Trademark Lawyer Blog

Effective Control Transport, a Montreal-based company, has developed a new system called Driver's Mate that monitors a driver’s level of alertness and takes corrective action if it falls below a predetermined baseline level. The device mounts onto a dashboard and may be retrofitted onto virtually any type of vehicle.

Driver's Mate uses a camera to monitor 534 points on the driver’s face and rates his or her condition on a scale of completely alert to technically asleep. If the system detects that the driver is not paying a safe level of attention, it will sound off an alarm and will also contact a dispatcher.

As a Traffic Court Magistrate, I appreciate any new technology that makes our roads safer! The problem of drivers falling asleep behind the wheel is huge but it sometimes gets lost behind drunk driving and driving while texting. Unfortunately, the National Highway Traffic Safety Administration estimates that 56,000 crashes every year are caused by sleepy drivers. We all need to take active steps to cut down on accidents that are so avoidable!

Bernie Karl, the proprietor of the Chena Hot Springs Resort outside Fairbanks, Alaska, has built a portable geothermal generator that he says can provide enough power for 250 houses. The self-proclaimed “imagineer’s” machine uses 165°F water to produce large quantities of electricity.

Mr. Karl collects water from underground hot springs lying beneath his resort and pipes it into his device. The hot water then boils refrigerant contained inside casing surrounding the pipes. Next, the boiling refrigerant causes a connected turbine to spin, thereby generating electricity.

According to a 2007 Massachusetts Institute of Technology report, tapping into 2% of the energy contained inside the Earth as heat could yield 2,000 times more energy than is used globally! I’m all for new, unorthodox technology that can give us energy with minimal damage to the environment. How can one not be a fan of green innovation?

A new invention is often followed by imitating competitors unless, of course, that new invention is protected by a patent. That various blanket with sleeves products serve as a perfect example.

You’re probably familiar with the infomercial-promoted Snuggie, the blanket with sleeves. With the Snuggie, a user can stay “totally warm” and still have the “the freedom to use [their] hands.” The product seems fresh and has been referred to as a trailblazer. However, the Snuggie is not the first of its kind. It is predated by the Slanket, the original blanket with sleeves. In turn, the Slanket is predated by the Freedom Blanket, also called the original blanket with sleeves. Although the inventors of the Freedom Blanket have made online claims that their sleeved blanket idea was stolen, they have not sought legal action. Similarly, the Slanket inventor, Gary Clegg, has not sued because he never patented his product. He claimed that he attempted to patent the Slanket, but was told by patent lawyers it would not be feasible. Clegg considers the Snuggie’s marketing campaign to be advantageous to Slanket sales because the Snuggie’s popularity has raised consumer awareness about the product in general.

These products exemplify the importance of patent protection. Because the inventors of the Freedom Blanket and the Slanket did not seek patent protection, competitors were free to borrow their idea and create similar products. To determine whether or not you should seek a patent for your invention, get in touch with a patent attorney to explore your options.

Microsoft has prevailed in its appeal from a $388 million dollar penalty levied against it in a patent infringement case. Uniloc, a California security software company, filed a lawsuit in 2003 against the software giant, claiming that Microsoft infringed on its patent for an antipiracy software-registration system.

Judge William Smith, of the U.S. District Court for the District of Rhode Island, overturned the initial decision and held that Microsoft does not have to pay any damages to Uniloc. The award would have been among the biggest ever granted in an American civil patent action.

Usually computer software is protected by copyright law, so this is a unique case in which a patent was issued. We don’t have all the facts, so it’s hard to draw any conclusions, but I find myself pulling for the little guy!

A thoughtful patent attorney can ensure that your rights aren’t bulldozed by big business.

A recent post of mine discussed the financial woes of the United States Patent and Trademark Office (PTO), which are connected with the decrease in applications being filed. A solution may be on the horizon. However, it does not appear to be favorable to future inventors. A letter from the Secretary of Commerce, Gary Locke, urges the Obama Administration to grant the PTO the ability to temporarily raise fees.

