Posts Tagged ‘Patents’

IP Strategy – Getting Started

by Thomas Frasher on October 2, 2009

Intellectual Property Strategy

This article is a three part article on the need for a cohesive strategy for creating, developing, protecting and managing your companies intellectual property.

In previous articles I illustrated the ways to protect your intellectual property in the United States by availing yourself to the US Patent and Trademark Office. These articles were the beginning of the process. In this first part of a three part series I will cover the importance of creating a comprehensive Intellectual Property Strategy that will protect your market and your investment. As I have said many times before you need help to do this! And, you need the best help you can get! That said again, lets dive in!

Review of Concepts:

Let’s first review some basics:

1. What is a patent? A patent is a legal monopoly granted by the government to exploit your intellectual property for a specified time. A patent can cover a device, a process or any composition of matter created by a human being. It must
be novel and non-obvious and it cannot have already been rejected.

2. Types of patents: There are three types of patents in the US: Utility, Design and Plant. Utility patents cover most things that have function, design patents cover the outward appearance and plant patents cover asexually
reproduced plants. In the interest of full disclosure I have never worked on an Plant patent, nor do I know anyone that has, if that is your forte’ good luck and you are on your own.

3. What is a copyright?  A copyright is a law or laws that gives you ownership of the things your create. These are generally creative works including but not limited to: books, pictures, poetry, paintings, photographs and the like. The copyright gives you the right to reproduce the creation, distribute, create derivatives, perform or otherwise display publicly the work you have created.

4. What is a Trademark? A trademark is a type of intellectual property comprised of a distinctive symbol, sign or indicator used by an individual, business or other legal entity to help the consumers of the product or service
distinguish between themselves and others.

Need for a IP Strategy:

A cohesive IP strategy provides several things all are protective.

1. A strategy provides the direction for new development

2. A strategy provides the boundaries where your innovation can flourish without the intellectual and more importantly financial distractions can be reigned in.

3. A strategy defines where you specifically are going and also importantly where you are not going.

All these together save your business cash, time and effort while protecting your marketplace, your brand and your time.

Getting Started:

The get started developing any strategy you must first know your ultimate goal, until this is achieved you are working only with tactics, working without purpose; this is especially true when working with Intellectual Property, a mis-designed strategy will lead to wasted effort, resources and lost time.

Strategy must also be discerned from tactics, a distinction that many fail to understand. Strategy is the plan of actions, practices, roles and situations that must be produced to reach the ultimate goal. Tactics are the individual actions, practices, roles and situations that are performed in support of the Strategy to reach the ultimate goal, tactics may include interim goals along the way. That said the first step is to decide on your ultimate goal. Be specific; remember you are designing the future, so it’s big stuff you are doing here. With IP tactics include finding a good IP attorney, organizing your portfolio, determining your product roadmap, writing disclosures, working with developers, working with clerks and writing. All of the above items require you to get help.

Do It!

Step 1. Design your Ultimate Goal (i.e. Create A IP Portfolio for protecting and exploiting …..)

Step 2. List all the tactics needed to achieve that goal. (i.e. contact IP attorney, setup meetings, write disclosure, ….)

Spend quality time on Step 1, this is the most important step. The more clearly you define the strategy the more you will be able to see if your tactics are betraying your intention and you can correct to maintain alignment of your tactics to your ultimate goal.

Intellectual Property – Part IV – Finding Help

by Thomas Frasher on July 21, 2009

Intellectual Property – Part IV – Finding Help

As I’ve mentioned in every article on this subject (Article I, Article II, & Article III) you need help. And you need the best help you can get.  This article is about finding and engaging the best help you can get.

From Dictionary.com: Help; verb: to give or provide what is necessary to accomplish a task or satisfy a need; contribute strength or means to; render assistance to; cooperate effectively with; aid; assist

There are other distinctions to be sure, and for the purposes of this article I’ll be using the one above.

Here are some guidelines for gathering the help you need when creating and protecting intellectual property:

1. Be clear about you goal. If you intend to prosecute a patent, keep that in mind as you go forward.

2. Listen to your counsel and ask as many questions as you need to to make sure that you understand. Something to remember is that the help you find will by necessity be schooled in a discourse that is dissimilar to yours, anything you don’t understand will be filled in by your background and can lead to faulty assumptions.  If you have any doubt, ask.

3. Prepare as much ahead of time as possible and with as much detail as possible, before going out to find your help.

In the intellectual property realm there are basically 3 ways to prosecute the patent:

1. Engage a patent attorney:

a. tell them your invention,

b. they write it up,

c. you review it,

d. repeat b & c as many times as needed (better to get it right once) ,

e. you give them cash and they file the patent and 2 or 3 years later the USPTO issues or declines the patent.

2. Engage a patent service:

Usually patent clerks and non-licensed people help you navigate the paperwork and get the patent prepared, follow the same process as above with the exception that you file the patent yourself.

