BizMorph

Free Answers to Your Patent Questions

In my business I often work with new inventors who are very unfamiliar with the patent process and  often ask the same questions.  Also the patent world is becoming more complex every day even to those of us who work there on a daily basis.

  To help guide new inventors through what I am starting to think of as"  The Patent Jungle", 

 I have begun a free service on my website AlaCarte Patent Services.  Anyone who goes to the website, clicks the link and puts in their email address is connected with a FAQ of commonly asked questions.  In addition to the FAQ there is a window for readers to send me their own questions.  

Besides that, the website also offers FREE an inventors startup kit which describes the patent process and gives the reader useful resources to draw upon.  Please try it out and tell me what you think.

Why do you want a patent?

First of all , ask your self this question. There is no question that the patent process is long daunting to many and expensive. While there are many good reasons for applying for a patent and there are also many myths and untruths. There are also times when you should not apply for a patent but do something else such as disclose it or keep it secret.

 Reasons for Applying for a Patent

•  Protecting your invention from unfair competition

 You spent a lot of time and money developing your idea. If its a good idea and you eventually commercialize it yourself you will attract competitors. If those competitiors can simply copy what you did without putting in the same time or money they will have a substantial competitve advantage.

 They can make a "me too" knockoff of your invention ,cut the price and drive you out of business. against them. Of course there are people and places that ignore patents (China being one wll known site), but then a patent can prevent goods made in one of these patent free safe havens from being imported into your marketplace.       

• Satisfying your Investors.

If you are forming a business to sell your invention you may be getting capital from outside investors. Often those investors what your business to establish saleable assetsto increase its value. A patent is such an asset. If your business is succesful the patentwill appreciate substantially in value and can be sold with the business if it is spun off.

• Keeping someone else from patenting your idea and shutting you down                            

  
This reason is something inventors rarely think about , but it happens often enough.If you don't patent your idea, and go to market with it, someone else may patent the idea.If they can show they invented it before your invention was in the market they can get apatent and threaten to shut you down unless you pay them royalties. This is the strategy employed by so called "Patent Trolls" . The trolls get patent they have no intent ofcommercializing and wait for someone else to do so. Then they pounce and demandmoney. You don't have to patent your idea to defend against trolls, you can also"Disclose" it. 

Reasons for Not applying for a patent
  

•    Your idea isn't patentable

If you do a good patent search you may find out your idea has already been patented by someone else- In that case you cannot patent your idea and you may owe the other inventor a royalty if you try to market your invention and they find out about. Often you may find your invention was patented years ago and the patent has already expired or the invention was disclosed by its inventor or offered for sale without a patent. Such an idea is "in the public domain". You can make the item without running afoul of someone's patent , but so can everyone else. In this case its smart to look to improvements you are making over the prior art and file patent applications on them.

• You have no intention of marketing or selling your invention-

Sometimes people want to offer their inventions to the community. This is a common strategy in the software business where the "Open Standards" movement encourages it. Important software systems like Linux fall into this category. In that case, however, while you should not patent your invention you should disclose it publicly so that no one else may patent it and deprive the community of its use.

• Your invention can be protected by keeping it as a Trade Secret

Coca Cola has protected their formula for over 100 years and no one has ever been able to figure it our. If you have an invention that is not subject to reverse engineering you can follow Coke's example. However, such instances are rare. Also you must actively guard your trade secret or you will loose the rights to it. For example you need to execute agreements with your employees and vendors to keep the key information secret.

• Your idea is protectable by Copyright or Trademark, or Design Patent

Not all ideas are patentable. You can't patent a novel a movie and much software code. However all of these items are protectable by Copyright. Copyrights are easier and less expensive to get than patents and they last longer. So if you are the creator of the next "Mickey Mouse" do as Disney does and copyright it. Simiarly a catch phrase can be turned into a Trademark. A popular restaurant in our town was shut down by trademark attorneys for calling itself "Oscar's" and having the familiar Acadamy Award statue as its symbol. If you are a famous individual like Michael Jordan, you Trademark the "Air

Jordan" brand you don't patent it or copyright it.