The reasoning behind such a “limited interim fee adjustment” is that it is the option with the least adverse effect. Other alternatives include cutting the budget by eliminating PTO services or using Federal tax dollars to subsidize operations. The proposal considers increasing standard application fees, maintenance fees, and time extension fees by roughly fifteen percent.

In contemplation of a possible fee increase, now is the time to patent your invention. Contact a competent patent attorney to arrange a consultation and determine the best course of action.

Aside from being known for its innovative search algorithm, bird’s eye view maps, and expansive email in box storage capacity, Google has also gained renown for uniquely celebrating historical dates and holidays. The site’s homepage usually features an altered Google logo to remind people of the special event. Most recently, the search engine paid homage to the 57th anniversary of the first barcode, which was invented around October 1949 and received a patent on October 7, 1952. Unlike the vertical lined specimen featured on Google, the first barcode was circular and resembled a bull’s-eye.

When Google unveiled its encoded logo, some internet bloggers initially suspected a brainwashing conspiracy. However, others have confirmed the image is merely an innocent bar code translation of the website’s name.

The emergence of this technology has streamlined many areas of our lives. The bar code established a standard medium for transferring information quickly and efficiently. For example, a retail store can keep track of merchandise inventory and prices through the use of bar codes and scanners. When you inquire about the price and stock quantity of a particular item, the clerk can provide you a fast and accurate answer by simply scanning the barcode.

The time it takes to get a patent approved by the United States Patent and Trademark Office is getting longer and longer. The average wait for a first response from the USPTO to a patent application is now more than 2 years. From start to issue, the current average time lag is nearly 3 years!

The USPTO has over 1.2 million patent applications pending and received about 497,000 new applications in 2008. As I discussed in a previous entry, there is something of a budgetary crisis going on at the USPTO right now and unfortunately the agency simply does not have enough resources to dedicate to the examination and review of patent applications at this point. Unfortunately, the current economic situation has forced many governmental agencies to tighten their belts, meaning processing gets delayed, and the public has to wait longer and longer. Inventors are no exception.

What does this mean for your invention? It has become difficult to predict the time frame in which a patent may be issued, and this uncertainty may adversely affect your ability to secure investors and bring in new capital to your firm based on near-future intellectual property rights. Furthermore, infringers may come out of the woodworks while your patent is being processed. The best course of action is to apply early and get the ball rolling ASAP! Issued patents give cease and desist letters a lot more teeth when asking an infringer to stop.

Contact a patent attorney to get started right away with the patent process!

In a surprising new trend, investment firms and new businesses are gobbling up a new kind of capital. They are seeking to buy, sell, and license patents via auctions. Under such a system, inventors make their patents available for sale and transfer all or part of their rights to the highest bidder.

The potential benefits of this emerging market that are being touted by analysts include increased innovation, reallocation of costs, and a reduction in patent litigation. In our capitalist society, we are told that market forces will naturally determine the value of a specific product and thereby encourage entry into that field. We can expect patent auctioning to grow rapidly but we are a long way off from seeing patents up on eBay.

While I believe in the alienability of patent rights and freedom of contract, I think both inventors and investors alike should be wary of jumping in headfirst without carrying out proper due diligence. We’ve seen unbridled trading of nontraditional assets before in the mortgage industry and it played a big role in the recent economic crisis here in the U.S.!

Contact a comprehensive patent attorney and consult with a business development expert to gauge the worth of your invention!

David Kappos, nominated to become the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, addressed the Senate Judiciary Committee on July 29 as part of his confirmation hearing. As I had mentioned in an earlier post, Mr. Kappos previously served as IBM’s vice-president and assistant general counsel for intellectual property.

