Control Protect & Leverage

On the Tom Martino show the week before last, there was a call from a person inquiring about patent searches.  Tom expounded on the caller’s inquirey and asked me how a person that has a new idea should search to see if their idea is already in the public domain or is currently patented.  Given the constraints of live radio, I never fully answered the question so I decided to provide a more detailed response here.

Step One:  Perform your own informal invention and patent search.  How? first, go to Google or anyother suitable search engine and perform keyword searches that pertain to your invention and see what comes up.  If the product or service is already commercially available or publically known, chances are very good that you cannot patent your invention.  Make a note of those products and services that are close to your invention.  You may want to print out the materials for review by a patent attorney in a subsequent step.  Next, search the USPTO web site or Google Patents to see if anyone has patented an invention similar to yours. Again make note of those inventions most similar to yours.

 If you find references that indicate your invention is publically known and/or available, the process is probably over for you. No need to proceed any further with this invention.  However, if you are still unsure whether small distinctions between your invention and those you found during your search are potentially patentable, please do not hesitate to contact a patent attorney for a quick review.  I cannot speak for other firms, but the attorneys at Leyendecker & Lemire will quickly review the closest materials you found during your search during our free consultation and give you an assessment as to whether proceeding any further makes sense.

Step Two:  See a patent attorney to discuss your results.  As mentioned above, Leyendecker & Lemire can usually perform a quick review of the materials you have found within the free 1/2 hour initial consultation.  I assume other patent firms might provide the same service as well.  We can typically tell you whether the closest materials that you identified are relevent to the patentability of your invention.  It is not uncommon for us to conclude that material that an inventor did not think was problematic is in fact problematic.  In other circumstances, we have concluded that similar inventor identified prior art is not a problem. 

At the very least, you will leave the meeting with a better idea about the patentability of your invention and the potential scope of patent protection available with respect to the materials you identified during your search.  For many, this will be the end of the road for a particular invention.  For others, the prospect of protecting their inventions with patents will remain very much alive.

Step Three: If your search did not reveal anything that would effectively thwart your ability to obtain patent protection, you will have a choice to make: (1) have a patent application prepared and filed; (2) have a professional search performed; or (3) of course, do nothing (at least with respect to protecting your invention).  In most situations, we will recommend the second choice over (or before) the first.  Our experience has shown that in almost all cases our patent searcher will identify relevent prior art that you missed in your informal search and often this material will significantly narrow the scope of patent protection potentially available to you. 

A patentability search and opinion is not free and you might be tempted to skip it and proceed directly to the next phase of having an application prepared and filed; however, you would do so at great pearil.  A point of reference roughly two thirds of the people we do searches for ultimately decided not to proceed with the patent application.  The primary reason for this is that our search and opinion reveals that their invention is either not patentable or the potential scope of protection that they could receive from any patent would be so small as to not make the expense of obtaining a patent worthwhile. Essentially, we view the money spent on a patentability search and opinion as being a kin to insurance.  If your search comes out similarly to the majority of people we do searches for, you will probably not opt to spend thousands of dollars on a patent application with no or limited upside potential.  In other words, the search may save you $5000-$10000.

Chances are you’ve done some Internet searching and have seen ads from other law firms or invention promotion companies they claim to provide patent searches for couple or few hundred dollars.  Some provide reasonable prior art searches and others do not.  But what most if not all of these inexpensive services fail to provide is a detailed report including a reasoned opinion from a patent attorney that indicates your chances of obtaining patent protection for embodiments of the invention of varying scope.  Some purport to provide opinion of patentability but the ones I’ve seen tend to be something on the order of a sentence that states “your invention may be patentable”.  Well, I can tell you that right now: your invention may be patentable.  What you really need to know is not whether some aspect of your invention may be patentable, but whether, the scope of protection potentially available to you is sufficient in breadth to warrant the expense of obtaining a patent.  We endeavor to provide that information in our search report, and we make ourselves available to the inventor after they received the report to explain the information contained therein and expound upon the report.

 Step Four: Decide whether proceeding with having a patent application drafted and filed is worthwhile.  To this decision, there are no right or wrong answers.  For some, the cost to obtain a patent is just too great.  For others, the potential value of patent protection is sufficient to proceed even when the search report is less than glowing.  Frankly, we cannot answer the question of whether to proceed for you, but we are available to answer your questions concerning risk and potential scope of protection of a patent on your invention.  With these tools you should be able to make an informed decision that fits with your personal circumstances.