Upside: less expensive than option 1 above, and they can review your invention thoroughly; They are also not governed by the same rules and ethics as a patent attorney.

Downside: They can’t help you in a dispute; you’ll still need the patent attorney for that.

3. Do it yourself – AKA – the hard way.

a. You need to determine what forms to fill-in needed to file the patent,

b. you write up the design,

c. you review the invention write up,

d. you write a check to the USPTO and file you patent. 2-4 years later the USPTO will either grant or decline your application.

4. A combination of any of the above:

Depending on your relationship with the attorney, this option can save you thousands of dollars in attorney’s fees. That said there is a point to be made here: you will save the out of pocket cash that you don’t send to the attorney by spending your time doing the things the attorney would have done, either your time or the attorney’s time will get spent.

For all the patents I’ve filed in the past, it has been option 4 with the inventors doing some work and the patent attorney’s doing the rest. In my opinion it pays very large dividends to invest in a relationship with your patent attorney, they can and will help you.

Selecting an Attorney:

  1. I can’t stress this enough, find someone that has been doing this for a while.  The rules have recently changed and you need someone that has context on how the rules changed and how it will affect you.
  2. Find someone that you can work well with, you don’t have to be best friends, but you have to be able to trust them.
  3. Make sure they have a successful practice (partners, clerks, other staff, etc)
  4. Make sure the office is organized (it may not be neat and tidy, but it does need to be organized).
  5. If they are dismissive of your concerns, walk away. You are new to this, so when you don’t understand something have them explain it, the best attorney’s will take the time to make sure you understand what they are doing for you, and why.
  6. Make sure they are cognizant of the field you are inventing within. They or someone on their staff will need relevant exposure to the field, or you will spend a lot of time and therefore cash, explaining your invention to them (don’t take an oil drilling patent to a computer software patent attorney).
  7. You must be willing to walk away from the meeting without signing anything if you don’t feel right. You should feel no high pressure from the attorney.

With all these things taken into account, get to know your patent counsel; they are usually great folks, who want to help you. I have had patent attorneys point out derivative inventions that I had missed; if I’d had a poor relationship with them they may not have done that. What started as one patent became three.  On the other hand, sometime they will recommend combining patents (if you submit several related patents at once, I’ve had four patents become one), this will save you cash during your filing and probably give you better protections.

Another point to remember is that patents are not mysterious, magical things. They are practical, and denote a professional demeanor for your business. They can enhance the desirability for acquisition if that is your exit strategy, they can protect your marketplace and allow others to create markets with you.

Get started! … find a patent attorney that you can work well with, brainstorm with people you like to work with, invent something new, and bring it to the marketplace.

Intellectual Property – Part III – Brainstorming

by Thomas Frasher on July 14, 2009

Intellectual Property – Part III – Brainstorming

As I mentioned last week, this article is on brainstorming, this is the FUN part!!

Brainstorming is the process of creating new ideas and refining ideas into a something that may be unique and non-obvious. There are a few rules to have a successful brainstorming session, but they are ironclad, breaking any one of these rules will close down creativity and stifle participation from the people that your are brainstorming with.

Above All, being creative and inventing new products and services is a Learned Skill that can be developed just like reading, writing or golf.

Rules:

1. There are no bad ideas! Even ones that appear “bad” or misinformed or even flat our incorrect can be used as a springboard into good, new, and non-obvious inventions.

2. No one tanks on anyone else’s idea! Each person and their ideas are treated with dignity and respect, no criticism allowed (see point 1). If you have a team that tends to be critical of each other that is great, correct the problem and you will have a great team.  One approach is to inject humor into the meeting; this lightens the mood, opens space for more creativity and gives room for dumping old ideas and building new ones.

For example: A brainstorming meeting I had while working at Boeing, we were all given loaded squirt guns at the beginning of the meeting with instructions that if anyone tanked on someone else we would all squirt that person, at the end of the meeting we were all soaked, and we had all solved two problems:

a. We had a solution to our original need for the brainstorming and;

b. We had a tighter team that worked better together….plus; we got to keep the squirt guns.

3. Open your mind and look for the new thing in the pile of the old. This rule builds on rules 1 and 2.  Even old ideas can be applied to now situations to create new products and services.  Ideas from one industry can be stripped down and applied to another industry.

For Example: I have a patent submission to the USPTO (application number 20080313598) that is an application of a targeting solution algorithm to the problem of project management.

There are many places where new application of a previous idea is appropriate and creates new products or services that haven’t existed before. Even if the old ideas are not fruitful you will begin to develop the practice of creativity.

4. You MUST have fun! Anything less creates drudge and that will kill your creativity and make brainstorming a chores rather than a pleasure.

Ok, Let’s get started!