 Alternatives to Patents

• Research Disclosures

Many people are familiar with Copyrights and Trademarks, but far fewer are familiar with  Research Disclosures. If you have invented something and don't want to patent it, but still want to use it (without paying someone else for the privilege). You may file a research disclosure. The law says you simply have to disclose your invention publicly such as in a journal article or conference paper. There are however, companies who make a business of publicly disclosing inventions. One such company is ip.com. If you disclose through them or similar companies your idea is firmly established as in the Public domain

• Trademark, Copyright or Design Patent

If you have written a book, made a movie or created a cartoon character like Mickey Mouse, the appropriate protection for your invention is a copyright or trademark. Also if your invention is an object whose appearance you want to protect, like a piece of jewelry, you will best be protected by a Design patent. A design patent just protects the appearance of something, it doesn't protect anything else. So if you , for example , invent a table with an unusual leg design, you can patent that design but someone else can use the same structural approach with legs that look slightly different and go around your design patent.

You may not be able to patent "Widgets" but you can patent the best

This is a true story.  As they say, the names have been changed to protect the innocent.  One day a client was referred to me who had filed a patent that had not been searched.  The patent application was about to be examined by the patent office.  I was contacted by a firm who wanted the patent evaluated .

When I reviewed the prior art patents in the same class as the invention (a step which would have been performed in a proper patent search),  I quickly found a classic error.  The application had been written as if the inventor had invented  the very first "widget". This often happens  when an inventor who has never seen anything like his invention files a patent application without looking into what has been invented before (the prior art). 

[See my earlier post about 10 common mistakes inventors make].  

The  inventor was already selling his widget and it was selling well because it was better than the other widgets in the marketplace. The reason it was better was because at had a unique feature the other widgets did not.

  But, the patent application that had been written did not describe this unique feature of the inventors widget, it was written to claim all the invention of  widget's.  If the application had been examined by the patent office  at that point the application would have been rejected in its entirety. 

 What actually happened was different. When  error was discovered the patent application was rewritten by a new patent attorney (at significant additional cost to the inventor).  The new attorney did his best but because the invention was already in use, he was not able to make the strongest claims to the truly unique features of this invention.

So the inventor may have saved money by not doing a patent search but he lost far more than he saved  in having a weaker patent than he might have obtained , and spending additional money for rewriting the application.  In the words of the proverb "A stitch in time saves nine".

Ten Common Mistakes Inventors Make

Inventors make the same mistakes over and over again.  That's why so many of them are discouraged and disheartend by a patent system that is intended to protect their inventions.  Since being forwarned is being forearmed,  if you understand these 10 common mistakes you have a far better chance of succeeding in patenting and commercializing your invention. 

 For more help check out the patent services available on Ala Carte Patent Services  or if you want to sell or buy a patent,  Intellectual Technology Trifecta

1) Confusing a product concept with an invention.

 In a famous episode of Seinfeld, Kramer "invents" a perfume that "Smells like the Beach".  In fact Kramer didn't "invent" anything.  He made the common mistake of deciding that since he had uncovered a product need he had made an invention.  In order for Kramer to actually have invented the perfume, he would have either need to consult a perfume chemist or identify by himself chemical compounds that when used as a perfume would make the wearer "smell like she just came from the beach".

 

2) If I haven't seen it  in the marketplace , it doesn't exist.

A TV show on patents showed  a woman who claimed to have "invented"  rolling suitcases.  At that time such suitcases were unknown in the marketplace.  However the patent attorney who was invited to review her invention for the TV show was able to find hundreds of patents on suitcases with rollers.  There are many , many reasons why ideas which may or may not be patented are not commercialized.  One reason to do a patent search is to find those inventions before you spend a lot of money trying to patent or commercialize someone elses invention. By preparing an invention report  you may also realize how your invention does the job better than those already patented or what you need to make you invention unique and thereby patentable.