Among other things, Mr. Kappos vowed to root out counterfeiting and piracy, highlighted his plethora of qualifications, and tackled questions about potential conflicts of interest with regard to future IBM patents. He intends to pursue an international anti-piracy strategy, working in conjunction with many foreign governments, particularly those in Asia. Many senators reacted favorably to Mr. Kappos and his confirmation appears to be imminent. The panel is expected to vote on Kappos in early August.

Mr. Kappos’ resume certainly is impeccable, and he seems to be saying all the right things about his upcoming position. His plate will definitely be full as budget concerns at the USPTO loom over all policy decisions. I only hope that his ambitions aren’t just pipe dreams and that concrete actions will be taken to make good on his promises!

Even the United States Patent and Trademark Office isn’t immune to posthumous Michael Jackson mania. The USPTO has opened a new exhibit in conjunction with the National Inventors Hall of Fame and Museum to commemorate the late Gloved One’s contributions to intellectual property.

Catch it while you can! The exhibit is slated to run from July 15 to September 7, has no entry fee, and all are welcome to visit. As I mentioned in an earlier post, Michael Jackson was very savvy when it came to IP and even had his own patent for gravity-defying shoes.

Whether you loved him or hated him, there is no denying the indelible imprint Michael Jackson left. This is exemplified by the many trademarks he left behind, including this one, for his Heal the World Foundation. With all the bizarre news reports swirling about both his life and death, it’s nice to focus on some of the positive things he did!

Want to see the exhibit in person? It’s located inside the USPTO headquarters at 600 Dulany Street, Alexandria, VA, 22314.

Computer giant International Business Machines, Corp. has been taken to court by MOSAID Technologies, Inc., a Canadian intellectual property development firm, for suspected unlicensed use of MOSAID’s technology. It is claimed that IBM manufactured and sold microprocessor and circuit products that use Dynamic Random Access Memory patents belonging to MOSAID. The suit was filed in U.S. District Court in Delaware and alleges six different counts of infringement.

MOSAID has been a trailblazer with respect to DRAM and has enjoyed a virtual monopoly over the DRAM licensing market. MOSAID has agreements in place with Fujitsu, NEC, Toshiba, Hitachi, Mitsubishi Electric, and Oki Semiconductor. Interestingly, MOSAID says that its hand was forced regarding IBM due to stalled talks between the parties regarding possible licensing for the patents in question.

This is not the first time that MOSAID has cried foul; it has filed suits against Samsung, Infineon, and several other companies in the past for similar conduct. Samsung ultimately settled with MOSAID and came away with a five-year license agreement to use MOSAID’s inventions.

I think MOSAID is doing the smart thing by actively pursuing companies it feels are infringing upon its patents and ensuring that it is justly compensated for its innovation. Despite the difficult process of initiating litigation against every potential copycat, it is imperative that intellectual property be guarded as fiercely as possible so that your business can reap the hard-earned benefits of its R&D. Patent prosecution can and does pay dividends for decades.

Contact a patent attorney to protect the fruits of your labor for years to come!

The word patent may naturally evoke ideas of innovative inventions and gadgets. But you should also be aware that patentable subject matter encompasses more than just tangible inventions or machines. It is also possible to patent a process or method.

You can obtain a utility patent for any new and useful process, machine, article of manufacture, or composition of matter. A process is defined as a series of steps or acts to be performed. To determine if a process is patentable, the examiners at the USPTO apply a number of tests, such as whether the process includes laws of nature, natural phenomena, or abstract ideas, which are all non-patentable, or whether the process transforms an article into a different state or thing, which is consistent with patentable subject matter. Previously, the main test was whether a process produces useful, concrete, or tangible results. This standard has been overruled by court rulings.

A process is not sufficiently transformative if it merely involves gathering data into an algorithm, such as conducting clinical tests and determining if any abnormalities exist. On the other hand, a process is patentable if it transforms the raw data into a particular visual depiction for display. In such case, the data is representative of a physical object or article.

For more information about obtaining a patent for your novel and useful process, contact a competent patent attorney.

