenue is 25-30% and so the inventor’s share is 70-75%.

How did your company start?

I had an invention idea and I approached an invention submission company and was appalled about how I was treated and the success rate that existed. And so I started working on my own product myself. And that’s sort of how Lambert and Lambert came about. At first we reached out to independent inventors, and now our business has grown to where we represent, inventors and small to medium-sized companies.

Recently we have been doing product portfolio management for consumer product companies. Patent attorneys call it “portfolio mining” but we are not necessarily doing it on an IP level but on a product level. We look for products that are under performing and might have some licensability and where the product may have some life in the infomercial world or we will explore if there are other ways to create new revenue streams for those products.

So your company must play a different role for different clientele?

Our clientele ranges, some are inventors, some are independent product developers, and some are small companies. So it varies whether the development is done prior to getting to us, so sometimes it is more downstream and we don't really need to go through all the steps of designing everything.

So every deal can be different where you may have an independent inventor bringing the concept and nothing else is in place and we can step forward and help out with the design work or design company with all the manufacturing in place and we step in and act as a licensing partner.

Can you get a license for a new product without Patent protection?

Well that's tricky because without a patent there is no IP and nothing is stopping the competition from copying your products.  Every product on the market doesn't have IP behind it. It often isn't licensed or even patented for that matter. A lot of times the patent is expired or sometimes even perhaps like in the toy industry they don't even bother to try to get IP.

Sometime being  “first to the market”  is more important because life cycles are so short it doesn't really even matter if you have a patent because it might only go for one or two Christmas seasons and that's it. Being  “first to the market” from a marketing perspective is super important, generally first to market captures 60 to 70% of the market share… so that is a big deal.

If I have a good relationship with a company they may pay a royalty for something that has expired patents or no patents or no hope of getting a patent. But you are not going to get the best royalty in that circumstance.  However, this is fraught with complexities and potential pitfalls, so I wouldn't recommend this to an inventor.

If an inventor isn't able to pay for the utility filing, I would suggestion a provisional application for patent and begin gauging interest from companies well positioned in the industry to see if filing the utility will be a good investment.

Can you work a deal with a nondisclosure agreement?

We seek to have companies sign nondisclosure agreements, yet that isn't always possible.You can ask them to sign a nondisclosure agreement but a larger more sophisticated company will have their own disclosure agreement that they'd want you to sign. Generally they won't sign your NDA. That is just one of the realities of pitching products to the bigger companies. They have teams of lawyers to protect them, which is understandable.If the company is not willing to sign an NDA, we need to be careful on what we divulge or simply need to move on to a different company.

What is so hard about working in the toy industry?

The toy industry is an industry unto itself when it comes to licensing. You generally need to be an approved agency to work with the companies like to Mattell or Hasbro. The requirements that they have can be different for any given product. Again the toy industry is a tricky one.

What type of industries do you work with?

The industries I work in are primarily the consumer markets like, house ware and automotive, anything that could be sold at a Home Depot, Lowes, WalMart and Target. In order to get a license agreement in those industries you will generally need to have a patent.

Do you ever work with small or medium sized companies with new innovation?

Yes we do because small and medium-sized companies usually don't have a research and development department. They don't have engineers on staff because it's pretty hard to include engineers on your staff when you only have a couple dozen products. So we become an outsourced service to handle a specific function for the company.

We work Licensing deals with small companies as well, for example a small outfit might have a limited product line selling through a couple retailers, but because they have an established line through the retailers they can be a potential licensee. This type of medium company could be just what a product needs because they can give it that love the product requires, where a large company might see it as only one line in its 4000 product line.

What if a client comes to you and already has a deal on the table?

Ordinarily we work on a strictly contingency basis but sometimes we negotiate a deal with the other party we can also work on an hourly basis or at a lower percentage on the contingency fee.

Every product is different. Every deal is different. It has to get our attention to make us believe that we can license it. If it is too nitchy or not really innovative then it's not something we will take on.

I noticed on your website that you go through a 16 point Marketability analysis to determine whether or not you will try to license an idea?

We examine an invention based on criteria that are essential in the success of a product in both marketability and "licensability."

Marketability Analysis:

1.  Legality
2.  Safety
3.  Impact on society
4.  Invention's performance
5.  Profitability
6.  Market demand and size of market
7.  Product-line potential
8.  Manufacturing feasibility
9.  Quantity of competition and related products
10.  Quality of competition and related products
11.  Competitive advantages and disadvantages
12.  Consumer appeal
13.  Licensing potential
14.  Major barriers toward market or manufacturer acceptance
15.  Miscellaneous recommendations
16.  Important resources and contacts for future development

Are there times when you bypass your analysis?

We can bypass the evaluation for clientele that possess issued patents or have already manufactured the product. The 16 point analysis is designed for the independent inventor to open their eyes to all of this stuff. So if we’re dealing with someone who's in the business or some big design firm and we don't go through the evaluation process step-by-step. When we are doing more of the corporate work we look at what they have and try to make a determination if there is a match.

If you were to have used that 16 point analysis on the "Pet Rock" what would have happened?

• First of all the "Pet Rock" wasn't licensed, it was marketed and commercialized by the inventor directly.
• Secondly, aside from the "Pet Rock" trademark, there was essentially no intellectual property on that item.

That being the case, since our evaluation seeks to analyze a products "licensability" it probably would've failed. The "Pet Rock" wasn't so much an innovative product with unique features, benefits, etc, but rather an innovative marketing scheme. It's an important distinction, because if the inventor went to a toy company at the time he would have almost certainly failed at licensing it. Really, the "Pet Rock" is a very interesting exhibit for product marketing study, not licensing.It probably would've failed, quite honestly. It's very hard for us to be perfect when we evaluate a product because every product is subjective and no one has a crystal ball.

Do you advise inventors to obtain a provisional patent application?

There are occasions in which a filed provisional patent application is enough for us to obtain a licensing agreement with certain companies or manufacturers. A filed provisional patent application allows us to pitch the product as patent pending. And if we get interest in the product and it gets licensed, then all of a sudden it warrants the cost to move forward with a full utility patent application.

As you know the filing requirements for a provisional patent application are far less stringent than that required for a utility patent and therefore it is less expensive to file a simple provisional patent application. Although we do advise that the inventor files a strong provisional application. So that's one of the strategies that we use, again it all depends where the inventor is when they come to us.

Tell me a little bit about the $199 fee for your analysis?

For that $199 not only do we do an analysis of the product but we preform a patent search and competitive product market research.

When you're looking at a product to analyze with regard to licensability there are three things that need to intersect:

• patentability;
• marketability; and
• commercial feasibility.

