Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Dear Rich: I have an Idea about a Novelty Item that I believe would be very popular on the market. Especially around Christmas time. The Toy would have information stored on a Flash Drive or a SIM card (as well as the need to be plugged into a USB port to retrieve or change the information). How can I patent an idea for something that has to have these components to work? I would bet that someone owns the patent on the Flash Drive and the Sim card as well. Yesterday, the editor for our new book (it's actually a mini-book for app developers), informed us that Tweeting (as in, "I Tweeted her yesterday.") is not capitalized. We bring this up because we wondered about your choice of capitals for Idea, Novelty Item, Toy and Flash Drive. Personally, we think this capitalization is part of an invisible-hyperlink thought process in which the writer envisions certain terms as a having a hypertext link but -- because he can't actually create one because of the contextual limitations -- he capitalizes instead to create a "signifier." Or maybe you're German. In any case, although we don't mind these capitalizations (and we created the links we imagined you imagined), we think our editor would correct them.

Right, you had a question. We agree that you will have a hard time obtaining a patent if the invention you are claiming (patent lingo for the thing you're trying to get exclusive rights to) is the flash drive and the manner in which it interacts with the USB port. However, you can use these elements and still come up with something patentable. After all, many groundbreaking inventions incorporate existing technologies -- after all, cars and radios existed when William Lear invented the car radio (and how come Motorola has erased Lear from their corporate memory?) Note however, that the ability to claim patent rights over certain combinations of existing technology has been made harder by a 2007 Supreme Court decision. 

Are you sure you want to take the patent route? Even assuming you qualify, most patents take about two years to issue and you can't stop anyone from using your patented technology until the patent is issued. Considering that most novelty items have a short shelf-life, are you sure that seeking a patent is worth the effort. Perhaps copyright and trademark protection (both far less expensive) will suffice -- as they do for many novelties and toys.

Right, you had a question. Although the Dear Rich staff once co-wrote a book about patenting art and entertainment and although we love our co-author's attempts at carving new worlds of patent protection, we can safely say that there is no way you can patent illustrations used in a book. You can, however, acquire copyright in the illustrations. And unless you are an employee, or you signed away rights, or you are co-authoring the book with your friend, you will likely retain the complete copyright to the illustrations without having to do anything. As for your "ideas," for illustrations, we're not sure what you mean but in general ideas can't be protected by copyright.

 

Some other stuff ... Of course, even though a patent has ended, it's possible (though extremely unlikely) that the same dollhouse -- at least if created in the 1940s --  may still be protected under copyright law. We also suppose that a doll house manufacturer could argue that its work is protected by trade dress. In any case, neither copyrights or trade dress protect functional elements which raises the (primarily) academic issue -- is Barbie's pad functional or decorative?

What's a continuation? The Dear Rich Staff went to the always-helpful (and now-legendary) David Pressman, author of Patent It Yourself (insert FTC disclaimer), for some help with your other questions. David explained that a continuation is supposed to replace the parent application. A parent and its continuation are supposed to cover the same invention and generally both do not issue (patent lingo for the official grant of the patent). 

The problem is ... However sometimes the USPTO issues the parent and a continuation. They usually have somewhat different claims and the continuation usually expires the same day as its parent application, so you can make, use, sell the invention covered by its claims with impunity once the continuation expires. A "terminal disclaimer" is supposed to be filed in the continuation so it will not last beyond the expiration of the parent. If this situation occurs, you'll need to consider infringement of the continuation separately from its parent case. That is, one does not affect the other. 

Is this confusing enough for you? We're getting a little light headed here. Summing up (if that's the right phrase), the continuation may have a terminal disclaimer and may or may not cover the same invention as the parent. Both may be invalid for double patenting if a terminal disclaimer was not filed. David advises that since this is such a complicated matter, you might want to have a patent attorney review the patents. Why didn't we just say that in the beginning? We'll ponder that and get back to you.

First you need to find the licensees/assignees. You would need to find the companies that licensed the patent from your grandfather. Check your grandfather's estate documents for evidence of those agreements or consult with your grandfather's attorney if that's possible. Alternatively, search patent records at the USPTO or Google patents for evidence of any assignment of the patent. 

