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

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)

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.

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.

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). 

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. 

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.

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 articles, books, and an online PPA filing program.