In fact we've put together a Venn diagram with three circles to show how those things overlap. So when we do our analysis we take into account our 16 points, which also takes into account prior art and then we make our determination of whether or not the product of the inventor is licensable.

From there we put together a report for the inventor that takes into account the patent search and the licensability analysis.

We look at the product through the lens of licensability to determine what we need to overcome in order to bring a product to market.

Once we provide this analysis and report and we make a determination if we want to represent that inventor for a consumer product. If so we get involved in everything that needs to take that product to market.

So we carry out the development and marketing. We have connections with certain companies in the industry and we also try to present the products at trade shows to well-positioned companies in the industry to commercialize the product.

The whole purpose is to find a company that can sell the product at a large volume. And that's the whole point because volume and sales equals royalties and that's our goal.

Is all the design work and marketing work included in the $199 fee?

The design work is included when we represent an inventor on contingency after the initial evaluation. We have a proprietary design for licensing package that we will perform for clients who don't have their product developed sufficiently for presentation.

Even though our client might not have a prototype, our design work focuses on developing computer renderings where the product looks like a photo-realistic image, as if the product actually exists in real life! This helps a potential licensee to see the product as it would sell on the shelves and maximizes likelihood of getting the product licensed.

Does it ever work out where the big company says to you "sure we like your idea give us 18,000 products by next Tuesday and we'll put them on the shelf"?

Pitching to a WalMart doesn't work that way. You have buyers that are segmented, you have product line reviews and if you are one product company you have an uphill road ahead of you. With that being said understand that Lambert and Lambert is a licensing company we're not a sales agency or a sales rep company where we rep direct to retailers.

Our contacts are with companies who work directly with retailers. So we can go to XYZ company and say hey we got a great new paint item for you it is going to fit right into your paint line, when is your product review with Home Depot? And of course they will say to get it over to me as soon as you can, we want to see it. And so we will give them the elevator pitch and we'll go from there. And then we'll have more serious conversations if they like the product.

How does Lambert and Lambert compare with a “Patent Submission” company?

Submission companies have a difficult road ahead of them. The problem submission companies have is they are fee based and they supply a service with no guarantee of success or profit. What are the deliverables? The contract states you're going to do this, this, this and this and that is what the inventor is going to get, but that doesn't mean that they're going to make it to the market.

And another problem with the submission company is that they have a gray area of deliverables. They really don't evaluate products they simply take the money from the inventors because it's fee-based, they provide the services whether not the product has any chance of success or not.

That's the model we'd like to change at Lambert & Lambert. Our model is simple,   the product comes in, you pay your 200 bucks, if we think we can license it we will represent it.

In order for us to take a product on a contingency basis we can only take a small percentage of the ideas that come to us. I'm not sure what the number is exactly but it's probably under 10% of all the inventions that we review. And out of that our success rate as I define it is between 30 and 40%, which means that we've actually obtained a license agreement for the inventor.

We do a lot of deals, I am very proud of that. My goal is to always be very honest with inventors, we tell them right up front, we think we could license this or we don't. But even then we sit down with inventors that we represent and tell them that it's an uphill battle, we can't make any guarantees that your product is going to be financial successfully.

But we put our money where mouth is, if we believe the product can be successful we do everything and there's no money out of pocket for the inventor. So our rep services are given without any out-of-pocket costs to the inventor unless we are successful and that means that includes travel, marketing, development getting a prototype and everything that goes along with pitching a product.

Do you cover the cost of a patent application as part of your contingency fee?

We don't pay for the patents because then we become partners, we give "licensing related intellectual property help." We may advise where to file a patent application, for example we may advise to file in certain countries and we refer inventors to attorneys such as yourself to provide them with the expertise on the IP side that they really need.

We refer this patent work out because we are not attorneys and we want inventors to get good advice from someone who's capable of giving legal advice. The more the patent attorney understands about licensing agreements the better. Because then they're on the same page as far as obtaining the licensing goal.

Thanks to Trevor Lambert for taking the time for this interview. And thanks to Lambert and Lambert for allowing us post the artwork.

It would be great if inventors with experience with Lambert & Lambert could post a comment on this page. I am sure readers who are thinking of engaging their services would be interested in the testimony of your first-hand experience. Thanks.

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Inventor Joe Iannello came up with an idea of how to easily clean the underside of a lawnmower and he developed a new product called the Spray–n-Mow.

He designed it, he received United States Patent 7,628,003(PDF)  for it, he got it manufactured and now he is marketing his own product and selling it.

It wasn't an easy road and he learned a lot of lessons along the way, and he would like to share those lessons with other inventors. 

He provided me with an "Inventor's Checklist" (which I included below) and he graciously agreed to answer a few questions about what inventors need to know...

What does an inventor need to do to get a product to market?

You just have to be patient and believe in your product. If you don't believe in your product it is not going to get anywhere. You cannot be afraid to put up the money and to put in a lot of effort… otherwise you will go nowhere.

How are you attempting to market your product?

I have reached out to a professional marketer that has certain corporate contacts. In order to get your product into a big company you have to have those corporate buyers and corporate contacts to sell the product. An independent inventor can't just call any company and say hey I have a product I want to sell to you. You need to have that corporate contact, because most buyers of these big companies won't even talk to independent inventor on the phone.

You can try to get those contacts by filling out vendor applications at corporate web pages. There are people in the marketing business that do it all the time but that doesn't necessarily mean that you're going to get your foot in the door.

These vendor applications ask in depth questions with regard to your background and your ability to bring a product to market. Once those applications are filled out you have to wait for the vendors to contact you. 

There are many elements which go into the reasoning of whether they contact you. Is the timing right?

• I believe that the market itself is always an issue because if the economy is bad it may be difficult for a company to take on new products in a slow economy.
• Secondly, most products are seasonal and the marketing begins months before the season.

What type of company do you use to market your product?

I use a company called Patents to Market. I did a profile and compared them with six other companies. I was looking at what his background was what is experience was. The guy who runs this thing is actually an attorney he's got a track record of all these different companies he's worked with in the past.

So what makes a good marketing company?

You're going to find once you get a patent you are going to be flooded by mail from many different marketing companies. I try to avoid those that are just blowing smoke that really don't have the experience and really don't have the contacts and they are telling you something that they really can't do.

Just because they market some other product doesn't mean you're going be able to market my product. I was looking for companies that have established corporate contacts, that have established a relationship with buyers.

What are some of the lessons that you learned that you would like to pass on the other inventors?

Take control of your own destiny. Believe in yourself! Have faith that you will succeed. But you have to teach yourself every part of the business from marketing, to distribution, to manufacturing.