Now the hard part ... Even assuming you could track down companies that had licensed or were assigned the patent, you would still face the biggest hurdle: making a legal claim for compensation. What's in your way is the statute of limitations. Under most state laws, you have between 3-10 years (here's a fifty state chart) to file a claim based on a breach of contract. That date starts ticking the day when you should have become aware that the contract was breached. We don't know the details of your grandfather's death or his condition preceding death so it may be possible to make the creative legal argument that it was not possible for you to discover the breach of the agreement until now but the Dear Rich Staff sort of doubts that will fly. In any case, don't listen to us if you have any doubts; promptly take your paperwork to a patent attorney. All in all, we hate to see inventors go uncompensated (if that's the case with your grandfather) but we're not sure there's much you can do.

From our mailbag. Kim from Beverly Hills sent us news today that a case of patent litigation between two magicians has come to an end and the patent holder was victorious. Thanks Kim, we're glad the world is safe for the makers of levitating pens. (And yes, readers, the magic secrets are published for the world to see in the patent applications). Mostly, we're grateful to Kim for getting us to research the subject because it turned us on to this wonderful blog.

Right, you had a question. You have four potential tools for protecting recipes: copyrights, trademarks, patents, and trade secrets. 

Right, you had a question. Assuming your idea was once a trade secret, that protection is over now that you've provided it to others without requiring their confidence. It doesn't seem like your idea would be protected by copyright since you're apparently referring to a method of doing something (and copyright doesn't protect methods). Maybe your idea could be protected by a patent because many great musical ideas have been protected that way (at least that's what we said in one of our books). In that case you have one year from any written disclosure of your idea to file for the patent (or to file a provisional patent application and file a regular patent application within one year of that).

We turn to the experts. So, the Dear Rich Staff asked Greg Aharonian, a professional patent searcher (and author and patent gadfly) what he thought about the patent's validity (and it looks like it would be a tough challenge).  Greg reports: "I can observe a few things. First, the applicants submitted a fair amount of prior art, both patents and non-patents, more than most patents, so it looks like the inventors were seriously pursuing the patent. They submitted multiple examples of a close piece of prior art, "Tag Along Tags blankets," and still got the patent issued. And they cite 'Taggly,' a toy that has tags, which they argue doesn't anticipate a blanket, but is otherwise prior art. So a primary examiner issued them the patent - twice (the patent and the reissue). So circa ten years ago, their invention was considered non-obvious enough to be granted a patent." 

Would their patent hold up with today's obviousness standard of  "what is predictable" from KSR? Applying that newer standard, Greg says, "Is a Taggie blanket a predictable variation of the Taggly taggy toy? Well, if you squish the toy flat, you have a blanket-shaped object with tags - the Taggies patent. Seems a predictable variation to me. Or not? The Court of Appeals of the Federal Circuit (CAFC) has made a mess of things. A few PATNEWS ago, I mentioned a recent CAFC decision where two judges ruled that it is obvious to go from a Marilyn Monroe card with non-memorabilia item attached - to a baseball card with a memorabilia item attached. Yet Judge Rader, the next chief justice of the CAFC, dissented, saying it wasn't obvious, and that his two colleagues were basically .... idiots. I have no idea how these same three judges would rule on the Taggies patent. And no one else could predict their decision as well, because obviousness caselaw is such a mess. So is the Taggies patent obvious in light of the cited art (or anything similar I could find in a search)? I would rather try to achieve world peace." Thanks Greg, and we're sure if you applied the same skillset you use in busting patents to world peace, the world would be a better place.

Don't confuse agents with invention marketing scams. Invention marketing scams can be distinguished from legitimate agents because generally agents: are hard to find because they rarely advertise; do not give a sales pitch to inventors; will tell an inventor if the invention has flaws or risk factors; and  provide a list of satisfied clients. In other words, a real agent is realistic about your invention and is usually willing to take a risk for a percentage of the profits. Some qualified agents may offer to evaluate your product. The evaluations performed by legitimate reps usually cost several hundred dollars and result in a critique that is particular to your invention and the appropriate industry. Although scam marketers may seek a percentage of profits, they actually make their money by exorbitant up-front fees that are unrelated to any service that they perform. As a general rule, a person or company that demands more than $1,000 in up-front fees and will not furnish you with a list of clients is probably a scam marketing venture. If in doubt about the legitimacy of a company, check Invent.net or the National inventor Fraud Center which includes a list of suspected companies, as well as helpful links--for example, to the Federal Trade Commission. 

