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

I hope everyone is having a happy Thanksgiving. I searched through the patent office to find patents with a Turkey and I looked through the many utility patents and design patents. This led me to wonder if people really understand the difference between the two.

• Utility Patents: For any process, machine, composition of matter or manufacture

• Design Patents: For any original and ornamental design for an article of manufacture

In general terms, a "utility patent" protects the way an article is used and works ( 35 U.S.C. 101), while a "design patent" protects the way an article looks ( 35 U.S.C. 171). A design patent protects only the ornamental appearance of an article, and not its structure or utilitarian features.

Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

It can be to your advantage to simultaneously file for utility patent protection on the functional aspects of an invention, and design patent protection on the ornamental aspects of the invention.

But if you didn't file it simultaneously once the utility patent application is in condition for allowance, you may file a divisional design patent application based on the original utility patent application.

Another way to get design patent protection is to file a design divisional if a rejection is received and it doesn't look as though any of the claims are going to be allowed. 

In order to successfully follow this strategy the original utility patent application must filed with design application quality drawings and a brief description of the ornamental aspects of the invention.

What is an inventor's strategy for protecting intellectual property? Take a look at the examples of the utility and design patents that I posted here.

I doubt if Inventor Roy D. Williams ever sold this ingenious Turkey hunter's safety placard. And I wonder if anybody ever used the Retainer for dressed poultry invented by Anthony J. Volk.

Both patents have expired and are now in the public domain, so feel free to make, use and sell them if you wish to.

Entrepreneurs should consider using the vast amount of free technology that can be found in patents in the public domain. But I think that's a topic that will have to be dealt with in a future blog post.

Whether or not these patents are valuable can be determined by answering this question: would anybody have copied these products had they not received a patent?

The courts have ruled that to find infringement of a design patent, the accused product must be compared to the claimed design to determine whether the two designs are substantially the same.

To find infringement, the allegedly infringing product must incorporate the point of novelty of the claimed design. 

The standard of infringement involves two stages.

1. First, one must determine what the ornamental features of the patented design are and whether one or more of these were appropriated by the product alleged to infringe. If not, there is no infringement.
2. If there was appropriation of one or more of the unique features, then a second test is applied. One looks at both the similarities and differences between the two products to determine if there is sufficient overall similarity to deceive the ordinary observer. If so, infringement exists.

The protection offered by design patents is somewhat limited because courts determine infringement by comparing the design patent drawings to a competitor's "infringing" item. Consequently, the appearance of the drawings is critical in design patents.

Although the answer to the question as to the value of the design patent for the "hunter's safety placecard" is that nobody would have copied it, many companies recognize the value of design patents in various fields of invention.

For example, last month design patents were obtained in various industries for things like Semiconductors, transistors or integrated circuits  D625,695 (.PDF) and D624,890(.PDF), Parts, Accessories And Attachments For Vehicles D626,058 (.PDF) and Jewelry, Symbolic Insignia, And Ornaments D625640(.PDF)

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The Big Idea: How to Make Your Entrepreneurial Dreams Come True, From the Aha Moment to Your First Million by Donny Deutsch

LoTempio Law Blog Book Review
 

About the book

What’s "The Big Idea"? It's a book by Donny Deutsch that profiles many of the successful entrepreneurs who have visited his CNBC talk show, “The Big Idea with Donny Deutsch.”

Donny shares the lessons they learned on their road to success. The entrepreneurial success stories are complemented by practical advice and resources for building a business.

The book is packed with checklist after checklist of characteristics and elements of things an inventor needs to do in order to turn "the big idea" into a million-dollar idea (the Donny's dos).

My review of the book

Inventors are looking for a magic checklist of things to do in order to take their idea and turn it into a million-dollar idea. I read a few of the reviews on the Internet and it appears that some readers feel that the book is high on inspiration and doesn't provide enough detailed information  to start a business. But I don't think it's meant to be a handbook with step-by-step directions on what to do, it is meant to provide inspiration and general utility.

If it was easy as just writing down the steps and blindly following the steps, everyone would be a millionaire. If there is one thing that I learned reading this book, it is that there's no one right way to do it.

The process starts in that ordinary moment of clarity when you say, "There's gotta be a better way." It's the moment when you ask, "How can I solve this problem?"

Donny says you have two choices:

1. You can muddle through and keep doing it the same way, or
2. You can find a better way.

The Big Idea has put the spotlight on that "moment of clarity" and the people who have the courage and stamina to make their dreams come true.

A carpenter gets tired of almost losing a finger every time he slices a bagel. Bam! The Bagel Guillotine. A mother is frustrated that her pantry is full of stale food because the packages don't close. Bam! Quick Seals. Howard Schultz notices on a trip to Italy that there are coffee bars on almost every corner. Bam! Starbucks. None of them had a barrel of cash. None of them had a ton of experience. They had a big idea and the will to follow through.

Deutsch speaks about the underdog being led by blind courage. It is an asset because by not knowing where the obstacles are the underdog fearlessly moves forward and conquers each obstacle as it happens. Perhaps if the underdog knew what and where the obstacles were they would not even try. Not knowing what you don't know, can be a benefit. But he cautions that pure arrogance is a liability.

It reminds me of a quote from John Madden,

"Don’t worry about the horse being blind just load the wagon."

Donny provides dozens of examples of how others have made a big idea a million-dollar idea. He provides example after example of how people have made success out of nothing. It's almost impossible not to be inspired by all the success stories in this book.

Deutsch describes and bullet points a seemingly endless list of characteristics which are necessary to succeed. Here are a few of the characteristics that enabled ordinary people to come up with the million dollar idea and become the most successful people in the world:

• Creativity, innovation and awareness
• The ability to have a moment of clarity, create a new twist, present to a captive market and come up with a future design
• You have to have a "Fire in the belly "
• Hold your nose and jump in
• Self Educated
• The biggest payoff is happiness : "Make love not work"
• Attitude and Presentation: "look the part"
• Discipline and Courage
• Failure is your friend. By taking you in a different direction, failure equals a lucky break.

Babe Ruth used to say:

"Every strikeout brings me closer to the next home run.".

In his article, How Many Times Did Babe Ruth Strikeout? Joe Dorish writes, "Babe Ruth lead the league in strikeouts in 1927 with 89 in 540 at bats. So his strikeout ratio in 1927 was 16.5%. That was the year the Babe hit 60 home runs."

The lesson is that if you are constantly learning and evolving you can do anything. Donny Deutsch says educate yourself, read every day even if it's just an hour a day. Take baby steps this might mean it takes years to reach a conclusion, but you necessarily have to take those baby steps. I often remind inventors of the Chinese saying that "the 2000 mile journey starts with the first step".

People want to have a roadmap on how to get to the end of the journey. But that journey truly has to be made on your own. However, the inspiration and ideas found in this book may help to smooth out some of the rough spots.

