Recently in patents Category

March 8, 2010

Can Anyone Sell Taggies?

Taggis.jpgDear Rich: My question is in regards to what some people call the, "Taggie" blankets. I see that a lot of people make and sell them on etsy.com. I've heard that there was some sort of controversary with this is...and that any kind of looped ribbon sewn between two types of fabric is patentened by the TAGGIE corporation. I've just learned how to make these myself and intend to sell them, but I won't if there are legal issues. Yes, you are correct that Taggies is patented (RE38,782). Without going into all of the boring details, if you step on the innovation that is described in the patent, you'll become a potential defendant (Although we haven't seen any lawsuits, apparently the company does send out C&D warnings.) Would it be worthwhile to challenge the patent's validity? If Taggies was "obvious" to those in the children's blanket-making field before the patent was filed, then the patent will be invalidated (assuming somebody has the time and money to fight the battle).
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.
February 25, 2010

Show me the Money: Finding an Agent for an Invention

iStock_000007960413XSmall.jpgDear RIch: I am an independent inventor and I am seeking an Intellectual property agent to represent me and my invention to the market. I currently have about 9 months left before I know whether the United States Patent office will grant me my patent but I feel I should not wait till the last minute to research this. My question is this, where do I find an intellectual property agent with the experience and knowledge in the field I need? My patent is for a new type of intake and exhaust valve system for the internal combustion engine.  Obtaining an agent can be as difficult as locating a licensee. Most agents are not looking for clients. They rely on word of mouth from friends or other inventors. The agents we spoke with when researching our licensing book requested that their names not be included. Why? Because they already have sufficient client listings and attract business strictly from referrals. How do you find an agent? There are five common methods: referrals from businesses, referrals from inventors, trade shows, trade magazine advertisements, and the Internet. Certain licensing publications also list licensing agents and service organizations that appraise new inventions. For example, The Licensing Journal often includes lists of technology agents. (That's a pricey journal however, and you may want to check your local law library for copies.)
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. 
February 15, 2010

Can Monopoly Come After Me?

MonopolySpongeBobSquarePantsEdition_billboard_1.jpgDear Rich: A few years ago, I came up with my own version of Monopoly to use in high schools as a fun way to teach a topic. The game became so fun and popular that a local science center wanted to play it and open it up as a free competition between schools. I didn't have a problem with that, but was starting to get a little worried about legal issues. I tried several times to contact Hasbro to ask permission, but they never responded. I told the schools that unless they intended on backing me up if any legal issues arrose, that I would not allow the game to be played. No one wanted to back me up, so I decided that I would change the game sufficiently as to make it very different from a Monopoly-like game. I did that and the game looks great and still fun (I'm pretty sure that I changed it enough.). Now, I'm uncertain. Did I change it enough? Really, the only thing that remains similar is that you can purchase property (but they're not houses or hotels) and pay rent? Because I am not selling it, am I safe? If I do decide to turn it into a classroom-type game, how difficult would that be and is the fact that the game was originally based on MONOPOLY going to cause problems? Should I go see a lawyer? Is it worth going through all of the trouble of patenting my idea and/or selling it? How many board game ideas out there really make it (I'm assuming that it is very little)? Can I protect my idea and distribute the game for free (just get organizations to give me cash to produce and distribute for free in schools)?  I'm hoping that you can help. The Dear Rich Staff would like to help but we're pretty exhausted from reading all your questions. Wait a second while we hook up a caffeinated IV drip. 
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. 


February 11, 2010

What If They Won't Sign an NDA?

