By: Irwin Stein & Gene Quinn
You have done everything right. You’ve invented a new, exciting and potentially revolutionary technology. You’ve responsibly filed patent applications on your innovations along the way, securing early priority dates with solid, thorough, comprehensive filings. Now you are at the edge of success – if only you can acquire the funding you need.
This is where venture capital comes into play, at least in theory. But technology VCs can be fickle (to put it politely). What is hot one minute is not the next. Today some are predicting that many tech companies will soon choose to relocate to China, which in 2016 saw as much venture capital investment as in the United States (approximately $50 billion according to Silicon Valley Bank), and where VCs are far more willing to fund an array of projects largely due to the massive commercial marketplace.
What if your startup is a university startup based on university developed and patented technology? The goal is not only to create a domestic corporation, but also to create a local corporation that leverages university technology. While there will be many trials and tribulations, if successful that university startup will benefit the entire region, bring high paying jobs to the community, return capital to the university to further research efforts, and continue to allow professors to teach and students to learn on the cutting edge of technological innovation.
Moving to China isn’t an option for a university startup, regardless of the technology and likelihood of attracting funding from venture capitalists. Similarly, many other technology companies simply can’t, or won’t, make the choice to chase money to China. Still with investment for Internet of Things (Iot) softening and hardware companies finding themselves largely out of options, many tech startups must become more creative.
Equity Crowdfunding
Fortunately it is not as difficult to find investors as you may think. Equity crowdfunding is on the path to surpass venture capital as the preferred way for startups and small businesses to raise capital.
In a nutshell, equity crowdfunding is the sale of equity (or debt) in your business directly to investors using an online platform instead of a stock brokerage firm. It is also less expensive than hiring a brokerage firm. Although direct to investor funding over the Internet has been around almost a generation, it became much more feasible (and popular) with the JOBS Act of 2012.
The JOBS Act provides for three regulations that govern distinct types of offerings. The offerings differ by how much money you can raise and from what type of investor you can raise it from. First, Regulation A (Reg. A) permits offerings of up to $50 million dollars from any investor. Second, Regulation Crowdfunding (Reg. CF) allows companies to raise up to $1,070,000 per year directly from the general public. Finally, Regulation D. (Reg. D) allows companies to advertise and solicit investments from accredited investors (i.e., those whose income is over $200,000 a year or possess over $1 million in assets outside of their primary residence). Reg. D has become the primary vehicle for companies seeking to use crowdfunding.
Read More >> http://www.ipwatchdog.com/2018/02/05/practical-guide-startup-funding/id=93257/
Wednesday, February 28, 2018
Tuesday, February 27, 2018
Yes, You Can (Quickly) Invent Something Great!
By: Michael J Foycik Jr.
September 16, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Need a great new product really fast? Something unique, special, and with chances to succeed? Then keep reading!
There is a vast treasure trove of great ideas and many proven successes which lack one thing: an update to modern technology and/or modern materials. Sometimes their features weren't practical, or the right materials didn't exist, or the sensors weren't cheap enough, or the motors weren't strong enough. Games or toys might not have been accessible to the average person, but would be with an electronic update.
So, where can we find this treasure trove? How can we use it? Easy! Find expired patents using an online search by class/subclass using the patent office web site. Example: for toys, the Class is 446. Subclasses are by topic, for example 446/15 is for toys with soap bubbles. There are many unusual and exciting categories – you'll be amazed by what you see! Other classes are equally amazing.
You want to steps? Easy - go to the US Patent Office official site (www.uspto.gov). Click patents, which brings up a listing. Click the third item down, Classification. The topic you'll want for an index (i.e., word) search is “search USPC index schedule and definitions.” The topic for a classification search is on the right hand side about a fourth of the way down called “browse listing of USPC Class numbers and titles.”
Now, on to the actual search steps: on that site, click “search for patents” in uppermost right side of page. It is in the light text just above the box “Search our site”. In the blue text on the right half of the page, click on either the top link (USPTO full text and image database) or on the second link down (USPTO Patent Application full text and image database) depending on which type you want.
Read More >> http://internationalpatentservice.com/Yes-You-Can-Invent-Something-Great.html
September 16, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Need a great new product really fast? Something unique, special, and with chances to succeed? Then keep reading!
There is a vast treasure trove of great ideas and many proven successes which lack one thing: an update to modern technology and/or modern materials. Sometimes their features weren't practical, or the right materials didn't exist, or the sensors weren't cheap enough, or the motors weren't strong enough. Games or toys might not have been accessible to the average person, but would be with an electronic update.
So, where can we find this treasure trove? How can we use it? Easy! Find expired patents using an online search by class/subclass using the patent office web site. Example: for toys, the Class is 446. Subclasses are by topic, for example 446/15 is for toys with soap bubbles. There are many unusual and exciting categories – you'll be amazed by what you see! Other classes are equally amazing.
You want to steps? Easy - go to the US Patent Office official site (www.uspto.gov). Click patents, which brings up a listing. Click the third item down, Classification. The topic you'll want for an index (i.e., word) search is “search USPC index schedule and definitions.” The topic for a classification search is on the right hand side about a fourth of the way down called “browse listing of USPC Class numbers and titles.”
Now, on to the actual search steps: on that site, click “search for patents” in uppermost right side of page. It is in the light text just above the box “Search our site”. In the blue text on the right half of the page, click on either the top link (USPTO full text and image database) or on the second link down (USPTO Patent Application full text and image database) depending on which type you want.
Read More >> http://internationalpatentservice.com/Yes-You-Can-Invent-Something-Great.html
Monday, February 26, 2018
When, why and how to launch your startup in secret
By: James McGrath
When you’re building your startup, the first step is to tell everybody about it, right?
While there are thousands of startups out there trying to get the attention of the press and prospective customers, there are those that deliberately avoid the limelight.
Businesses like Domo and Rev have gone the unusual route of making people sign non-disclosure agreements before letting prospective customers and funders have a play around with their products.
It’s unusual for a company to launch in complete stealth mode, and with an interconnected ecosystem it’s kind of hard to do things in complete silence these days. So why would you want to keep your startup under wraps?
The main benefits
The benefits of launching in stealth mode can be broadly sorted into three categories:
1. It gives you the focus to work on version 1.0 of your product without distraction
2. It helps build an air of mystique around your company, especially if the founders are well known
3. It keeps IP and the industry problem you’re targeting away from the prying eyes of potential competitors
It basically allows you the time and space to work on your product with a select group of potential clients and collaborators to keep the feedback loop really tight.
It also allows you to launch with a fully realised product which surprises and delights rather than doesn’t meet the expectations of hype.
Of course, this approach has its down side…
Read More >> https://www.myob.com/au/blog/when-why-and-how-to-launch-your-startup-in-secret/
When you’re building your startup, the first step is to tell everybody about it, right?
While there are thousands of startups out there trying to get the attention of the press and prospective customers, there are those that deliberately avoid the limelight.
Businesses like Domo and Rev have gone the unusual route of making people sign non-disclosure agreements before letting prospective customers and funders have a play around with their products.
It’s unusual for a company to launch in complete stealth mode, and with an interconnected ecosystem it’s kind of hard to do things in complete silence these days. So why would you want to keep your startup under wraps?
The main benefits
The benefits of launching in stealth mode can be broadly sorted into three categories:
1. It gives you the focus to work on version 1.0 of your product without distraction
2. It helps build an air of mystique around your company, especially if the founders are well known
3. It keeps IP and the industry problem you’re targeting away from the prying eyes of potential competitors
It basically allows you the time and space to work on your product with a select group of potential clients and collaborators to keep the feedback loop really tight.
It also allows you to launch with a fully realised product which surprises and delights rather than doesn’t meet the expectations of hype.
Of course, this approach has its down side…
Read More >> https://www.myob.com/au/blog/when-why-and-how-to-launch-your-startup-in-secret/
Sunday, February 25, 2018
Let's Sue That Trademark Infringer – Or Maybe Not!
By: Michael J Foycik Jr.
August 23, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Someone is infringing your trademark. Now you want to rush out and sue them! Let's stop and talk about that for a minute.
Let's just mention that there can be a number of defenses to a trademark lawsuit. Such defenses depend on the answers to the following (and possibly other) questions, such as: Was the infringer actually the first to use it? Can your trademark registration be challenged, or is it incontestible? Were you actually damaged? Is the alleged infringer's trademark really close enough to your trademark? Is the whole trademark infringed, or just part of it? Is your trademark a “word” mark or a logo (picture) mark?
Now let's say there are no defenses to the lawsuit, and victory is absolutely certain. This is very hypothetical, of course, since there is always some uncertainly. But, assuming this perfect situation, should you still go ahead and sue? The answer may be “no” for a number of reasons!
So don't sue? Why not? Well, for starters, if the infringement was not“intentional” (within the legal meaning of that term), then it can be very difficult to obtain meaningful damages. That's right, you can win the lawsuit and yet get little or no cash. The most common result of a successful trademark infringement lawsuit is an injunction – an order to stop the infringement. Even worse, the injunction sometimes gives the infringer ample time to use up their stock of infringing goods.
But, the above is for infringement that is not “intentional” – what if the infringer is intentionally infringing? That's different, and you can ask for actual damages, and/or lost profits, and/or attorneys fee, and/or costs, among other things. Notice I said you can ask! However, asking is not the same as getting. Worse, it can be difficult to prove lost profits or actual damages.
Read More >> http://internationalpatentservice.com/Lets-Sue-That-Trademark-Infringer.html
August 23, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Someone is infringing your trademark. Now you want to rush out and sue them! Let's stop and talk about that for a minute.
Let's just mention that there can be a number of defenses to a trademark lawsuit. Such defenses depend on the answers to the following (and possibly other) questions, such as: Was the infringer actually the first to use it? Can your trademark registration be challenged, or is it incontestible? Were you actually damaged? Is the alleged infringer's trademark really close enough to your trademark? Is the whole trademark infringed, or just part of it? Is your trademark a “word” mark or a logo (picture) mark?
Now let's say there are no defenses to the lawsuit, and victory is absolutely certain. This is very hypothetical, of course, since there is always some uncertainly. But, assuming this perfect situation, should you still go ahead and sue? The answer may be “no” for a number of reasons!
So don't sue? Why not? Well, for starters, if the infringement was not“intentional” (within the legal meaning of that term), then it can be very difficult to obtain meaningful damages. That's right, you can win the lawsuit and yet get little or no cash. The most common result of a successful trademark infringement lawsuit is an injunction – an order to stop the infringement. Even worse, the injunction sometimes gives the infringer ample time to use up their stock of infringing goods.
But, the above is for infringement that is not “intentional” – what if the infringer is intentionally infringing? That's different, and you can ask for actual damages, and/or lost profits, and/or attorneys fee, and/or costs, among other things. Notice I said you can ask! However, asking is not the same as getting. Worse, it can be difficult to prove lost profits or actual damages.
Read More >> http://internationalpatentservice.com/Lets-Sue-That-Trademark-Infringer.html
Saturday, February 24, 2018
5 essential intellectual property considerations for a new startup
By: Sponsor
EU companies can compete globally only by creating high value products and services, strong brands and innovations. This means that many EU based startups operate in intellectual property intensive environment. Here are some 5 intellectual property considerations for an early stage startup company.
1. Transfer pre-incorporation intellectual property to your company
Good things happen when people get together, innovate and create new things. If that leads to patentable inventions or creative works, these belong to the inventors and creators personally, especially if the company has not been incorporated yet. Problems arise if one of the inventors or creators leaves the company and claims ownership of a crucial invention or creation. To avoid this, the creators should transfer all intellectual property to the company. Failure to do that may be a red flag for investors.