A bit of housekeeping:

  1. Someone will need to act as the scribe. This is a very important task and it should not be the same person each time, indeed if you can change the scribe during the session you will get better results, as everyone will have a chance to participate fully.
  2. The ideas should also be in a place where everyone can see them, preferably on a white board, large paper pad, or chalk board. As the ideas come and go you can cross them off and keep going.
  3. Set a definite start and stop time, this discourages flights into fantasy and people becoming tired, 1 hour is a good time frame, less and you don’t cover enough ground, more and it becomes labor.

Seed Ideas: these are ideas used to start the process; I want to reiterate that these may or may not be the final invention.  The idea is to let your imagination run freely, without regard to whether what you are thinking is reasonable, difficult or even possible.  Write everything that comes to mind down.

For example: if you are in the mechanical tool space, you start with the idea of a socket wrench that can reach into a blind spot to work on a bolt. This is already available commercially; however this is a starting point of the invention definition.  What other problems are solvable with this type of tool, how might they be solved better, faster, cheaper, easier. How about a wrench that is guided with an endoscope like camera and can be steered through a complex path to work on a bolt? Magnetic Head? Grippers? All these are valid inventions.

The point is nothing is out of bounds; you can combine ideas from multiple people and multiple disciplines to get the best inventions.

Document: As each idea is written on the whiteboard, paper pad or chalk board by the scribe , all the contributors can look at it, give it a rating, and then if they know of any prior art they speak up at that point (another reason not to tank on anyone, you need the candor in the conversation). Change scribes frequently.

You can look up prior art with a few search terms. You can search the USPTO or Google Patents for prior art.  This won’t replace a good patent search, but it will make a great first cut. If you find prior art all is not lost, you can read the previous patent and design a new patent to fill the gaps left by the previous one, or bring new technology to bear on the same problem.

Wrap Up: when you have about 5-10 minutes left in your session, it’s time to start wrapping things up. This means you select the best ideas that you have (you will have eliminated some) and write them down cleanly and coherently. These will be the basis for your patent search and your disclosure if you decide to continue.

You will need to document who was in the room, the date and time, give the idea a name of the form “Method and Apparatus for….” Fill in the blank with the solution description. Finally have everyone sign the bottom of the description.  You’re done!  Give everyone else a “High-5” and get on with your day.

Next Week: Finding Help

Intellectual Property – Part II – Templates!

by Thomas Frasher on July 7, 2009

Intellectual Property – Templates
As I promised in my last post, last week: this week is about templates for the creation of intellectual property.
A quick reminder is in order: I said in the first article in this series: you need help, and you need the best help you can get. Seek out and establish a relationship with the best patent counsel that you can find (more on that in Part 4 of the series).

At the time of this writing, there are nearly 130 official forms pertaining to the filing of patents only with the patent office. This article only describes the preliminary process, you will need legal counsel to help with the filing.

While templates are not a panacea for the creative process, they can help organize your thinking and help ensure that there are fewer gaps that can create problems.
The patent filing templates I’ve included here are comprehensive and by no means complete; they are intended to get you started and are no substitute for appropriate legal counsel. That out of the way, let’s get started:

First I will start with templates to assist in clarification of the thinking around the idea, then on to the initial protection, followed by the permanent protection, identification, power of attorney and assignment documents.

Patent Filing Documents:
-Initial Description – or “Do I really need to file a patent”?
This is a critical look at the product or service that you are thinking of patenting. It is coupled to the patent disclosure form below and if you think carefully and ground all of your thinking in facts only, you will know at the end if you should proceed.

Provisional Patent Filing – Quick very broad protection for a limited time.

Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date– Sample

The benefit to a provisional filing is that it starts the clock running on patentability.
For example: XYZ Company files a provisional patent on January 1st 2009, and ABC company files provisional patent for an essentially similar invention on June 1st 2009; patentability is in favor of the first provisional filing. It gets protection started earlier, even though you may not have all the information you need to file a non-provisional patent.

If you have all the information you need, skip the provisional and file a non-provisional patent.

Provision Filing Fees, like all filing fees are subject to change, current fees are listed here

Patent Filing – More detailed and more thorough protection

There are very handy guides on the USPTO (United States Patent and Trademark Office) website for patent filings of various types. The links to the guides are here:
For Utility Patents
For Design Patents

Declarations – Who is filing this patent?

The patent declarations are required as part of the patent filing process to determine the inventors’ names, addresses and country of citizenship. Something to remember here: anything you put here will be a public record for at least 25 years. That said, you might want to think about putting only your city instead of your street address when filling in the declarations document.

Sample document

Power of Attorney – helping someone help you

When you find an attorney that you like and that you assess is appropriate for you to work with you will need to file a Power of Attorney document, so that they may represent you to the patent office, each attorney will have their own document, they will differ in format and may have slightly different content, however for the most part that will contain the same information.

