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November Legal Column |
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INTELLECTUAL PROPERTY PROTECTION - QUESTIONS AND ANSWERS |
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By Joel I. Rosenblatt, Attorney at Law Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@mindspring.com FOOLS GOLD OR FOOLISH FOR GOLD? Over the time I have been writing this column, about two years, many readers have asked how to sell their invention or how to get seed money or interest investors in developing their invention. One of the many reasons I have not responded (up to now that is), is inventions take many forms and may appeal to diverse markets. No one response could cover all of the possible combinations of inventions, inventors, or markets. For example, it is more likely to license an invention that has a compelling business appeal and a verifiable return on investment, than a consumer product, especially one using a gimmick, where the market has to be developed with consideration of other issues such as trademark or copyright. Take the case of a new system or method for attaching conductive leads on transistor semi conductive material. While the process is as old as the transistor itself, transistors operating at the very low chemical voltage differences for the joined elements require the combined resistance of the transistor’s elements have minimum resistance, maximum conductance, and minimum power consumption. No one will dispute in our world of portable telecommunications, lower power consumption means longer battery life and smaller and lighter cell phones. In the coming age of the cell phone Internet connection, that would bring a definite commercial advantage. This combination makes a compelling case for an invention which does what competition has driven transistor manufacturers to do by themselves. Assuming the cost of using this invention can be recovered by a reasonable return on investment or transistor makers who choose not to use this invention will be driven out of business by those who do, the case for a neat clean straight licensing deal with an initial payment and continuing royalties based on units manufactured, is obvious. However, take the case of a strictly consumer gimmick like the paste-on plastic magnifiers used to turn sunglasses into bifocal sunglasses. You probably have seen them advertised on TV, or have seen other like kind products in those “informationals.” That kind of invention takes a completely different approach and a different kind of thinking because the compelling case for investment does not exist or is not as clear as the invention known for filling a long felt, but unfilled commercial need. So the first consideration would be does a market exist for the inventive product. In the case of our past-on plastic magnifiers, that would depend on the number of people using bifocals who do not have prescription bifocal sunglasses or who would want to read with their subclasses instead of any other sun blocking device or by simply moving into a shaded spot. Second, the channels of distribution must be considered. Is the inventive product to be marketed with similar items such as sunglasses and does the product lend itself to inexpensive outlets where cheaper sunglasses are sold like drug stores and flea markets or should the product be marketed where designer sunglasses are sold as in large shopping malls or through opticians. Third, the manufacturing, marketing and distribution costs must be calculated as well as whether or what kind of contract manufacturer should be employed. It sounds complicated and it is. However, my purpose is not to discourage but simply to alert those having “a better idea,” of the sometimes complicated and even expensive process for converting an idea into protectable intellectual property and striking a reasonable licensing arrangement with one or more manufacturing licensees. In dealing with any invention, there are several steps which when followed, should insure 1) the invention, as the sole property of the inventor, is properly described and documented, 2) the invention is protected so any disclosures will not depend on the good faith of the party to whom the disclosure is made or on a local judge deciding if a confidentiality agreement is worth the paper and 3) that a license or marketing agreement will be tight and enforceable so all of the royalties accruing and due and payable will actually be paid and be paid on time, or if not paid, then enforcement is quick and inexpensive. AVOIDING THE HASTE THAT MAKES WASTE Let’s start even by assuming each of us has a new idea we respectively believe the world will want and will pay good money to acquire. Let’s say it came spontaneously as in ”inspiration” and we don’t know how to design or build it or how to market it or, most importantly, whether the invention will pass muster under the patent law as novel or not obvious and if it possesses the requisite utility required for any invention to be patentable. It is clear that merely being in possession of this valuable invention without being able to turn it into something that can be sold is like being Chris Columbus with the idea that he can sail around the world but without the ducats or whatever money was used his day, to buy the boats and pay the crew. Even with the boats and the crew, Columbus, being an experienced mariner, was wise enough to stop at the Azores to get his bearings and stock up on the necessary Agua (that’s Spanish for water), for a long and difficult journey. So, how do we, like Columbus, start on our journey. First, we need to assess our product or invention and see if it will hold water (no pun intended). As many a good idea failed at the Patent Office, a good start is a virtual peer review by a thorough search of the US Patent Office web site data base to determine if there are any patents or published applications that disclose the same or a similar ideas. That will require becoming familiar with the Patent Office classification and patent search systems and while you can do this work yourself, there are may patent services that are available to do this work for you for a fee. Once having completed the search, it will be necessary to compare the prior art patents located in the search with the invention and with reference to the patent law of novelty and obviousness. That too may be done yourself or you may choose to consult with a registered patent attorney. If at this point your invention is indicated as patentabe, that is it stands a chance of being patented if properly described and claimed in a duly filed patent application, then you are ready to proceed, that is sail out on the open ocean like Columbus, but in this case by disclosing the invention to prospective licensees, developers or investors, as the case may be. However, like Columbus, we should not leave without some form of protection. Columbus had it in the form of a compass, and we too, can have it but in the form of a provisional patent application or a utility patent application or where more risk is acceptable, by a non-disclosure or confidentiality agreement made with each party we contact. As I expect Columbus had his choice of compass makers, we have our choice of how to protect our invention, before disclosing it to potential licensees. One tried and true and inexpensive method is to use the provisional patent application route. A provisional patent application can be submitted in almost any form but the recommended way is to prepare it in the form of a full utility patent application but without the claims. In this way, there should be no question of the full extent of the invention and by preparing a full detailed description of the invention, an insight into the how the invention may be claimed will be gained which will assist in evaluating the monetary value of the invention. The advantage of the provisional patent application is that is costs only $80.00 for a small entity to file, not counting the fee charges for its preparation. The disadvantage is its term is only one year and is not renewable. However, with a full utility patent, you will now be armed with claims, which if allowed in an issued patent, will have rights under law from the date of publication of the application or 18 months from the filing date. The disadvantage is the higher cost of filing which is now up to $370.00 for a small entity plus the attorney’s fee for preparing the application which may be expected to be many times the filing cost. Another disadvantage is publication will be a full disclosure of the invention to whomever may want to steal it and if the invention is found not patentable with sufficiently broad claim coverage, the invention will be lost to the public domain. In next month’s column, I’ll finish my thoughts, on developing a commercial product from your invention, with the intricacies of manipulating your way through the business briar patch. TO .ARMS – TO .ARMS, MORE DOTS ARE COMING A sure sign that the internet as a part of our modern life is alive, is well and is growing, is the proliferation of new the new .name, .biz, and .info suffixes. The popularity of new suffixes which permit multiple numbers of new names, means at least more of us want to get our own internet identities. As registration is now open or opening, those interested should connect to ICAAN.ORG for full details. Of course, if there are any questions, a question duly placed to this column will duly receive an answer. |
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Biography |
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims. Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround. Education and Professional Affiliations: Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School. Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@mindspring.com . |
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