Don't ever give up. Keep going! Keep plugging! Meet as many people as you can. Keep networking to find people that can help you do things that you can’t do or are able to teach you how it should be done.

Every person that I met with along the way that helped me bring my idea to reality I would recommend to a new inventor. I have a personal rapport with every single one of these people. I physically went to 10 different manufactures to find someone to manufacture my product.

I found Val Tech Holdings, Inc. who put their heart and soul into manufacturing my product. Everyone in the company from the president down communicated with me and they made the best mold to make the best product. They also informed me of all the pitfalls that every inventor has when trying to get their product to market, even after it's manufactured. They were very honest with me.

You have to find someone that can manufacture your product that you can trust, you can work with and that won't look down on you. It is not easy to get in front of the president or the vice present of a company, most manufacturing companies won't help you the way this company actually did.

How did you educate yourself as far how to make a mold and what you should expect from your mold?

I purchased an injection mold. I wanted a mold that would make a better product and last longer and produce a greater number of products before it wears out. And Val Tech Holdings, Inc. created a high quality mold. It might've cost me a little bit more money but in the long run it will save money.

Joe's "Inventor's Checklist" of what he did to take his idea to market:

1) Idea for an invention

2) Drawing and description

3) Design – CAD Drawing – 3Dem. – 6Dem.

4) Blue print – with measurements – 8” X 11”

5) CAD on DVD

6) Name of product for the U.S. Patent Office

7) Registered Domain Name – for product marketing

8) Registered Bar Code for pricing

9) Patent – Patent Pending

10) Working Prototype

Paragon Model Makers, Inc.

1705 Main Road

Corfu, New York 14036

Frederick Landers – President/Owner

(585)-762-9367

11) Company Name – DBA/Corporation

12) Company Logo – Product Logo

13) Product Packaging

Mod-Pac Corp.

1801 Elmwood Avenue

Buffalo, New York 14207

(716)-873-0640 – Ext. #232

Donald Coppola – Sales/Rep.

14) Manufacturing of product

A) Engineering Design enhancement

B) Develop a structured business relationship

15) Manufacturer

Val Tech Holdings, Inc.

1667 Emerson Street

Rochester, New York 14606

(585)-647-2300 – Ext. #248

Joe Czop – Business Development/CEO

16) Strategy for Pricing & Marketing

17) Marketing of product

18) Website Design

19) Product Brochures

20) Product Infomercials – Audio/Visual Production

Derrick Chamberlain - Photography

21) Liability Insurance

22) U.S. Consumer Product Safety Commission laws & Regulations

23) DBA – “Doing Business As”

24) Incorporation of Business

25) Federal Tax Number

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As a patent attorney here in Buffalo, New York I was very happy to learn that Esther Takeuchi a University at Buffalo professor was among the 2011 inductees to the National Inventors Hall of Fame. So I contacted her and asked her a few questions which she graciously answered (see below).

The induction comes from her groundbreaking work in implantable medical devices. Her research began at Greatbatch Inc. and continues today at the University at Buffalo.

She led efforts at Greatbatch to invent and refine the lifesaving Li/SVO battery technology, utilized in the majority of today’s implantable cardioverter defibrillators (ICDs). ICD batteries have high energy density with the ability to support intermittent high-power pulses.

Esther Takeuchi has earned more patents than any other woman in the United States and has received many local and national awards recognizing her contributions to society through science.

She was honored at the White House where she was presented the National Medal of Technology and Innovation from President Barack Obama.

Here is the interview:

What brought you to Buffalo, New York?

My husband became a Professor of Chemistry at the University at Buffalo. I moved with him to look for suitable positions in my field.

What's the next step after lithium ion batteries or is it already old news?

Lithium ion batteries are continuing to advance. I expect multiple generations of lithium ion batteries to be forthcoming in the next few years. Significant advances continue to be made in how fast they can charge and discharge as well as the total amount of energy they store.

What about green technology and batteries?

Energy and sustainability are strongly linked. These are two of the most significant challenges facing us today. Renewable, environmentally friendly and cost efficient ways of generating and storing energy are issues that need to be addressed on a global scale. The widespread availability of cheap energy may be a key factor in determining the standard of living for many people.

What can we expect in the next generation batteries for medical devices, laptops, and Ipads and cell phones?

We can continue to expect longer life and faster charge. Also, notice that the shape of batteries has changed substantially. Ipads and other devices use very flat batteries. The days of cylindrical batteries for high-end devices are largely over.

Can Buffalo become a leader in developing cutting edge technology?

Buffalo is well positioned to do so. The knowledge base is here. Facilitating launch of companies is something that the region is actively working to improve.

Do you have any opinion on patent reform?

I assume that you refer to the rule of ‘first to file’ versus ‘first to invent’. I am in favor of the ‘first to invent’ as we have in the US.

What advice would you give to science students that wish to follow in your footsteps and become inventors?

Remain curious. Always believe that things can be made better. Also, each individual matters. Every person brings their own unique perspective based on their experience and background. That unique perspective may lead to the next big breakthrough.

How does it feel to be mentioned in the same breath as Henry Ford, Thomas Edison, Wilbur and Orville Wright?

It is a tremendous honor to be considered in the same company as the other inventors that have changed our lives.

About the National Inventors Hall of Fame

The National Inventors Hall of Fame is the premier non-profit organization in America dedicated to honoring legendary inventors whose innovations and entrepreneurial endeavors have changed the world. Founded in 1973 by the United States Patent and Trademark Office and the National Council of Intellectual Property Law Association, the Hall of Fame will have 460 Inductees with its 2011 Induction.

The National Inventors Hall of Fame and Museum is located in the atrium of the Madison Building on the campus of the United States Patent and Trademark Office, at 600 Dulany Street, Alexandria, VA. Admission is free.

This year’s Induction ceremony, sponsored in part by the United States Patent and Trademark Office and the Kauffman Foundation, will take place on May 4 at the historic Patent Office Building, now the Smithsonian American Art Museum and the National Portrait Gallery in Washington, D.C.

The location is particularly appropriate because this year’s class of inductees includes a group of 29 historical inventors who will be recognized posthumously, most of whom would have submitted patent applications to the same building where they will be honored.

Posted with the permission of the  National Inventors Hall of Fame™

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When starting a new business one of the first things that needs to be done is to create a brand. Branding establishes the first impression that your target audience has of your business. Existing businesses sometimes need to re-create their brand.

I once asked an attorney "why does the public perceive you as the best personal injury attorney?" And he simply replied “because we told them in our advertisements.”