Congress has received a request from the United States Patent and Trademark Office for rule changes to offset ongoing heavy financial losses the agency has sustained. Revenue from patent filing and maintenance fees has been shrinking rapidly and the USPTO has been forced to make budget cuts across the board.

A steady influx of patent portfolios from companies, a substantial backlog, and internal red tape all have contributed to diminishing returns. Annually, the USPTO receives approximately 450,000 applications which must be analyzed and then either granted or rejected by one of 6,285 patent examiners.

The USPTO has approached various congressional committees for appropriations and suggestions on how to address its shortfalls. Ominously, USPTO surveys have revealed that patent attorneys and companies believe that the USPTO’s economic condition may deteriorate further.

The agency looks to improve efficiency and bolster operations as President Barack Obama recently nominated David Kappos to be the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Kappos currently serves as IBM vice-president and assistant general counsel for intellectual property.

Kappos has been a patent-reform advocate, lobbying for higher-quality patents and a reduction in excessive patent litigation. Hopefully this new director will implement new, cost-effective strategies and steer clear of such knee-jerk reactions as increasing patent fees.

Will the USPTO’s monetary woes affect the progress of your patent? File early with the help a thorough patent attorney to avoid potential delays and higher expenses!

Are you a college or graduate student with a good idea for a new invention? Check out the Collegiate Inventors Competition. The competition has recognized, rewarded, and encouraged hundreds of inventors worldwide since 1990.

To be eligible, you must either be a graduate or a college student, or have been enrolled as such in the past 12 months. All entries must be submitted by TOMORROW, June 16, 2009, through the official application form.

An entry shall include a model of your invention that is complete and workable. The invention must be the original work of the applicant and cannot have been made available for public use or patented more than one year prior to submission. Entering the competition does not constitute a public disclosure. Two winners will receive cash prizes of $15,000.00. Additionally, 12 finalists will each win a $2,000.00 cash prize and an all expenses paid trip to present their work to a panel of judges.

Even if you miss this year's competition, you still need to protect your invention! Do a patent search to see what other inventions are similar to yours. It might be in your best interest to file a patent application, to prevent others from using your methods to build your invention. Schedule a consultation with a patent attorney to discuss your legal rights.

Perhaps the most important question in the patent process is “Do I really need a patent?” In the excitement of innovation, it is easy to prematurely opt for a patent. On the other hand, you may have a marketable invention and not even realize it. To answer the question above, consult the factors below.

Does your idea have value? Before applying for a patent, it may be wise to determine if the proposed invention or system will be of any value to consumers. A patent prohibits others from copying your invention but does not guarantee that you will make any money from it.

Do you thoroughly understand the market implications of the invention? Patent applications are sometimes created so narrowly that they fail to protect future market applications. Before seeking a patent, consider all the possible uses for your product or system as well as the possible ways to market it. This will assist your attorney in drafting a patent that protects your interests both in the present and in the future.

How much are you willing to invest? In exploiting an invention, the patent application fees are but a single step in process. Consider the available resources needed for the entire project. In addition to obtaining a patent, you may also need to develop and execute a marketing plan and a manufacturing plan if the invention involves physical products.

If you have considered obtaining a patent, contact an experienced intellectual property attorney for advice regarding how to proceed or whether another form of protection is more applicable.

As the economy undulates up and down, many people seek ways to cut costs. Inventors are no exception. If you are thinking about registering a patent, consider the following tips to help reduce the application fees, which I also share with my patent clients.

Be up-front. Provide your patent attorney with a complete and detailed description of the invention early in the application process. This reduces the need for later revisions, which increases costs. Attorneys often charge based on the amount of work performed. Therefore the total application price may increase if there are numerous updates and revisions. For instance, I usually charge a flat rate for preparing the application, but any work that needs to be done after that is completed on an hourly billing rate.