1. We don't know if you changed the game enough but if people play it and say things like, 'this seems a lot like Monopoly,' the answer is probably, 'No.' 

2. If the only thing the games have in common is the idea of purchasing property, then you're not likely to be infringing.

3. If the game infringes, you will be liable for selling, distributing or licensing. You don't have to make a profit to be an infringer.

4.  If it's not similar to Monopoly it won't infringe even if you were originally inspired by Monopoly.

5. We don't know if you should go see a lawyer. We happen to like lawyers and think they're an interesting group of people. But that's just us. Also, when we speak to lawyers, the meter is usually not running. We would suggest holding off on the legal visits and learning as much as you can by yourself.

6. You may be able to patent your game--possibly with either a utility or design patent--but we wouldn't recommend it as a strategy for board games (which kind of fits in with the whole twisted legal history of Monopoly). In any case, copyright and trademark law should do just fine for you.

7. The Dear Rich Staff used to do a lot of toy licensing and our experience from that was that board game licenses were exceptionally rare. You will have a hard time getting in to see the two or three companies that still make board games, and without major distribution, it will likely become a money-losing venture. Even if you do license it, the chances of breaking through the existing pack of popular and classic board games is slim. (Sorry to be so negative but we're glass-half-empty folks).

8. If your game isn't substantially similar to an existing game and doesn't use a similar trademark, you're legally entitled to do what you want. 

Disclosing in Confidence. To prevent triggering the one-year bar (and to preserve foreign rights),  the company must agree your disclosure was made in confidence (and treat it accordingly). It's true that many companies will not sign NDAs, particularly with individuals that they do not know. However, that's usually not the case when the company knows the other party, or has solicited the idea. So, we  recommend starting with an NDA (samples are provided here).

Signing your book. Signing an entry in your invention notebook may preserve confidentiality provided it includes a statement to the effect that the disclosure is being made in confidence and the company will take necessary steps to preserve the confidentiality of the disclosure. Still, it's not as ideal as an NDA which may contain provisions for dispute resolution, attorney fees, jurisdiction, or injunctive relief. 

Authority to bind. Finally, make sure the person signing the NDA or book has the authority to bind the company (include their title; be wary of "agents") and if in doubt, verify the authority. 

If they won't sign anything. Be wary of companies that won't sign anything. Sometimes they have a legitimate reason -- they don't want to be limited in case they're developing something similar independently -- and sometimes they're just using their bargaining power to see what you have without any restrictions. Keep in mind that any "publication" that shows how to make and use the invention, or any offer for sale -- licenses are not typically considered an offer for sale -- will trigger the one-year bar. Disclose sparingly in the absence of a confidentiality agreement. 

The young man in this photo -- my cousin Andrew -- went on to run a design company that licensed toys to all of the major toy companies. He always used an NDA!

Find out more about protecting your invention with my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

Want to file for a patent now? Use Nolo's Online Provisional Patent Application.

Find out more about patent maintenance with my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

And don't forget the confusing 'one-year' rule. If the invention was offered for sale more than one year before your ex-partner's patent application was filed, then the patent should not have been issued and it doesn't matter who is listed as inventor (unless your partner is claiming priority on the basis of the provisional patent application and filed within one year of that filing date). If the patent should not have been issued and the USPTO made an error, the Dear Rich Staff believes you should talk to a patent attorney about starting a proceeding at the USPTO to invalidate the patent.

Find more information on patent law in my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

To file your own provisional patent, see Nolo's Online Provisional Patent Application.