If it was as simple as reading a book and following the cookbook instructions everybody would do it. There's no such thing as a free lunch. You have to pay the price to be successful at anything. The price doesn't necessarily have to be monetary but certainly you need the passion and the courage to follow through. The bottom line is: everybody's journey has to be their own.

Donny gives many nuggets of utility and a boatload of inspiration to motivate you and make you believe that you can be that person. He challenges you to ask the question, "why not me?"

About the Author

Donny Deutsch former Chairman and Chief Executive Officer of Deutsch Inc, a company with such blue-chip clients like Mitsubishi Motors, Johnson & Johnson, Revlon, Coors, Novartis, Expedia, Monster, and Old Navy. Both Advertising Age and Adweek have honored the $2.7 billion agency as “Agency of the Year.” As the host of the CNBC talk show, The Big Idea with Donny Deutsch, he examined issues in pop culture, business, politics, the arts, and sports.

He is also Managing Partner of the independent film production company Deutsch Open City. In presidential politics he was a lead member of the successful Clinton/Gore communications team. A graduate of the Wharton School at the University of Pennsylvania, Donny now serves on two boards: UPenn School of Social Work’s Executive Committee and the Board of Directors of the Michael J. Fox Foundation for Parkinson’s Research. 

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Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

WHAT CAN BE PATENTED

The patent statutes (35 U.S.C. 101) specify four classes of subject matter suitable for the grant of a patent. To be patentable, an invention must be directed to a:

• process
• machine
• manufacture, or
• composition of matter

Often a close look at the creative efforts that led to one patentable invention, will disclose related inventions that may fall within one or more of the other statutory classes of invention. For example, the invention of a new composition of matter, such as a chemical compound, may also involve the invention of a process for making the compound.

Since the compound is probably intended for a specific use, there may at the same time be patentable inventions directed to the

1. use of the compound in a process, or
2. as a material for an article of manufacture.

In addition to falling within one or more of the statutory classes, a patentable invention must meet three requirements, it must be:

• novel, (35 U.S.C. 102)
• useful (35 U.S.C. 101), and
• non-obvious (35 U.S.C. 103).

Novel

In general this means that the invention must not have been known or used by anyone in the U.S. or published or patented anywhere in the world before being invented by the person applying for a patent. Also, it must not have been published or patented anywhere in the world, or in use or on sale in the U.S. more than one year prior to the date of application for a patent.

Useful

The invention must have some identified use. The use may be very limited (this is often the case in the very early stages of development of an invention), but it must be present.

Non-obvious

When viewed against the prior art (i.e. public knowledge, prior publications, etc.) The invention must be non-obvious to a person of ordinary skill in the field to which the invention pertains. (Obviousness is a very subjective factor and is a common source of disagreement between patent applicants and patent examiners.)

THE PATENT APPLICATION

Basic to the philosophy of patents is that, in return for the patent, the inventor must fully disclose the invention. In so doing, the disclosure becomes a part of the technical literature and “promote(s) the progress of...the useful arts" as required by the Constitution (Article I. Section 8).

The full disclosure of the invention insures that the public will have possession of the invention and how to make and use it after the patent expires.

The descriptive portion of the patent application (and of the subsequently issued patent) is called the “specification”. It is a description that is required by statute (35 U.S.C. 112) to be written in sufficient detail to enable those skilled in the art to which it pertains to make and use the invention.

For example, a specification of a patent (or a patent application) on a chemical invention should be sufficiently clear and detailed to enable an ordinary chemist working in the same subject area to make and use the invention.

Patents directed to mechanical inventions will commonly include drawings. Patents directed to chemical inventions will commonly include working examples which may be written in a “cookbook” style to guide other chemists in the practice of the invention. The specification concludes with one or more “claims”. The claims are statements that define the metes and bounds of the invention.

THE PATENTABILITY SEARCH

The patentability of an invention is measured against what others have done before. A patentability search is simply an attempt to find out what has been done before so that the best decision can be made regarding whether or not to file a patent application.

Referred to by various names -- novelty search, pre-examination search (or “pre-ex search”) or simply prior art search, it involves searching the literature to uncover any publications that might affect patentability of the invention. Patentability searches are often limited to searching the patent files. However, a thorough search should also include the non-patent technical literature in the field of the invention.

If the search shows that the invention is not new, or is obvious from the prior art, it may save the time and expense of preparing and filing a patent application. Even if the invention appears patentable over the prior art, the search may uncover references that will serve as a guide in the drafting of a patent application and help to determine the scope of patent protection possible.

PATENT PENDING

When the patent application is filed in the U.S. Patent and Trademark Office, the filing date is recorded and the application is assigned a serial number (sometimes referred to as an application number). The serial number and filing date are important in the identification of the application, and may be useful in relating that application (or the subsequently issued patent) to other related U.S. patents or equivalent foreign patents or applications.

The application is then sent to an Examining Division where it is assigned to a patent examiner who has expertise in the technical field of the invention. The examiner will study the application, make a literature search (i.e., a “prior art” search), and issue an “Office Action” rejecting or allowing the application. In most instances, the first office action will be a rejection, which may be based on formalities or on the Examiner’s opinion that the same invention is shown in the prior art, or obvious from the prior art.

The applicant may then respond by amending the claims to overcome the examiner’s rejection. The application will then be reconsidered and a second office action will be issued. Commonly, the second action will be a “final” action from the examiner, i.e., an allowance or a final rejection.

On receiving a final rejection, the applicant has the right to appeal that rejection to the Patent Office’s own Board of Appeals and Interferences who will consider the arguments and render a written opinion affirming or reversing the examiner’s rejection.

The “patent pending” process, from filing to issue of a patent, requires an average time of approximately eighteen months -- if the process goes smoothly. If there are problems, such as the need to appeal, the process may take considerably longer.

THE PATENT TERM

The term of a U.S. patent begins on the date of issue and ends 20 years from the date on which the application was filed (subject to the payment of maintenance fees). During that time the patentee has the right to exclude others from making, using, or selling the invention in the United States.

Related post:

Patent Fundamentals (Part 1)

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Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

 “A country without a Patent Office and good patent laws is just a crab and can’t travel anyway but sideways and backways.”

Declared Mark Twain (speaking through his character, Sir Boss, in a Connecticut Yankee in King Arthur’s Court). In his homey way, Sir Boss was simply restating the philosophy that guided the framers of the U.S. Constitution when they established the constitutional basis for the U.S. patent system.

 The Congress shall have the power...to Promote the progress of science and useful arts, by securing for limited time to authors and inventors the exclusive
rights to their respective writings and discoveries.

                  Article 1, Section 8, U.S. Constitution.

The Constitution not only provides the authority for the establishment of our patent system, but clearly establishes the purpose: “to promote the progress of [the] useful arts”. Thus, the basic purpose of our patent laws is not simply to protect inventors’ rights to their inventions. It is a broader, societal purpose: to promote the progress of technology. The purpose has been well served. The 235 year history of our nation is interwoven with invention and technological progress.