2. Choose a great name and make sure you can use it
Choosing a good name is difficult. From legal point of view there are two aspects that make a good name. Firstly, the name must be one that can be actually used without infringing prior trademarks. You should use an intellectual property attorney to do proper availability searches before committing to a name, but failing that, check this brief blog post on how to do a basic search yourself. Secondly, the name must be one that can be protected and owned. The criteria for protectability varies from country to country, but generally speaking the name must be “distinctive”. For practical tips and examples, on choosing a distinctive name check out this post.
3. Protect your name with trademark(s)
Choosing a good name is not enough. You only have rights to that name if it is protected as a trademark. Company registration can give limited protection, but in many countries they receive weak or even no protection against the use of later trademarks. Trademark protection is a relatively inexpensive form of intellectual property protection, and failing to do that may lead to a situation where the name must be changed later. Trademark should be protected in those countries where you intend to do business. You can apply for EU trademark here.
4. To patent or not?
The decision to patent or not to patent should be done before your invention is disclosed publicly. For example, pitching in a startup competition may lead to the loss of patentability of your invention. Same applies to designs (e.g. product’s shape or user interface). If in doubt, you should consult an intellectual property attorney. Remember also that patent application will eventually become public and provide crucial information about your invention to competitors. Another option is simply keep the invention secret. The advantage of trade secrets is there is no registration requirement and the protection is not limited in time. The most notable disadvantage is that you are not protected in case of reverse engineering.
5. Remember intellectual property when hiring and contracting
In many countries transfer of intellectual property is not automatic from employee or contractor to the company. For example, if an employee or contractor creates a brochure, logo, user interface or other materials, it is possible or even likely that copyright belongs to the creator, not the company. The easiest way to make sure that all intellectual property belong to the company is to include intellectual property assignment provisions in employment and procurement contracts.
Source >> http://www.eu-startups.com/2018/02/5-essential-intellectual-property-considerations-for-a-new-startup/
EU companies can compete globally only by creating high value products and services, strong brands and innovations. This means that many EU based startups operate in intellectual property intensive environment. Here are some 5 intellectual property considerations for an early stage startup company.
1. Transfer pre-incorporation intellectual property to your company
Good things happen when people get together, innovate and create new things. If that leads to patentable inventions or creative works, these belong to the inventors and creators personally, especially if the company has not been incorporated yet. Problems arise if one of the inventors or creators leaves the company and claims ownership of a crucial invention or creation. To avoid this, the creators should transfer all intellectual property to the company. Failure to do that may be a red flag for investors.
2. Choose a great name and make sure you can use it
Choosing a good name is difficult. From legal point of view there are two aspects that make a good name. Firstly, the name must be one that can be actually used without infringing prior trademarks. You should use an intellectual property attorney to do proper availability searches before committing to a name, but failing that, check this brief blog post on how to do a basic search yourself. Secondly, the name must be one that can be protected and owned. The criteria for protectability varies from country to country, but generally speaking the name must be “distinctive”. For practical tips and examples, on choosing a distinctive name check out this post.
3. Protect your name with trademark(s)
Choosing a good name is not enough. You only have rights to that name if it is protected as a trademark. Company registration can give limited protection, but in many countries they receive weak or even no protection against the use of later trademarks. Trademark protection is a relatively inexpensive form of intellectual property protection, and failing to do that may lead to a situation where the name must be changed later. Trademark should be protected in those countries where you intend to do business. You can apply for EU trademark here.
4. To patent or not?
The decision to patent or not to patent should be done before your invention is disclosed publicly. For example, pitching in a startup competition may lead to the loss of patentability of your invention. Same applies to designs (e.g. product’s shape or user interface). If in doubt, you should consult an intellectual property attorney. Remember also that patent application will eventually become public and provide crucial information about your invention to competitors. Another option is simply keep the invention secret. The advantage of trade secrets is there is no registration requirement and the protection is not limited in time. The most notable disadvantage is that you are not protected in case of reverse engineering.
5. Remember intellectual property when hiring and contracting
In many countries transfer of intellectual property is not automatic from employee or contractor to the company. For example, if an employee or contractor creates a brochure, logo, user interface or other materials, it is possible or even likely that copyright belongs to the creator, not the company. The easiest way to make sure that all intellectual property belong to the company is to include intellectual property assignment provisions in employment and procurement contracts.
Source >> http://www.eu-startups.com/2018/02/5-essential-intellectual-property-considerations-for-a-new-startup/
Thursday, February 22, 2018
What Does A Trademark Lawsuit Cost?
By: Michael J Foycik Jr.
August 23, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Trademark infringement is a highly charged subject, and I have seen how it affects the trademark owner. A lawsuit would seem like a wonderful solution. But, what should it cost?
Though I have heard many numbers, it is all just hearsay. Even so, it may be helpful to say it.
A very small law firm or individual attorney will often charge less than a large firm. I have heard stories wherein a plaintiff might pay somewhere between 10k and 30k, depending on if/when it settles. Higher numbers are possible when it goes to trial and there are many issues. Is this a good value? That depends – if you can only afford that much, then there's simply no choice.
A big company practically must use a large law firm for its reputation and size. There is great variation, but one should expect to pay for that large size and reputation. I have heard a number of experienced litigators say to simply add a zero to the numbers used for a small law firm. Is it worth it? That depends, but I have seen examples where it was well worth having a large firm do the litigation.
Where's that money go, anyway? Well, a portion goes to filing or answering the Complaint; attending to discovery and motions related to discovery; depositions and court reporter costs; various court hearings where attendance is required; and finally for the trial itself (if it goes that far).
If you're the plaintiff, you'll have some control over the costs. If you raise more issues, then the cost will be higher. Or, if you challenge everything using Motions, then your costs will skyrocket.
Read More >> http://internationalpatentservice.com/What-Does-A-Trademark-Lawsuit-Cost.html
August 23, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Trademark infringement is a highly charged subject, and I have seen how it affects the trademark owner. A lawsuit would seem like a wonderful solution. But, what should it cost?
Though I have heard many numbers, it is all just hearsay. Even so, it may be helpful to say it.
A very small law firm or individual attorney will often charge less than a large firm. I have heard stories wherein a plaintiff might pay somewhere between 10k and 30k, depending on if/when it settles. Higher numbers are possible when it goes to trial and there are many issues. Is this a good value? That depends – if you can only afford that much, then there's simply no choice.
A big company practically must use a large law firm for its reputation and size. There is great variation, but one should expect to pay for that large size and reputation. I have heard a number of experienced litigators say to simply add a zero to the numbers used for a small law firm. Is it worth it? That depends, but I have seen examples where it was well worth having a large firm do the litigation.
Where's that money go, anyway? Well, a portion goes to filing or answering the Complaint; attending to discovery and motions related to discovery; depositions and court reporter costs; various court hearings where attendance is required; and finally for the trial itself (if it goes that far).
If you're the plaintiff, you'll have some control over the costs. If you raise more issues, then the cost will be higher. Or, if you challenge everything using Motions, then your costs will skyrocket.
Read More >> http://internationalpatentservice.com/What-Does-A-Trademark-Lawsuit-Cost.html
Wednesday, February 21, 2018
Intellectual property strategies for startups
By: Benjamin Lehberger
Intellectual property protection is an important consideration for most startups. Obtaining intellectual property protection, such as patents, can minimize competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. In formulating an intellectual property strategy for your startup, consider the following.
File early, and keep quiet
Your time to file for patent protection is limited and patents should be contemplated early on in development. In the United States, an inventor has a one-year “grace period” from first publicizing an invention to filing for patent protection, after which it is too late. However, you should not wait even that long. In 2013, the U.S. patent system switched from a first-to-invent to a first-inventor-to-file system. This subtle difference in terminology could mean dire consequences for those who delay seeking patent protection.
Under the old first-to-invent system, you could be the first to conceive of an invention and still obtain patent rights over an earlier filer by showing that you conceived first and continued to diligently work on your invention. Today, it is a race to the patent office. Regardless of who conceived of the invention first, the first one to file their patent application “wins.”
Also, it is important to note that the one-year “grace period” to file a patent application is not available in most countries outside of the United States. If you plan to seek patent protection abroad, publicizing your invention at any time before filing a patent application could put your foreign intellectual property rights in jeopardy. Therefore, file early and keep quiet until you do.
File again as the invention evolves
As your startup continues to develop its product or products, consider each new feature as a possibility for patent protection. Startups that file one early patent application and stop may find that, once the patent issues, the product has moved far beyond what was in the original patent application. The product may end up being under-protected or not even covered by the patent at all.
It is important to reevaluate patent protection on a regular basis and consider filing on new features of the invention when applicable. If the product is evolving quickly, consider filing a provisional patent application or a series of provisional patent applications within a year before filing a utility patent application.
Do not wait for your patent to issue
Patents take time. While there are avenues available to expedite examination, on average it takes more than two years for a patent to be granted by the U.S. Patent Office. About 30 percent of patent applications do not make it through at all.
Having an issued patent may help to get funding for your startup and secure your place in your market. But, do not wait until your patent issues to commercialize your invention. Keep your startup moving forward and keep developing. Chances are, you will solve additional problems along the way, which may lead to even more important inventions. In the meantime, you will be building your brand, reputation and revenue.
Consider design patents
When discussing patents, the focus is often on utility patents, but design patents should also be considered as part of a well-rounded intellectual property strategy. In general, a utility patent protects the way a product is used and works, while a design patent protects the way the product looks. By the end of 2015, the U.S. Patent Office had issued more than 9.2 million utility patents, but only about 746,000 design patents.
Design patents can provide significant value as a supplement to utility patents or as a replacement when utility patent protection is unavailable. Software utility patents are still available in the United States. But, following the U.S. Supreme Court’s decision in Alice v. CLS Bank, obtaining utility patent protection for software-related inventions has become more difficult and less predictable. Design patents provide a viable option to protect certain features of software-related inventions, particularly the graphical user interfaces.
The term of a design patent is slightly less, 15 years from grant for a design patent versus 20 years from filing for a utility patent, but so is the cost. Also, design patents often can be obtained much quicker than utility patents.
Do not rely solely on patents
While patents are a valuable asset to any startup, they are only one piece of the puzzle. First and foremost, a startup needs a good product or service to be successful. The Patent Office awards patents for new and non-obvious inventions. Receiving a patent does not mean, however, that it is necessarily a good invention or one that anyone will want to buy. Make sure what you are protecting is worth protecting.
Second, build a unique brand and protect it with registered trademarks. A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others. Having a strong and recognizable trademark can be extremely valuable for distinguishing you from the competition. And, unlike patents, a registered trademark never expires as long as you keep using it. Trademarks do not have strict filing deadlines like patents, but it is best to start early and have a trademark clearance search done to ensure that there are no conflicts that could prevent your use of the trademark.
Finally, depending on the type of business your startup is in, copyright and trade secret protection also should be considered in your intellectual property strategy. Talk to an intellectual property professional as you begin building your startup to discuss what types of intellectual property protection will work best for you.
Source >> https://techcrunch.com/2016/10/31/intellectual-property-strategies-for-startups/
Intellectual property protection is an important consideration for most startups. Obtaining intellectual property protection, such as patents, can minimize competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. In formulating an intellectual property strategy for your startup, consider the following.
File early, and keep quiet
Your time to file for patent protection is limited and patents should be contemplated early on in development. In the United States, an inventor has a one-year “grace period” from first publicizing an invention to filing for patent protection, after which it is too late. However, you should not wait even that long. In 2013, the U.S. patent system switched from a first-to-invent to a first-inventor-to-file system. This subtle difference in terminology could mean dire consequences for those who delay seeking patent protection.
