Control Protect & Leverage

Originally Posted 8/14/07

Way back on April 19th of this year, I wrote about the potential for patent reform occuring this year, and stating my case for why I was against it (http://www.lld-law.com/2007/04/will-patent-reform-occur-this-year.html#links). Recently, the Wall Street Journal ran a commentary article on the Patent Reform Act of 2007. Although I missed this article, I was lucky enough to see the responses the article generated in the letters to the editor section that was published in today’s (8/14/07) Journal.

I’m not sure if it was my blog article which paved the way for these reponses or not (I’d like to think it was), but thier sentiments echoed much of what I wrote about in my original article 4 months ago. For instance, David P. Vandagriff, the VP of IP for Helius, Inc. (www.helius.com), an IP broadcasting company, noted how interesting it was that the medical industry, universities, and most venture capitalists are all opposed to the act, which was somthing I mentioned four months ago. Mr. Vadagriff goes on to echo what I stated in April - saying “this reform bill is the brainchild of a small group of very large computer technology companies including Microsoft, Intel, and Oracle. It is not coincidental that each of these companies has been a defendant in an antitrust suit. They rely upon market power to maintain their dominant positions and are serial patent infingers.”

I don’t mention this article simply to show my view is commonly held. I’m writing this blog article becuase this Act is not going away unless you, the individual inventor, the small company with great IP, or just a member of the the general public who doens’t want big business to win dirty yet again, contact your representative or senator and tell him or her why you DON’T want this bill to be passed. If we don’t get this bill killed, the US patent system will essentially be “run” by the biggest technology companies on the planet.

Tags: PATENTS // Add Comment »

Originally Posted 8/9/07

Another day, another post. I’m obvously trying to quickly break us out of the blogging slump we were in…

So, in today’s Wall Street Journal, an article states that Johnson & Johnson (J&J) is suing the Red Cross for trademark infringement (WSJ Article Link). Apparently, J&J owns the trademark of a greek red cross in conncection with health care services. J&J had licensed the cross mark to the Red Cross & the Red Cross apparently licensed the mark to other companies, making a profit on their own licenses.

Although I’m tempted to jump on the side of J&J, I won’t. J&J’s argument is that trademark holders have a right to enforce their marks, and the Red Cross knew the cross mark was not their mark, yet they licnesed the mark out to others. However, the Red Cross may counter with an argument that a trademark holder who fails to enforce their mark may allow dilution of the mark or the mark may become “generic”, and and the traademark holder may lose the right to enforce the mark. I think something like that is what’s happened to J&J here. I don’t know about you, but I’ve always associated the red cross mark with the Red Cross or healthcare services in general and not J&J. It will be interesting to see what the courts decide, but my guess is J&J loses.

The point? Enforce your marks early and often. That is all.

Tags: TRADEMARKS // Add Comment »

Originally Posted 8/8/07

The post is wholly one attorney’s opinion and in no way states the opinion of the firm, or attempts to establish any facts.

Today I learned that an Invention Promotion Company, InventSAI, may not be fulfilling their required duty, by law, of disclosing the profitability of companies using their services. In fact, there appears to be a question as to whether The InventSAI Network, LLC is violating not only the the letter but also the spirit of the Amercian Inventors Protection Act of 1999 (the “Act”).

Under the Act, whose full text can be seen at http://www.uspto.gov/web/offices/com/speeches/s1948gb1.pdf, an invention promoter or an invention promotion firm must disclose specific information regarding their past business practices. These mandatory disclosures are required by law. Specifically, invention promotion companies are required to provide “the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter.”

InventSAI states “An exact number of inventors commercializing their inventions can only be estimated because InventSAI clients are not obligated to disclose financial data. Nevertheless, based upon client feedback, of the 815 total InventSAI clients contracting for commercialization services, at least 152 have reported commercial success with hundreds of cases still active.” Thier online post can be seen here: http://www.inventsai.com/AIPA.html

The law requires InventSAI to disclose “the total number of customers known… to have received a net financial profit.”. It appears InventSAI is playing the ostrich game - what I don’t “know”, I don’t have to disclose. However, I read the law differently. The law requires InventSAI to disclose “known” profitably customers. InventSAI by its own admission does not know of any net profitable customer since its customers “financial data” is not disclosed. Therefore, under my estimation, InventSAI is required, by law, to state it knows of zero profitable companies that have used its services.