 

3) Disclosing  your Idea before you patent it.

 

In the same Seinfeld episode Kramer makes another classic mistake when he tells an executive at Calvin Klein about his idea.  He does so without obtaining the necessary acknowledgment from Calvin Klein that they have received confidential information from him (called a Non Disclosure Agreement or NDA).  Without an NDA Calvin Klein would be free to use Kramers invention and claim he gave it to them.  In fact the whole show scenario is unrealistic. 

Most large companies have only a single person or department who is allowed to talk to inventors like Kramer.  That department, usually called something like the Idea Submission Office , never connects to anyone else in the company.  The reason they don't is to protect the company from lawsuits made when, as happened in the Seinfeld episode, the company later decides to market a similar product (i.e. a cologne that "smells like the beach") .  Unintended disclosure can also include publications or presentations at conferences made before a patent application is filed (mistakes academics often make). Inventors often need to hone their inventions by discussing them with others even if the others are family or friends a NDA is highly recommended.

 

4) Offering your invention for sale before you patent it.

In the United States, once you have "offered for sale" an item that contains your invention, you have one year to file a patent application on it.  Thus inventors often find to their dismay , that the product they are selling is being copied by a competitor and they can't do anything about it because its too late to file a patent application.  In fact there is no grace period in Europe so as soon as you have sold something containing your invention, you have lost the right to patent it in Europe.

 

5) Deciding to save money by not ordering a patent search 

           since the patent office will do one anyway.

This is penny wise and  pound foolish.  Anyone familiar with the patent process can tell you  the patent prosecution phase, which is where the examiner essentially puts the inventor on the witness stand and demands that he prove the invention is valid, can be very time consuming and costly.  Not searching a patent is like going into court without any preparation for the case.  A well prepared patent application is made with a strong knowledge of what the examiner is likely to cite against that patent. 

A good attorney can write the patent claims to take that "prior art" into account  Some unscrupulous attorneys will encourage inventors to avoid searches knowing they can make lots more money when the prosecution drags out.  In one case I'm familiar with a complete rewrite of the patent was necessary when the prosecution uncovered information that could have easily been found in a search. Inventors can perform thier own patent searches but guidance by experts in learning thprocess can pay off.  While the inventor is the one who best understands the invention , the patent classification  system is vast and determining the proper class for your invention requires experience.  Once an invention has been classified, all patents wihin that class are easily retrieved.  It often becomes obvious that  patent titles crafted by inventors are not a good description of what the invention is really about.

 

6) Forgetting the rest of the world.

The United States is only one country in which you need to obtain a patent.  If you want to sell your product in Europe, Japan or elsewhere you must obtain patents in those countries as well.  One client I know, lost a major market because the biggest market for his invention was in Europe and he chose to patent his idea only in the United States.

7) Relying on  Trade Secrets you can't keep secret.

Coca Cola has been very successful in protecting their product without patenting it. But that is rare.  If anyone can find out what you are making and you don't patent it they can copy your invention with impunity.  What is far worse they can patent it themselves and potentially stop you from making your own product. If someone can take your product apart and deduce your invention , you shouldn't be keeping it as a trade secret. You should make this decision before you make it possible for others to see your invention. The 

practice of discovery from product analysis is referred to as “reverse engineering” and a common practice in some third world countries.  If companies in those countries  market their version of your invention in the

US

, you can either recoup royalties from them or restrain them from continuing marketing  

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 [RYT1]This may be the best feature of owning a US patent because third world manufacturers want to sell within the US.

8) Once I've made the invention and it works, I'm done.

Inventors often think that once they have invented that better mousetrap, the world will beat a path to their door. Actually, making the invention is only the first step.  The next and biggest part of the job is commercializing the invention.  Even if an inventor sells the rights to the invention to someone (which usually  requires that it be patented) , that other organization will be responsible for commercialization which takes the largest share of money, time and risk. That is why most inventors find to their dismay that their wonderful idea is rejected by most of the companies they show it to. 