In 1790, three years after the drafting of the Constitution, Congress passed a bill titled “Act To Promote The Progress of The Useful Arts”. The bill was signed by President Washington on April 10, 1790 and the United States Patent System was established.

In that same year, Samuel Hopkins of Philadelphia received the first patent. His invention was a chemical process for making potash from wood ashes. The patent was signed by Thomas Jefferson (Secretary of State), Edmund Randolf (Attorney General) and President George Washington.

Technological innovation is linked to three-quarters of America’s post-WW II growth rate. Two innovation-linked factors—capital investment and increased efficiency—represent 2.5 percentage points of the 3.4 percent average annual growth rate achieved since the1940’s.

Since that first patent more than 7.8 million U.S. patents have been granted. Our nation has grown from a population of about 4 million to more than 300 million and the granting of patents, like every government activity, has grown correspondingly in quantity and complexity.

The U.S. Patent and Trademark Office (USPTO), a branch of the Department of Commerce, employs nearly 10,000 persons (6,100 are patent examiners) and issues patents at a rate of about 190,000 per year.

There are three types of U.S. Patents:

1. Design Patents are granted for the protection of any new and original ornamental design for an article of manufacture.
2. Plant Patents are granted for the invention or discovery of a distinct and new variety of plant.
3. Utility Patents are granted for any new and useful process, machine, article of manufacture, or composition of matter.

Plant patents and design patents, although commercially important, are special categories of patents and account for a relatively small proportion of the U.S. patents granted. (There have been approximately 9,000 plant patents and somewhat more than 360,000 design patents granted, while more than 7,800,000 utility patents have been granted.)

The utility patent is the type of patent that most people associate with invention and is the type of patent to which the following remarks are directed.

WHAT A PATENT IS

The answer to the question “What is a patent?’ may vary greatly, depending on the person answering the question and that person’s association with patents or the patent system.

There are three basic characteristics commonly attributed to patents:

1. The contractual characteristic. In viewing the patent as a contract, the focus is on the contractual exchange between two parties the inventor and the government. The inventor gives a full disclosure of the invention and how to make and use it so that when the patent expires, the public will be in possession of the invention. In return, the government gives the inventor the right to exclude others from using his/her invention for a limited period of time.
2. The property characteristic. Patents have a right of ownership similar to real property that can be transferred in whole or in part. In a manner analogous to real estate, a patent can be sold, or it may be “rented” (licensed) and “rent” can be collected for its use (royalties).
3. The monopoly characteristic. The “monopoly” associated with patents is limited in time and negative in nature (i.e., exclusionary).

 The U.S. patent law defines the patent grant as

“...a grant to the patentee... of the right to exclude others from making, using or selling the invention throughout the United States...”

In this definition, the word “exclude” is key to an understanding of patents. The patent grant provides the patentee with the right to exclude others from practicing the invention.

WHAT A PATENT IS NOT

A patent is not a license to make, use or sell your invention. It does not give the patentee the right to practice his/her invention.

The most common misconception concerning patents is that a patent gives one a right to practice his/her invention. In fact, it is not uncommon for an inventor to be granted a patent and not have the right to practice the invention.

The patent merely grants the patentee the right to stop or exclude others from practicing the invention. At the same time, the patented invention may be directed to subject matter that falls within the exclusive rights of someone else’s broader patent. In such an instance, the broader patent is said to dominate.

Such a situation commonly occurs when the second patented invention represents an improved version of an earlier issued, more basic patent. The owner of the earlier dominating patent may be free to practice the basic invention (but may not be free to practice the improved version of the second patentee). The second patentee may not be free to practice either invention without permission of the first patentee.

Related post:

Patent Fundamentals (Part 2)

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The 15th Annual Independent Inventors Conference, co-sponsored by the United States Patent Trademark Office (USPTO), and Invent Now® will be held in Alexandria, VA at the US Patent and Trademark Office campus on November 4 - 5, 2010.

A pre-conference workshop (November 3, 2010 from 5pm – 7pm) is included with your registration for anyone interested in learning patent basics and how they protect inventions. This workshop is for beginners and is a good foundation for the conference.

Presenters will include:

• Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office, David Kappos,
• Commissioner for Patents, Robert L. Stoll,
• National Inventors Hall of Fame® Inductee, Art Fry, co-inventor of Post-It® Notes, and
• George A. Peters, Jr. inventor of The Mitt®.

Registration is now open for this 2-day event. The fee is $120 per person for both days. The registration fee includes all sessions and presentations, morning and afternoon refreshments, lunch for both days and a networking reception Thursday evening. The networking reception is sponsored by the Intellectual Property Owners Association (IPO).

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Recently a client asked me to sue a competitor for infringement on her patent application. I told her that even though you can mark articles with the terms "Patent Applied For" or "Patent Pending" these phrases have no legal effect, but only give information that an application for patent has been filed in the United States Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent.

However, damages for pre-patent grant infringement by another are now available. The American Inventors Protection Act, 35 U.S.C. § 154(d) gives the inventor provisional rights:

“patents issuing on published applications will include the right to obtain reasonable royalties from others who, with actual notice of the published application, made used, sold, offered to sell, or imported the invention as claimed in the published application before the patent was granted.”

Once a patent application is published, an applicant may assert provisional rights. Publication occurs 18-months following the filing date or priority date claimed by an application. These § 154(d) provisional rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim provided:

• actual notice is given to the third party by applicant (the inventor probably needs to send a cease-and-desist letter), and
• a patent issues from the application with a substantially identical claim.

Having this ability to protect an invention is a powerful sword in the inventor’s bag of weapons. It is risky business for your competition to take the chance and sell a patent pending product because they can be sued at a later date and possibly be forced to take all their products "off the shelf."

But what about the shield? How does the inventor protect an invention? If you give your competition notice of your published application is it possible they will submit documents to shoot down your patent? And what can you do to shoot down somebody else's patent or patent application?

Following publication, the application for patent is no longer held in confidence by the Patent Office and any member of the public may request access to the entire file history of the application in Patent Application Information Retrieval (PAIR). What are the available ways a competitor can submit prior art against an issued patent or pending patent application to the United States Patent and Trademark Office?

1. Third-Party Submissions in Patent Applications (37 C.F.R. 1.99)
2. Protests Against Published Applications (37 C.F.R. 1.291)
3. Citation of Prior Art in Issued Patents (37 C.F.R. 1.501)

1. Third Party Submissions pursuant to 37 C.F.R. 1.99 are:

• Submissions by the public of patents or publications only
• During the pendency of a published application

Third Party Submissions must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier. This really isn't a big window of time. How would anyone even know it was published unless they were constantly searching the United States Patent and Trademark website? Based on this law, I would suggest not giving anyone notice of your pending patent application until at least two months after publication.