For more information on patent searching as well as links to various patent searching sources, please reference the patent searching page on a website at http://coloradoiplaw.com/patent-law/about-patent-searching.html.  And to free to call us to schedule a complementary half-hour consultation, either in person or over the phone for your convenience.

Tags: PATENTS // Add Comment »

We do a significant amount of Trademark work at the Firm. And over the years, one thing we have noticed is that a significant percentage of clients want to name their businesses and products with names that are either (i) very descriptive of what they do or (ii) comprised wholly of common words or phrases.

 As an initial though, it is often very hard to register these marks with the Trademark Office, but that is for another post (and no doubt we have covered this topic before in the blog and on our website).  However, there may be a even more compelling reason to stay away from descriptive or common names: they make you company or service very hard to find in common search engines like Google.

 Case in point:  there used to be a company in our building that I seemed to remember offered a service that we have an interest in obtaining now.  I vaguely remembered their name: 24 by 7 or 24×7 or 24/7.  I entered these various variations into Google along with the term “Colorado” to find them.  I had no luck!  It seems there are hundreds if not thousands of businesses in Colorado that use variations of this phrase on their respective websites to indicate that they are always available or open.  The 24 by 7 name was just not serving this company well.  After a few minutes I gave up and starting researching other companys that offered similar services.

 The lesson: consider search engines when picking a name for your product or service.  If the terms defining your product or service are too descriptive or commonplace, someone who knows of you because of other advertising or marketing may not be able to easily find you.  In other words, pick a name or mark that when entered into Google, Live or Yahoo will bring your web site or other internet entries for your company to the top of the list.

Tags: BUSINESS LAW, TRADEMARKS // Add Comment »

OK, that is a bit of an overstatement.  We are, however, going to be making an in studio appearance on the Tom Martino Troubleshooter show on March 5, 2009 between 9am and 12pm.  Tom will be taking calls from inventors, entreprenuers and anyone else that has intellectual property questions.   So mark your calenders and call in with your best patent, trademark and copyright questions OR just listen in and learn more about protecting your inventions and other intellectual property.  For those not familiar with the Troubleshooter Show, it appears weekdays on KHOW between 9am and 12pm at 630 on your AM dial.

Tags: FIRM NEWS, GENERAL INTEREST // Add Comment »

When most people come to us with the desire to obtain a patent, they are interested in obtaining a utility patent.  Utility patents allow an inventor to protect the functional advantages of a particular machine, article of manufacture, composition or process.  In this sense utility patents are very powerful tools that prevent the competition from legally offering a product and/or service that reads upon one or more of the claims made in the patent.

BUT there are two other types of patent applications as well: the plant patent and the design patent. Plant patents protect novel and non-obvious asexually produced plants and as such have little relevance for most inventors.  In fact, most patent attorneys have never drafted a plant patent application and will likely never do so in their careers, present company included.

Design patents protect the ornamental aspects of an otherwise functional article so long as the aesthetics of the article are not dictated wholly by function.  An example is in order.  Consider the all electric Tesla Roadster: a utility patents would be used to protect novel aspects of the vehicle’s drive system (i.e what’s under the hood); whereas, a design patent would protect the distinctive look of the vehicle.  A competitor could make a roadster having a similar look to the Tesla that has a conventional gasoline drive train without fear of infringing any utility patents that have issued concerning the Tesla’s electric drive train.  In contrast a competitor could make an automobile having a similar drive train as the Tesla without fear of infringing the company’s design patents.  In the example, Tesla may want to pursue both design and utility patents to protect its roadsters distinctive look and technical features. 

Historically, design patents have a bad reputation not wholly without merit.  For one, they have been and continue to be used by unscrupulous invention promotion companies as a cheap and inexpensive way to get clients patent protection.  The problem has been that these clients often believe that they have utility-type protection (protection for the functionality of their invention) when in reality only “the look” of the invention is protected.  AND in many cases, inventors do not even have a strong idea about what the invention will look like once in production when the design patent application is filed.  As a general rule: design patent applications should only be filed once the look of an invention is finalized or close to being finalized.

Another historic problem with design patents is that they have been notoriously difficult to enforce.  I can’t recall the exact statistic but I do recall that a successful infringement litigation pertaining to a design patent is the exception rather than the rule.  I won’t go in to the reasons why that is here.  Suffice it to say, one had to think long and hard before committing potentially hundreds of thousands of dollars to initiating an infringement action that they were likely to lose at least based on statistics.  These terrible statistics also made it less likely that an accused infringer would settle early almost ensuring high costs.     