 Commercialization involves all the marketing, manufacturing and financial steps that are needed to satisfy answer the three questions which must be answered positively and conclusively if the invention is to succeed : Will it Work?  Will it Sell?  Will it make Money?

These are questions that should be answered by inventor in order to either sell the product to a customer organization or if he intends to commercialize it himself, to sell the product to potention investors in his business*  

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 [RYT1]How an invention moves from the concept stage to the commercialization is a big unknown in most people's expeience.

9) Ignoring Patent Office Fees

Inventors never stop paying the patent office.  Once the filing fees are paid there are issuance fees and patent maintenance fees. Click Here for Fee Information  After an inventor has spent a great deal of money on legal services to get his invention filed and examined, he then has to deal with an endless array of patent office fees.  The longer a patent is held the bigger the fees get.  That is why many patents are abandoned after only a few years of their nominal 20 year  life have elapsed.  Companies or individuals with large patent portfolios often find they have very large regular payments due to keep them in effect.  Particularly if they have foreign patents as well as US ones

10) Trusting the wrong people -- "Inventors Wanted".

The world is full of people who want to take an Inventors money without offering much if anything in return.  The famous "inventions wanted"  adds prey on inventors who are ignorant of how hard it is and what is really required to commercialize an invention.  These  unscrupuluous companies pretend they will help an inventor file a patent and file a provisional application that will expire to uselessness in a year without any intention of filiing a permanent application.  

 They will offer to "present your invention to industry"   means they will mail flyers to a list of companies that will go directly into the circular file.  There are legitimate companies that offer patent brokerage and help with filing patents (ours is one)  but they don't make phony promises and they aren't inexpensive.

A provisional patent  application can be filed  for a minimum fee .  A provisional establishes a legal starting date so  that an inventor’s invention can be more freely disclosed to others (with NDAs) for planning and commercialization.   A provisional application must be followed up by a full  patent application within one year or will run out.  This time period can also be useful in building a working prototype of the invention, to  optimize its features and create  selling points for attracting potential customers or investors 

There are legitimate companies that offer patent brokerage services and help with filing patents but they don't make phony promises and they will charge reasonable commissions  for real results .

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For help with your invention contact us.  At  Ala Carte Patent Services  when you order a patent search or invention report from AlaCare you are never kept in the dark.  We tell you what we will do, how we will do it and what each step will cost.  We even let you follow the progess of your job on line.

The Patent Minefield

One of my clients supplied this metaphor.  He suggested that a patent search is like exploring for gold in a minefield.   

An inventor can only patent that art which has not already been patented or disclosed by someone else.   If the inventor files a patent application without a proper prior art search he risks "stepping on a mine",  that is his patent application may be denied by the patent office examiners because it was "taught by the prior art",  that other patent that he was unaware of.   Worse, even if the patent is granted, due to ignorance of prior art, someone may come out of the woodwork , sometimes years later and sue the inventor for infringing their patent.

 

There are actually individuals and companies (called Patent Trolls by some) who actively employ a strategy of filing patents they never intend to commercialize but hope eventually to use in a lawsuit against someone else.

At BML our job is to search that minefield and put flags on the locations of the mines.   That way the inventor can adjust his patent application to cover the most   "gold bearing" territory as possible without stepping on one of those prior art patents. 

We start by determining the territory that is covered by the clients invention by preparing a "Search Profile"  --This tells us where to look in the online patent databases for prior art which is close to the clients invention.   Sometimes we find a patent directly atop the invention.  Then we can issue a "High Flash"  email warning to the inventor to beware.  The inventor can then adjust his patent or drop it all together.  Depending on where we are in the job he can receive a store credit or save 75% of the search cost.