Be knowledgeable. Patent attorneys are experts at intellectual property law, but they may not be as well versed in the subject matter of your invention. It is therefore crucial that you provide them with enough of this information to complete the patent application. Giving your attorney sufficient information about the particular field of science or engineering relevant to your invention eliminates the need to engage in extensive research, which may also drive up costs.

Be complete. Before applying for a patent registration, have a complete idea, with sketches or drawings of your invention. Adding new features and alternate embodiments after the attorney has already drafted the application can further impact costs. While you do not need a prototype to file an application, I usually advise that my clients build a prototype. Seeing the invention in action and testing it often reveals features that need tweaking and improvement. It can be costly to add these updated features once I have filed the patent application.

What do these tips have in common? Communication. As with many attorney-client relationships, it is important to be open with your attorney. In any event, your patent attorney will likely let you know if you have provided sufficient information or if more information is needed.

Congress is in the process of enacting new patent legislation that would introduce a first-to-file system, a significant change to current United States patent law.

If the amendment passes, the effective date of an invention will be the date the application is filed instead of the date of actual invention. Currently, the United States is one of the few counties to follow the first-to-invent system. Under this system, inventors apply for patents after first conceiving an idea then diligently reducing it to practice, which can be achieved by building a prototype. The effective date is determined by the date the inventor conceived the idea.

The first-to-file system is not without its critics. The main critique is that the system is unfair to the small independent inventor because it lends an advantage to well-funded corporations, which have sufficient capital to win the race to the Patent Office. This argument is based on the notion that independent inventors often create their inventions before investing in a patent application. On the other hand, large companies are able to file multiple applications first, and then proceed with the most workable ideas.

Many of my clients are independent inventors, who tinker with inventions as a hobby. For this reason, I affectionately refer to them as "garage inventors." I oppose a first-to-file system for patent applications procedures, because I do believe that it would unfairly prejudice garage inventors. This certainly would discourage them from continuing to contribute their innovations and ideas to this country's economy.

Caerus Institute of Open Innovation is hosting a global summit on innovation, patents, and intellectual property. The event, “Intellectual Property Firestorm Meets Open Innovation 2.0”, will take place on March 4, 2009 at the Illinois Institute of Technology in Chicago.

The summit will bring together leaders from the intellectual property sector and the engineering industry to focus on methods of maximizing the value of mid- to large sized businesses. Experts will discuss topics such as open innovation in action, open innovation 2.0, and the implications for intellectual property quality and quantity goals for high tech companies. You will also have an opportunity to network at a social/mixer when the conference concludes.

Open Innovation refers to the new idea that businesses can be more profitable by sharing information. Today, businesses are beginning to incorporate outside research and inventions with their own internal research. This is different from the traditional “closed innovation” model where businesses generally kept research and development information secret until market release. For instance, one of the principles of open innovation is working with smart people both inside your company and outside your company.

Register for this event here.

On the week of June 22-27, inventors and innovators will gather in Alexandria, VA for Innovation Week. The United States Patent and Trademark Office hosts this event at their headquarters in order to celebrate the important role patents and the USPTO play in the economy and the advancement of science and technology.

The event is open to the public and will include exhibits on display, technology specific presentations to patent examiners, and a multi-day conference for independent inventors.

You may simply attend Innovation Week as a spectator or, if you wish, you may take a more active role in the event by participating. Currently, the USPTO is accepting registration applications for keynote speakers, technology specific presenters, and patent exhibitors.

The popularity of this event must have been pleasantly underestimated. Registration was scheduled to close on March 13, 2009, but by the end of February, the USPTO already closed the link leading to the applications page. Applicants could register to be a keynote speaker, a presenter, or an exhibitor. Spectators may still attend.

Invention submission companies and product development companies help patent and trademark owners license and sell their inventions, products, and services. A cursory internet search of these terms will turn up a plethora of hits. Beware! Like any industry, there are legitimate businesses, and there are scams. When choosing one of these companies, keep these tips in mind:

Tip 1: Be familiar with what you own. If you have an invention, be sure you are familiar with the disclosures and descriptions in your patent. If you have a trademark, be sure that it is registered, and be aware of which specific goods and services your trademark will be identifying. If what ends up on the market is not what your patent or trademark claims to be yours, you might lose out on rights to the marketed products or services.