So if you're starting a new business or you own an existing business and your look is getting old and you need to upgrade or simply change and you need a fresh set of eyes to look at the situation where do you go?

I found Reagan Burns the owner and creative director at Lime Creative. Reagan and I had a nice conversation and she answered a few questions for me regarding marketing and branding issues.

What are some things a new business should be aware of regarding branding?

So when you're starting a new business you need to create advertising material, packaging, and trade dress of your actual place of business that says "this is who we are."

• Branding
• Advertising
• Marketing

Branding equals "look and feel of the company." The logo operates to allow consumers to identify with the company. We help determine what the company needs such as a logo, slogan or tagline.

How do you come up with new ideas without stepping on other people's legal rights?

When coming up with new ideas we have to be aware of trademark issues and copyright issues. This is where it's important to find a trademark attorney to perform a trademark search and file an application for trademark or copyright registration. Our company will pass clients onto patent and trademark attorneys to determine whether or not a federal trademark has previously been registered.

How do you come up with new ideas?

Our job is to determine what theme you're looking for. For example, a modern versus traditional look in which the target audience can relate. What is the look and feel of the company? How do you present yourself to the world?  Who do you want to become?

You can worry about efficiency while we worry about branding. In fact, not only do we love branding, but we also love worrying about advertising, and marketing, and designing, and inventing creative ways to add a little pizzazz and flavor to your business.

What do you do as far as following up with your branding plan?

Once we come up with a marketing plan it's important to implement it with consistency. Advertising should be memorable and uniformly consistent. Things like color codes and JPEG pixelation's should be consistent throughout the branding. Everything should have a unified feeling and the marketing plan should repeat the trademark over and over.

What rights does the branding company maintain?

Our client maintains all rights to use their logos as they see fit, whereas we maintain portfolio rights in all our work. Portfolio rights allow our company to maintain examples of our work to promote our business.

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Recently I received a calendar (PDF) from professional patent searcher Martin Keller.  On each month of the calendar is a patent drawing that is very unique.

So I contacted him because I wanted to thank him for sending me the calendar and see if he would answer a couple questions about preliminary "prior art" patentability searches.

Well here are a few of the "unique patent drawings" from patents that he came across over the years. If you click on the patent drawing it will bring you to a PDF of the entire patent.

Thanks again to Martin for his insight and gracious response to my questions regarding patent searching.

How long have you been employed as a patent searcher?

Since 1985 I have conducted a few thousand patent searches in my career, starting in the “paper only” days - all the way up to the present EAST system.

Have you had a lot of people come to you with regard to the same so called invention and you can just say hey I searched that one before and I know that is already out there? Like the self pasting toothbrush or the flip flop with an interchangeable toe piece?

Just did it the other day for a baby bottle with musical attachment that turns on when the bottle is tilted. Done this search - in a variety of ways. patent: 7134932 (PDF)

What types of things do you look for outside the particular classification of the invention, for example if someone came to you with a reel for a fishing rod would you look at reels on a sewing machine?

I look at all analogous art. I conduct every type patent search from a simple mechanical or electrical novelty search to validity and infringement studies and heavy duty chemical searches.

Since everything now is computerized do you conduct most of your searches online? Do you find that Google patents is a good searching tool? How does it compare with United States Patent and Trademark Office (see step by step search strategy) web page regarding searching? 

Google patents is only a fair tool. Better than the USPTO site.

Do you use use other search engines or websites such as IP.com as well? Do you ever actually go to the patent office anymore and search?

I go into the PTO every day and use EAST - the same system the examiners use. Nothing and I mean Nothing even comes close to EAST. In fact, the times when I find 102 art quickly on EAST - all other online databases fall very short.

Does anybody go through the old "paper shoes" and make searches? Do you ever make contact with an examiner and discuss the invention with an examiner?

No- all paper shoes are gone from the PTO. And on difficult searches I always consult an examiner.

Martin Keller
Professional Patent Searcher
1940 Duke St., Suite 200
Alexandria, VA 22314
tel 703-624-0310
fax 703-636-7700
email: kellerpatents@gmail.com

- Posted using BlogPress from my iPad

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The United States Patent and Trademark Office (USPTO) granted an all-time high 219,614 United States utility patents in 2010 – up 31 percent over 2009. All but one of the companies in the Top 50 are up from 2009, most shattering records and many posting double-digit percentage gains.

IBM continues to hold down the #1 patent rankings position, which it has done for 18 consecutive years, with a record 5,896 patents, up 20 percent from 4,914 in 2009. IBM is the first company to Break 5,000-Patent Mark in a Single Year.

IBM’s 2010 patent total nearly quadrupled Hewlett-Packard’s and exceeded the combined issuances of Microsoft, Hewlett-Packard, Oracle, EMC, and Google. More than 7,000 IBM inventors residing in 46 different U.S. states and 29 countries generated the company's record-breaking 2010 patent tally.

IFI CLAIMS® Patent Services, a division of Fairview Research, compiled a ranking of global companies awarded the most U.S. patents in 2010.

I spoke with Darlene Slaughter, general manager of IFI CLAIMS Patent Services and she said that they provide statistical data to perform preliminary patent searching, infringement searches or freedom to operate searches." With that information companies can:

• Determine which companies are key players in a particular technology
• Identify strategic partners
• Gain an insider's view of a competitor's patenting activity
• Review the number of new patents in each category for the past year
• Track patenting trends across industries

Darlene Slaughter, reiterated that protecting innovation through the patent office is not slowing down

"Companies with the most patents focus on their IP and believe that protecting the innovation through patent is important in maintaining an edge on its competition."

Is this increase in patent grants a sign that innovation is not slowed by recession? Or is it a sign that United States Patent and Trademark Office is becoming more efficient at prosecuting patent applications and the increased number of patent examiners are reducing the back log of patent applications?

I think the increased number of patent grants can be directly tied to the number of applications filed.

In his Director's Forum: David Kappos' Public Blog the USPTO director posted that "Improving Key Patent Processes and Sub-processes" is the big reason for the increased patent grants and he quotes a couple remarkable numbers:

For the year 2010 the USPTO Technology Center Technical Support Staff of 274 legal instrument examiners and legal document review clerks:

• Entered more than 2.9 million documents;
• Verified more than 264,000 allowed patent applications;
• Reviewed and counted over 2,300,000 office actions; and
• Processed more than 257,000 new patent applications.