2. A protest, pursuant to 37 C.F.R. 1.291, may be filed by:

• Any member of the public, including private persons, corporate entities, and government agencies
• In a pending patent application
• Will be matched with application file if adequately identifies the patent application.

A protest has to be filed before publication or before a notice of allowance. This rule has always bothered me. I think this time constraint should be addressed through patent reform because there aren't many ways to find out whether an application is pending unless it's published. I would guess you would need some sort of inside information. Or based upon the marking of patent pending on an object you might guess there is an application,but then you'd have to act as a Detective and find out the application number because it isn't published.

3. Citation of Prior Art in Issued Patents (37 C.F.R. 1.501) may be filed by:

• Any person, individual, corporate or government entity, real parties in interest, persons without a real interest
• May submit patents or publications along with an explanation
• Having a bearing on the patentability of any claim in a particular patent

I'd like to throw this out for discussion, why does the patent office make it so difficult to either submit third-party submissions or protests by limiting the time in which you can file these types of submissions? How could you protest and identify a patent application if it's not even published? And isn't two months from publication such a narrow time period that makes it very difficult for anyone to even find out that there is a pending published application for a Third Party Submission?

"Clipart courtesy FCIT"

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Recently I authored a blog post regarding whether or not you can patent an idea? Remember you can get a patent for the" thing" you make not the idea.

In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

I used the example of the “idea” for the transporter in the Star Trek television series as an idea that can only be patented if someone could make it.

What about the "Back to the Future" movie where Michael J. Fox has automatic clothes and automatic sneaker laces.

Well, I found this cool video on YouTube and the actual patent application (.PDF) by Nike. Take a look. What do you think?

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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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Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor..."  35 U.S.C. 101

A patent on an invention may not be obtained if the differences between the invention sought to be patented and the prior art are such that the invention would have been obvious at the time it was made to a person having ordinary skill in the art to which the invention pertains. Patentability shall not be negatived by the manner in which the invention was made. 35 USC 103

That last sentence basically means that if an invention came about because of many hours of diligent work and effort or in a flash with no effort at all it doesn’t affect whether it is patentable... even if invented by accident.

How Do Inventions Come About?

• Identification of a problem
• Finding a new way to solve the problem
• Scientific method
• Trial and error
• Hypothesis
• Accident

There are many products that were invented by accident that changed the world but here are examples of a couple interesting inventions that came about accidentally:

Accidental Invention – Popsicle®

In 1905 an 11 year old Frank Epperson mixed some soda water powder and water, which at the time was a popular drink. He left the mixture outside overnight with the stirring stick in it. The temperature dropped to a record low that night and the next day Frank had a stick of frozen soda water. In 1923 Frank Epperson began a business producing Epsicles in seven fruit flavors. The name was later changed to the Popsicle®.

Frank realized the commercial possibilities of his invention and was granted a patent in 1924. By 1928, Epperson had earned royalties on more than 60 million Popsicle® ice pops. In 1998 Popsicle® celebrated its 75th anniversary and continues to be one of the top frozen novelty brands in America. The trademark is registered to Unilever Supply Chain, Inc.

Accidental Invention – Post-it Notes®

Post-it® Notes was actually the product of an engineering mistake by 3M scientists who accidentally stumbled upon an adhesive that could stick and be repositioned on just about any surface. Spencer Silver was working in the 3M research laboratories in 1970 trying to find a strong adhesive. Silver developed a new adhesive, but it was even weaker than what 3M already manufactured. It stuck to objects, but could easily be lifted off. It was super weak instead of super strong.

Another 3M scientist named Arthur Fry was singing in the church's choir and used Silver's adhesive to coat his markers. Success! With the weak adhesive, the markers stayed in place, yet lifted off without damaging the pages. 3M began distributing Post-it ® Notes nationwide in 1980 -- ten years after Silver developed the super weak adhesive. Today they are one of the most popular office products available. 

Accidental Invention – The Slinky®

In 1943 during World War II, Richard James an engineer in the United States Navy saw a torsion spring fall to the floor and flip-flop as he watched. James and his wife Betty James perfected a long steel ribbon tightly coiled into a spiral. They began production of Slinkys® out of 80 ft of wire in 1945 under the company name James Spring & Wire Company. According to one estimate more than 300 million Slinkys have been sold. In 1998, Betty James sold the Slinky to Poof Products, Inc.

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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 patentable subject matter? Many people believe that they can patent anything. But the truth is there is only certain statutorily allowable subject matter that can be patented (35 USC 101).

Here's a list of the basic allowable subject matter:

1. Process (Method of making infrared heaters which reduces costs by 25%) 
2. Machine (Motorized device for clearing leaves out of a gutter without climbing)
3. Article of manufacture (Pencil, chair)
4. Composition of matter (Paint, drugs)
5. Or any new and useful improvement thereof (Chair with a footrest)

If your invention falls into one of the above categories it must also be:

• New (no one has ever done it before) 35 USC 102
• Useful (it can't be something that has no use whatsoever) and
• Non-obvious 35 USC 103 (It must be non-obvious to one having ordinary skill in the pertinent art at the time the invention was made)

It doesn't take much to show that your idea is new because the slightest change will cause it to be original. And useful isn't really much of an obstacle, almost everything has some sort of use. There is a joke among chemical patent attorneys, "Any chemical composition has a use, it either kills grass or helps it grow!"

The hard thing to understand and to teach is what is non-obvious! I sometimes use the example of the invention of a table to get this idea across.

Let's pretend you were around 10,000 years ago and you were the first person to invent a table. Your table has a square top, a bottom and four legs.

Now someone makes an improvement on the table and tries to get a patent. The improvement is that the top is circular in shape instead of a square. The argument by the patent office may be someone skilled in the art (a carpenter) would think it obvious that the top could be made in any shape or dimension and a round top would be rejected as an obvious improvement.

Even though the improvement of the first ever circular top is new, and it is useful it would be arguably not patentable if it was determined that it would be an obvious improvement for a carpenter to make a table top in any shape.

Now let's take a different approach. Let's say that the new inventor was the first to invent a table with pedestal legs connected to the center of the bottom. It could be argued that this way to connect the legs to the top is a non-obvious improvement and would be potentially patentable in the prehistoric patent office.

But obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so.

So if there was a chair in the prior art with a with similar legs like the pedestal legs of the invention table the examiner might combine the references of the square table with the chair and say it was obvious to come up with the new table.

I am not trying to replace the many legal treaties and case law on this the question of obviousness, not to mention the Manual of Patent Examining Procedure (MPEP) where there are many examples of what is non-obvious. I hope the simple logic of the table scenario is an easy way to generally grasp this concept.

 "Clipart courtesy FCIT"

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Can you patent an idea? No.

Many potential inventors say to me “I have an idea I would like to patent” but what they do not understand is that the invention itself is patentable, not the idea. In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

In 1966 Eugene Wesley "Gene" Roddenberry came up with the “idea” for the transporter. In the Star Trek television series Captain Kirk would use his communication device (which looked a lot like the cell phones of today) from a planet’s surface to order his engineer to “beam me up Scotty.”