Moreoever, stating that “at least 152 [customers] have reported commecial success” is misleading and potentially dishonest. If InventSAI does not know their customer’s financial data, how can they know if they’re commercially successful? I’d like to know what InventSAI’s definition of commercial success is. Moreover, by simply providing “commercial succes” data as opposed to “net financial profit” data, InventSAI seems to simply be providing data they want to provide, instead of the data they are REQUIRED to provide, by law.

WHAT ARE THEY HIDING? I welcome a phone call from InventSAI to explain thier position and why they feel they can get around this law in this manner.

Tags: INVENTION PROMOTERS, PATENTS // Add Comment »

Originally Posted 8/6/07

OK, for thos of you who don’t know me by now should realize that I’m sarcastic. Hence, the title of this blog article.

Addtionally, it would be remiss of me if I failed to say sorry. I’m sorry that we’ve been absent from posting any recent blogs - I suppose the summer blog malaise started to seep as the temperature outisde started to push 100 degrees on a daily basis. So, although this new blog article is waaaaayyyyy overdue, in the hopes of kicking off a new blogging season with the type of article we wish we did not have to post, but feel it is our job to so do…

Once again, an invention promotion company has reared its ugly head to show us just how inept they actually are. As our blog articles on InventHelp and Advent Product Development disclosed their inability to create profit for their clients, Davison’s own website (http://www.davison54.com/disclosures/disclosure.php) states the same thing. Here’s what Davison tells us about themselves:

(1) 41,128 consumers signed licensing agreements and purchased research services from Davison in the last 5 years.
(2) 11,598 consumers purchsed product design services from Davison.
(3) Of these, “THE TOTAL OF CONSUMERS IN THE LAST 5 YEARS WHO MADE MORE MONEY IN ROYALTIES THAN THEY PAID, IN TOTAL, UNDER ANY AND ALL AGREEMENTS TO DAVISON, IS EIGHT(8).”

So, you have about a .0002% chance at making money with Davison if you purchase their research services. That means, that about 2 out of every 10,000 people who purchase these services with Davison make more money on their product than they spend with Davison. And if you spend the big bucks with Davison and purchase product design services your chances at makign money with them go up to a whopping .0007%. Or, about 7 out of every 10,000 people who contract Davison to help design their product make more money off of their product than they spent with Davison. So, if you’re thinking of using Davison, my suggestion would be for you to play the lottery instead. They appear to have better odds: http://www.coloradolottery.com/games/scratch/featured.cfm?FeaturedGameID=101 (please note sarcasm statement at beginning of post).

Oh, and one more thing. Davison also states “THE PERCENTAGE OF DAVISON’S INCOME THAT CAME FROM ROYALTIES PAID ON LICENSES OF CONSUMERS’ PRODUCTS IS .001%.” This means that for every $1 Davison makes from licensing a product submitted to it, Davison is making $1000 off of the people submitting the products.

Numbers don’t lie - and these are Davison’s own numbers! As we suggst to our clients, do not use these companies - you are more likely to succeed if you are willing to put in the effort yourself and use reputable marketing and manufacturing organizations, while protecting yourself legally along the way. Contact Leyendecker and Lemire (www.coloradoiplaw.com) and we can steer you in the right direction.

Numbers are current as of June 30, 2007.

Tags: INVENTION PROMOTERS, PATENTS // Add Comment »

Originally Posted 5/14/07

Between Oct 1, 1998 and Dec 6, 2004, they had a perfectly imperfect record! That is, of 2452 people that signed Phase II representation Agreements, NO ONE, ABSOLUTELY NO ONE made more money than they gave to Advent Product Development! The beauty is this is the number the company itself presented in a recent lawsuit as reported by our friend, Stephen Nipper, over at THE INVENT BLOG.

And those of us in Colorado are especially lucky because we have our very own Advent Product Development office here in the state. Let’s all give Advent Product Development a call and let them know how we feel about their good work.

So if you have an invention and a lot of money burning a hole in your pants, it seems you can’t go wrong with the boys at Advent.

(I have been told sarcasm does not transfer well in writing. So in case you were confused, I am not advocating anyone use Advent Product Development and in fact my opinion is you should avoid them and other similar invention promotion companies like the plague.)

Tags: INVENTION PROMOTERS // Add Comment »

Originally Posted 5/14/07

Good Question.

A recent article in the ABA Journal by Steve Seidenberg discusses the most recent group of business method patents to hit the PTO - tax patents. These patents cover useful, unique and nonobvious implementations of the tax law. Mr. Seidenberg’s article takes on an anti-tax patent strategy theme in discussing whether tax patents in particular and legal strategy patents in general should be valid, mentioning that Congress may be changing the law to limit tax patents.