Under the old first-to-invent system, you could be the first to conceive of an invention and still obtain patent rights over an earlier filer by showing that you conceived first and continued to diligently work on your invention. Today, it is a race to the patent office. Regardless of who conceived of the invention first, the first one to file their patent application “wins.”
Also, it is important to note that the one-year “grace period” to file a patent application is not available in most countries outside of the United States. If you plan to seek patent protection abroad, publicizing your invention at any time before filing a patent application could put your foreign intellectual property rights in jeopardy. Therefore, file early and keep quiet until you do.
File again as the invention evolves
As your startup continues to develop its product or products, consider each new feature as a possibility for patent protection. Startups that file one early patent application and stop may find that, once the patent issues, the product has moved far beyond what was in the original patent application. The product may end up being under-protected or not even covered by the patent at all.
It is important to reevaluate patent protection on a regular basis and consider filing on new features of the invention when applicable. If the product is evolving quickly, consider filing a provisional patent application or a series of provisional patent applications within a year before filing a utility patent application.
Do not wait for your patent to issue
Patents take time. While there are avenues available to expedite examination, on average it takes more than two years for a patent to be granted by the U.S. Patent Office. About 30 percent of patent applications do not make it through at all.
Having an issued patent may help to get funding for your startup and secure your place in your market. But, do not wait until your patent issues to commercialize your invention. Keep your startup moving forward and keep developing. Chances are, you will solve additional problems along the way, which may lead to even more important inventions. In the meantime, you will be building your brand, reputation and revenue.
Consider design patents
When discussing patents, the focus is often on utility patents, but design patents should also be considered as part of a well-rounded intellectual property strategy. In general, a utility patent protects the way a product is used and works, while a design patent protects the way the product looks. By the end of 2015, the U.S. Patent Office had issued more than 9.2 million utility patents, but only about 746,000 design patents.
Design patents can provide significant value as a supplement to utility patents or as a replacement when utility patent protection is unavailable. Software utility patents are still available in the United States. But, following the U.S. Supreme Court’s decision in Alice v. CLS Bank, obtaining utility patent protection for software-related inventions has become more difficult and less predictable. Design patents provide a viable option to protect certain features of software-related inventions, particularly the graphical user interfaces.
The term of a design patent is slightly less, 15 years from grant for a design patent versus 20 years from filing for a utility patent, but so is the cost. Also, design patents often can be obtained much quicker than utility patents.
Do not rely solely on patents
While patents are a valuable asset to any startup, they are only one piece of the puzzle. First and foremost, a startup needs a good product or service to be successful. The Patent Office awards patents for new and non-obvious inventions. Receiving a patent does not mean, however, that it is necessarily a good invention or one that anyone will want to buy. Make sure what you are protecting is worth protecting.
Second, build a unique brand and protect it with registered trademarks. A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from those of others. Having a strong and recognizable trademark can be extremely valuable for distinguishing you from the competition. And, unlike patents, a registered trademark never expires as long as you keep using it. Trademarks do not have strict filing deadlines like patents, but it is best to start early and have a trademark clearance search done to ensure that there are no conflicts that could prevent your use of the trademark.
Finally, depending on the type of business your startup is in, copyright and trade secret protection also should be considered in your intellectual property strategy. Talk to an intellectual property professional as you begin building your startup to discuss what types of intellectual property protection will work best for you.
Source >> https://techcrunch.com/2016/10/31/intellectual-property-strategies-for-startups/
Tuesday, February 20, 2018
Electronics Inventions Facing Patent Legal Adversity – Surprisingly Good News For Your Inventive Electronics!
By: Michael J Foycik Jr.
August 4, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You may already know the patent hurdles facing inventions related to electonics. Over the last few years, the federal appellate courts have sharply limited what is and is not a patentable electronic invention.
At one major example, the case In re Bilski limited electronics and software claims to those that require hardware. Here's a very short listing of objections that have recently been seen: mere data-gathering is not a sufficient role for the device; the device is not truly needed to execute the invention and merely carries out the steps; and the device employs transformative steps that require no particular machine. Those are major hurdles to overcome. Yet, there are more such hurdles.
But, that's actually very good news for inventors in electronics! With fewer patents, it is easier for a new one to dominate a valuable technical area. Or, if you have a late inventive entry into a field and worry that you may be too late, an absence of patents could allow you in. And, of course, your invention may be the one to prevail, if your attorney knows what to do.
Any why is any of the above good news? Simple – most of the problems are in how the invention is being claimed, not in the invention itself. Many times, the invention itself could well be patentable, if claimed correctly. If your patent attorney knows the case law, you could do well!
Here's an example of what the knowledgeable patent attorney can put into a good claim. For a method claim using a computer or electronic hardware, the claim should recite a step of providing the computer or electronic hardware. But that's not usually enough: it also helps to add something worthwhile about the computer or electronic hardware into the preaamble of the claim.
Read More >> http://internationalpatentservice.com/Electronics-Inventions-Facing-Patent-Legal-Adversity.html
August 4, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You may already know the patent hurdles facing inventions related to electonics. Over the last few years, the federal appellate courts have sharply limited what is and is not a patentable electronic invention.
At one major example, the case In re Bilski limited electronics and software claims to those that require hardware. Here's a very short listing of objections that have recently been seen: mere data-gathering is not a sufficient role for the device; the device is not truly needed to execute the invention and merely carries out the steps; and the device employs transformative steps that require no particular machine. Those are major hurdles to overcome. Yet, there are more such hurdles.
But, that's actually very good news for inventors in electronics! With fewer patents, it is easier for a new one to dominate a valuable technical area. Or, if you have a late inventive entry into a field and worry that you may be too late, an absence of patents could allow you in. And, of course, your invention may be the one to prevail, if your attorney knows what to do.
Any why is any of the above good news? Simple – most of the problems are in how the invention is being claimed, not in the invention itself. Many times, the invention itself could well be patentable, if claimed correctly. If your patent attorney knows the case law, you could do well!
Here's an example of what the knowledgeable patent attorney can put into a good claim. For a method claim using a computer or electronic hardware, the claim should recite a step of providing the computer or electronic hardware. But that's not usually enough: it also helps to add something worthwhile about the computer or electronic hardware into the preaamble of the claim.
Read More >> http://internationalpatentservice.com/Electronics-Inventions-Facing-Patent-Legal-Adversity.html
Monday, February 19, 2018
How Will Enterprise Intellectual Property (IP) Management Software Market Expand During 2016-2026? Key Insights from Ongoing Forecast Study
By: Ankush Nikam
Effective intellectual property (IP) management is essential to achieve competitive edge in the market. The highly competitive business environment is influencing companies to invest in technologies that ensure businesses and IP management strategies are categorically aligned to ensure smooth functioning of the organisation. Enterprise management of intellectual property assets is gaining traction globally, as companies are realising that unlicensed public usage can be detrimental to not only the overall bottom-line of the company, but also to the entire business strategy.
IP management software provides collaborative IP management services for different corporate requirements. Increasing emphasis on protecting and managing intellectual property portfolio is driving the growth of the globalenterprise intellectual property management software market.
Adoption of enterprise management of IP is gaining traction, as more organisations focus on organising their IP assets tactically and protecting them from unlicensed usage. Changing perceptions on IP has also influenced businesses to invest in their proper and organised management. While IP was seen as a corporate property for a long time, today, it is viewed as an inherent component of a strong business strategy. Many businesses have boosted their bottom-line by monetising their IP assets.The importance of staying competitive and widespread implementation of smart system management is encouraging software developers to invest in intellectual property management software.
High-end operations and large organisational functions is accelerating the adoption of these technologies in the end-use industries. In addition, frequent customisation in product by end users is benefiting the enterprise intellectual property management software market, as they protect and safeguard the essentials of intellectual property handlings and treatment such as inventions, patents, trademarks, and other IP related contracts in an systematic manner.
The market is also expected to gain from strategic partnerships between the leading industry members.
For instance, industry pioneer IPfolio recently entered into a partnership with ProspeQt- a Brazilian player, to grow its presence in the emerging market of South America. However, with all the associated benefits these service providers come across number of challenges and obstacles predominantly in the initial stages, most of which have to do with the high cost of setting up the services in an organisation. High initial investment can impede the growth of the market during the forecast period.
Enterprise Intellectual Property Management Software Market Segmentation By module type: Patent, Trademark, Design, Copyright, Litigation, IPAB (Intellectual Property Appellate Board), Others; By service type: Development and implementation, Consulting, Support and Maintenance; By end-user: Banking and Financial Services (BFSI), Energy, Aerospace and Defence, Oil and Gas, Electronics and Semiconductors, Automotive, HealthCare, Others
The global enterprise intellectual property management software market is projected to register a favourable growth through the forecast period, 2016?2026. North America is projected to maintain its lead in the global intellectual property management software market. Asia Pacific region is anticipated to increase its dominance in terms of growth owing to its consistent growing demand from China and India. Some of the key participants in global intellectual property management software market are: Anaqua, Inc., Patrix AB, IPfolio, SimpleLegal, Pattsy, FlexTrac, Lecorpio , WebTMS and CPA Global (Patrafee).
Source >> https://www.latestmarketreports.com/2018/02/17/how-will-enterprise-intellectual-property-ip-management-software-market-expand-during-2016-2026-key-insights-from-ongoing-forecast-study/
Effective intellectual property (IP) management is essential to achieve competitive edge in the market. The highly competitive business environment is influencing companies to invest in technologies that ensure businesses and IP management strategies are categorically aligned to ensure smooth functioning of the organisation. Enterprise management of intellectual property assets is gaining traction globally, as companies are realising that unlicensed public usage can be detrimental to not only the overall bottom-line of the company, but also to the entire business strategy.
IP management software provides collaborative IP management services for different corporate requirements. Increasing emphasis on protecting and managing intellectual property portfolio is driving the growth of the globalenterprise intellectual property management software market.
Adoption of enterprise management of IP is gaining traction, as more organisations focus on organising their IP assets tactically and protecting them from unlicensed usage. Changing perceptions on IP has also influenced businesses to invest in their proper and organised management. While IP was seen as a corporate property for a long time, today, it is viewed as an inherent component of a strong business strategy. Many businesses have boosted their bottom-line by monetising their IP assets.The importance of staying competitive and widespread implementation of smart system management is encouraging software developers to invest in intellectual property management software.
High-end operations and large organisational functions is accelerating the adoption of these technologies in the end-use industries. In addition, frequent customisation in product by end users is benefiting the enterprise intellectual property management software market, as they protect and safeguard the essentials of intellectual property handlings and treatment such as inventions, patents, trademarks, and other IP related contracts in an systematic manner.
The market is also expected to gain from strategic partnerships between the leading industry members.
For instance, industry pioneer IPfolio recently entered into a partnership with ProspeQt- a Brazilian player, to grow its presence in the emerging market of South America. However, with all the associated benefits these service providers come across number of challenges and obstacles predominantly in the initial stages, most of which have to do with the high cost of setting up the services in an organisation. High initial investment can impede the growth of the market during the forecast period.
Enterprise Intellectual Property Management Software Market Segmentation By module type: Patent, Trademark, Design, Copyright, Litigation, IPAB (Intellectual Property Appellate Board), Others; By service type: Development and implementation, Consulting, Support and Maintenance; By end-user: Banking and Financial Services (BFSI), Energy, Aerospace and Defence, Oil and Gas, Electronics and Semiconductors, Automotive, HealthCare, Others
The global enterprise intellectual property management software market is projected to register a favourable growth through the forecast period, 2016?2026. North America is projected to maintain its lead in the global intellectual property management software market. Asia Pacific region is anticipated to increase its dominance in terms of growth owing to its consistent growing demand from China and India. Some of the key participants in global intellectual property management software market are: Anaqua, Inc., Patrix AB, IPfolio, SimpleLegal, Pattsy, FlexTrac, Lecorpio , WebTMS and CPA Global (Patrafee).