Could Roddenberry have applied for a patent in 1966 for the cell phone or a transporter? Not unless he could describe to someone skilled in the art how to make and use it.

The law doesn’t even require that you actually make it (“reduction to practice”) you just have to be able to describe how to make and use it. 35 U.S.C. 112 often referred to as the enablement clause reads

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”

§ 112 paragraph 1 requires nothing more than objective enablement. In fact, an inventor can "constructively" reduce an invention to practice, which is unique to patent law.

"The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60-61 (1999)." 

As Judge Pauline Newman as described, "[t]he inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention" because "[u]nlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced." Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 MPEP § 608.01(p).

People often come to me with an idea of how some type of machine might help solve a problem. But when I ask "how do you make it?" they cannot describe the inner workings of the machine. I ask them to tell me how it works and they say "can’t we get someone like an engineer or an electrician to make it work?"  I reply "wouldn’t that engineer be the inventor?"

If we go back to 1969 and the wireless phone idea... just having the idea to transmit voice signal wirelessly wouldn’t be enough to get a patent. You would have to be able to describe it like George Sweigert of Euclid, Ohio did on June 10, 1969. Sweigert  is the man who is credited as the person who came up with the first cordless phone and was awarded US Patent Number 3,449,750 (.PDF). Download the patent to see the way he described how to make and use his invention.

The bottom line is that your new idea of a way to solve a known problem can only be patented if you can describe how to make and use it. You cannot  get a patent on the idea alone. 

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The official United States Patent and Trademark Office (USPTO) Facebook page promises to deliver the latest USPTO news, photos and videos.

Through Facebook the USPTO will directly connect with the public and the intellectual property community.

According to David Kappos the USPTO’s Facebook page is meant provide

“a place where users can tell US what YOU think. Users are encouraged to comment on our posts and tell us what you “like” and “dislike” about to the USPTO."

The Invent Blog reported that under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said:

“Technology has profoundly impacted the way we all consume information and communicate with one another... “I’m confident our Facebook presence will complement the USPTO Web site as a means of communicating and connecting with the public and our stakeholders in the intellectual property community.

With more than 400 million people on Facebook, we knew it was an important place for us to be.”

USPTO Director David Kappos welcomes Facebook users with the following message:

Welcome to the USPTO’s page on Facebook! We're excited to be launching this forum to communicate with you and share the latest news from the USPTO. We know thousands of innovators, members of the intellectual property practice community, and USPTO employees are active on Facebook, so we’re pleased to be able to bring information and updates to you here...

Check back here daily, as we will be providing regular updates including press releases and other news, details on upcoming events, speeches, updates from my blog, photos, video, fun facts and more. Just like checking your Facebook page, we hope visiting our page will become part of your daily routine.

The USPTO’s Facebook page is a supplemental page to the official USPTO web page. It makes you think, doesn't everyone need a Facebook page? I enjoy connecting  with over 1000 long lost friends from the good ole days at my  Vincent LoTempio facebook page and I launched a page for my law office at Kloss, Stenger & LoTempio, although  I have to admit there has not been much action there. But I love this social networking. Everyone is getting involved.

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What Inventors Need to Know...

Most independent inventors want to license their invention to a retailer. Usually an inventor does not have the experience nor the money to market, manufacture and distribute a product on their own. So when I ask an inventor if I had a magic wand and instantly gave you a patent, what would you do with it? I get an answer like “I would take it to a large retail chain and work out an exclusive licensing agreement.

Whether they could even get their foot in the door is a long shot in itself, but let’s just say an inventor has a buyer’s ear or is working with a product developer. No matter how good the product is, it will not sell itself.

Are you looking to make a deal? What bargaining power do you have if all you have is the idea? What else can you bring to the table? The more information you have, the better negotiating leverage you have when bartering the licensing royalty rate.

In order for a product developer to properly analyze and evaluate the retail opportunity of a product the following critical points need to be addressed (not listed in any particular order as to importance):

1.  Wholesale price range
2.  Suggested retail pricing
3.  Unit Cost
4.  Current inventory (number of units on quantity)
5.  Sales presentation material
6.  A  good presentation of all of the products benefits and features
7.  Target market
8.  Estimate of market size
9.  Close up image or text version of packaging
10.  Bar code
11.  How many fit in store case pack
12.  Overall product dimensions
13.  Product weight (single item)
14.  Intellectual property protection: trademark (brand name) and patent protection
15.  Current retail stores or on-line retailers carrying product
16.  Do you have current manufacturing? domestic or international
17.  Current competing products in the market: sizes and pricing
18.  Estimated production time for new inventory
19.  Are there any other variations or a contemplated next generation of the product?

Each side in the negotiation brings certain elements to the table. Every element you can add raises the odds that an agreement will be made. And each element raises the bargaining power to negotiate and profit from any deal.

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What Inventors Need to Know...

Inventors often ask me “can I get a provisional patent?” But there is no such thing as a “Provisional patent.” A provisional patent application is a patent application that is used by a patent applicant to secure a filing date. A provisional patent application never matures into a patent. And there is no patent protection until a non-provisional application is allowed and issued as a patent. In order to maintain the filing date, a non-provisional patent application must be filed within the 12 month period starting from the filing date of the provisional patent application.

One of the most important things that an inventor should be aware of is that the disclosure of an invention in a provisional application should be as complete as possible because the claimed subject matter in the later-filed non-provisional application must have support in the provisional application in order for the applicant to obtain the benefit of the filing date of the provisional application.

The bottom line is if new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.

Independent inventors and startups focus too much on the "costs less" part while missing the bigger picture. People think that a provisional application can be quickly filed because the rules don't require all the formalities of a non-provisional application. While this may be true, if the disclosure of the invention is not the same in the provisional application as it is in the later filed non-provisional, the filing date will be lost.

The rule for DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION is:

(D) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

An inventor can still file a non-provisional application that claims priority to any provisional application, but with a weak provisional as the foundation there will likely have to be plenty of new matter added to the non-provisional application. Adding, subtracting, modifying parts, or changing the structure or operation of the parts would all qualify as not fully supported changes. An inventor will not be able to rely on the filing date of a weak provisional patent application for these new disclosures.

I believe that a strong provisional application should be prepared so as to look and feel exactly like non-provisional application so that the only thing a patent practitioner needs to add are the claims. If the non-provisional patent application is filed with the same disclosure as the provisional patent application the filing date is preserved. This will become even more important if the Patent Reform Act of 2010 is ratified and the first inventor to file system is enacted.

