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

Dear 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.

Dear 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. 

Dear 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. 

Dear 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). 

Dear 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). 

Dear 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).
 

Dear Rich, I have a question. I have invented a very useful tool and have a patent pending. Also I have an arrangement with a nonprofit and some principals. The nonprofit will operate the business of selling the tool to generate revenue. The principals provide funding and agree to use their retail outlets for the sales. Can we license a manufacturer to manufacture only and license the nonprofit to sell the product? The short answer to your question is that we're not sure. Yes, I know that the Dear Rich Staff is packed with lawyers, but more information is needed. For example, we're concerned about maintaining your nonprofit tax benefits, and the value of your patent pending status, and we're not sure what you mean when you say you want to "license a manufacturer to manufacture only"? Do you mean versus manufacturing and selling? We're also not sure who controls the rights to the invention, you or the principals? In a situation like this -- when you're mixing investors, inventions, and 501(c) tax issues -- you're best off bringing an attorney to the table. 

Dear Rich: Can you patent an invention that was designed by invention software? How much human involvement is required to be considered to be invented by humans? Can an invention created by invention software be considered nonobvious under patent law? We wish we had the answers to these questions but, fortunately, we know someone who does. Attorney Robert Plotkin has written a book, The Genie in the Machine: How Computer-Automated Inventing Is Revolutionizing Law and Business and the Dear Rich staff interviewed him as part of the Nolo podcast series. You can listen to Robert Plotkin's answers here.

Dear Rich: I developed a new sporting event and would like to find out how I can go about getting it patented or copyrighted? I have read about other types of inventions but not about the development of a new sport. The short answer to your question is that you may be able to patent your new sport but you will have a hard time claiming a copyright. Patents have been issued for new games, (ping-pong poker, anyone?) for variations on existing games (arena football anyone?), and even for competitive techniques within sports (ready to improve your putting?). (You can read more about these sorts of patents in this article.) Under a recent patent ruling a process or method (such as a sport with rules), may qualify for a patent if it affects some hardware -- that is, it is tied to a particular machine, object, or apparatus, or it transforms an object into a different state or thing. In short, as long as your 'invention' includes a physical element such as a football, hockey stick or some other object or hardware, you probably satisfy this requirement. As for copyright, you cannot copyright a system or method (although you can copyright expressions of that game -- for example, a Wii version of the sport, a book about it, or demonstration videos). Of course, the Dear Rich staff notes that your biggest challenge may not be getting the patent, it could be gathering the resources to stop others from playing it without paying you. 

Dear Rich: I am preparing to license a U.S. "patent pending" invention to a U.S.-based company. Even though the market for the product is clearly worldwide, it is sparse enough that it does not justify expensive foreign patent filing. The company's supplier and its competitors are located in China and Korea. If any of these other companies sell to U.S. customers via the internet (typical), I believe the sale legally occurs in a foreign country, therefore sidestepping my patent. If so, I question if the company I will deal with has any reason to enter a license agreement with me. Is there any way I can be protected in cost-permissible way? I'm so glad you asked. The short answer to your question is that once you acquire patent protection, you can stop Internet sales to U.S.-based customers. U.S. patent holders can stop anyone from importing infringing products or offering infringing products for sale (advertising or marketing) that product within the U.S. There are also  federal court decisions indicating a foreign supplier cannot "induce" infringement in the United States. So, whether copies of your product are sold on the Internet, or they slip out of the factory's back door, or result from competitor copying, you can stop these from coming into the U.S. The bigger concern is who will bankroll the policing and enforcement needed to stop this activity. One of the reasons inventors license (rather than manufacture themselves) is so that the licensee (the company to whom you're licensing) will watch your back. You may be able to enhance that protection by authorizing (via the licensing agreement) for the licensee to go after infringers and to split the resulting court awards after deducting legal expenses. (You can find additional information about licensing patents in this book.) Without going too far into the blah-blah-blah world of patents and lawyers, the Dear Rich staff feels you should discuss this matter with an IP attorney before agreeing on important licensing agreement terms such as territory, indemnity, and grant of rights.  (You can find qualified IP attorneys in your area in Nolo's Lawyer Directory.)