Source >> https://www.latestmarketreports.com/2018/02/17/how-will-enterprise-intellectual-property-ip-management-software-market-expand-during-2016-2026-key-insights-from-ongoing-forecast-study/
Sunday, February 18, 2018
NDAs: Trick or Treat - Do They Help, and Should You Want One?
By: Michael J Foycik Jr.
June 21, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
If you're an inventor, you've probably seen an NDA (Non-Disclosure Agreement). Do NDAs really help? And, can NDAs be enforced? Is there anything tricky there? Good questions, and you might be surprised by the answers!
It would help to know that an NDA covers trade secrets. Yes, you want to show your invention to someone, and that invention is covered by a patent application. But, that means your invention is a trade secret (assuming you haven't already published it already). So, your invention can also be your trade secret.
If your invention is stolen (misappropriated), you would probably prefer tort damages, instead of contract damages or patent damages. Here's why: tort damages can be punitive in nature and can therefore be big even when the infraction is small. Contract damages tend to be limited to the provable amount of money lost (there are exceptions). Patent damages cover actual infringement situations, provide a percentage of the lost profits (as one example, and there are exceptions), and require an issued patent. Every case is different, and the above is just a rough guide – you'll need to talk with a lawyer for specific advice. Note that an NDA is a contract and often specifies the damages and the law to be applied.
Here's the tricky surprise for the unwary: An NDA on its face seems to be a way to switch from trade secret damages to contract damages. The inventor, i.e. the trade secret owner, may very well not be too happy about that. Companies that want to look at inventors' trade secrets probably should like NDAs, and that's just what we often see.
Does an NDA really take away trade secret rights? That's hard to tell exactly, as it may well depend on the specifics of the situation. One may well expect an uphill fight to get trade secret damages if an NDA is involved.
It actual practice, let's say there is a minor breach of the inventor's trade secret rights (i.e., “the idea is stolen”). Trade secret damages could be quite high, especially where intent is proven. Contract damages are often limited to the actual harm such as lost profits, or to an amount specified in the NDA.
By way of contrast, if that breach were to be covered under patent law, damages would probably be relatively small (a percentage of the profits or the selling price). One could easily lose money trying to enforce patent rights in that case.
In theory, an NDA means the recipient can't show anyone. And, since it is normally a signed agreement, it is also a contract. First surprise! That means it intends that the transaction is to be covered by contract law, not trade secret law. Big difference!
Read More >> http://internationalpatentservice.com/Trick-or-Treat.html
June 21, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
If you're an inventor, you've probably seen an NDA (Non-Disclosure Agreement). Do NDAs really help? And, can NDAs be enforced? Is there anything tricky there? Good questions, and you might be surprised by the answers!
It would help to know that an NDA covers trade secrets. Yes, you want to show your invention to someone, and that invention is covered by a patent application. But, that means your invention is a trade secret (assuming you haven't already published it already). So, your invention can also be your trade secret.
If your invention is stolen (misappropriated), you would probably prefer tort damages, instead of contract damages or patent damages. Here's why: tort damages can be punitive in nature and can therefore be big even when the infraction is small. Contract damages tend to be limited to the provable amount of money lost (there are exceptions). Patent damages cover actual infringement situations, provide a percentage of the lost profits (as one example, and there are exceptions), and require an issued patent. Every case is different, and the above is just a rough guide – you'll need to talk with a lawyer for specific advice. Note that an NDA is a contract and often specifies the damages and the law to be applied.
Here's the tricky surprise for the unwary: An NDA on its face seems to be a way to switch from trade secret damages to contract damages. The inventor, i.e. the trade secret owner, may very well not be too happy about that. Companies that want to look at inventors' trade secrets probably should like NDAs, and that's just what we often see.
Does an NDA really take away trade secret rights? That's hard to tell exactly, as it may well depend on the specifics of the situation. One may well expect an uphill fight to get trade secret damages if an NDA is involved.
It actual practice, let's say there is a minor breach of the inventor's trade secret rights (i.e., “the idea is stolen”). Trade secret damages could be quite high, especially where intent is proven. Contract damages are often limited to the actual harm such as lost profits, or to an amount specified in the NDA.
By way of contrast, if that breach were to be covered under patent law, damages would probably be relatively small (a percentage of the profits or the selling price). One could easily lose money trying to enforce patent rights in that case.
In theory, an NDA means the recipient can't show anyone. And, since it is normally a signed agreement, it is also a contract. First surprise! That means it intends that the transaction is to be covered by contract law, not trade secret law. Big difference!
Read More >> http://internationalpatentservice.com/Trick-or-Treat.html
Thursday, February 15, 2018
Startups, New Entrepreneurs, and Intellectual Property
By: Robert Klinck
Every startup and entrepreneur needs to understand the basics of intellectual property at the outset of building a business. Intellectual property (“IP”) is not simply any idea or invention. It is a term of art that refers to intangible assets that have obtained legal protection. IP consists of patents, copyrights, trademarks, and trade secrets. It can be found in all industries and markets and in all segments of a business.
Understanding the different types of IP allows you to determine, at least on a basic level, what kind of protection you may be able to obtain for your intangible assets. You could possibly patent the method of making your product. You might be able to trademark your company name, logo, and slogan. You could possibly prevent others from copying your computer program. The more you know about IP, the better you can identify, protect, and manage your IP.
Patents
Lots of startups and entrepreneurs are quick to rush into patenting their inventions without fully understanding the complexity and expense of patents. There are three types of patents: utility patents, design patents, and plant patents. Utility patents are the most popular (and also the most expensive), and they cover inventions that involve a new and useful process, machine, manufacture, or composition of matter. Design patents cover inventions that involve new, original, and aesthetic designs for a manufactured product. Plant patents cover inventions or discoveries of distinct and new plant varieties that are asexually produced. Note that patents do not cover laws of nature, naturally occurring things, and abstract ideas. The law on abstract ideas, especially involving software, is a continuously evolving issue in IP law.
In relation to the other types of IP, a patent is considered one of the strongest because it grants you the exclusive right to make, use, sell, offer for sale, and import an invention into the United States for 20 years. In other words, it grants you a “limited monopoly” on your invention. Because of the significant advantages that come with a patent, the U.S. Patent and Trademark Office (PTO) typically takes over two years to examine a patent application.
Copyrights
Unlike patents, which cover functional inventions, copyrights only cover expressive works. Copyrights protect original works in the form of literature, music and lyrics, dramas, pantomimes and choreography, pictures, graphics, sculptures, movies, audiovisual works, sound recordings, and architecture. No application is required because a copyright is created when someone creates an original work and fixes it in some tangible form. Although registration with the U.S. Copyright Office is not required, it is highly encouraged in the event you want to bring an infringer to court.
Whereas a patent generally lasts 20 years, a copyright lasts as long as the author’s life plus 70 years after the author’s death. A copyright term is longer than a patent’s, but it also offers a different set of rights. A copyright generally provides you the exclusive right to make copies of your own work, to prepare derivative works, to control the sale and distribution of your work, and to control the public performance and display of your work.
Trademarks
IP covers more than inventions or expressive works. In the form of trademarks, IP also covers a business’s branding or marketing efforts. A trademark is a mark used to indicate the source of goods, and its purpose is to prevent the likelihood of consumer confusion. A trademark can take the form of words, names, symbols, or devices that a business uses or intends to use to distinguish its goods from others.
With trademark law, you can prevent others from using confusingly similar marks that likely will mislead a consumer. By enforcing your trademarks, you can prevent consumers from mistakenly buying another company’s (poor quality) product and also protect your company’s reputation. With effective planning, you can utilize trademarks to build and protect your business and customer base. Similar to copyrights, registration is not required but highly encouraged for stronger legal protection. Registration lasts for ten years and is renewable.
Trade Secrets
A trade secret is the only type of IP that must not be disclosed. A trade secret is all about competitive advantage. It is information that is not generally known to all, that has commercial value, and that is maintained in secret through reasonable efforts. A trade secret covers formulas, patterns, compilations, programs, devices, methods, techniques, processes, and the like.
Trade secret law only protects against misappropriation, so if someone discovers your trade secret through reverse engineering or upon accidental disclosure, no protection will be granted. Absent disclosure, a trade secret can theoretically last forever as long as it is kept secret, has commercial value, and is reasonably protected.
Familiarize Yourself With Intellectual Property
It is important to seek IP protection at the outset of building your business, but you must do so with a strategy. Patents, copyrights, trademarks, and trade secrets are governed by different laws and have different lengths of and costs for protection. Make sure to familiarize yourself with the differences before deciding on what type of IP protection you want to pursue.
Source >> https://www.klinckllc.com/ip-basics/startups-new-entrepreneurs-and-intellectual-property/
Every startup and entrepreneur needs to understand the basics of intellectual property at the outset of building a business. Intellectual property (“IP”) is not simply any idea or invention. It is a term of art that refers to intangible assets that have obtained legal protection. IP consists of patents, copyrights, trademarks, and trade secrets. It can be found in all industries and markets and in all segments of a business.
Understanding the different types of IP allows you to determine, at least on a basic level, what kind of protection you may be able to obtain for your intangible assets. You could possibly patent the method of making your product. You might be able to trademark your company name, logo, and slogan. You could possibly prevent others from copying your computer program. The more you know about IP, the better you can identify, protect, and manage your IP.
Patents
Lots of startups and entrepreneurs are quick to rush into patenting their inventions without fully understanding the complexity and expense of patents. There are three types of patents: utility patents, design patents, and plant patents. Utility patents are the most popular (and also the most expensive), and they cover inventions that involve a new and useful process, machine, manufacture, or composition of matter. Design patents cover inventions that involve new, original, and aesthetic designs for a manufactured product. Plant patents cover inventions or discoveries of distinct and new plant varieties that are asexually produced. Note that patents do not cover laws of nature, naturally occurring things, and abstract ideas. The law on abstract ideas, especially involving software, is a continuously evolving issue in IP law.
In relation to the other types of IP, a patent is considered one of the strongest because it grants you the exclusive right to make, use, sell, offer for sale, and import an invention into the United States for 20 years. In other words, it grants you a “limited monopoly” on your invention. Because of the significant advantages that come with a patent, the U.S. Patent and Trademark Office (PTO) typically takes over two years to examine a patent application.
Copyrights
Unlike patents, which cover functional inventions, copyrights only cover expressive works. Copyrights protect original works in the form of literature, music and lyrics, dramas, pantomimes and choreography, pictures, graphics, sculptures, movies, audiovisual works, sound recordings, and architecture. No application is required because a copyright is created when someone creates an original work and fixes it in some tangible form. Although registration with the U.S. Copyright Office is not required, it is highly encouraged in the event you want to bring an infringer to court.
Whereas a patent generally lasts 20 years, a copyright lasts as long as the author’s life plus 70 years after the author’s death. A copyright term is longer than a patent’s, but it also offers a different set of rights. A copyright generally provides you the exclusive right to make copies of your own work, to prepare derivative works, to control the sale and distribution of your work, and to control the public performance and display of your work.