Here are a few basic points regarding a provisional patent application:

• Provisional applications provide an early effective filing date and a one-year extension as to the filing of a U.S. non-provisional patent application (35 U.S.C. 119; Benefit of earlier filing date; right of priority)
• In order to retain the priority benefit of the provisional patent application, a regular U.S. patent application and any foreign counterpart applications must be filed within one year of the provisional patent application and must claim priority based on the provisional patent application or the provisional patent application will become abandoned
• The foreign patent application may include national, regional (e.g., European), or Patent Cooperation Treaty (PCT) patent applications
• Provisional applications can be filed without any formal patent claims, oath or declaration, or any information disclosure (prior art) statement
• Provisional applications have a lower initial cost with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent
• The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

The USPTO recently posted an article in the InventorsEye April Newsletter answering basic questions about a provisional patent application. The newsletter also provides a checklist of some facts the USPTO deems important:

1.  A provisional patent application expires after one year;
2.  A provisional patent application cannot be extended;
3.  A provisional patent application cannot be renewed;
4.  A provisional patent application will never become a patent;
5.  Provisional applications may not be filed for design inventions;
6.  The USPTO does NOT examine provisional patent applications on their merits.;
7.  The USPTO does not conduct a prior art search on provisional patent applications;
8.  The USPTO does review provisional patent applications to make sure they meet minimum filing requirements;
9.  A provisional patent application is not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application); and
10.  The term "patent pending” can be used by the inventor for the duration of the one-year pendency of a provisional patent application.

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New inventors are often looking for a short overview of the patent process. Ordinarily sending inventors to the United States Patent and Trademark Office (USPTO) web site is like sending someone into a great quagmire.

But there is a nice flow cart with links directing viewers to pertinent information regarding each step of the process for getting a utility patent on the USPTO web page.

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The Patent Reform Act of 2010 was recently made public in the form of an (“Amendment to S. 515”). Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) spoke at an Executive Business meeting (webcast) February 25, 2010 about this amendment to the patent reform act.

Leahy stated, “When Senator Orrin Hatch (R-Utah) and I started this process several Congresses ago, along with Congress members  John Conyers Jr.,  Howard L. Berman, Lamar Smith and others in the House, we wanted to improve patent quality and the operations at the PTO, and address runaway damage awards that were harming innovation. We are close to a compromise that will address these issues. No one will think this a perfect bill, but we are close to a comprehensive patent reform bill that benefits all corners of the patent community.”

The 2010 amendment of the "Patent Reform Act" proposes a number of so-called improvements that are the subject of other LoTempioLaw blog posts (See the list below). This post is directed at the proposed change regarding First-Inventor-to-File.

First-Inventor-to-File

The proposed change does not call for a “First To File” system as some people mistakenly believe; it proposes a “First Inventor To File” system. Remember you cannot file a patent application in either system unless you are the inventor. Because two people can independently invent the same thing at different times there may be a race to the patent office by two inventors.

The current US system awards a patent to the inventor who is the first to invent regardless of whether the application was the first to be filed in the patent office for that invention. The new system will reward the inventor who wins the race to the USPTO and files the first application.

In the current US system, when two inventors seek a patent on the same invention the fact finder must determine who invented it first (it doesn’t matter who filled it first). The proposed “First Inventor To File” system will minimize Issues such as

• whether an inventor “abandoned, suppressed, or concealed” the invention
• “when was first conception,”
• “when was actual reduction to practice” and 
• “if the inventor used reasonable diligence coming to the patent office with the invention”

People now question if a first-inventor-to-file system is put in place will big business always beat the independent inventor to the patent office to file a patent application? Under Secretary of Commerce and USPTO Director David Kappos, says that there is a big misconception regarding “First Inventor To File.”

With the “First Inventor To File” system there is no risk of business beating the independent inventor to the patent office to file a patent application because the interloper is not an inventor. All filers have to sign an oath and declaration under penalty of criminal sanctions.“This leaves only the issue of simultaneous, non-collaborative invention—what we call interferences. The chances that a patent will be subject to interference based on a first to invent claim—that’s our current system—is .01%. In 2007—the most recent year for which we have statistics. The total number of interference cases for all applicants of all sizes that were decided based on a priority claim was seven! Of those seven decisions, only one involved a small or medium sized entity, and not a single one was won by an independent inventor who was the second to file. That means we already essentially have a first inventor to file system.”

Is this a naive view of the world? Or will non-inventors race to the office to file applications and basically say, hey prove I didn’t invent this invention. Will more litigation result because of this proposed change in the patent law? Or will the independent inventor just lose out on his/her invention because they won't have the wherewithal to fight it out in court even if he/she is the only true inventor?

The Professional Inventors Alliance USA viewpoint is that this provision will not guarantee that the actual inventor will be granted the patent.

"It creates conditions for very poor prior art, which is the existing knowledge of a similar innovation known to the general public. It burdens examiners with questionable applications by non-inventors. It creates a new malpractice liability for patent practitioners who may not beat another party to the patent office, thereby increasing the potential for litigation.

Kappos thinks the benefits will be reaped in the cost savings when filling internationally,

"... all other countries in the world use a “First Inventor to File” system. The change in the Patent Reform Bill will streamline the process for you to acquire patent rights and reduce your costs in seeking rights outside of the United States as you consider entering the global marketplace. This change will make it easier for you to “go global” with your invention."

Personally, I think this argument is much to do about nothing. I haven't heard many inventors consciously say I know it is a "first inventor system" so I don't care if somebody else files before me. I think that even with the system as it is now, inventors still believe that it's vitally important to be the first to file. Being the first to file always has its advantages. Even the patent office recognizes a patent application as a "constructive reduction to practice." I'm sure that if inventor observes an application pending in the United States Patent and Trademark Office for their invention he/she is less likely to go forward and file a second in line application regardless as to whether it's a “First Inventor to File” or a "First Inventor to Invent" system.

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What inventors need to know…

Inventors Eye is a new electronic publication by the United States Patent and Trademark Office for and about America’s independent and small entity inventor community.

Inventors can find information about working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about successful inventors.

 The first issue had a few great articles and links under the titles Advice, Events and Network:

• Patent Reform: An Open Letter to the Independent Inventor and Small Business Communities from Under Secretary of Commerce and USPTO Director David Kappos
• Protect Your Innovation: Avoid Scams, By Ronald Jaicks : Office of the Solicitor
• Spark of Genius: The Spiral Eye Needle, By John Calvert: Inventors Assistance Center
• Advice:     Do Your Homework
• Events:     Where Independent Inventors Meet
• Network:  Organizations for Inventors

Inventors Eye will appear every other month on the USPTO web page. 

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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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The Inventor's Bible by Ronald L. Docie Sr.

LoTempio Law Blog Book Review

About the book

The Inventor's Biible by Ronald L. Docie Sr., includes a workbook to help an inventor take an idea from conception to the distribution of a product. The book touches on marketing, licensing, and selling an invention. The book reviews the invention process, including:

• Patenting
• Selecting a manufacturer
• Finding the right market
• Developing a marketing plan
• Presenting a product to a company
• Negotiating a royalty deal

My review of the book

This book provides a good explanation of the invention process. The real life stories teach inventors of the potential pitfalls commonly encountered by new inventors. It maps out an inventors voyage through invention, development of the product, to protection and marketing. I think The Inventors Bible is a good book for independent inventors. The book is well written, very readable and covers a lot of useful topics. The Inventor’s Bible is an excellent collection of practical information from an inventors prospective, based on the author’s business experience. Even though the book is not presented from a legal viewpoint it is helpful because it looks at inventing, patenting and product development from a business angle.