These stats represented all-time records for the USPTO, reflecting all-time record workflow through the Agency including interviews conducted, office actions processed, notices of allowance, and final rejections. David Kappos

The bottom line is that the United States patent office has been swamped with a rising flood of applications over the past 20 years:

• 174,711 applications were filed in 1990 and 100,975 patents were issued.
• 478,649 applications were filed In 2010 and 219,614 applications were issued.
• The 1990 gap between patent applications filed versus issued patents was 73,736 
• The 2010 gap has grown to 259,035.

Okay we know it is not humanly possible for 6,000 examiners to keep up with the 721,831 backlog of patent applications... but have the examiners increased their ability to process applications?

Dennis D. Crouch of Patently-O Blog posted a chart comparing the yearly number of patents issued per examiner over the course of the past decade. Dennis points out that apart from the “2007-2009 period where the grant rate dropped so precipitously” this chart does not suggest that the examiners are any more efficient today of disposing patents than they were in previous years.

So I would guess that the only solution to decreasing the backlog of patent applications is to hire more examiners.

John Schmid of the Milwaukee Journal Sentinel reports that despite efforts to improve, U.S. patent approvals are moving slower. And because of the huge backlog and the fact that the US publishes entire patent applications online 18 months after they are filed, “That puts American ingenuity up for grabs, free to anyone with an Internet connection.” In the article he quotes Paul Michel, recently retired chief justice of the United States Court of Appeals for the Federal Circuit, as saying

"In China, there are thousands of engineers who don't work in laboratories inventing new technologies. "They sit in computer rooms reading U.S. patent applications on the Internet. And they can use the technology anywhere in the world, including in America, for free.

But even with all the suppoed deficiencies of the United States Patent and Trademark Office, foreign and US corporations want to protect their innovations and have filed a record number of applications this year.

And as a result US companies own about half and the rest of the world owns the other half of the granted patents this past year. (see chart below World Wide Ownership of US Patents 2010)

Top-50 US Patent Assignees in 2010 (As reported by IFI)

1. International Business Machines Corp 5896
2. Samsung Electronics Co Ltd (Korea) 4551
3. Microsoft Corp 3094
4. Canon K K (Japan) 2552
5. Panasonic Corp (Japan) 2482
6. Toshiba Corp (Japan) 2246
7. Sony Corp (Japan) 2150
8. Intel Corp 1653
9. LG Electronics Inc (Korea) 1490
10. Hewlett-Packard Development Co L P 1480
11. Hitachi Ltd (Japan) 1460
12. Seiko Epson Corp (Japan) 1443
13. Hon Hai Precision Industry Co Ltd (Taiwan) 1438
14. Fujitsu Ltd (Japan) 1296
15. General Electric Co 1225
16. Ricoh Co Ltd (Japan) 1200
17. Cisco Technology Inc 1115
18. Honda Motor Co Ltd (Japan) 1050
19. Fujifilm Corp (Japan) 1041
20. Hynix Semiconductor Inc (Japan) 973
21. Broadcom Corp 958
22. GM Global Technology Operations Inc 942
23. Micron Technology Inc 917
24. Siemens AG (Germany) 873
25. Xerox Corp 858
26. Denso Corp (Japan) 853
27. Texas Instruments Inc 829
28. Honeywell International Inc 824
29. Sharp K K (Japan) 818
30. Toyota Jidosha K K (Japan) 802
31. Infineon Technologies AG (Germany) 774
32. Brother Kogyo K K (Germany) 771
33. Nokia AB Oy (Finland) 760
34. Silverbrook Research Pty Ltd (Australia) 752
35. LG Display Co Ltd (Korea) 738
36. Semiconductor Energy Laboratory Co Ltd (Japan) 734
37. Mitsubishi Denki K K (Japan) 700
38. Koninklijke Philips Electronics N V (Netherlands) 685
39. NEC Corp (Japan) 680
40. Boeing Co 662
41. Qualcomm Inc 657
42. SAP AG (Germany) 649
43. Oracle America Inc/Sun Microsystems Inc* 646
44. Bosch, Robert GmbH (Germany) 593
45. Fuji Xerox Co Ltd (Japan) 574
46. Apple Inc 563
47. Du Pont de Nemours, E I & Co 509
48. Sanyo Electric Co Ltd (Japan) 504
49. 3M Innovative Properties Co 496
50. Freescale Semiconductor Inc 494

*Sun Microsystems changed name to Oracle.

Do you think an increase in the amount of patents equates to an increase of productivity? Will that translate into bigger profits at the stock market? Here are the biggest percentage gainers on the 2010's Top 50 Companies Awarded a Patent List:

1. Apple, +94%
2. Qualcomm, +84%
3. NEC, +74%
4. SAP, +70 %
5. GM Global Technology, +68%
6. Hynix Semiconductor, +65%
7. Silverbrook Research, +58%
8. 3M Innovative Properties, +53%
9. Toyota, +50%
10. Brother, +45%
11. Hon Hai Precision Industry, +44%
12. LG Electronics, +40%

In 2010, American-headquartered companies collectively recaptured a lead on the total number of U.S. patent grants (just over 50%) after losing out slightly to foreign companies for the previous two years. In 2009, American firms received less than a majority at 49 percent. Here is a chart showing the ownership percentage number of patents awarded by country.

Market Sectors with the Heaviest New Patent Activity

• Multiplex Communications (US class 370) 3.3 %
• Solid-State Devices and Transistors (US class 257) 3.1 %
• Semiconductors (US class 438) 2.72 %
• Data Processing and File Management (US class 707) 2 %
• Computers and Processing Systems (US class 709) 2 %
• Drug Compositions (US class 514) 2.1 2 %
• Biotechnology (US classes 435 and 530) 2%

 IFI's full report, which offers comprehensive 2010 patent information on more than 2,000 companies, can be accessed online through IFI's Patent Intelligence & Technology Report, available on its website in a free-trial version.

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Recently I met with Fred Landers with Paragon Model Makers Inc. and we had a nice conversation about how he can help inventors build working prototypes and models. Having a prototype is important in the patent process as well as manufacturing process.

Like any endeavor cost and efficiency are concerns in trying to reach your goals. The goal for the inventor is to take an idea and turn it into a real product and then to market in the most profitable way.

The first step in the process is coming up with the idea and the second step in the process is to take it from the virtual world to the real world.

I asked Fred Landers a couple of questions as to how he can help in this process.

Question: What are some of the advantages of building a model?

Answer: if you can provide a manufacturer a prototype that the manufacturer can take and reproduce it will decrease the cost for engineering and design. When a manufacturer has a prototype they can simply copy it and avoid the time of actually coming up with a way of how to make it. 

Question: What are the different types of prototypes that you can create?

Answer: We can build two different types of prototypes.