BUT this article is about why design patents might be worth the expense not why they are not.  This past year the law concerning the enforcement of design patents changed drastically based on an en banc decision of the Federal Circuit Court of Appeals.  The specifics are beyond the scope of this post, but the probability of successfully enforcing a design patent in my opinion has increased dramatically with this decision.  Simply put, design patents now have increased strength and consequentially value, and as such, may be worth pursuing more so than in the recent past.

Please understand that despite the change in the law, design patents are still subject to the specter of misuse as discussed in a previous paragraph, but when properly utilized they should be seriously considered by the prospective patentee.  Often they are best used in combination with a utility patent application to protect both looks and functionality of an article.  As an initial consideration, we do not recommend pursuing design protection for an invention until the inventor is confident his/her design is finalized; that is, close to the look of the invention as it will go to market OR the look for which protection is sought is one that competitors would likely pursue. 

There are some very appealing advantages to design patents. They are relatively inexpensive. A typical design patent application can be prepared and filed for about $2,000-$2,500 including attorney fees; whereas a typical utility patent application can cost $6,000-$10,000.  Further, the ultimate cost to obtain a design patent is in most cases under $4,000; whereas the ultimate cost to obtain a utility patent is typically $10,000-20,000.

Design patents tend to issue much more quickly than utility patents.  In our experience, design patents issue within 10-16 months after filing; whereas, utility patents take anywhere from 24-48 months.  Further, most design patent are granted allowance during examination (>90% according statistics I recently reviewed) versus about 60% or so for utility patent applications. Accordingly, if you want to list your product as “Patented” sooner rather than later, a design patent might just do the trick.

Given the foregoing especially considering recent court decision, I am less pessimistic about design patents than before.  In fact, I will go so far as to say that when the look of an invention is an important aspect or consideration of the invention, whether or not to apply for a design patent SHOULD be discussed with your patent attorney. 

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And I am throwing down the gauntlet and challenging each and every attorney at L&L to write TWO posts a month minimum. This will result in at least eight insightful and meaningful posts a month. OK, maybe not eight “insightful and meaningful posts” BUT I can at least promise mine will be worth reading!

Tags: BLOGGING, GENERAL INTEREST // Add Comment »

In the last year or so millions of people have been laid off from their jobs. Additional millions are worried or concerned that they may be next.  It has crossed the minds of many if not most of these people that perhaps they should start their own business to gain control of their destinies and obtain a measure of financial freedom.  Most of these people shrug the idea off rationalizing that it would not be wise to start something in a bad economy.

The truth of the matter is that the foregoing rationalization is just plain wrong: provided you have the financial wherewithal, one of the best times to start a business is when things look the bleakest.  The reasons are numerous:

1. New businesses tend to take a significant amount of time and planning to get off the ground, but economic recessions according to historic data tend to last two years or less. To put it simply: if you start your business now, by the time you open for business, the recession could very well be over or nearly over giving you the ability to capitalize on the rush to consume as people emerge from their financial cocoons.

2. Very few other people are starting businesses.  In contrast in good times, many people start businesses. Would you rather compete against dozens or hundreds of new entrants in a particular market segment or just a few?  If the need your new business looks to solve is a real one, the need is probably still there even in the height of a recession.  So even if demand is reduced 20-30% of what it would be in non-recessionary times, your business might actually do very well if there are no other or very few other businesses competing with you for the remaining 70-80%.

3. In recessions: office space is cheaper; people will work for lower levels of compensation; and suppliers desperate for sales will often make deals.  To sum it up, you can offer your service or product for less, making you more competitive. Consider that your competition is saddled with higher rents on leases signed before the recession began; more highly compensated employees; and higher priced supplier and service contracts.  A new company will almost always be at disadvantage concerning brand recognition compared to established companies but the foregoing cost advantages may help mitigate this difference and even give the new guy a leg up.

4. Opening a business in a recession teaches you control and restraint.  People who start businesses in good times are often less frugal with their money largely because they didn’t need to be frugal.  Now that challenging times are upon them, they are often unable to react and as such fail.  In contrast, money is hard to come by in a recession, and as such, new businesses must exercise greater because additional funding is often not available. 

Of course, the big problem or issue facing those starting a business in bad times is obtaining startup funding.  Simply put, don’t expect to borrow money from your neighborhood bank unless you can back it up with the equity in your home.  And angel investors and venture capital firms are going to be pickier then ever.  Truth be told, you will probably have to fund your venture yourself or through the support of friends and family.  Nevertheless, if you have an urge to start a business that solves a marketplace need, the time to act is NOW. 