This got me thinking about business method patents ine general and whether they were worth the cost, given recent decisions by the Supreme Court. At Leyendecker & Lemire, we charge at least 25% more for business method patents, and one reason for doing so is to ensure that we take into account recent changes in the law so that your patent is as broad as legally possible, and sill retaining the likelihood your patent will issue.

The question to ask yourself is whether it’s worth it for you (an individual or small company) to protect your unique way of doing business - be that providing tax services or otherwise? Well, maybe. Like other patentable areas, and likely more imprtant in the business method arena, you need to ask yourself how great your idea is as compared to what’s currently being done by your competitors? Does your idea give you a competitive advantage over other persons providing similar services and products such that you will can forsee obtaining a return on your patent investment which is higher than the cost of the patent? As discussed on our new website www.coloradoiplaw.com, the answer to these questions ultimately come to whether you have the perseverence to see your idea to patent issuance and to subsequently enforce any patent that may issue. Although this process may cost more with a business method patent, the reward can be just as great or greater - allowing you to provide your unique service that no one else can provide.

If you can answer these questions positively, then you have what it takes to see your business method idea through to the end and should contact our office.

Tags: PATENTS // Add Comment »

Originally Posted 5/9/07

For Answers to More Questions Click Here

Ok, I have been so consumed with writing content to expand the useful content displayed on our main Website , that I have kind of neglected the blog. Never fear, we are back with the next installment of answering your frequently asked questions. This next one was actually inspired by a comment that was left on one of the earlier trademark articles.

Q: I have heard of something called the supplemental register. What is it?

A: In the federal system there are actually 2 registers that a mark or potential mark can appear on. The first is the Principal Register, which contains marks that as of the date of registration actually function as marks. Usually this means that the term identifying the goods or services must be inherently distinctive or has acquired secondary meaning. The second is the Supplemental Register, which is for marks that have the potential to be on the Principal Register, but have not quite made it yet.

Marks that are inherently distinctive are generally placed into 2 categories 1) fanciful or 2) arbitrary. Fanciful marks are marks that have no inherent meaning. Examples of fanciful names, Google (the word Google is based on an actual number, but the word itself is meaningless), Kodak, Xerox, Dell etc. Arbitrary marks are words that exist and have meaning, but are applied to goods in an arbitrary manner (i.e. they have no relation to the goods). A good example of this is Apple for computers. In general inherently distinctive marks are given the widest breadth of protection and are the easiest to register.

A step down from inherently distinctive marks are those that contain various levels of descriptive terms. If those terms are incidental to the mark in general, the registrant can usually get by with a disclaimer stating that they do not claim exclusive use of the terms except as they are used in the mark. If the mark itself is descriptive of the goods or services, the mark will most likely be labeled merely descriptive by the patent and trademark office. Merely descriptive marks may be registered on the principal register upon a showing of secondary meaning or acquired distinctiveness. Basically the theory of secondary meaning and acquired distinctiveness is that sure, the mark describes the goods or services, but through my extensive marketing and the name recognition of my products, when you say the term “XYZ” , they do not think of the type of goods or services being described, they think of my goods and services. It is up to the applicant to prove secondary meaning or acquired distinctiveness, by showing marketing expenditures, name recognition and consumer opinion surveys, and the length of time the mark has been used in commerce. If a mark has not yet achieved secondary meaning or has acquired distinctiveness, it may not be registered on the principal register, but it may be able to be registered on the supplemental register.

Essentially, the supplemental register is a limbo for potential marks that have the ability to become marks (meaning they are not generic terms for the goods or services), but have not yet achieved the requisite secondary meaning required for the principal register. There are some advantages of going on the supplemental register while you try to build secondary meaning including:

1. Appearance in the federal database
2. Ability to use the ® symbol in connection of the mark
3. Federal jurisdiction of suits involving infringement of the trademark
4. Federal jurisdiction over state law claims of unfair competition when they are substantially
related to a claim of trademark infringement
5. Eligibility for monetary damages as provided for in the Lanham Act, including infringers
profits, damages and costs, and in appropriate cases trebled damages and attorney’s fees

However, a mark on the supplemental register is not eligible for the following benefits available to principal register marks:

1. Cannot file on an “intent to use” basis (ie must be currently using the mark)
2. A certificate of registration on the supplemental register is not prima facie evidence of the
validity of the registration
3. A mark on the supplemental registry does not have a nationwide priority against third
party users (basically your rights extend only to the geographic area you are actually using
the mark)
4. Cannot achieve incontestable status
5. Certificate of registration of a mark on the supplemental register is not prima facie evidence
of the registrant’s ownership of the mark.
6. The Certificate of ownership for a mark registered on the Supplemental Register is not
prima facie evidence of the registrant’s exclusive right to use the mark in commerce on the
goods or services contained in the registration
7. Supplemental Register registrations cannot be registered with U.S. Customs for the
purpose of preventing the importation of infringing or counterfeit merchandise bearing the
mark.

Depending on the circumstances Supplemental Register may be a good idea and give you and your business some advantages. However, it is important to be familiar with the potential short comings of the registration. In the end, really it’s better than nothing and usually is a good place for marks to reside, while they are building their required secondary meaning. Of course a wise strategy is to choose marks that are arbitrary or fanciful and they you don’t have to deal with the situation in the first place.

For more information on trademarks please click here to visit our website.

Tags: TRADEMARKS // Add Comment »

Originally Posted 5/8/07

Finally…. We have been working on a new site for two years, but we never got around to finalizing it. SO a few months ago we hired a graphic designer to generate our logos and we hired a web designer to design our site and he did a great job! See lighthousewd.com for more information about our designer.

The site is at WWW.COLORADOIPLAW.com.

It has over DOUBLE the useful content in an easy to navigate setting.

I might add that we believe this is the best Intellectual Property website on the web aimed at entrepreneurs and individual inventors, but, of course, we are a little bit biased.

Please review it and tell us what you think. Be forewarned, however, to fully peruse, let alone read, the massive amount of useful content, you will need several hours.

Next, we will tackle organizing the BLOG. Hopefully, this won’t take us two years!

Tags: FIRM NEWS // Add Comment »

Originally Posted 5/7/07

The past week has been rather sobering at the office: I found out that one of my clients dies of a heart attack at the age of 44. It drives home the point that one can’t take anything for granted: even waking up in the morning. I only met with the client a couple of times nearly two years ago but he impressed me with his gregarious and friendly nature. He was certainly one of my more memorable clients.

The thing those of us can take from events like the foregoing is that there really is no time like the present to pursue you dreams and ambitions whether that is starting a business, commercializing your invention, or traveling around the world. As long as your are breathing, it is never too early or too late to begin. And realize that tomorrow, which may never come, may be too late. In other words, for those things and actions that are really important to you, such as your life goals, you may not be able to wait for another day.

As they say in a long dead language: Carpe Diem!

Tags: GENERAL INTEREST // Add Comment »

Originally Posted 4/19/07

Yesterday, Wednesday, April 18th, 2007, the Senate and House both introduced “new” bills to overhaul the patent system. However, these bill aren’t “new”. This legislation looks like the same bills that have been introduced in years past. In one corner you have “Big Business” supporting the legislation and in the other corner you have “Individual Inventor” against the legislation. These sides are evidenced by a recent quote from Emery Simon, counsel to the Business Soware Alliance, an organization that apparently recieves funding from Microsoft, Apple, and HP. Mr. Simon is quoted as saying “The object of the patent law is to promote innovation and we think the balance has been tipped away from that and has created too much incentive for… litigation.”

Well, this seems like an appropriate statement from an attorney who is representing the interests of Microsoft, who just happened to have lost a $1.52 billion patent infringement case in February 2007. If I were Microsoft, I’d sure as doo-doo try and change the patent law too. I’d want to make sure that the next time I was caught stealing patented ideas I wouldn’t have to pay as much. The unfortunate reality is that if this legislation goes through, which is likely this time around because the Dems are in control (& the Repubs are against the legislation because they are well-funded by the drug companies, who are against this type of bill since it would allow easier creation of generic drugs), we all lose in the long run.

With this bill, innovation would only controled by the big guys as VC’s would be less likely to invest in companies based on patent protected products and services as the patents they hold will be less valuable. This is just one of the MANY problems with this legislation. Do your civic duty and contact your Senators and House Representative & tell them why they need to vote AGAINST this bill. Like many governmental systems, the patent system is not perfect. But it’s better for everyone if we don’t let Microsoft & the other “big boys” write the laws for us.

You can find Leyendecker & Lemire on the web at www.lld-law.com.

Tags: PATENTS // Add Comment »