1. A working prototype (Engineering Prototype) A working model is a great sales tool for marketing a product. It is positive evidence to show that the product can do what you claim it can do. A working prototype gives you a model that actually proves that the product works.
2. Nonworking prototype (Industrial Design)
   The nonworking model is usually made of a low-volume mold that is machined out of plastic. This industrial design prototype is an example of what the exterior of the product will look like. Examples of nonworking models that we have made in the past are: electric current tester or a computer cover. We create the nonworking exterior of the product and the company that we are working with brings it to life by filling the interior with the “guts” of the product.

Question: What do you need to begin the process of making a model?

Answer: We use a drawing as a starting point. We work in conjunction with various companies that are able to provide engineering grade drawings as a specification for the product. For example we work in conjunction with Devin Cooper from DCA Ltd. who has the ability to create excellent drawings from which we can create a model.

Question: What are the different types of materials that you usually work with?

Answer: We can use anything from metal, injection molded plastic or wood. We can even bore out a solid piece of acrylic and design it into almost any shape.

We have provided prototypes to many different types of companies’ s over the years such as Kodak, Xerox, Fisher-Price and Smith Corona.

Question: What are the benefits of creating a prototype?

Answer: We believe if you create prototypes it lowers the production cost. If the manufacturer has a model versus just a drawing they can:

• Avoid the trial and error normally associated with manufacturing
• Just copy what we give them because if you have a working model you know it works, they just have to copy it.
• Set a definitive cost of manufacturing a product.

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The United States Patent and Trademark Office (USPTO) web page is not very user friendly when searching for prior art patents. But I found an add-on for Firefox called Aspator that makes it much friendlier.

The Aspator add-on works with search pages for patents and patent applications on the USPTO and the European Patent Office (esp@cenet) websites.

Aspator is designed for inventors, engineers, scientists, patent agents, patent attorneys, and patent executives who search patents regularly.

I’ve used it for a few patent searches now and I like how everything is built right into the USPTO website. No having to go to multiple pages for different features, especially for downloading a .PDF copy, everything comes up right on the USPTO search page.

Another great feature is that searches can be manipulated and saved, and your own personal comments added. The comments are conveniently located and will come in handy when writing a patent opinion. It simply brings all patent information to one page. This feature will save so much time looking for patents that I just looked at because you do not have to hit the “back” button 20 times to return to previously viewed patents.

I will definitely keep this Ad-on on all my computers.

Features of Aspator:

1. Read searched patent abstracts, claims, drawings and bibliographies from USPTO and esp@cenet on a single page.
2. View USPTO patent drawings directly. No need to install TIFF viewer.
3. Instant translation of patent abstract.
4. Patent classification analyzer.
5. Direct access to esp@cenet and Google Patent Search.
6. Download PDF of an entire patent with  one click.
7. Download multiple patents in one single PDF file or in separate PDF files.
8. Store your search records with your comments.

I liked the Aspator add-on so much I decided to interview the Developer Kenneth Yip and learn why Aspator was created and find out what's next for this add-on. Here is the interview:

Q: Can you give us a little background about yourself?

A: I was born and raised in Hong Kong. My family immigrated to Toronto when I was in high school. I earned a bachelor degree in electrical engineering from the University of Waterloo, and a master’s degree in electrical engineering from Stanford University.

After worked for a telecom research company in New Jersey and two startups in New York City, I moved back to Hong Kong to work for a research institution. In the research institution, I was responsible for all IP maters and spent most of my effort in patent searches, reviewing patent applications, and IP licensing. I then earned a LLB from University of London external program. Now, if everything goes smoothly, will become a lawyer in Hong Kong later this year specializing in tech and IP.

Q: Do you have any experience searching patents and what got you into creating add-ons for patent searches?

A: As I needed to search patents regularly and found Delphion a bit overpriced (or too powerful for my need) and slow, I began thinking of different ways to improve patent search efficiency. Also, at about the same time, Firefox became popular. Because of these two factors, I decided to create Aspator.

Q: One problem many users have with the USPTO website involves viewing images of patents and drawings, which are in TIFF format. Even if a user has a TIFF viewer, such as Alternatiff, conflicts with programs such as Apple’s Quicktime can make TIFF files difficult to display properly. Does Aspator help with this issue?

A: Yes, as there is also a big issue with printing TIFF files embedded in a web page. In the newest version of Aspator, 1.0252, Aspator will allow a preview of pages 2-4 of a patent/patent application without a TIFF viewer by converting TIFF images to PNG images, a much more common and easily-viewed image format. Pages 2-4 are usually the first 3 diagrams of a patent/patent applications. If there is a demand, future versions of Aspator will turn all images from TIFFs to PNGs.

Q: When testing out the Aspator add-on for Firefox I was impressed with the ability to save search results for later use, when you created this feature how did you envision it to help a searcher?

A: Haha, I love this feature. I believe this feature will distinguish a casual patent searcher from a professional patent searcher. A casual patent searcher will only search patent once in a few months and may not need this feature. On the other hand, a professional patent searcher needs to deal with many patent search requests a day and may find this feature useful.

Q: What do you think the most important features are for the Aspator add-on for Firefox?

A: I would say it is the ability to show the patent contents along the search result.

Q: Did you apply for any patents regarding this add-on?

A: No. As most features of Aspator are about information display and simple HTML parsing, there is not much need for patent application. However, I have at least 15-20 features in my to-do-list. Two or three of them I believe are quite "revolutionary" and worth for patent protection. Hopefully, these features would be able to leave Delphion in the dust:)

Q: Why did you pick the name Aspator?

A: A person (or) who is an ace (as) in patent (pat).

Q: What what can tell me abut the lifespan of Aspator?

A: One happy thing that Aspator users need to know about is the life span of Aspator. The value of Aspator is inversely proportional to the value and features provided by USPTO, esp@cenet or Delphion.

It is my sincere hope that one day I can stop thinking about Aspator because a patent search in USPTO, esp@cenet or Delphion becomes very powerful and user-friendly.

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What Inventors Need to Know...

Tom Demitry is an entrepreneur, an inventor, a salesman, a marketer, a man of ideas and as he will tell you first and foremost a father and a man of God. He is constantly coming up with new ideas and new ways to reinvent himself. His passion and enthusiasm are endless.

I met Tom about 10 years ago when I first became a patent attorney and he was looking for someone to help him file a patent application and get a patent for his invention, the PaintMat (PDF). Little did he know that he was my first client! It was the beginning of a long term working relationship and friendship.

Although that product never really became a financial success, Tom took the PaintMat idea across the country selling the product he had patented, manufactured and marketed and learned a lot of lessons in the process.