Trademarks
IP covers more than inventions or expressive works. In the form of trademarks, IP also covers a business’s branding or marketing efforts. A trademark is a mark used to indicate the source of goods, and its purpose is to prevent the likelihood of consumer confusion. A trademark can take the form of words, names, symbols, or devices that a business uses or intends to use to distinguish its goods from others.
With trademark law, you can prevent others from using confusingly similar marks that likely will mislead a consumer. By enforcing your trademarks, you can prevent consumers from mistakenly buying another company’s (poor quality) product and also protect your company’s reputation. With effective planning, you can utilize trademarks to build and protect your business and customer base. Similar to copyrights, registration is not required but highly encouraged for stronger legal protection. Registration lasts for ten years and is renewable.
Trade Secrets
A trade secret is the only type of IP that must not be disclosed. A trade secret is all about competitive advantage. It is information that is not generally known to all, that has commercial value, and that is maintained in secret through reasonable efforts. A trade secret covers formulas, patterns, compilations, programs, devices, methods, techniques, processes, and the like.
Trade secret law only protects against misappropriation, so if someone discovers your trade secret through reverse engineering or upon accidental disclosure, no protection will be granted. Absent disclosure, a trade secret can theoretically last forever as long as it is kept secret, has commercial value, and is reasonably protected.
Familiarize Yourself With Intellectual Property
It is important to seek IP protection at the outset of building your business, but you must do so with a strategy. Patents, copyrights, trademarks, and trade secrets are governed by different laws and have different lengths of and costs for protection. Make sure to familiarize yourself with the differences before deciding on what type of IP protection you want to pursue.
Source >> https://www.klinckllc.com/ip-basics/startups-new-entrepreneurs-and-intellectual-property/
Wednesday, February 14, 2018
Great Ways to Invent – Get Incredible Features In Your Invention
By: Michael J Foycik Jr.
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You want your invention to become a really successful product. You want it to be patentable. But you're not sure how. No problem! Here is one of the best ways to do it.
You'll first want to find unusual new things – products or novelties in search of a use. You want really great things, the kind that will inspire your creativity: new electronics, new compounds, new physics, and novel compositions with unusual features.
Those things are easy to find in the patent category for toys and novelties, because that is the haven for inventions in search of utility. Why? Because of the US Patent requirement for utility: no utility, no patent. So, if your utility is unknown, yet the invention seems interesting in some way, the easiest utility is as a toy or amusement device.
But how can you see those things conveniently? That's so easy – use an online search by class/subclass using the patent office web site. At the US Patent Office site, do a search by Class/Subclass. For toys, the Class is 446. Subclasses are by topic, for example 446/15 is for toys with soap bubbles.
You can find a topic by an index search, or by a manual of classification search. The steps are as follows. Go to the US Patent Office official site (www.uspto.gov). Click patents, which brings up a listing. Click the third item down, Classification. The topic you'll want for an index (word) search is “search USPC index schedule and definitions”, and the topic for a classification search is on the right hand side about a fourth of the way down called “browse listing of USPC Class numbers and titles.”
Read More >> http://internationalpatentservice.com/Great-Ways-to-Invent-Get-Incredible-Features-In-Your-Invention.html
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You want your invention to become a really successful product. You want it to be patentable. But you're not sure how. No problem! Here is one of the best ways to do it.
You'll first want to find unusual new things – products or novelties in search of a use. You want really great things, the kind that will inspire your creativity: new electronics, new compounds, new physics, and novel compositions with unusual features.
Those things are easy to find in the patent category for toys and novelties, because that is the haven for inventions in search of utility. Why? Because of the US Patent requirement for utility: no utility, no patent. So, if your utility is unknown, yet the invention seems interesting in some way, the easiest utility is as a toy or amusement device.
But how can you see those things conveniently? That's so easy – use an online search by class/subclass using the patent office web site. At the US Patent Office site, do a search by Class/Subclass. For toys, the Class is 446. Subclasses are by topic, for example 446/15 is for toys with soap bubbles.
You can find a topic by an index search, or by a manual of classification search. The steps are as follows. Go to the US Patent Office official site (www.uspto.gov). Click patents, which brings up a listing. Click the third item down, Classification. The topic you'll want for an index (word) search is “search USPC index schedule and definitions”, and the topic for a classification search is on the right hand side about a fourth of the way down called “browse listing of USPC Class numbers and titles.”
Read More >> http://internationalpatentservice.com/Great-Ways-to-Invent-Get-Incredible-Features-In-Your-Invention.html
Tuesday, February 13, 2018
Are There Patents in the Food and Beverage Industry?
By: Appraisal Economics
Have you ever been to a restaurant and the meal was so good that you thought they should get a patent for it? In truth, the food industry is comprised of intellectual property at every level. If you were to search the United States Patent and Trademark Office, you will find food patents of all kinds. They can include recipes, but there are some companies that actually don’t patent their recipes.
In this 2001 New York Times article, it explains that companies like McDonald’s, Coca-Cola, and Kentucky Fried Chicken don’t patent their secret recipes and choose to just keep them under lock and key instead. The ultra-secrecy of the Colonel’s recipe for fried chicken is what makes it so valuable. When you file a patent, the patent is generally good for twenty years. Kentucky Fried Chicken has been around for more than sixty years, and the national chain has managed to keep the trade secret. However, many companies do decide to patent their recipes for the added protection if they want to prevent competitors from trying to figure out their secret.
Additionally, many food companies seek patents for packaging, new methods of processing their product, and novel applications. Also, trademarks are highly defended as they can add immense value to a brand. Just think of your favorite food and beverage companies. Any logos, slogans, graphics, or words specific to that brand can receive trademark protection. There have been countless trademark disputes over the years involving food companies where one accused the other of stealing its likeness for profit. Trademarks create distinction in the marketplace, enabling customers to recognize a specific brand.
At Appraisal Economics, we have worked with many companies in the Food and Beverage Industry on valuation projects for various applications. For example, we have valued trademarks covering mayonnaise, cakes, soups, and peanut butter. Our work has been done for mergers and acquisitions, transfer pricing, and financial accounting purposes.
Our patent and trademark valuation process for the food and beverage industry is similar to our process for other industries. We first discuss the patents and propriety technology with your company’s management to get a clear picture of what makes it unique. We then review the overall industry for similar technologies and analyze the future financial prospects of the patent. Finally, our team conducts a financial analysis that includes the development of all assumptions and valuation models to determine the value of the patent. Our years of experience and quality of work are unmatched in the food and beverage industry.
So the next time you say that something is so good it should be patented, it very well might be.
Source >> https://www.appraisaleconomics.com/patents-food-beverage-industry/
Have you ever been to a restaurant and the meal was so good that you thought they should get a patent for it? In truth, the food industry is comprised of intellectual property at every level. If you were to search the United States Patent and Trademark Office, you will find food patents of all kinds. They can include recipes, but there are some companies that actually don’t patent their recipes.
In this 2001 New York Times article, it explains that companies like McDonald’s, Coca-Cola, and Kentucky Fried Chicken don’t patent their secret recipes and choose to just keep them under lock and key instead. The ultra-secrecy of the Colonel’s recipe for fried chicken is what makes it so valuable. When you file a patent, the patent is generally good for twenty years. Kentucky Fried Chicken has been around for more than sixty years, and the national chain has managed to keep the trade secret. However, many companies do decide to patent their recipes for the added protection if they want to prevent competitors from trying to figure out their secret.
Additionally, many food companies seek patents for packaging, new methods of processing their product, and novel applications. Also, trademarks are highly defended as they can add immense value to a brand. Just think of your favorite food and beverage companies. Any logos, slogans, graphics, or words specific to that brand can receive trademark protection. There have been countless trademark disputes over the years involving food companies where one accused the other of stealing its likeness for profit. Trademarks create distinction in the marketplace, enabling customers to recognize a specific brand.
At Appraisal Economics, we have worked with many companies in the Food and Beverage Industry on valuation projects for various applications. For example, we have valued trademarks covering mayonnaise, cakes, soups, and peanut butter. Our work has been done for mergers and acquisitions, transfer pricing, and financial accounting purposes.
Our patent and trademark valuation process for the food and beverage industry is similar to our process for other industries. We first discuss the patents and propriety technology with your company’s management to get a clear picture of what makes it unique. We then review the overall industry for similar technologies and analyze the future financial prospects of the patent. Finally, our team conducts a financial analysis that includes the development of all assumptions and valuation models to determine the value of the patent. Our years of experience and quality of work are unmatched in the food and beverage industry.
So the next time you say that something is so good it should be patented, it very well might be.
Source >> https://www.appraisaleconomics.com/patents-food-beverage-industry/
Sunday, February 11, 2018
Costly Misconceptions About NDA's (Non-Disclosure Agreements)
By: Michael J Foycik Jr.
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You (the owner) has an invention, a business idea, or a trade secret. To develop your invention, start a business, or talk with investors, you'll need to share information with these recipients, and you'll want protection before showing them anything. Many think an NDA (Non-Disclosure Agreement) will solve this problem, but there are major pitfalls to avoid. And, an NDA might not be the best solution anyway.
The biggest misconception, in my view: an NDA is intended to protect and help the owner of the invention, business idea, or trade secret. An NDA is much more likely to protect the recipient of the information, and not the owner. Let's see why that may be true.
Many NDA's provide for arbitration as a remedy rather than litigation, but that only benefits the richer party. Why? A court action can be filed for free or at very low cost, but an arbitration usually requires the payment of substantial fees up front, and more fees at later stages. When the recipient is a relatively substantial corporation or business, such fees may seem small, but to an individual or small businessperson such fees may be too great and they cannot enforce the NDA.
Normally, large companies fear litigation, and that is incentive for them to keep honest.
Another misconception: all NDA's are alike. Not at all. Each has to be studied in detail, because
many NDA's have fine print that lets the recipient off the hook. I have reviewed many NDA's over the years, and have found serious flaws in most of them: the legalese unbinds the recipient one way or another. Some unbind the recipient after a period of time, while others grant rights to the recipient. Some are written to be so confusing that they defy interpretation.
Read More >> http://internationalpatentservice.com/Costly-Misconceptions-About-NDA.html
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You (the owner) has an invention, a business idea, or a trade secret. To develop your invention, start a business, or talk with investors, you'll need to share information with these recipients, and you'll want protection before showing them anything. Many think an NDA (Non-Disclosure Agreement) will solve this problem, but there are major pitfalls to avoid. And, an NDA might not be the best solution anyway.
The biggest misconception, in my view: an NDA is intended to protect and help the owner of the invention, business idea, or trade secret. An NDA is much more likely to protect the recipient of the information, and not the owner. Let's see why that may be true.
Many NDA's provide for arbitration as a remedy rather than litigation, but that only benefits the richer party. Why? A court action can be filed for free or at very low cost, but an arbitration usually requires the payment of substantial fees up front, and more fees at later stages. When the recipient is a relatively substantial corporation or business, such fees may seem small, but to an individual or small businessperson such fees may be too great and they cannot enforce the NDA.
Normally, large companies fear litigation, and that is incentive for them to keep honest.
Another misconception: all NDA's are alike. Not at all. Each has to be studied in detail, because
many NDA's have fine print that lets the recipient off the hook. I have reviewed many NDA's over the years, and have found serious flaws in most of them: the legalese unbinds the recipient one way or another. Some unbind the recipient after a period of time, while others grant rights to the recipient. Some are written to be so confusing that they defy interpretation.
Read More >> http://internationalpatentservice.com/Costly-Misconceptions-About-NDA.html
Saturday, February 10, 2018
Patterson Thuente IP Names Christian Girtz as a New Partner - Patents & Patent Law
By: Press Releases
February 9, 2018
MINNEAPOLIS—February, 2018—Patterson Thuente IP has named patent attorney Christian Girtz as a partner in the firm. He handles patent preparation and prosecution for clients in the fields of computer software, communications, and Internet and electronic commerce.