00000031.jpgDear Rich: I started a product design company and have a design that a company may be interested in licensing. To date I have not told them specifics about the design, only that it fits into their product line. We're meeting soon and I want to be sure to protect the idea for future patentability (by not making it public as defined by patent law) as well as prevent the company from disclosing the idea to others. I've read that having representatives from the company write a quick entry in my invention notebook to the effect that we're meeting to discuss the idea is legally sufficient to protect patentability and disclosure. I've also been told not to bother with an NDA as most companies will not sign them. You are correct to be concerned about public disclosures as they will set the clock ticking on the one-year bar for filing a patent (and will likely eliminate the chances for any foreign patent rights). 
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.
February 5, 2010

Failed to Pay Maintenance Fees: Is the Patent Lost?

iStock_000011114453XSmall.jpgDear Rich: Help! A friend of a friend failed to pay his patent maintenance fees timely and his patents have expired. Is there any way to pay a late fee and "revive" the patents? Yes there is. If it's been less than two years since the patent expired, you can revive it if you pay the fee and a surcharge of between $700 and $1640 depending on whether the reason for the failure was 'unavoidable' or 'unintentional.'  You'll need to file a petition and you can learn more about the requirements, here. If it's been more than two years, you can revive the patent only if you can show the failure was unavoidable. This article explains it better than the Dear Rich Staff (and we recommend the blog to all patent fans).

Find out more about patent maintenance with my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.
January 5, 2010

My Partner Stole My Idea ... or Did She?

patentofficetheft.jpgDear Rich: In 2003 I had a small company (controlling interest) with 2 lesser partners. At that time I had an idea and applied for a provisional patent. I included one of the partner's names as well since she worked with me on it but the idea was mine. Nevertheless, I was willing to share. When it came time to do the non-provisional patent the following year, she claimed she did not have any money to contribute for lawyer fees and since I had already severed our business relationship anyway, I dropped the patent idea and just went ahead and made the item and put it into my showroom collections to show customers. I told her it was OK with me if she also wanted to sell the item herself. I just recently discovered that she has somehow patented the item (and has added an assignee.) In PR material she touts herself as "the inventor of" and even won a design award last year. Is it legal to obtain a patent that was a collaboration, especially after a provisional patent had been filed with both names? After the item has already been shown to prospective clients? I have well-documented photos of the original prototypes I had made in China as well as photos from the company showroom that very clearly show the item. (The original computer date signatures are on the files and are a full 2 years before her patent was filed.) Do I have any legal recourse? That seems like fraud to me. What about the assignee? Whoa ... that's a lot of information. You may have a legal basis to pursue your ex-partner, but some things are unclear. For example, did you examine the patent that was issued to be sure that it was for the same invention that you sought to protect with your provisional patent application? If your ex is claiming something different, there may be no reason to list you. On the other hand, if you are an inventor -- you contributed to at least one of the claims--then your name should have been included in the patent application. If the patent is valid, it could be corrected to include you, and your ex should account to you for any income under the assignment (although patent law is a little odd about when co-inventors must account to each other). 
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.

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

December 31, 2009

Patent, My Ass! Five Strange But True Butt-Related Inventions

Dear Rich: I like your blog especially, the early funny stuff you used to write. How come you don't do funny stuff any more? Say no more! As a special end of the year bonus we've dug deep into the bowels of the patent office for five butt-shaking patents, all focused on the human rear-end. Butt1.jpg
#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. 
Butt2.jpg#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. 
  • If You Liked This Invention You Might Also Like: Patent No. 4,028,740, "Convertible beach attire." Speaking of hiding your butt, perhaps you'd like a nice "pair of modesty panels" to cover your skimpy swimwear while walking from your car to the beach. These panels comes with a complex-looking belt and loop combo that makes you wonder why the wearer doesn't just drape a towel around the over-exposed area. 

Butt3.jpg
#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. 
  • If You Liked This Invention You Might Also Like: Patent No. 5913405, "Ladybug (child protector)." Apparently influenced by Kafka's "Metamorphosis," inventor Francisco Bordier has designed a polyurethane bug-styled protective covering for use by children learning to walk. 

Butt4.jpg
#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. 
  • If You Liked This Invention You Might Also Like: Patent No. 5842232, "Pad inserts for enhancing the shape of a wearer's buttocks." As we've concluded few problems are as devastating as having "flat or scant buttocks." Sure there are numerous butt enhancement devices, but we like inventor Janice Ward Parrish's unique dual-pad approach. 