Sample Document

Assignments – Who actually can exploit the intellectual property described by the patent?

Assignments are important in the world we live and work in today. Patent assignments create enterprise value in that they become the property of the business entity that owns them. Assignments are made at the point of filing the patent and the assignment is part of the patent filing with the patent office. Each patent lawyer will have their own, and as with declarations and power of attorney documents they will all contain similar information.

Sample document

In some cases the attorney will combine documents into a single document, this makes keep track of all the information easier for all concerned.

Have fun, there is much to learn and it changes all the time.

Once again: You need help, get it!!

Next Week:  Brainstorming New Ideas

Intellectual Property (IP) – Creation & Exploitation

From Wikipedia: “… legal property rights over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; ideas, discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property include copyrights, trademarks, patents, industrial design rights and trade secrets.”

Definitions:

Patent: A patent is the right given by the government to the exclusive right to exploit an invention for a limited time in return for disclosing the invention.

Copyright: a copyright is a right given by the government to a publication for a limited time for any idea that is expressed in a fixed medium (books, film, recordings, etc).

Trademark: A trademark is a distinctive label, sign or indicator used to identify products or services supplied by a single individual, business or other entity.

Industrial design rights: Industrial design rights are intellectual property rights that protest the look and feel of inventions.  Covered are shape, size, color, physical design and or any combination of all of these factors.

Trade Secret: A trade secret is any formula, practice, design, tooling or instrumentation that is not easily derivable nor generally known, used by a business or individual to create and maintain a durable market advantage over competitors.

Reason’s for filing for intellectual property rights protection:

1. Economic exploitation of original work – first and foremost IP protection provides for a limited monopoly in which the owner can exploit their creation for profit.  As a business develops IP they are then free to market and develop additional products and derive further IP to increase the enterprise value of the business. Licensing or sale of the IP to someone that can further exploit the market is a valid business reason to file for IP protection.

2. Protect future business directions from encumbrances – Many businesses create a large patent portfolio in their chosen area of competency in order to fend off competition.  Failure to do this can lead a company to find themselves constrained and unable to continue to innovate on their preferred product road-map and either scrambling to re-innovate around their competition or watching their competition walk away with the market.

3. Constraining competition – Related to #2 above, this method is used to prevent either casual or intentional incursion into the enterprise’s market space. In most cases these are patents that may never be economically exploited but will be vigorously defended to prevent the marketplace and the identity and brand of a company from becoming diluted (think of Kleenex).

Why patent anything?

This is a simple question to answer: because you need to in order to compete in the marketplace.  If you invent a new product, service, practice or addition and don’t protect it, your competition will.  When your competition completes their protective efforts you will be constrained from producing the product or held as an economic hostage in the form of royalties and perhaps punitive payments for the production of the product that you invented.

Another reason to prepare a patent filing has nothing to do with protecting anything; and has everything to do with clarification of thinking on the design.  In order to prepare a complete patent filing, you are required to think through the patent carefully, this can illuminate many places in the design where it is weak, flawed, something is missing or the thinking is incomplete, and creates the space to remedy that part of the design.

What is required to patent an idea?

There are 4 things needed to support a patent filing:

  1. Invention needs to be New, Useful and Non-Obvious.
  2. A patent search to determine if any prior art exists (prior art is the term for someone else having thought of the invention earlier), or if the prior art applies.
  3. A good patent description.  There are many things that go into this piece of the plan, for a hint follow this link:  http://www.novelthink.com/novelthink/enough.html
  4. Consult a patent attorney.  Patents cost a fair amount of money to file, the more work you do up front that less you pay the attorney, however, they can save more than they cost if the prevent you from filing a disclosure that will fail. Build a relationship with a local attorney, it will be very helpful.

Why copyright anything?

This is also simple to address: you don’t have to.  The copyrights of all works exist by default with no need to do anything.  As additional protection the work can be filed with the copyright office http://www.copyright.gov . Having obtained a copyright the owner now has the ability to seek statutory damages and attorney’s fees from violators. Without the filing the question falls to who invented first.

Do I need an Attorney?

Technically speaking the answer is “No”, however, practically speaking engaging with an attorney as a form of help is very desirable.

For example: there are many terms used in filing a patent that legally either open or close the claim statement. http://www.bpmlegal.com/patgloss.html Ignorance of these can severely change the protections granted by the patent. You will need help, so get it!

Summary:

Intellectual property rights protection is important in today’s business environment if the business is delivering products for profit and wishes to build a durable market advantage over their competition.  Failure to do so can result in loss of the market that the business has built.

That said there is no single template for what or how to patent or copyright any specific item and there are almost as many ways to file a patent as people filing them, and as many as have been filed.  I have nearly 300 patent submissions and all differ from each other in some way.

So, do the research, write the patent, talk with an attorney and invent something new, useful and non-obvious!

Next week – Templates!