An experienced intellectual property attorney, Christian counsels clients on best practices for developing strong patents and valuable IP assets domestically and internationally. As a former software engineer, Christian is uniquely qualified to assist companies who are innovators in computer software, communications, and Internet and electronic commerce. These computer- and software-based industries have significant challenges in protecting their intellectual property due to recent U.S. Supreme Court and Federal Circuit decisions. Christian is able to quickly understand his clients’ technologies, provide practical advice, and develop creative strategies for gaining IP protection.
“With my background, I can ask more pointed questions of the engineers I’m working with that perhaps someone without a computer science or software background could,” explains Girtz. “Clients appreciate that I can think about how I might have implemented the solution they are looking to patent and understand the problem it’s solving.”
Christian received his J.D from William Mitchell College of Law, cum laude in 2010. He is admitted to practice under the Supreme Court of Minnesota and is a registered patent attorney with the United States Patent & Trademark Office He is also a member of the Minnesota State Bar Association.
Read More >> http://www.ipwatchdog.com/2018/02/09/patterson-thuente-christian-girtz-partner/id=93452/
February 9, 2018
MINNEAPOLIS—February, 2018—Patterson Thuente IP has named patent attorney Christian Girtz as a partner in the firm. He handles patent preparation and prosecution for clients in the fields of computer software, communications, and Internet and electronic commerce.
An experienced intellectual property attorney, Christian counsels clients on best practices for developing strong patents and valuable IP assets domestically and internationally. As a former software engineer, Christian is uniquely qualified to assist companies who are innovators in computer software, communications, and Internet and electronic commerce. These computer- and software-based industries have significant challenges in protecting their intellectual property due to recent U.S. Supreme Court and Federal Circuit decisions. Christian is able to quickly understand his clients’ technologies, provide practical advice, and develop creative strategies for gaining IP protection.
“With my background, I can ask more pointed questions of the engineers I’m working with that perhaps someone without a computer science or software background could,” explains Girtz. “Clients appreciate that I can think about how I might have implemented the solution they are looking to patent and understand the problem it’s solving.”
Christian received his J.D from William Mitchell College of Law, cum laude in 2010. He is admitted to practice under the Supreme Court of Minnesota and is a registered patent attorney with the United States Patent & Trademark Office He is also a member of the Minnesota State Bar Association.
Read More >> http://www.ipwatchdog.com/2018/02/09/patterson-thuente-christian-girtz-partner/id=93452/
Thursday, February 8, 2018
Patent Assignments - What Inventors Should Know
By: Michael J Foycik Jr.
May 29, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
If you're an inventor who is considering signing an Assignment of a patent or patent application, there are a few things you may want to know. Most questions concern the language of the Assignment itself, namely the promise to assign future improvements and to sign new patent applications related to the invention.
The typical Assignment includes language assigning the invention to the new owner (called the Assignee). That new owner is usually either an employer or someone who wishes to purchase the rights to the invention. For that new owner, some of the value of the invention may reside in the ability to file more patent applications, to make a family of products.
For example, let's say the invention is a big success; the new owner will surely want to file more patent applications for any likely variations that a competitor might try. And, let's say the original inventor has moved on to a new company or a new business. How much of a burden will be on that inventor, under the terms of the typical Assignment? And, what about new inventions the inventor later makes – will those need to be assigned to the new owner under the terms of the original Assignment?
The key to answering the above and other questions is in understanding the legal meaning of the term “invention” in the original Assignment. The term “invention” must necessarily refer to the invention as shown and described in the patent application, and to any “obvious” variations. Because the courts generally define the word “invention” in this manner, it would appear that the inventor's future obligations should not be overly burdensome.
For minor variations, the inventor will very likely have to sign future patent applications under the terms of the original Assignment. What are minor variations? Court decisions have enumerated those that most often occur, such as size, shape, color, obvious extra features, and the like.
Raed More >> http://internationalpatentservice.com/Patent-Assignments-What-Inventors-Should-Know.html
May 29, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
If you're an inventor who is considering signing an Assignment of a patent or patent application, there are a few things you may want to know. Most questions concern the language of the Assignment itself, namely the promise to assign future improvements and to sign new patent applications related to the invention.
The typical Assignment includes language assigning the invention to the new owner (called the Assignee). That new owner is usually either an employer or someone who wishes to purchase the rights to the invention. For that new owner, some of the value of the invention may reside in the ability to file more patent applications, to make a family of products.
For example, let's say the invention is a big success; the new owner will surely want to file more patent applications for any likely variations that a competitor might try. And, let's say the original inventor has moved on to a new company or a new business. How much of a burden will be on that inventor, under the terms of the typical Assignment? And, what about new inventions the inventor later makes – will those need to be assigned to the new owner under the terms of the original Assignment?
The key to answering the above and other questions is in understanding the legal meaning of the term “invention” in the original Assignment. The term “invention” must necessarily refer to the invention as shown and described in the patent application, and to any “obvious” variations. Because the courts generally define the word “invention” in this manner, it would appear that the inventor's future obligations should not be overly burdensome.
For minor variations, the inventor will very likely have to sign future patent applications under the terms of the original Assignment. What are minor variations? Court decisions have enumerated those that most often occur, such as size, shape, color, obvious extra features, and the like.
Raed More >> http://internationalpatentservice.com/Patent-Assignments-What-Inventors-Should-Know.html
Wednesday, February 7, 2018
Andrei Iancu Named US Patent And Trademark Office Director
By: DUGIE STANDEFORD
06/02/2018
By a vote of 94-0, the United States Senate on 5 February confirmed California intellectual property litigator Andrei Iancu as next director of the US Patent and Trademark Office (USPTO). The new Under Secretary of Commerce for Intellectual Property is currently managing partner of Irell & Manella LLP’s Los Angeles firm. The patent and trademark communities wished Iancu luck but said there are many issues at the agency that need his attention.
Iancu’s practice focused on IP litigation as well as patent and trademark prosecution, his bio says (https://www.irell.com/professionals-90.html). His clients came from across the technology spectrum, including those associated with medical devices, genetic testing, telephony and video game systems, it says. In addition, Iancu has taught patent law at the UCLA School of Law.
The firm Iancu works at once defended Donald Trump (who appointed Iancu to the USPTO post) and others including NBC Universal in a copyright case involving reality TV show “The Apprentice.” Also, Iancu did work that led to settlements of more than $1.6 billion being paid out to TiVo in patent cases against EchoStar, AT&T, Verizon, Microsoft, Motorola and Cisco, The Hill news site reported.
American Intellectual Property Law Association President Myra McCormack pledged to work with the office “in a constructive manner to always look for ways to keep improving the intellectual property system.”
The Computer & Communications Industry Association said it hopes the new director “can withstand pressure from those who are now successfully misusing the patent system and implement changes to curb that abuse.” The office and Congress should be working to remove some of the tools that allow patent trolls to broaden their reach and harm innovation, said CCIA President Ed Black. He urged Iancu to expand the inter-partes (IPR) review system, which allows third parties to challenge the validity of granted patents in the Patent Trial and Appeal Board (PTAB), saying it would “help the patent examiners remedy situations where patent trolls are using weak or mistakenly issued patents to abuse the system.”
IPR changes were also on the wish list of CCIA patent counsel Josh Landau. Among other things, Landau also said the office should take an active role in developing patent jurisprudence – such as in the emerging areas of virtual and augmented reality — rather than reacting to patent practice issues after the fact.
“As a longtime patent attorney and patent litigator, Iancu brings both a wealth of experience and understanding of the system,” University of Missouri Law School Professor Dennis Crouch blogged.
Iancu “has a clear understanding of the importance of strong patent rights and a strong US patent system to American innovation, job creation and competitiveness,” said Innovation Alliance Executive Director Brian Pomper.
The Intellectual Property Owners Association congratulated Iancu “on his appointment to a post so critical to American innovation and creativity.”
The USPTO has been awaiting a new director for nearly a year since Michelle Lee departed, despite reported efforts to stay on, supported by the high-tech industry.
[Update:] As counterfeiting continues to be a growing and pervasive problem for brand owners and consumers, the International Trademark Association said, it wants to work closely with the USPTO on strengthening IP rights and protections in the US and globally.
Patent analyst Gregory Aharonian questioned the appointment of a patent litigator to head the USPTO. “For decades, the USPTO has made no progress [toward] improving patent quality, pendency, their archaic IT systems, labor-management conditions,” he emailed. The office has done nothing to develop better patent drafting guidelines to help applicants obtain patents more quickly and cheaply, he said. The new director may be an excellent patent litigator “but what does that have to do with” those issues? As long as the problems remain unresolved, there will be more unnecessary patent litigation, Aharonian said. Iancu won’t “shake things up that are needed to improve the system for inventors and applicants,” he added.
Adobe’s Dana Rao, vice president of intellectual property and litigation, congratulated Iancu in a statement, saying: ” As a technology company, innovation is one of the most critical components of our success, so we are thrilled that the PTO has a permanent director who will help lead the office at this critical time. Adobe is looking forward to working with Mr. Iancu to protect the nation’s inventors, secure trade secrets and promote a culture of innovation.”
Rao added, “Adobe would also like to thank Acting PTO Director Joseph Matal for his work over the last six months as well as former director Michelle Lee for her work improving patent quality and transparency while reforming a number of processes at the PTO to make obtaining a patent fairer and more straightforward for innovators.”
David Hirschmann, president and CEO of the U.S. Chamber’s Global Innovation Policy Center (GIPC), said in a statement: “A stable, predictable, and strong intellectual property framework fosters a healthy environment for innovation and creativity. The Chamber looks forward to working with Director Iancu to preserve American inventors’ right to deliver and benefit from the breakthroughs they make across a variety of sectors. We stand ready to assist Director Iancu in his efforts to help spur the American innovative spirit.”
Source >> https://www.ip-watch.org/2018/02/06/andrei-iancu-named-us-patent-trademark-office-director/
06/02/2018
By a vote of 94-0, the United States Senate on 5 February confirmed California intellectual property litigator Andrei Iancu as next director of the US Patent and Trademark Office (USPTO). The new Under Secretary of Commerce for Intellectual Property is currently managing partner of Irell & Manella LLP’s Los Angeles firm. The patent and trademark communities wished Iancu luck but said there are many issues at the agency that need his attention.
Iancu’s practice focused on IP litigation as well as patent and trademark prosecution, his bio says (https://www.irell.com/professionals-90.html). His clients came from across the technology spectrum, including those associated with medical devices, genetic testing, telephony and video game systems, it says. In addition, Iancu has taught patent law at the UCLA School of Law.
The firm Iancu works at once defended Donald Trump (who appointed Iancu to the USPTO post) and others including NBC Universal in a copyright case involving reality TV show “The Apprentice.” Also, Iancu did work that led to settlements of more than $1.6 billion being paid out to TiVo in patent cases against EchoStar, AT&T, Verizon, Microsoft, Motorola and Cisco, The Hill news site reported.
American Intellectual Property Law Association President Myra McCormack pledged to work with the office “in a constructive manner to always look for ways to keep improving the intellectual property system.”
The Computer & Communications Industry Association said it hopes the new director “can withstand pressure from those who are now successfully misusing the patent system and implement changes to curb that abuse.” The office and Congress should be working to remove some of the tools that allow patent trolls to broaden their reach and harm innovation, said CCIA President Ed Black. He urged Iancu to expand the inter-partes (IPR) review system, which allows third parties to challenge the validity of granted patents in the Patent Trial and Appeal Board (PTAB), saying it would “help the patent examiners remedy situations where patent trolls are using weak or mistakenly issued patents to abuse the system.”