About the Author

Ronald L. Docie Sr’s career in selling inventions spans more than three decades. 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. He is the president of Docie Development, LLC, an international company that provides services for inventors and corporations.

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What inventors need to know...

“Does the product infringe on a patent?” and “Should a patent application be filed?” are questions a product developer would want answered before going forward with manufacturing, marketing and distributing a product. But what makes a product a long term profit generator?

"Imagination is the beginning of creation. You imagine what you desire, you will what you imagine and at last you create what you will." George Bernard Shaw

There are many factors an inventor needs to take into consideration in order to create a profit generating product from from an idea. I asked Richard P. Conway, new product developer/ inventor and founder of Ingenious Products Inc. to help me put together a list of keys which contribute to a products' long term sales success. Here's the list we came up with:

1. The product solves a real and obvious national consumer need; a convenience product  which creates an easier, faster, less expensive way to deal with an old problem.
2. It’s new and buyers understand they can't get it anyplace else.
3. It communicates instantly its use and benefits to the end buyer on the shelf. Obvious perceived value at the point of purchase.
4. It provides a wide market solution for the national customer (broad market, i.e. something everyone uses like a toothbrush. Not a narrow market product like a tuning fork).
5. It is clearly identifiable to the buyer and Branded with a trademark  (set to enter the market with a unique name i.e. balance buddy).
6. Eye catching packaging (looks cool). Attractive packaging can drive shelf sales and enhance or boost buying interest.
7. It can be sold in multi-generations: i.e  offer new improved generations to keep it fresh on the shelf for the retailer and end buyer.
8. It is recyclable or biodegradable to match the "going green" initiatives set by retailers for packaging and product materials.
9. It is priced right for impulse purchases by the end consumer.
10. Product manufacturing costs are low enough to have a sufficient price mark up margin (i.e. 5x cost) to allow the manufacturer, wholesaler and retailer to make money.  Factors in lowering the cost of manufacturing:     

                   a) Low freight cost: not an odd shape; relatively small and light weight
                   b) Packaging: can be packed on pallets for regular store order fulfillment in 4 to 6 units
                   c) Easy to make: i.e. not labor intensive, small number of parts, made from a mold

Probability of success increases with with each additional factor. If your product doesn't meet all these standards hopefully its strong points will carry the day. Can you think of any other relevant keys to success? Comments are welcome.

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What inventors need to know...

Clients have been asking me to write a blog post about companies providing invention promotion services and whether or not they can help inventors. I saw a law blog post today by IP Watchdog regarding a lawsuit filed by INVENTION SUBMISSION CORPORATION (dba Invent Help) in the United States Federal District Court for the Northern District of New York.

This case was filed against the corporate entity IP WATCHDOG INC and Eugene R. Quinn Jr. and Renee Quinn as individuals. Invent Help claims that their company has been irreparably injured by IP Watchdogs’ past false advertising, deceptive trade practices and defamatory portrayal of Invent Help and its inventor assistance services. One such example of alleged defamatory portrayal is stated in the complaint as:

"[IP Watchdog] state[s] that InventHelp's... invention submission model is to get inventors to spend large amounts of money for services of dubious quality."

Whether this particular invention promotion services company provides services of dubious quality or high quality in which an inventor can take advantage of is a question that may be argued in court. IP Watchdog blog stated, “Rest assured, I will vigorously defend [this case]." Remember the truth is an absolute defense in a defamation case. So are all his allegations true? Will we learn the truth? Will it go to trial? Cases like this are more likely to end in settlement.

I found an article written in 2004 by Bob Sullivan the technology correspondent for MSNBC.com entitled, "Got an invention? You, too, can be scammed" where he explored the vagaries of the invention industry and he told of how, FTC targeted this firm in the past, "

The Federal Trade Commission and various state authorities have taken several sweeping legal actions against invention firms, beginning with a 1994 settlement with Invention Submission Corp., one of the largest firms. In that deal, the firm agreed to pay $1.2 million to redress consumers without admitting to any wrongdoing."

The complaint is interesting because it essentially raises the same issues against IP Watchdog that have been raised against Invent Help in IP Watchdog's blog. Here's an excerpt from the complaint:

"[IP Watchdog] advertise and promote their competing inventor services on their blog in promotional pieces titled "Not All Invention Companies are Created Equal" and in a number of blog postings linked thereto including but not limited to "Beware Invent Help Press Releases","Avoiding Invent Help & Other Invention Scams", "My Position on Invent Help the UIA and Inventors Digest", "Quinn Resigns from UIA Over Invent Help concern", "How Inventors Can Avoid Scams, Traps and Raw Deals", "Falling Prey to Invention Submission Scams", and "No holes Barred: IPWatchdog Addresses Ethical Charges" as well as "Inventing" and a number of blog postings linked thereto. Each of these web pages features IP Watchdog's "Patent Pending Today" promotion of its Invent + Patent System. When the consumer clicks on the Defendants' promotion the consumer is taken to a IP Watchdog webpage explaining IP Watchdog's: a) Watchdog's: a) patentability search and opinion service and b) on-line service for generating a provisional patent application and instructions on "patent pending" submission to industry called the "Invent +Patent System."

Invent Help alleges that IP Watchdog draws people into his website by describing "scams" perpetrated by the invention submission companies. Invent Help further alleges that  "... IP Watchdog's invent + patent system allows [IP Watchdogs'] clients to submit 'inventions' that can be sold or licensed and that [IP Watchdog] can refer inventors to a 'reputable licensing and marketing company' who will do the licensing work that [Invent Help] claims to do rather than 'steal all of your money' like Plaintiff does." (see paragraph 25 of complaint).

If you go to the Invent Help web page entitled The Truth About InventHelp® - Avoid Invention Scams where they list FAQs about Spotting Inventor Fraud you will find they indicate "The law requires an invention company to give you an explanation of its track record in advance," while they say  "we're proud of our record and provide it to you in advance" they fail to list what their track record is on this page. I finally found it on a page entitled InventHelp® Client Invention Stories: Weed Thrasher, That was a curious place to put this nugget of information:

"From 2006-2008, we signed Submission Agreements with 5,692 clients. As a result of our services, 94 clients have received license agreements for their products, and 21 clients have received more money than they paid us for these services."