Butt5.jpg
#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)
  • If You Liked This Invention You Might Also Like: Patent No. 2006/0094518 A1, "Manually Self Operated Butt Kicking Machine." If the previous invention seemed so 2001, then check out J. Leavitt's 2006 patented attempt at self-humiliation--a Rube Goldberg styled seat with a hole, through which a shoe strikes the user's posterior.
December 28, 2009

Does Published Patent = Issued Patent?

iStock_000010211189XSmall.jpgDear Rich: My son has applied for a patent and received a Notice of Publication of Application received from the U.S. Patent and Trademark Office indicating that the subject application was published in November 2009. Do we have to get a copyright and trademark for this also? Does this mean it was accepted or do we still have to wait to be granted a patent? Publication of your son's patent application does not mean that the USPTO will ultimately grant (or "issue") a patent. to him. Ever since November, 2000 the USPTO has been publishing applications approximately 18 months after filing (unless the applicant requested nonpublication at the time of filing). Although publication ends the patent's trade secrecy status, it enables certain patent infringement recoveries.
Copyright or trademark? If your son will be selling the invention as a product, he should consider acquiring a trademark registration for the name. As for copyright, he will acquire a copyright automatically for any copyrightable aspects of his invention. There's more on both topics in this book
The correct answer is (d). Why the baby photo? (a) It signifies the 'birth' of your son's patent, (b) it signifies the new year (or new decade), (c) It's a sad attempt at search engine optimization ("cute baby, patent"), or (d) it was available in the free photo bin at istockphoto.com.

Want to register a trademark? Check out Nolo's Online Trademark Application.
November 17, 2009

My Inventor's Notebook: Is it Tamper Proof?

INOT5.gifDear Rich: After reading David Pressman's Patent It Yourself. I learned of the importance of keeping a notebook to record and track the progress of an invention I'm working on. I went out and bought a spiral notebook at an office store to use as my inventor's notebook, and have entered ten pages to date. Lately I've been reading that a spiral notebook is not "tamper-proof" enough as compared to sewn or glue-bound notebooks. What are your thoughts? I plan on keeping the original notebook no matter what I decide to do. The short answer is that your notebook is fine for your purposes, especially if it includes signed, dated and witnessed entries that detail the creation of your invention. The Dear Rich Staff spoke with David Pressman who said, "it's just about impossible to remove and reinsert a page in a spiral-bound notebook. The signatures and the witnesses in chronological order are powerful proof of authenticity." 
What's an inventor's notebook do?  An inventor's notebook (sometimes called a "lab notebook") documents the development of an invention and can be used to assess commercial potential, make improvements, and keep track of contacts and notes. Inventor's notebooks are sometimes used to resolve disputes about inventorship, and to establish dates of conception and reduction to practice. Nolo sells a souped up inventor's notebook (with patent basics and worksheets) but a basic bound notebook will be fine.
October 27, 2009

My Great Idea: Somebody Had It First!

iStock_000005164183XSmall.jpgDear Rich: I had this great idea for "something." I researched it online and found something that accomplishes the same thing but in a different way. It is has a trademark but doesn't seem to be patented. I am so upset because I thought this was a terrific idea and now I'm not sure if I can patent it. Can you help me? The short answer is that you can patent a device that accomplishes the same result as an existing invention provided that the manner in which it accomplishes that result is novel and not obvious to others in the field. For example, there are many ways to hold hair in place and no shortage of patents. An attorney would need to advise you about your particular situation since there's not enough information in your letter for us to provide much guidance.
Search on Your Own. You can certainly search the patent database to see if someone has registered a similar idea - we prefer Google's patent searching system over the USPTO database. And you can review the trademark database - lately we like Trademarkia.com more than the USPTO (although they each have searching idiosyncrasies). 
Great Ideas R Us. The Dear Rich Staff respects you for coming up with one great idea and hope you come up with more. But keep in mind, there's a reason for Thomas Edison's inspiration/perspiration equation. As Edison himself acknowledged, his success was primarily attributable to being a "hustler" rather than to any of the great ideas he instigated, cajoled or "borrowed." In other words, coming up with great ideas is not the hard part; the challenge is in selling your brainstorm.  