Since then he started a new endeavor selling baseball caps and various styles of hats with a Christian theme and marketing the hats under the registered trademark (.PDF) SpiritDomes®. This time it seems that Tom is on his way.

I thought a blog post about him might give inspiration and guidance to other inventors and entrepreneurs who are starting out. Here are a couple questions and answers from our interview:

How did you establish a national brand and hat line in this difficult economic climate?

I have 30 years experience in the head-wear business and I received my vision in church on one fateful Sunday. I was thinking of ways I could spread the word of God and had an awesome idea that was very unique in the industry. 

The idea is to imprint a quote from scripture on the under-visor of my product and design the artwork for a hat around the particular quote from the bible; a "SpiritDome".

No one in the world was doing this so I wanted to establish my own unique niche. Being different than everyone else is what helped the brand really take off. The key is to be different and it is what our target consumer, the youth of today want to be- unique and different!

What have you done to protect your idea?

I thought the best way to protect my brand was by filing for a registered trademark. I filed a trademark application with the United States Patent and Trademark Office (USPTO) through KlossLaw and SpiritDomes was a registered trademark within one year of filing. I believe a registered trademark is the best protection available because no one can ever use it in business. It's also versatile in that I can create product line extensions with the brand and the new products would carry the same protection.

What else do you do to build brand recognition?

I've always felt that if a brand was started at the grassroots level and done consistently over a long period of time, that would be the greatest protection of all. Next, all consistent marketing done to promote building the brand such as signage, promo cards, websites, Twitter, facebook, Linkedin, labels, etc. helps to shape the brand properly as well. What's great about the times we live in is that network marketing to get the word out is affordable and effective. The internet is amazing!

Another thing we're doing is partnering with producers, directors, musicians, speakers, etc. to spread the word about our brand.  The value of word of mouth really adds up. We also label our products with SpiritDomes.com to promote our website so that the public knows of and has a direct link to us. The web page is the easiest way to learn more about what we do.

What is the value of Trademark and brand recognition?

Building a profitable company is what we all try to do. The company builds equity in assets like inventory, real property and cash which have a value or net worth. The beautiful thing about brand building is that the brand name itself has what you call Brand Equity. The brand and goodwill in the company itself has value that can be sold for profit depending how famous it becomes.  Just like real-estate appreciates in value when people recognize the great location, the brand gains in value as more people know and recognize the name and associate it with a company that provides a quality product.

"A patent is limited by time but a trademark can last forever if the brand is built consistently and properly over time."

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Recently I met with Ron Roberts, President of Rolite Manufacturing. Rolite is a roll forming manufacturer that produces metal products of all shapes and sizes for large and small companies.

I toured their manufacturing facility and was amazed at how a compact roll of sheet metal can be stretched, cut, pounded, bent, stamped, shaped and sized into a variety of configurations.

Take a look at the video I uploaded to Youtube of all the different ways they can manufacture metal products.

Ron told me that every product they make must be made to have the right  "Form, Fit and Function."

• Form: the look of the product projects the presentation the inventor intends;
• Fit: the product meets all the requirements necessary; and
• Function: the product must work the way it was intended.

Here are few questions and answers from my interview with him:

Can you help inventors make prototypes to use as a sales prop?

Many times we’re able to work with the inventor and help figure out the manufacturing details. We can gear their idea to existing equipment and help them lower startup costs. We help inventors in the process of manufacturing, we call it "engineering time" it's kind of like a research and development of the product without actually stepping on the toes of the inventor.

Our goal is to have cheaper startup costs for the inventor. Truthfully, independent, individual inventors are a small percentage of our business. Typically they don't have the financial wherewithal and know how to take it to the next level and we try to help them bridge the gap.

What are some of the biggest problems that inventors have that you are able to resolve?

We think outside the box, we have tooling and the presses that are capable of shaping and bending any piece of sheet metal into almost any position. We try to do it as simple as possible and we often design ways to make products inexpensively as possible. We also work with other companies to make a product, for example we've recently made a metal product which needed an attachment combination of a piece of cloth material and small brass fittings which were produced by outside sources and attached by our company.

What can you do to make a salable product better than a company located overseas?

Others need to find a manufacturer overseas in places like China because of cheap labor. We can do it better than an overseas company because we can:

• Produce a high quality product (Assembly and manufacturing is done locally).
• Avoid Secondary and third operators.
• Provide a short response time to customers problems and queries.
• Take care of quality issues as soon as they happen. If you're using somebody in China and there's a problem they would say “maybe we'll implement it on the next run” with us we fix it now.
• We deliver on time because there is not an ocean we have to ship across.
• If there's a legal problem outside the USA what legal recourse do you really have?

What considerations do you take into account before making a product?

"What are the fixed costs? How much is it to make? Can it be sold for a profit at every level? If not we can’t make it."

There are a five tiers of cost on any product:

1. Manufacturer
2. Distribution representative
3. Wholesaler
4. Retailer
5. Final Customer cost

What steps do you take to preserve the rights of your clients?

"With us it is mum's the word, we do our best to keep everything confidential. We have an in-house Nondisclosure Agreement (NDA) which is fair and protects both the inventor and our company. If the inventor has their own NDA we will sign it if it is fair and reasonable."

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What is happening with regard to the Patent Reform Act of 2010?

Recently I asked this and other questions to first term Congressman Chris Lee, who represents New York's 26th Congressional District.

I think it's important to note that Chris Lee, true to his pro-entrepreneurial stance, has taken the initiative to advocate for Research and Development by introducing legislation in Congress. As evidence of his commitment to inventors and the need to continue to develop new products and technologies, he introduced legislation that would make the R&D tax credit permanent (H.R. 1545).

Here are a few questions and answers from the interview with Congressman Lee:

1. What will it take to get the patent reform bill through both the House and the Senate?

Versions of the bill have been introduced in both the House and Senate (H.R. 1260 in the House, S.515 in the Senate). The Senate Judiciary Committee has passed the bill and the House Judiciary Committee has held hearings on it. It will need to pass both committees and both chambers of Congress for it to be sent to the president.

2. Do you think it can be accomplished anytime soon?

It looks like the bill is moving forward. On March 4, 2010, Senators Patrick Leahy (D-VT), Jeff Sessions (R-AL), Orrin Hatch (R-UT), Chuck Schumer (D-NY), Jon Kyl (R-AZ), and Ted Kaufman (D-DE) released a statement saying that they’re moving forward on an agreement that, according to the release, “makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations.” According to the Senators, the proposed “agreement retains several critical improvements in the Committee-reported bill, including the transition to a first-inventor-to-file system, the gatekeeper compromise on damages, the new district court pilot program, and more.”