Tags: BUSINESS LAW, GENERAL INTEREST, OTHER // Add Comment »

Originally Posted 1/15/08 

For those like me who before today were unaware of this principle derived from the teachings of a 14th-century Fraciscan friar, Occam’s Razor goes something like this:

All things being equal, the simplest solution is the best

As recently outlined in the Patently-O blog, this solution was recently applied by U.S. District Court Judge William C. Griesbach in ASP v. IQ Hong Kong. In that case, the defendants alleged that the inventor backdated a drawing to overcome prior art. To prove their case, the former FBI chief of questioned documents testified on their behalf that it was a “near certainty” that the sketch had been falsely backdated. The plaintiff’s countered with a series of reasons about how the defendant’s evidence could have occured without backdating The then applied Occam’s Razor to rule for the defendant.

If the plaintiff’s lose on appeal, they could be civilly liable for defendant’s attorney’s fees, court costs, and may potentially be criminally liable if they are found guilty of fraud.

Moral? Don’t cheat. This isn’t the first, nor will it be the last time that someone is likely caught doing what they shouldn’t in an attempt to enforce their patent rights. You won’t be in this position if you keep thorough records during development and listen to your patent attorney.

Tags: PATENTS // Add Comment »

Originally Posted 11/7/07 

In the past, we have seen owners of federally registered trademarks receiving notices purporting to be from the United States Patent and Trademark Office (USPTO) or another entity with an officially sounding name. These notices typically offer a service which the notice states is urgent and/or required for the mark to continue to be registered with the USPTO.

Trademark owners should be aware that these notices are bogus. The USPTO will almost always direct correspondence to your IP counsel and will not contact the trademark owner directly. If you do receive one of these bogus notices, you should notify your attorney and send it to him or her for review.

If you have questions on this or any other trademark or patent issue, contact the atttorneys at Leyendecker & Lemire, LLC - www.coloradoiplaw.com.

Tags: TRADEMARKS // Add Comment »

Originally Posted  10/11/07

The U.S. Court of Appeals for the Federal Circuit (CAFC) recently ruled an inventor’s patents were uneforceable: Nilssen v. Osram Sylvania. Why? Because the inventor wrote, applied, and dealt with the Patent Trademark Office (PTO) on an individual, pro se, basis. Now, not everyone who prosecutes their own patent applications with the PTO will ultimately obtain a ruling of inequitable conduct against them and have their patents invalidated, but why take the risk? If your idea is truly a great idea, you shoudl take the time to obtain the necessary funds in order to properly protect your investment - by using a registered patent attorney to write your applciation for you. And obviously, we recommend using Leyendecker & Lemire, LLC to do so: www.coloradoiplaw.com.

Tags: PATENTS // Add Comment »

Originally Posted 9/18/07

As recently stated in the online blog Lexology, American Airlines recently sued Google for trademark misappropriation. See American Airlines, Inc. v. Google, Inc., No. 4-070V-487-A (N.D. Texas, Aug. 16, 2007). In its complaint, Amercian alleges that Google’s policy of allowing other companies to display paid links to their sites when Google users enter American’s trademarks as search terms, such as searching for “AA.com” or “American Airlines”, is illegal.

Under the law, there must be a liklihood that a consumer will be confused between two marks for trademark infringment to occur. Some recent court descisions have held that no confusion is likely to occur as consumers are aware when they are choosing a company with a different name. Additinally, some decisions have recognized that the purchase of a trademarked key word may not constitute legal “use” of the trademark in commerce.

American counters these arguments in its recent complaint by allegeng that “Google and its advertisers… benefit financially from and trade off American Airlines’ goodwill and reputation without incurring the expense that American Airlines has incurred…”

Google’s response to these types of allegations in the past has included an analogy to retail stores. Retail stores, Google states, are allowed to place competing items next to each other in order to attract customers. Why shouldn’t this policy also apply online?

As a trademark attorney, I understand the value of a trademark and believe that companies should not be capable of trading off on the goodwill associated with marks without compensation to those companies. However, as a consumer, I enjoy having the freedom to enter a company’s name in a search engine and receive easy links to that company’s competitors. There are multiple layers to this argument, including freedom of speech issues and my personal belief that companies such as American should feel confident that their products are better than their competitors’ products, and therefore should welcome the competition. If their competitors are providing different services, then American shouldn’t have a problem with it or it should begin to provide those services.

However, I’m curious - what do you think? I’d love to hear if any of you have any comments on this as this is one issue that is not going away.

Tags: TRADEMARKS // Add Comment »