For more information about patents, see my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.
To apply for a provisional patent, use Nolo's Online Provisional Patent Application.
October 21, 2009

Deceased Dad's Patent Rights

iStock_000000320896XSmall.jpgDear Rich: My father passed in 1999. He holds an original patent that was copied by his employees and they eventually kicked him out of his own company. I have not received any information about the company or his patent since his demise. Do children inherit patent rights? What is the usual scenario? The short answer is that if your father owned patent rights they should have become part of his estate and passed on to his beneficiaries according to the instructions in his will or trust. If he died without a will, your state's intestate rules would have caused the rights to likely go to his spouse and/or children depending on state law. If the patent was not listed as part of the estate, you may need to do some research (discussed below). If the patent is still valid and you can prove your father was an owner at the time of his death, an estate attorney should be able to determine how it will pass to the heirs. The Dear Rich Staff believes there are a couple of unknowns here. 
Patents expire. Patents issued after June 8, 1995 expire 20 years from the date of filing; patents issued before that date expire 17 years from date of issue. So, for example, if your father's patent issued in 1991, it would now be in the public domain. That's not to say you couldn't bring a claim against someone for actions that took place while the patent was active but that's a very tricky type of claim to bring (and the clock is ticking).
Patents are assigned. We're not sure of the situation but it sounds like some funny business occurred regarding your father's patent, his company, and his employees. If your father transferred his rights in the patent to his company, that information can usually be located by searching at Google Patents or the USPTO. Use the Advanced Search features, put in your father's name as inventor and find the patent. Check the dates to see if it has expired and look to see if an "assignee" is listed. If so, the assignee owns the patent rights. That doesn't mean that your Dad gave up all revenue. The assignment may have been an agreement promising him payments. So you would need to find the assignment document to see what the terms were. You can also search assignment documents at the USPTO here (in case the assignment was filed at a later date than the patent). Whatever you do, you should act quickly, as the passage of the ten year period since your father's death may have caused you to lose rights.

For more information about determining the status of a patent, check out my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference. 
September 14, 2009

NDA or Preinvention Assignment?

frog.jpgDear Rich: I currently am working at a company that makes a product that I have no intrest in trying to make better. But they package this product with something that I have found a better way to do. I want to invent this product prototype but was informed that because I signed an NDA, if I take this idea out of the idea stage it would then belong to them!!! Is this true? My company is going out of business next year but the corporation is staying open under a different name out of the country. Does this make a difference? And they are keeping our company name as a brand. Is a nondisclosure agreement iron-clad or does an aspiring inventor have a chance to shine? I didn't realize that by signing an NDA, they could own innovations concepts and inventions. The thought of someone else owning my creative process is very scary to me. We're guessing that what you actually signed was a combo-agreement that had nondisclosure provisions and also gave your employer the rights to any inventions or copyrights created in the course of your employment (known as a preinvention assignment). Eight states have limitations on these agreements and in those states the employee will usually own non-work related innovations created without employer resources and on the employee's time. In general, if you signed a typical preinvention assignment your employer will own your work-related innovations. 
All that other stuff ...We're not sure what's going on with your company but assuming the assets are transferred to another entity, that new entity will step into the shoes of your employer and own everything you created. Practically, the new owners may not police the old agreements, or may not be aware of what you're doing, but under contract law, they could claim rights to it. The Dear RIch Staff reports that your predicament is standard, (and often a business necessity) for many innovative companies. And in these days of disappearing job opportunities, it's not likely to go away.
Even without the paperwork ... Regardless of whether you signed any paperwork, if you were employed for your innovation skills (or hired to create inventions), the employer would likely own what you create under the "employed to invent" doctrine. Alternatively, even if you weren't hired to invent, if you use the employer's resource (materials, supplies or time), the employer may obtain a royalty-free right to own your innovations under "shop-right" rules. In addition, whether or not you signed a nondisclosure agreement, you're bound under state laws to maintain an employer's trade secrets. (Sometimes, the rules expressed above are different for government and university employees.
Plunk Your Magic Twanger! What about this picture of a rare poisonous tree frog? Okay, it's not actually poisonous or a tree frog. In fact the only reason we're posting it is that istockphoto.com was offering it as a free download and we like the way the little guy looked. 