3. Does the entire bill have to pass or can parts of it be pushed through?

The Chairmen of the House and Judiciary Committees can choose to move forward the entire bill or split it into parts, however an identical version of the bill must be passed by both the House and the Senate. According to the March 4 statement, it appears as though the Senate Manager’s Amendment makes changes to makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations as they are stated in the Senate-introduced version of the bill.

4. What do you think about patent reform and its importance in protecting and advancing technology in the United States and the world?

Having run a manufacturing business before coming to Congress, I understand how much time, money, and resources are required to develop new products and technologies. I fully understand the need to protect the ownership rights for the development of these items. Without an adequate time frame to recoup your investment the development of Intellectual property could be dramatically curtailed.

It remains to be seen what the final version of the bill will be, should it be brought before the House for a vote. In the United States, we need to continue to develop new products and technologies, and I’ve introduced legislation that would make the R&D tax credit permanent (H.R. 1545). If individuals and companies invest in these technologies they must be able to realize the benefits of their investments. Therefore, I believe it’s critical that any patent reform legislation must effectively protect the ownership of patents. 

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Guest Blogger: Brendan S. Lillis, Registered Patent Attorney

These days, with the average waiting period to hear back from the patent office regarding a new application exceeding three years, the patent office needs all the help it can get. As such, filers of patents are required to disclose all relevant information about prior art that they know of to the patent office. This is known as the “duty to disclose,” and is governed by 37 CFR §1.56. This not only saves the patent examiner time otherwise spent searching for this information, but it also gives the patentee the chance to distinguish the new invention from prior art right off the bat.
 

But how can we be sure that the information disclosed by the patentee is accurate? How do we know some piece of information will purposely not be disclosed, in the hopes it will never be found?

Enter the Doctrine of Inequitable Conduct. This doctrine attempts to set the law, and asks two questions:

1. Was there intent to deceive the Patent Office?
2. Was the disputed information material to patentability?

According to the  Manual of Patent Examining Procedure (MPEP), the USPTO wants nothing to do with answering these questions. This leaves it up to the Federal Circuit, which has been all over the board in recent years in determining the levels of intent and materiality required to violate the doctrine. An in-depth look at the Federal Circuit’s handling of this matter can be found in a Marquette Intellectual Property Law Review (.PDF) article.

There are some real problems with the system as is it currently operates. For one, the Federal Circuit’s desire for flexibility in interpreting the rules on a per-case basis is at odds with the Patent Office’s desire to clearly state what is expected of patentees. This is due in large part to the fact that there is no statutory standard on which the rule is based. For instance, how do you determine whether certain information is “material” or not? So many different standards have been used that you don’t know which one to go by.

Also, the doctrine asserts that the best way to police patent fraud is for competitors (not the patent office or interested third parties) to raise the issue as a defense, as opposed to an independent action.

With so much recent talk of patent reform one would think this issue is sure to be brought up.  I spoke with Kali Murray, Assistant Professor of Law at Marquette University Law School and co-author of the aforementioned Marquette Law Review article and she said it's not that simple. She notes that, while this issue was in the Congressional spotlight a few years back, reform never came, and now false marking grabs all the attention. 

“Reform in Congress over the last 10 years has been very reactive as opposed to thoughtful and systematic.  They see the trees but not the forest.”

Murray also sees this as a basis for larger questions about the foundation of our patent system. 

“Congress first needs to figure out what type of patent system we should be working towards, only then can they can determine how fraud prevention fits into the system, including false marking and the doctrine of inequitable conduct.” 

At this point, I wonder whether it would be best for Congress to attempt to clarify the standards, or to scrap the Doctrine of Inequitable Conduct and start from scratch.  The feeling here is that the rule’s “heart” is in the right place, but there’s work to be done on its substantive language, and even that requires attention in the first place.
 

Related Post:

"Patent Reform Act of 2010" and False Marking Rule Change

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What inventors need to know...

How does an inventor take a good idea and then develop it into a new product? Recently I asked this and other questions relating to invention development to the affable forward thinking Justin Aiello. His company Aiello Designs takes ideas and turns them into reality. Here are a few questions and answers from the interview:

What do you do?

In general, I help independent inventors, start-ups and small companies take new ideas from concept to production. This includes Design, Engineering, Prototypes and Production Sourcing. I do not offer services with regards to funding, sales, marketing or licensing.

What makes an idea good or bad?

"I have seen great ideas fail and bad ideas succeed in the marketplace. What makes a successful product is good marketing, sales, design and manufacturing. What is right in one case is not necessarily right in another. You know you are right if it makes money and wrong if it doesn't."

How much information do you need to create a working prototype of product?

People come to me from all walks of life with different levels of expertise. Good ideas are not limited to the experts. Here are a few examples:

• The inventor comes in with just the idea. The inventor recognizes a problem and does not have an answer. Our company figures out a solution and designs a product to solve the problem.
• The inventor has a detailed drawing of a patented or patent pending product and we make a prototype.
• The inventor has a prototype and we make additional refinements. The process of developing a prototype is an ongoing series of tests and refinements.
• The inventor has a prototype completed without any need for refinements and we work out the mass manufacturing details.

How can the independent inventor with a new idea without "deep pockets" capitalize on a good idea?

I have found an independent inventor's path is somewhat limited:

1. Manufacture and sell it through a buyer to a mass retailer. Here the inventor will likely need investors.
2. Obtain a royalty agreement and license the rights to sell the product. Here, the inventor is in a better bargaining position if they possess a patented or patent pending product and a prototype.

"If you invented a new "Pet Nail Clipper" then go to the aisle in the pet store where they are selling these devices and investigate each one. Learn the names of 10-20 companies that will be able to produce, distribute and manufacture your product. Find out who in the company you need to talk to in order to sell your idea. Get yourself in the door with a patented or patent pending product and a prototype and then maybe you will make a deal."

How would you describe the ideal client/inventor candidate for product development?

• 50+ years old, having the "entrepreneurial spirit."
• Has high disposable income.
• Not risk adverse.
• A person that can enjoy the process. Even if the product doesn't sell, they had fun with it.
• Good business contacts. The inventor needs to understand one person cannot do everything. You need help with manufacturing, distribution and marketing. "An inventor who has an in at QVC or brother-in-law who is a buyer at WalMart has a better chance to succeed."
• Good business sense:  a. Inventor knows where they want to go with a product;
                                               b. There is a business plan to get there (road map); and
                                               c. Knows when to call it quits. "Don't throw good money after bad."

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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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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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