Dear Rich: I wonder if you can help. My great-grandfather patented several steel inventions back in the early 20th century in the U.S. How do I find these and what happened to them after he died in 1941? Do the next of kin have any rights to them? I'm so glad you asked. The short answers to your questions are: (1) you can find out more about the patents at the Google Patents site, (2) anything patented in the early 20th century is in the public domain now, and (3) there are no rights in public domain inventions. The Dear Rich staff recommends Google Patents instead of the U.S. Patent and Trademark Office searching site because Google is easier to use and more comprehensive. Try the Advanced Search feature to search by inventor name. Prior to 1995, U.S. patents had a duration of 17 years, after which the invention is free for anyone to use or manufacture. We wonder if your great-grandfather was one of those early 20th Century steel pioneers who gave us stainless steel, modern dry-blasting, or a revolutionary method of making rails. (Digression Dept.: Speaking of steel, the Dear Rich staff learned today that it takes 7 kg (15 lbs.) of steel to manufacture a bicycle and 816 kg (1800 lbs) to manufacture a car. No wonder H. G. Wells said, "When I see an adult on a bicycle, I do not despair for the future of the human race.")

Dear Rich: Last night I emailed a small company about an idea I had about a product I thought they should make. This morning I received an email from them thanking me for the suggestion. Then I realized that I should have patented the idea and tried to license it to them. Have I forfeited the right to patent it by disclosing it to them? If I file a provisional patent before they file either a provisional or nonprovisional patent on the product, do I maintain the rights to the product? I'm so glad you asked. The short answers to your questions are: (1) "No, you haven't forfeited the right to seek a patent, (although you have started the clock ticking)," and (2) "As long as you can prove you invented it and you meet other patent requirements, you retain the rights to your invention regardless of whether the company files a patent application." 

Dear Rich: A former co-worker developed a new business idea. I signed an NDA and we both worked on commercializing the idea and planned to form a startup. He lost interest. An attorney reviewed the now-expired NDA and said I was fine to pursue the idea on my own, that I was under no obligation by the NDA. Can I file a provisional patent on the business idea? I would like to protect the idea by fixing a date in case I decide to file a formal patent application within the year. Any thoughts? Our first thought is that since you mentioned that you've already hired an attorney, why not ask your attorney whether to file? The Dear Rich staff provides helpful information, but your attorney knows more details about your case and could provide specific, client-centric advice (and probably has malpractice insurance to boot). Our second thought is that there is no such thing as a "provisional patent" (a common misconception). There is only a provisional patent application (or PPA) -- a document that establishes an official U.S. patent application filing date. (Nolo offers a free guide to PPAs that you can download here.) 

As for filing your PPA with the USPTO, the PPA must be filed in the name of the inventor (or a co-inventor). A co-inventor is someone who contributes at least one novel and non-obvious concept that makes the invention patentable. If you didn't add anything patentable to the concept -- no Eureka! moments -- the PPA must be filed in the name of your co-worker. As for preserving the date of invention, you don't need a PPA to do so. Many inventors preserve their dates via an inventor's notebook. The important thing to keep in mind is that if you publicize or commercialize the idea, a patent application would have to be filed within one year in order to preserve patent rights. One way to avoid potential hassles is to work out a joint-ownership agreement with your former co-worker that will provide you with the right to exploit the idea while compensating him.

Dear Rich: I have a question. I create golf artwork using mainly golf tees and spikes. I have worked with some major golf equipment companies using their accessories. (They commissioned me for sculptures and other products.) Since I've been burned by several companies, should I get patents on my sculptures? I'm so glad you asked. The short answer to your question is that you can protect your sculptures with copyright, and possibly with a design patent (although we're not sure if the cost, hassles, and time involved in seeking a design patent merits the filing).