IPR changes were also on the wish list of CCIA patent counsel Josh Landau. Among other things, Landau also said the office should take an active role in developing patent jurisprudence – such as in the emerging areas of virtual and augmented reality — rather than reacting to patent practice issues after the fact.
“As a longtime patent attorney and patent litigator, Iancu brings both a wealth of experience and understanding of the system,” University of Missouri Law School Professor Dennis Crouch blogged.
Iancu “has a clear understanding of the importance of strong patent rights and a strong US patent system to American innovation, job creation and competitiveness,” said Innovation Alliance Executive Director Brian Pomper.
The Intellectual Property Owners Association congratulated Iancu “on his appointment to a post so critical to American innovation and creativity.”
The USPTO has been awaiting a new director for nearly a year since Michelle Lee departed, despite reported efforts to stay on, supported by the high-tech industry.
[Update:] As counterfeiting continues to be a growing and pervasive problem for brand owners and consumers, the International Trademark Association said, it wants to work closely with the USPTO on strengthening IP rights and protections in the US and globally.
Patent analyst Gregory Aharonian questioned the appointment of a patent litigator to head the USPTO. “For decades, the USPTO has made no progress [toward] improving patent quality, pendency, their archaic IT systems, labor-management conditions,” he emailed. The office has done nothing to develop better patent drafting guidelines to help applicants obtain patents more quickly and cheaply, he said. The new director may be an excellent patent litigator “but what does that have to do with” those issues? As long as the problems remain unresolved, there will be more unnecessary patent litigation, Aharonian said. Iancu won’t “shake things up that are needed to improve the system for inventors and applicants,” he added.
Adobe’s Dana Rao, vice president of intellectual property and litigation, congratulated Iancu in a statement, saying: ” As a technology company, innovation is one of the most critical components of our success, so we are thrilled that the PTO has a permanent director who will help lead the office at this critical time. Adobe is looking forward to working with Mr. Iancu to protect the nation’s inventors, secure trade secrets and promote a culture of innovation.”
Rao added, “Adobe would also like to thank Acting PTO Director Joseph Matal for his work over the last six months as well as former director Michelle Lee for her work improving patent quality and transparency while reforming a number of processes at the PTO to make obtaining a patent fairer and more straightforward for innovators.”
David Hirschmann, president and CEO of the U.S. Chamber’s Global Innovation Policy Center (GIPC), said in a statement: “A stable, predictable, and strong intellectual property framework fosters a healthy environment for innovation and creativity. The Chamber looks forward to working with Director Iancu to preserve American inventors’ right to deliver and benefit from the breakthroughs they make across a variety of sectors. We stand ready to assist Director Iancu in his efforts to help spur the American innovative spirit.”
Source >> https://www.ip-watch.org/2018/02/06/andrei-iancu-named-us-patent-trademark-office-director/
Tuesday, February 6, 2018
Trade Secrets - Better Protection Than a Patent for New Products and Inventions?
By: Michael J Foycik Jr.
May 24, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336
You can establish a trade secret overnight, but not a patent. A patent takes longer. And, even if you could, would it really provide much protection against copying by distributors, retailers, developers, or investors? Here's a surprisingly useful answer.
A trade secret has some big advantages. It is effective against anyone you have direct dealings with. The damages for a trade secret violation are not limited to direct damages – they can be large enough to justify legal action against even a small or token violation. This is very unlike a patent, where it is necessary to show actual, direct damages; those damages tend to be somewhat small; and where it can be quite difficult to obtain punitive damages.
So, why isn't there a “trade secret” office? And, why doesn't everyone go after a trade secret first, instead of a patent? Excellent questions. A patent protects your invention after it is no longer secret, and it affects strangers who may innocently infringe patent rights. So, a patent is very worthwhile, once you've gotten a good start. But until then, all you really have going for you are your trade secret rights.
Let's see why there's no “trade secret” office. First, you can easily establish your trade secret rights yourself. How? Start by documenting the materials you regard as your trade secret, and mark the pages “confidential.” You can just mark the cover page as confidential, but more is better. Whenever you show the materials to anyone, document that: write a note to yourself stating who saw the materials and when they saw them; and put a copy of the exact materials shown in an envelope. If you have witnesses, write down their names. If there were telephone calls or emails, note those; and so on.
Read More >> http://internationalpatentservice.com/Trade-Secrets-Better-Protection-Than-a-Patent-for-New-Products-and-Inventions.html
May 24, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336
You can establish a trade secret overnight, but not a patent. A patent takes longer. And, even if you could, would it really provide much protection against copying by distributors, retailers, developers, or investors? Here's a surprisingly useful answer.
A trade secret has some big advantages. It is effective against anyone you have direct dealings with. The damages for a trade secret violation are not limited to direct damages – they can be large enough to justify legal action against even a small or token violation. This is very unlike a patent, where it is necessary to show actual, direct damages; those damages tend to be somewhat small; and where it can be quite difficult to obtain punitive damages.
So, why isn't there a “trade secret” office? And, why doesn't everyone go after a trade secret first, instead of a patent? Excellent questions. A patent protects your invention after it is no longer secret, and it affects strangers who may innocently infringe patent rights. So, a patent is very worthwhile, once you've gotten a good start. But until then, all you really have going for you are your trade secret rights.
Let's see why there's no “trade secret” office. First, you can easily establish your trade secret rights yourself. How? Start by documenting the materials you regard as your trade secret, and mark the pages “confidential.” You can just mark the cover page as confidential, but more is better. Whenever you show the materials to anyone, document that: write a note to yourself stating who saw the materials and when they saw them; and put a copy of the exact materials shown in an envelope. If you have witnesses, write down their names. If there were telephone calls or emails, note those; and so on.
Read More >> http://internationalpatentservice.com/Trade-Secrets-Better-Protection-Than-a-Patent-for-New-Products-and-Inventions.html
Monday, February 5, 2018
Intellectual Property Punch List for Startups
By: BRENT C.J. BRITTON
When you create, design, or invent things, the rules of intellectual property (IP) determine who owns your creations, whether or not you can prevent other people from copying them, and whether or not you yourself can use them freely. If you are starting a company, you should know enough about IP to make intelligent decisions about your business to add value and reduce risk.
IP law is esoteric, arcane, and often counterintuitive. Normal business assumptions do not always apply, and can prove to be dangerous. Aggressive, thoughtful management of your IP portfolio is a sound business practice, and you should start as early as possible.
You don’t have to know a ton about the theoretical philosophy or legal underpinnings of IP in order to use it effectively. As you begin your entrepreneurial saga, be sure to pay attention to the following IP issues:
Clear trademark rights before naming things
You cannot use a brand in commerce if your use would be confusingly similar to someone else’s brand. So, do not name your company or your product or service without clearing trademark rights first. Once you choose your name, scour the internet using the search engine of your choice to ensure no one else is using it as the brand name of similar goods or services. Also check the TESS trademark database at uspto.gov to see if your name turns up. Remember that trademarks are compared on the basis of their overall visual and phonetic impression, so clever spelling inconsistencies–substituting a Z for an S, for example–should be ignored in this process.
If you cannot find your name in use anywhere else as the brand of similar products, go ahead just in case and have a formal trademark search conducted by a competent trademark lawyer. They can tell you whether you will be able to get a trademark on your brand and, perhaps more importantly, whether someone else is going to sue you if you start using it.
Then, and only then, is it safe to start naming your company and branding your products with the name that passes through the above clearance process. Remember, trademark rights are obtained neither by forming your corporation or LLC at the secretary of state’s office, nor by registering a domain name. Those ministerial items, while important, do not matter to the trademark process and should happen only after trademark rights are clear.
Read More >> https://gust.com/launch/blog/intellectual-ip-property-punch-list
When you create, design, or invent things, the rules of intellectual property (IP) determine who owns your creations, whether or not you can prevent other people from copying them, and whether or not you yourself can use them freely. If you are starting a company, you should know enough about IP to make intelligent decisions about your business to add value and reduce risk.
IP law is esoteric, arcane, and often counterintuitive. Normal business assumptions do not always apply, and can prove to be dangerous. Aggressive, thoughtful management of your IP portfolio is a sound business practice, and you should start as early as possible.
You don’t have to know a ton about the theoretical philosophy or legal underpinnings of IP in order to use it effectively. As you begin your entrepreneurial saga, be sure to pay attention to the following IP issues:
Clear trademark rights before naming things
You cannot use a brand in commerce if your use would be confusingly similar to someone else’s brand. So, do not name your company or your product or service without clearing trademark rights first. Once you choose your name, scour the internet using the search engine of your choice to ensure no one else is using it as the brand name of similar goods or services. Also check the TESS trademark database at uspto.gov to see if your name turns up. Remember that trademarks are compared on the basis of their overall visual and phonetic impression, so clever spelling inconsistencies–substituting a Z for an S, for example–should be ignored in this process.
If you cannot find your name in use anywhere else as the brand of similar products, go ahead just in case and have a formal trademark search conducted by a competent trademark lawyer. They can tell you whether you will be able to get a trademark on your brand and, perhaps more importantly, whether someone else is going to sue you if you start using it.
Then, and only then, is it safe to start naming your company and branding your products with the name that passes through the above clearance process. Remember, trademark rights are obtained neither by forming your corporation or LLC at the secretary of state’s office, nor by registering a domain name. Those ministerial items, while important, do not matter to the trademark process and should happen only after trademark rights are clear.
Read More >> https://gust.com/launch/blog/intellectual-ip-property-punch-list
Sunday, February 4, 2018
Trademark Application Tips, and Some Ways to Avoid Pitfalls
By: Michael J Foycik Jr.
May 12, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336
Filing a trademark application? That may seem easy, but mistakes can be costly later, during the examination phase. Here are a few helpful tips, and a few pitfalls to avoid.
After a trademark application is filed, the U.S. Trademark Office conducts an examination of the application. For example, if there is both an objection and a refusal to register the mark, then a response will be necessary to meet the objection and to overcome the refusal to register. This happens frequently, and an experienced trademark attorney will likely know just what to do when writing the response.
In my experience, it pays to respond to every office action. Many issues are within the range of discretion of the trademark examining attorney, and good legal arguments in support of the trademark may well be persuasive. Some firms charge substantial sums of money to prepare responses, and other firms might charge much less - therefore it may pay to shop around.
A helpful tip: before filing a trademark application, find a cost effective trademark attorney. It is wise to assume things may not always go smoothly or quickly.
Another tip: select the best type of trademark application. There are two types: intent-to-use applications, and actual use applications. Both cost the same to file. The intent-to-use application can be filed long before actual use occurs, but there is a later government fee when completing the intent-to-use application. The trade off is that completing the intent-to-use application requires a statement of use or allegation of use, together with a specimen of use and an additional government fee. If an actual use application can be filed based on actual use in interstate commerce, then it will save money to do so.
It pays to know what types of problems come up during the examination phase. Some problems that may come up: the trademark examiner may raise objections due to a similar prior mark, may object to the mark based on descriptiveness or misdecriptiveness of the mark, may object to the mark as having an improper geographical reference, and may object to the listing of the goods/services. There are other possible grounds of objection too.
In light of the above, another cost saving tip is this: have an experienced trademark attorney look at the mark prior to filing, just to see if there is something that jumps out. You probably wouldn't want to spend money to file an application if it was certain to fail. Here, too, it often pays to shop around. Some attorneys would charge quite a bit just to look at the mark, whereas others might take an interest and provide helpful comments at little or no additional charge. Trademark owners have reported a wide range of fees, some fees being reasonably low and some fees being unexpectedly high.