There is an increasing trend today to save money by not doing a patent search, arguing that the patent office will do it anyway.  That is an very  risky strategy as the inventor may spend a substantial amount of money on a patent application and on "office actions"  with the patent office before giving up or extremely restricting his patent due to prior art he would have known about if he had ordered a search to be done.

Re-Inventing The Wheel

I often have to explain to clients how the patent claim system works. I’ve found this illustration useful and I hope that you will too.

Suppose you had invented a bicycle wheel like the one shown here.

However you had never seen another wheel and therefore in your claims you described the wheel concept itself as your invention, hoping to own all kinds of wheels.

However, in a prior art search like we perform at BML, one of the first patents we uncovered was a wheel like this one.

Okay—you cant own the wheel, but this wheel has no spokes, rim or tires. Perhaps we can change our claims to a spoked wheel with a tire.

 

Unfortunately, the next patent turned up by the search is a spoked wheel like the one below. However this wheel has no tire. It has a metal rim.

Now we are down to looking for a wheel that has a tire on it.  Like the next piece of prior art we found


.

 

This patent looks really close. But it has a hard rubber tire. So in the end we are left  with a patent on a baloon tire.  This is what a patent search does.  It helps you refine the claims to  cover only what you have invented that  is novel. 

If you were to submit your patent application with the broader claims you would have suffered successive rejections by the patent office.  Each rejection costing you in time and money to respond to "office actions".

That is the value of a good  patent search.  It saves you time and money by making sure your patent is  something that  meets the patent ability crieria and can be defended  in an office action.

 

 

 

 

Exploiting Opportunities

Every business has opportunities it doesn’t exploit. Sometimes they are just ideas that pass quickly through someone’s head and other times they are complex concepts which have been thoroughly studied and then for some reason or another end up on the shelf gathering dust. 

It’s not hard to see why this happens. Most of the time in business, we are consumed with the everyday issues of finding and satisfying customers. At BML we call those activities “The Business Comfort Zone” or Quadrant One. 

The trouble with Quadrant One is that you can’t continue operating there forever. Someday something will happen and your Quadrant One business will start to disappear. Sometimes its in a crises and sometime it happens slowly. But it Will happen eventually. It happened to me despite the fact that I knew better. 

When your quadrant one business goes away suddenly you are forced into one or more of the other three quadrants, either selling existing products to new customers (Quadrant II) , selling new products to existing customers (Quadrant III)  or the most risky alternative, new products to new customers (Quadrant IV) . When you operate in those quadrants you have a myriad of new issues to deal with. You cant fall back on your standard processes that worked so well in Quadrant One. You HAVE to do some things differently. 

At BML we help you assemble  a process to evaluate the opportunities in those other 3 quadrants before you are forced to activate them in a crisis situation. We help you do what small businesses seldom do because they cant extract enough time from Quadrant One , we help you compare opportunities, and compare them at the same time against the same standards. 

First we help you find them and define the opportunities, taking them off the dusty shelves and into an active database. They we help you to compare them on the same basis. What is the potential revenue from a given concept? How much time and money is it likely to take to study and implement that concept? Which concepts should be done first and which should be done later? 

We help you choose among them and put together action plans to exploit those opportunities that you pick. 

There are two benefits that come from using this method. 

1. The revenues and profits that come from new opportunities successfully exploited.
2. The savings from not exploiting opportunities thathave a low probability of success or are too costly for the enterprise to sustain.

 

The first of these two benefits is pretty obvious. The second isn’t. But consider for a moment the cost to a business of jumping into the wrong opportunity in a crisis situation. Such a misstep may put company out of business. 

We teach that a company needs  a portfolio of evaluated and ranked  opportunities on the shelf to draw from, either  to feed slowly into the business  or to grab for if quick action is required. We don’t only help you plan them out, we can also provide some of the services needed to evaluate your opportunities, either from our own resources or from our many alliance partners.

 

To learn more send us an email to sales@businessmetamorphosis.com or call (585) 520-3539 and tell Dick you read this article.