Tip 2: Research the company. Don't be shy about asking the firm for references and credentials. Once you get this information, follow up with them. Check with organizations like the Better Business Bureau. Find out if there is any pending litigation against them, and what issues are in dispute.

Tip 3: Be careful with your money. Almost every patent and trademark owner is enthusiastic and eager to start mass production and distribution. This excited ambition is easily exploited by dishonest enterprises. Be weary of large fees due in advance. When you do forward your money, know exactly how this money is being used. Have an attorney review any agreements before signing the dotted line. Once the deal is signed, be sure to ask for regular accounting statements, so you know how much in royalties you are earning, and you know which parties have licensed your patents and trademarks.

Licensing, marketing, and distributing your products involves an array of legal specialties, include contract analysis, negotiating licensing terms, and enforcement of ownership rights. Be sure to have an attorney familiar with all these facets to assist you.

In my previous post, I shared strategies the USPTO recommends for doing your patent search. Here are some practical tips I have to offer when doing your own search:

Tip 1: When doing your search, keep in mind that even if you don't find your exact invention, look at inventions that are similar to yours. You will need to cite these similar inventions in your patent application.

Tip 2: Remember that it's the CLAIMS that control what is patented, so verify that your invention has not been described in a prior claim. Use the rest of the patent document to interpret terms used in the claims.

Tip 3: Look at the figures and drawings. Pictures speak a thousand words. Save yourself the grief of reading through a patent document--your invention may be nothing like the patented invention, and you can determine this with one glimpse of the figure. Many people have trouble viewing the figures. You need to download the appropriate software; the links are available here at the USPTO site. I find that an easier way to look at full patents and images is to go to www.google.com/patents, type in the patent number I found from the USPTO database, and download the .pdf file.

Tip 4: When you find a patent that is similar to your invention, take a look at the column labelled "References Cited." These are patents that are similar to the patent you just found. Take a look at the patents under "References Cited" to see if they are similar to your invention too.

Tip 5: Take notes. Once you get into the research, you'll see what I mean! All the patents will begin to look the same, and you'll mix them up. List the name, patent/application number, and the title of the patent at the top of a 3-hole punched sheet of paper. Use the entire page to take notes and make your sketches. Highlight key terms on the patent document itself. Keep everything together in a binder, so you can re-arrange and insert/remove notes as needed.

Tip 6: Learn from prior patents. If the patent examiner finds prior art that makes your invention OBVIOUS or NOT NOVEL, you'll be out of luck. Find a way to distinguish yourself from the inventions disclosed in the claims of the prior patents.

Tip 7: Don't be afraid to ask for help. Find Patent and Trademark Depository Library (PTDL) staff in your state. They are available to provide training on U.S. patent search processes and research tools including the Cassis DVD-ROM system, the PubWEST database, and the USPTO website. You can also contact a patent attorney for advice and assistance.

I've often said that doing a patent search is a lot like making pizza from scratch: they are tasks that require some skill, but the skills can be self-taught or hired. Both tasks can also be excrutiatingly tedious, but they can also be educational and fun.

Before your invention can qualify for patent registration, there are two basic requirements that must be satisfied: your invention must be NOVEL and UNOBVIOUS. This means that it can not have already been invented, and that it can not be an obvious variation of something that has already been invented. The way to find out whether your invention is novel or unobvious is to do a patent search.

You can hire a patent attorney, patent agent, or a patent research firm to do the search for you. This will likely cost you several hundred dollars. In the alternative, you can undertake this task on your own. Here are seven tips offered by the U.S. Patent Office for doing your own search:

Step 1. Brainstorm keywords related to the purpose, use and composition of the invention.

Step 2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses.

Step 3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification.

