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

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 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: 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: 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.