August 21, 2009

Where Do I Find a Prototype Maker?

iStock_000008455365XSmall.jpgDear Rich: I recently developed a product out of need for someone that is severely handicapped. My prototype is working well for his needs, however, not attractive enough to market. Do I have to have the prototype professionally made to try to market it? If so, where do I begin? We're not sure what you mean by 'market.' If you are referring to direct sales to consumers, yes, you will need a professional prototype to serve as your manufacturing model since we live in a society where consumers take new product ideas seriously only if they are packaged and presented professionally. If you mean to market your idea to a company that will manufacture and sell it on your behalf (a licensing arrangement) then it all depends ... in some cases, the device's functionality may be more important than the form, and potential licensees may be willing to overlook the appearance (since they will deal with design themselves). 
Why Not Hire an Artist?
If you are seeking a license the Dear Rich Staff suggests that you consider hiring an artist instead of a prototype maker. Professional CAD drawings will provide a professional appearance for your product without the expense of preparing a prototype. As for finding a prototype maker (sometimes referred to as "model maker") use search terms such as "prototype maker"  and "model maker" at Google. You can learn more about prototype preparation here.
The Legal Notes
If you intend to seek proprietary rights to your product be aware (1) you have one year from the first public display to file a patent application or provisional patent application; and (2) you should enter into an agreement with your prototype maker assuring your ownership of the final prototype. You can find examples of these agreements in our book, Profit From Your Idea.
July 21, 2009

Can You Plagiarize a Patent Specification?

Thumbnail image for PAT_cvr.gifDear Rich: I have been working through my patent application and noticed in the prior art that there is good descriptive material that describes my base invention less my unique changes. I purchased the Nolo "Patent it Yourself" book a couple of years ago. The author states, "if you see any prior art patent whose specification contains words, descriptions, and/or drawing figures that you can use in your application, feel free to plagiarize!" Is that legal? The short answer, according to Patent It Yourself author David Pressman is that it is legal to copy elements of patent specifications and drawings. However if the specification or drawings include a copyright notice, then the inventor is claiming copyright and the copyrighted material should not be copied. Pressman states a claim of copyright for a patent application is extremely rare. As we have explained previously according to the U.S. Patent Office, subject to some exceptions, "the text and drawings of a patent are typically not subject to copyright restrictions."  What makes the issue confusing for the Dear Rich staff is that patent examiner regulations (MPEP 1.84 (s)) permit copyright notices and copyright claims regarding authorship in patent text or drawings. There's also the 2003 case, Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003). In that case, the Seventh Circuit acknowledged the copyrightability of an inventor's patent drawings (although it ruled against the inventor as to the issue of infringement). 

July 15, 2009

Patenting Hot Dog Forks

hotdog3.jpgDear Rich: I am new to this patent stuff. There is a patent on a campfire hot dog fork from the 1980s. I have an enhancement to this type of fork. Do I get someone to market and sell my product or do I need a patent before I do so?  Or should I go with a Provisional Patent? The short answer is that pitching your idea without some form of legal protection -- a signed nondisclosure agreement or some form of patent protection -- may result in the loss of your idea. As for the fork, if the original patent was issued in the 1980s, it is now in the public domain and free for everyone to use. If you patent an enhancement then you will have the exclusive right to that enhancement but not the underlying invention. Before spending any money you should review the "hot dog fork" patent literature as there are many post-1980s hot dog fork patents and inventions (our favorite is the Rolla Roaster). We recommend patent searching at Google. As for whether to market your fork before you patent it, whole books have been written on this subject, including one by the Dear Rich staff. The main thing to keep in mind is that if you disclose your unpatented idea without restrictions, others are free to copy it without breaking the law (sample nondisclosure agreements are here).
 
No Such Thing as a Provisional Patent
Not to be too nit-picky but there is no such thing as a provisional patent; there is only a provisional patent application (PPA). When you file a PPA, it holds your place in line at the USPTO and allows you to claim patent pending status for a year. If you don't file a regular patent application within a year, the PPA has no value. Nolo offers PPA articlesbooks, and an online PPA filing program.