The law they are referring to is the The American Inventors Protection Act of 1999. This act established certain inventor rights rights when dealing with invention promoters. Before an invention promoter can enter into a contract with an inventor, it must disclose the following information about its business practices during the past five years:

• How many inventions it has evaluated;
• How many of those inventions got positive or negative evaluations;
  
• Its total number of customers;
  
• How many of those customers received a net financial profit from the promoter's services; and
  
• How many of those customers have licensed their inventions due to the promoter's services.

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

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

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

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

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

What is the first thing a new inventor should consider? 

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

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

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

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

What are things an inventor should avoid? 

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

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

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

 There are only 3 options to this step: 

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

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

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

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

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

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Inventors should know...

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

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

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

A few tips on maintaining a laboratory notebook:

1. Use permanently bound, numbered laboratory notebook

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

3. Write in ink

4. Permanently attach any printouts

5. Have your notebook witnessed regularly

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

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

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

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

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

Inventors should know...

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

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I, Woz: Computer Geek to Cult Icon - Getting to the Core of Apple's Inventor, by Steve Wozniak

LoTempio Law Blog Book Review

About the book

In this autobiography,  Steve Wozniak describes his life–before and after Apple. From his childhood where he learned about electronics from his father, to the time of the invention of the Apple I personal computer, to the rise of Apple as an industry giant. A firsthand account by Steve Wozniak, inventor genius, about the origins of Apple and the computer revolution.

My review of the book

Everyone wonders how a true genius comes up with his great idea. Steve Wozniak tells of his early childhood and how his interest in electronics was the foundation that guided him to the world's first practical personal computer. It can be argued that Steve Wozniak  is one of the great inventors of all time, but he will not go down in history as a great writer based upon this book. Although his stories of childhood pranks and interaction with Steve Jobs regarding his technical life leading up to Apple are very interesting, parts of it are over technical for the average reader.  in addition, the reader gets the feeling that the author has too much control over the editor. One must wonder if the ego of the multimillionaire author controls the direction of the book and the editor is incapable to reel in the line.

Despite the book's shortcomings, after reading it you will feel as though you got to know the person Steve Wozniak and you can't help but like him. in addition, I was interested to learn that Apple protected much of their early technology with copyright rather than patents because of the high cost of patent preparation. I thought it was also interesting to read about his struggles with corporate politics. He reveals that he wanted to stay out of management t but remain involved in the inventive/creative side of the business. I had hoped he would have shared more details regarding how they split up the profits of the company and his relationship with Steve Jobs.

About the Author

Steve Wozniak, Apple co-founder, changed the direction the computing industry with his design of the world's first mass produced personal computers, the Apple I and Apple II.

In 1985, Steve was awarded the highest honor bestowed on America’s inventors; the National Medal of Technology by the then  President of the United States, Ronald Regan. In 2000 Steve was inducted into the Inventors Hall of Fame and was awarded the prestigious Heinz Award for Technology, The Economy and Employment for “single-handedly designing the first personal computer and for then redirecting his lifelong passion for mathematics and electronics toward lighting the fires of excitement for education in grade school students and their teachers.”

Wozniak founded the Electronic Frontier Foundation, and was the founding sponsor of the Tech Museum, Silicon Valley Ballet and Children’s Discovery Museum of San Jose. He currently is the Chief Scientist at Fusion-io and recently he danced on “Dancing with the Stars.”

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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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So you have a new invention, what next?

Inventors usually have a questions like: Should I get a prototype? Do I need to have a patent to protect the idea? Who can I speak about it to? Is it a good idea? Can I make money from it? Who can I trust? Is there some great blueprint I can use to follow? Is it possible to get a manufacturer to make the product for me and pay me a royalty?

Many inventors come to me with their ideas but don't know what to do about it. I tell them that I do not want to encourage them or discourage them however ideas don't usually sell themselves. It takes many things to sell the idea. In order to take a product from the idea stage to the store it is necessary to learn what it will take to manufacture, market and distribute the product.

There's a good checklist  described as the ABCs of inventing in Inventors Digest . I think this list is a good starting point and should be thought of as the "Inventors 10 Commandments":

1) Stay away from invention marketing companies that advertise on radio and late night TV.

2) Keep good records about your idea...some day they may be the back up you need to prove YOUR idea is YOURS! (Lab notebook)

3) Do your own patent search online at  the USPTO or at a Patent Depository Library.

4) Build a model.

5) Have your invention evaluated by a non-biased professional (even if your Mom’s in the business, go to someone else!).The nonprofit United Inventors Association offers an excellent invention evaluation.

6) Read all you can about new product development. Go to your local book store or library . . . others have gone before you. Don’t reinvent the wheel.

7) Network with other inventors. Join a local inventors’ organization.
Who can I trust? What do I do next? How do I find the help I need?

8) If your patent search looked promising (see #3), make an appointment with a patent attorney, patent agent or professional patent searcher. Show him the results of your search and follow the advice.

9) Do what you do well and hire pros to do the rest.

10) Don’t fall in love with your invention, but if you’re sure you’ve got a winner (see #5), hang in there! 

These are all great points and should be taken into consideration. One thing inventors should understand is that it's a long way to Tipperary. Anything that is worth it may take a lot of blood, sweat and tears to be a success. The ancient Chinese Confucius said, "A journey of a thousand miles starts from the very first step."

Remember the inventor's first step is coming up with the idea. There are many more steps that need to be completed in order to bring a product to market.

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How to License Your Million Dollar Idea, Second Edition, Harvey Reese

LoTempio Law Blog Book Review

About the book

This book provides potential inventors information to take a product from the idea stage to a shelf on the store. The author reveals his system for coming up with new ideas. He tells about his experiences taking a product through the licensing process. He proposes a method of how to approach and present those ideas to professionals in the industry that can manufacture, market and distribute a product. He gives an overview on the patenting process and a hypothetical presentation of the product and negotiation of a bare-bones licensing agreement. How to License Your Million Dollar Idea, Second Edition also features an expanded appendix of sample patent forms, licensing agreements, disclosure statements, publications, contact information, and more.

My review of the book

In my role as patent attorney, inventors come to my office with new ideas all the time. My job is to protect their idea but also represent them in the best possible way. Many inventors don't know how to present their patented product to a company for licensing agreement. I believe this book gives them a rudimentary understanding of the entire process. I have recommended this book to many clients to educate them of the pitfalls of selling a product that they have invented. I believe this book answers a lot of basic questions about the pitfalls of taking a product from the idea stage to on a shelf at the store. In addition, I enjoyed the common man approach in which the book was written. The book uses anecdotal story based examples to describe the invention process.

About the Author

Harvey Reese is a businessman and inventor. Based upon his success in licensing ideas he has written books that inventors can use to profit from their ideas. The two latest are The 12 Amazing Secrets of Millionaire Inventors, which shows the inventor all of his options when he’s struck with a great idea, and How to License Your Million Dollar Idea which is designed to help the inventor who has already decided on the licensing option. He is a frequent guest on local radio talk shows where he answers callers who have questions about their product ideas and what to do next. He is also an author of many articles for Inventor’s Digest.

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