Step 4. Read the Classification Definitions to verify the scope of the subclasses and note “see also” references.

Step 5. Search the Issued Patents and the Published Applications databases by “Current US Classification” and access full-text patents and published applications.

Step 6. Review the claims, specifications and drawings of documents retrieved for relevancy.

Step 7. Check all references and note the “U.S. Cl.” and “Field of Search” areas for additional class/subclasses to search.

Stay tuned to my next blog post, where I offer my 7 tips to help you along your patent search.

A divorced, single mother of four is taking on the mogul of sexy lingerie. She can do it because she spent $12,000 to build a prototype and apply for a patent, which was issued in 2004.

Katerina Plew invented a bra featuring numerous loops and hooks, so the straps can be positioned in a combination that would keep them hidden under most styles of clothing. Plew sent a copy of her patent and various promotional materials to Victoria's Secret, in hopes that she could license the rights to them. About a year after Victoria's Secret cancelled their appointment with her, Plew saw her invention offered for sale at a Victoria's Secret store. Watch the AP video featuring Plew's story.

Plew took the proper steps to protect her invention. Take a look at the patent for this bra. Without this patent, she would not be able to prove how others are infringing upon how her invention is made. If you have an invention, I recommend that you build a working prototype, and seek the advice of a patent attorney before attempting to market or promote your invention.

One of the biggest misconceptions is that an idea can be patented. Even a Yahoo or Google search about patenting an idea will lead people to believe that this is the case. Often, I will have a creative mind book a consultation with me to discuss patenting an idea for an invention. Truth be told, their ideas usually are very good ones. However, they have no idea how to make or build this invention. For example, if someone told me that a great invention would be a machine that would stop world hunger. Although it's a fantastic idea, unless this inventor knows how to build one, there is no patentable subject matter.

Assuming that this idea for an invention is novel and unobvious, there is a requirement that the inventor can describe how this invention is built or put together. This is because a patent is like a recipe: anyone with skill and knowledge in the field of that invention should be able to pick up a patent, and understand how a workable version of this invention is built.

Just because you know how to build the invention doesn't mean you need a prototype to get a patent.

Questions about whether your invention is patentable? Contact me for a consultation.

Labels: patents

Being a patent attorney, I feel the pressure of people's expectations that I be the first to hear about new inventions. While procrastinating on the Internet, I couldn't help but notice a recent article about the Top 10 Wacky Inventions for the Home. It includes a fruit bowl that emits UV light, allegedly to keep fruit fresher for longer, a device that tells you what mood your plant is in, and a waterproof PC.

We've all heard that necessity is the mother of invention, but in this case, the desire for trinkets is the cool big sister coming home from college, and wowing you with what she's learned in Science 101 classes.

Labels: garage inventor, inventions, patents

While monogamy is the prevailing standard accepted in our society when it comes to spouses and boyfriends or girlfriends, this is not necessarily so when it comes to a license for your patent or trademark.

When you offer the rights to use your patent or trademark, in exchange for fees and royalties, you are licensing those opportunities to another. That other party is called the licensee.

A monogamous license, more appropriately termed, an exclusive license, is where you have only one licensee. Typically, licensees agree to paying higher fees and royalties for the benefit of being the only ones who are allowed to benefit from the intellectual property. NBC was hugely successful last month, because they were the exclusive network to provide Olympic coverage.

There are times, however, where it benefits the patent or trademark owner to enter into a licensing agreement with as many licensees as possible. This is a non-exclusive license. Although a licensee will probably pay less in fees and royalties, the patent or trademark owner benefits from collecting this revenue from multiple licensees. Franchises are an excellent example of non-exclusive licenses to numerous franchisees for the use of trademarks, patents, and other proprietary assets.

Labels: franchise, franchising, licensing, patents, royalty, trademark

How did powdered urine, an artificial penis, and a jock strap have two California entrepreneurs likely to plead guilty to charges of conspiracy to defraud the government?