#1. Patent No. 6473908: "Garment having a buttocks cleavage revealing feature," What's buttocks cleavage? It's when a little bit of the buttocks (and cleft between them) is exposed. Some people find this type of exposure unappealing--in the U.S. it's disparagingly referred to as 'plumber's crack,' in Britain it's 'builder's bum,' and in Brazil, call it cofrinho. Even with this negative rap, apparently there are those among us who like to expose their gluteal cleft. For those folks, inventor Thomas A. Bontems created a method for affixing a strategically placed see-through material allowing for ideal butt cleavage exposure. One nice feature is that the see-through portion of the invention is not limited to a basic heart-shaped peek-a-boo cut-out; the wearer can also expose themselves through flower shaped, butterfly shaped, and football-helmet shaped windows of opportunity. (We're not sure if the football helmet is for fans or players occupying Center position). There's even a "logo" view that presumably allows for unlimited corporate licensing opportunities--for example, you can expose yourself within the Apple logo or Chevrolet "bowtie." Since inventors solve problems, one may wonder what problem Bontems' invention solves? According to the inventor, many people like to expose portions of their anatomy but they're not comfortable wearing tight fitting or low cut jeans. This invention "incorporates a revealing feature that does not detract from or govern the overall structure of the garment." In other words Bontems has leveled the playing field and liberated butt cleavage from the thin, the sexy and the good-looking. Free at last!! 

• If You Liked This Invention You Might Also Like: Patent No. 5970516, "Article of clothing for making a patterned sunburn." This invention allows the user to swap out an interchangeable see-through portion of a bathing suit to create tanning tattoos. 

#2. Patent No. 6,012,168: "Privacy accessory for use with hospital gown" Even exhibitionists would probably like to avoid one situation of butt-cleavage exposure--the use of an old-fashioned posterior-exposing hospital gown. Laurie Hutton and Lois Histopad came up with a temporary-albeit worky solution as shown in their 1998 patent--a flap-and-strap garment that can be worn underneath the gown to guarantee "practical modesty coverage." Much as we may support the concept, this flapping backside accessory seems like a stop-gap measure. Sure enough, a better solution arrived in 2001 with Sarah Bowens' Patent No. 6,237,153, "Hospital Garment" which featured three panels one of which was an overlapping back panel. Despite the obsolescence of their invention, we support Histopad and Hutton because as lawyers, we can relate to the need for covering your ass. 

#3. Patent No. 4,151,613: "Protective device for the buttocks and hips of a person for use in skateboarding" Skateboarding is all about style and what could be more stylish than wearing a plastic and foam portable seat on your butt? Now, that should impress your boarding buds. No doubt, inventor Jhoon Rhee had the noblest intentions--to shield skateboarders from hip and butt damage--after all skateboarding injuries account for 50,000 emergency room visits per year. And since 90% of the skateboarding victims are under 15, it makes a lot of sense that kids should wear this "ass-helmet," although getting them to comply should be about as easy as getting them to clean out the septic tank. And here's some good news for manufacturers; Rhee's patent expired in 1995 so anyone can sell and use this shielding device. 

#4. Patent No. 5708986: "Undergarment having rear supports" We're afraid there's no other way to put this one. The U.S. Patent and Trademark Office has spent your tax dollars reviewing and ultimately granting a patent on a device that basically holds your butt cheeks in a raised position. Okay, not every invention can be a cure for cancer and we understand that looking good makes you feel good and feeling good is important in this cruel world. So perhaps it is important to have an invention that "enhances the presentation of the derriere." The principle is simple: cut two strategically placed holes in a support garment and allow your butt to fit within. The result, according to the inventor, is something akin to a push-up bra for your butt. 

#5. Patent No. 6,293,874: "User-operated amusement apparatus for kicking the user's buttocks."  Here's an invention that Jefferson and Franklin could never have anticipated -- a machine that allows you to kick your own ass. At least, there's no question what problem this invention solves ... the anatomic impossibility of booting oneself in the butt. This is of course not the first self-spanking machine (see also Pat No. 920,837 for example), but it's a giant leap forward over previous machines whose paddles needed to be reset after each episode. Inventor Joe Armstrong eliminated those pesky issues with his crank system utilizing rotating arms, resulting in a patent issued in 2001. Best of all the whole apparatus folds up for easy transport or storage so you can even take it on vacation. (Tip of the Hatlo Hat to Greg Aharonian)