The Business Life Cycle in a Flat World

The following is a talk I gave at the inaugural breakast  of the Independent Entrepreneurs Council , co sponsored by Empire State Science and Technology.  It discusses the transformation going on in the  Western New York  economy from one based on a few large manufacturing firms to a myriad of smaller firms in  service, agriculture, medicine etc.

Download IECOct10.ppt

Novel Inventive Features- A Lesson From Edison

In my business, I work with  inventors and I frequently have to ask them to explain what is the "Novel Inventive Feature"  of the their invention.  I define this feature as that creative aspect of their invention that distinguishes it from everything that has already been invented (The Prior Art).  However, getting this concept across is not easy, hence I thought it might be useful to take a lesson from a master of inventing  Thomas A. Edison.

Every school child knows, if they know nothing more about Edison, that he "Invented the Electric Light".  But what exactly was it that Edison invented.  What was  the "Novel Inventive Feature".  Most people, those at least who have not read a biography of Edison, don't know that there were hundreds of inventors with their own version of the Electric Light working at about the same time as he.  What was it that made his "Electric Light" unique.

In order to explain this I will need to introduce some very elementary concepts from Electrical Engineering.  One of these is "Ohm's Law",  which  states that ,  Electric Current (I) ,which is analogous to the amount of water flowing through a pipe, is equal to  Voltage (V)  (the pressure needed to push the electrons through a resistive elemen,  divided by  Resistance (R)  ,which is a  measure of that  property  which seeks to prevent current from flowing through a resistive element . In algabraic terms this equation is written  I=V/R.

Most of Edison's contemporary inventors thinking "inside the box"  used as the filaments of their light bulbs,  a low resistance wire.  The current needed to light a 100 watt  (P) bulb  with a 1 ohm resistive  filiament can be shown to be 10 Amperes from  solving Ohms law   since Power(P) = Current(I) * Voltage(V)  which  with some  algaebraic manipulation  leads to  P=I^2*R and                   I = SquareRoot (P/R)] .

It doesn't take very many light bulbs (connected in parallel)  drawing this much current to require  very large diameter wires to supply a single household.  To supply a city of many such households using these bulbs would have required  electrical cables  that were many feet in diameter.

Edison, realized this problem and decided to    make a bulb with a high resistance filament , even though he had no idea how to make one. He knew  that if the same  100 watt light had  a 100 ohm filament it would need only 1 ampere to light. He actually went through over 2000 different filament designs before he found one that with the right resistance that wouldn't burn our quickly.           [Experts will note this example is for  Direct Current (DC)  which is what Edison used.   The analysis for Alternating current (AC)  , that we use today is different and more complex]

So Edison's Invention wasn't really the Light Bulb, I was the high resistance light bulb, which made  practical electrical distribution systems with wires of practical size.  High Resistance was the Novel Inventive Feature of Edison's electric light.

AeroLight Chosen for Mock Disaster Drill

Persistance pays off. When David Orange first presented to West Virginia High Technology  Consortium he did not expect SculpTek’s  AeroLight (TM)  Wearable Illumination devices  to  be chosen for the 2005 Mock Disaster  training event. 

The Mock Disaster, which is  played out before a national audience of emergency responders and several government agencies, is sponsored by the West Virginia High Technology  Consortium Foundation's Emergency Response Technology Group  (www.wvhtf.org) and the National Corrections & Law Enforcement Training & Technology Center (www.nclettc.org). This year the drill will be held in Moundsville,WV on September 9th and 10th.

 SculpTek will supply self-illuminated belts, sashes and helmet lights www.activeillumination.com for the Hazmat  Incident Scenario which will be held during nighttime demonstrations.  The government agencies attending   include  The Department of Homeland Security,  The Federal Bureau of Investigation, The Department of Alcohol Tobacco and Firearms and The Drug Enforcement Agency.

SculpTek owner, David A. Orange states: "This represents a major validation of our products by the  emergency responder community."