Read More >> http://internationalpatentservice.com/Trademark-Application-Tips-and-Some-Ways-to-Avoid-Pitfalls.html
May 12, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336
Filing a trademark application? That may seem easy, but mistakes can be costly later, during the examination phase. Here are a few helpful tips, and a few pitfalls to avoid.
After a trademark application is filed, the U.S. Trademark Office conducts an examination of the application. For example, if there is both an objection and a refusal to register the mark, then a response will be necessary to meet the objection and to overcome the refusal to register. This happens frequently, and an experienced trademark attorney will likely know just what to do when writing the response.
In my experience, it pays to respond to every office action. Many issues are within the range of discretion of the trademark examining attorney, and good legal arguments in support of the trademark may well be persuasive. Some firms charge substantial sums of money to prepare responses, and other firms might charge much less - therefore it may pay to shop around.
A helpful tip: before filing a trademark application, find a cost effective trademark attorney. It is wise to assume things may not always go smoothly or quickly.
Another tip: select the best type of trademark application. There are two types: intent-to-use applications, and actual use applications. Both cost the same to file. The intent-to-use application can be filed long before actual use occurs, but there is a later government fee when completing the intent-to-use application. The trade off is that completing the intent-to-use application requires a statement of use or allegation of use, together with a specimen of use and an additional government fee. If an actual use application can be filed based on actual use in interstate commerce, then it will save money to do so.
It pays to know what types of problems come up during the examination phase. Some problems that may come up: the trademark examiner may raise objections due to a similar prior mark, may object to the mark based on descriptiveness or misdecriptiveness of the mark, may object to the mark as having an improper geographical reference, and may object to the listing of the goods/services. There are other possible grounds of objection too.
In light of the above, another cost saving tip is this: have an experienced trademark attorney look at the mark prior to filing, just to see if there is something that jumps out. You probably wouldn't want to spend money to file an application if it was certain to fail. Here, too, it often pays to shop around. Some attorneys would charge quite a bit just to look at the mark, whereas others might take an interest and provide helpful comments at little or no additional charge. Trademark owners have reported a wide range of fees, some fees being reasonably low and some fees being unexpectedly high.
Read More >> http://internationalpatentservice.com/Trademark-Application-Tips-and-Some-Ways-to-Avoid-Pitfalls.html
Saturday, February 3, 2018
MY INTELLECTUAL PROPERTY WAS STOLEN
By: S.M. Oliva
Many New Jersey residents and businesses depend on intellectual property for their livelihoods. But unlike tangible property, intellectual property can be more difficult to protect since, by its very nature, it involves ownership of intangible rights to copy or reproduce. Adding to this confusion is the legally distinct characteristics of copyrights, trademarks and patents.
“You have different considerations and protections,” says Arnie Calmann, an intellectual property litigator in Newark.
How Copyrights, Patents and Trademarks Differ
A copyright refers to an author's right in a fixed artistic, architectural or literary work. Copyrights have a statutory term of the life of the author plus 70 years—or, in the case of works created “for hire,” the latter of 95 years from the date of publication or 120 years from the date of creation.
Copyrights do not have to be registered in advance with the government. They exist from the moment of a work's creation. However, if someone infringes your copyright, you can only sue for damages if you registered your work with the U.S. Copyright Office. Registration also serves as “prima facie evidence” in court of a valid copyright, provided you registered within five years of the first publication of the subject work.
“Generally speaking, unless you have a federally registered copyright, you cannot sue for infringement. As opposed to a trademark, where you don’t need to have it registered with PTO; you can sue based upon common law rights,” Calmann says.
While copyrights cover authored works, patents deal with intellectual property rights related to an invention. Unlike a copyrighted work, which you could keep secret and decline to publish, a patent requires you to make a public disclosure of the invention in exchange for receiving intellectual property rights. To obtain patent protection, you must file an application with the U.S. Patent and Trademark Office (USPTO). Once granted, a patent lasts for a limited period of time, typically 15 years for design patents.
A trademark or service mark is a word, phrase, symbol or design (or any combination thereof) that identifies the source of a given product or service offered for sale. Unlike copyrights and patents, trademarks theoretically never expire. As long as the trademark owner continues to “use” the mark actively—and file the appropriate registration paperwork with the USPTO and the New Jersey Department of the Treasury—a trademark or service mark will last indefinitely.
“With trademarks, you first have to determine if it’s registered or used on a common law basis. You have to determine the strength of your mark—there are four different levels. How strong is your legal position? Have you sufficiently established your rights?” Calmann says.
How to Protect Your Rights
If you suspect that someone has infringed your intellectual property, you need to take immediate action. “The first thing you have to look at is: Have you protected your rights in order to assert them against someone else? You have to look at your own house to make sure it’s in order,” Calmann says.
If you have not previously registered your copyright or trademark, now is the time do so. An experienced New Jersey intellectual property lawyer can guide you through the registration process. If after you have your house in order, you think you have a case, there are still decisions to make.
Considerations for Legal Action
“You have to think strategically,” Calmann says. “Do you want to send a cease and desist letter telling the other side they have to discontinue the use of your mark? Or do you not fight the alleged infringement because, for example, you won’t use your common law mark on an international basis or they don’t operate in your same sphere? If you send the letter, you run the risk that the infringer brings its own action against you in a district that’s not favorable to you. If you’re from New York and the other company is in California, and both use the mark nationally, they can bring a case against you in California. Whereas you could file a protective lawsuit in advance so you’re in the district of New York.”
In many cases the cease and desist letter will be sufficient to deter the infringer. But if the infringement continues, you may have to file a civil lawsuit to protect your rights. “There are a number of different considerations—legal, strategic, financial—that flow from the different forms of intellectual property,” Calmann notes.
An attorney’s job is to determine your situation and walk you through the options, but keep in mind that (with trademarks in particular), if you do not actively enforce your rights. you may lose them.
Source >> https://www.superlawyers.com/new-jersey/article/my-intellectual-property-was-stolen/80a9674f-c538-42f9-ac94-22bea2ecca7b.html
Many New Jersey residents and businesses depend on intellectual property for their livelihoods. But unlike tangible property, intellectual property can be more difficult to protect since, by its very nature, it involves ownership of intangible rights to copy or reproduce. Adding to this confusion is the legally distinct characteristics of copyrights, trademarks and patents.
“You have different considerations and protections,” says Arnie Calmann, an intellectual property litigator in Newark.
How Copyrights, Patents and Trademarks Differ
A copyright refers to an author's right in a fixed artistic, architectural or literary work. Copyrights have a statutory term of the life of the author plus 70 years—or, in the case of works created “for hire,” the latter of 95 years from the date of publication or 120 years from the date of creation.
Copyrights do not have to be registered in advance with the government. They exist from the moment of a work's creation. However, if someone infringes your copyright, you can only sue for damages if you registered your work with the U.S. Copyright Office. Registration also serves as “prima facie evidence” in court of a valid copyright, provided you registered within five years of the first publication of the subject work.
“Generally speaking, unless you have a federally registered copyright, you cannot sue for infringement. As opposed to a trademark, where you don’t need to have it registered with PTO; you can sue based upon common law rights,” Calmann says.
While copyrights cover authored works, patents deal with intellectual property rights related to an invention. Unlike a copyrighted work, which you could keep secret and decline to publish, a patent requires you to make a public disclosure of the invention in exchange for receiving intellectual property rights. To obtain patent protection, you must file an application with the U.S. Patent and Trademark Office (USPTO). Once granted, a patent lasts for a limited period of time, typically 15 years for design patents.
A trademark or service mark is a word, phrase, symbol or design (or any combination thereof) that identifies the source of a given product or service offered for sale. Unlike copyrights and patents, trademarks theoretically never expire. As long as the trademark owner continues to “use” the mark actively—and file the appropriate registration paperwork with the USPTO and the New Jersey Department of the Treasury—a trademark or service mark will last indefinitely.
“With trademarks, you first have to determine if it’s registered or used on a common law basis. You have to determine the strength of your mark—there are four different levels. How strong is your legal position? Have you sufficiently established your rights?” Calmann says.
How to Protect Your Rights
If you suspect that someone has infringed your intellectual property, you need to take immediate action. “The first thing you have to look at is: Have you protected your rights in order to assert them against someone else? You have to look at your own house to make sure it’s in order,” Calmann says.
If you have not previously registered your copyright or trademark, now is the time do so. An experienced New Jersey intellectual property lawyer can guide you through the registration process. If after you have your house in order, you think you have a case, there are still decisions to make.
Considerations for Legal Action
“You have to think strategically,” Calmann says. “Do you want to send a cease and desist letter telling the other side they have to discontinue the use of your mark? Or do you not fight the alleged infringement because, for example, you won’t use your common law mark on an international basis or they don’t operate in your same sphere? If you send the letter, you run the risk that the infringer brings its own action against you in a district that’s not favorable to you. If you’re from New York and the other company is in California, and both use the mark nationally, they can bring a case against you in California. Whereas you could file a protective lawsuit in advance so you’re in the district of New York.”
In many cases the cease and desist letter will be sufficient to deter the infringer. But if the infringement continues, you may have to file a civil lawsuit to protect your rights. “There are a number of different considerations—legal, strategic, financial—that flow from the different forms of intellectual property,” Calmann notes.
An attorney’s job is to determine your situation and walk you through the options, but keep in mind that (with trademarks in particular), if you do not actively enforce your rights. you may lose them.
Source >> https://www.superlawyers.com/new-jersey/article/my-intellectual-property-was-stolen/80a9674f-c538-42f9-ac94-22bea2ecca7b.html
Thursday, February 1, 2018
Startup Companies and Trademarks, an Attorney's View
By: Michael J Foycik Jr.
April 27, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
An important decision facing new startup companies is what to do about trademarks. The question is, should they apply for a federal trademark registration. The answer to that depends very much on the goals for the startup.
If the goal of the owner of the startup company is to succed and then sell at a profit, then a federal trademark is essential. Think about it from the perspective of a buyer: without a trademark, that buyer cannot get the goodwill of the startup company. That goodwill includes such things as name recognition by customers, and loyalty all those dealing with the existing company. But, without official trademark rights, the buyer may not have exclusive rights to the use of the trademark, and imitators could flourish.
Some startups need investors, and investors are more comfortable when they see rights owned by the startup. After all, what are they investing in, if not intellectual property rights of some kind? Those rights commonly are from a good trade name or trademark. Other such IP rights can include trade secrets, patents, or copyrights.
Read More >> http://internationalpatentservice.com/Startup-Companies-and-Trademarks-an-Attorney-View.html
April 27, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
An important decision facing new startup companies is what to do about trademarks. The question is, should they apply for a federal trademark registration. The answer to that depends very much on the goals for the startup.
If the goal of the owner of the startup company is to succed and then sell at a profit, then a federal trademark is essential. Think about it from the perspective of a buyer: without a trademark, that buyer cannot get the goodwill of the startup company. That goodwill includes such things as name recognition by customers, and loyalty all those dealing with the existing company. But, without official trademark rights, the buyer may not have exclusive rights to the use of the trademark, and imitators could flourish.
Some startups need investors, and investors are more comfortable when they see rights owned by the startup. After all, what are they investing in, if not intellectual property rights of some kind? Those rights commonly are from a good trade name or trademark. Other such IP rights can include trade secrets, patents, or copyrights.
Read More >> http://internationalpatentservice.com/Startup-Companies-and-Trademarks-an-Attorney-View.html
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