When those items are the "Whizzinator" and "Number 1," which have been put together to help government employees pass drug tests, that's how.

It has been reported that a truck driver for the Department of Transportation beat mandatory drug testing by using these proxy pee products. In another instance, a Whizzinator customer allegedly used this product to pass a probation officer's drug test.

I was not able to confirm that there was a patent filed for this invention. Assuming that this invention is novel and unobvious (the two most basic requirements for an invention to be patentable), I can't help but wonder: does the use of this invention threaten national security if government employees in certain positions are trying to beat a drug test? If so, it could mean that an application was filed, but the government issued a secrecy order, preventing the publication typical of most patent applications. Specifically, Sec. 115 of the Manual of Patent Examining Procedures states:

If the agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.

I did, however, see that the term "Whizzinator" is a federally registered trademark (Reg. #2782181).

In spite of the registered trademark, prosecutors are seeking to take control of the Internet domain names, www.whizzinator.com and www.gonumber1.com. Check them out while you can!

Labels: patents, trademark, unobvious

Last week, President Bush awarded 8 individuals and corporations with the 2007 National Medal of Technology and Innovation at a lavish White House ceremony.

This annual award is the highest honor the President can confer upon an American citizen for innovative contributions and achievements. The medal can be awarded to persons, organizations, or corporations. The first awards were granted in 1985 by President Regan. The list of recipients includes: AT&T, David Packard (of Hewlett-Packard), The DuPont Company, Bill Gates, Merck & Co., Proctor & Gamble, 3M, Johnson & Johnson, IBM, Motorola, Xerox, and eBay.

Labels: patents

Go ahead, call me conservative. So what if I waited for the reviews in "Flash of Genius" to come out before shelling out $15. And $12.50 for popcorn and a drink. Looks like my fence-riding might have saved me the cash I could use instead on buying 4 gallons of gas.

Viewers who enjoyed the movie included inventors who could relate to the trials and triumphs of their trade. If anything then, real-life inventors appreciated the accurate portrayal of the challenges they face.

Those who didn't sing praises, however, included movie critics who felt the film lacked the pizzazz that today's audience demands from big-screen Hollywood.

While I may have missed the movie this weekend, if it sticks around the theaters long enough, maybe I'll catch it next weekend. Or catch it when it comes out on TV. Without the trek to the theater, that ought to save me another gallon of gas.

Labels: garage inventor, infringement, inventions, litigation, patents

Finally, a movie that depicts the struggles of "garage inventors," the innovators who make up most of my patent clients. These are the ones who tinker with inventions in the evenings and on weekends, until one day, an invention is born.

"Flash of Genius," starring Greg Kinnear, is based on the true story of Robert Kearns, who, in the 1960's, invented the intermittent windshield wiper for automobiles. Among the hurdles he faces are the high cost of protecting his invention with a patent, and infringement by the automobile industry. The movie is about Kearns' resolve to take on corporate giants through litigation, and assert his rights as the inventor.

"Flash of Genius" is scheduled for release today, October 3, 2008.

Labels: garage inventor, infringement, inventions, litigation, patents

"Can I get a patent on an invention that combines two or more old inventions?"

The answer depends on whether combining existing inventions creates new and unexpected results. This satisfies the U.S. Patent & Trademark Office's requirement that an invention be novel and unobvious. Novelty and unobviousness can be achieved if the components cooperate to achieve a benefit that the components could not achieve alone.

For example, combining a pencil with an eraser on the end offers the benefit of writing compositions faster than if the pencil and eraser were separate components. The advantages of the pencil cooperate with the advantages of the eraser to provide an additional benefit when they are combined.

However, the combination of your toothbrush, your comb, and your nail clippers do not cooperate to offer something more than if you used each item individually.

In effect, if your creation involves combining separate inventions, you could be eligible for patent registration if your invention as a whole offers more benefits than do the sum of its parts.

Labels: inventions, novelty, patents, unobvious