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Who May Apply for a Patent?

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Who May Apply For A Patent?

According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if granted, would be invalid. Further, the person who falsely states he/she is the inventor in the Declaration or Oath submitted with the application, would also be subject to criminal penalties.

If the inventor is dead, the application may be made by his/her legal representative. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a propriety interest in the invention may apply on behalf of the missing inventor.

When two or more persons make an invention jointly, they may apply for a patent as joint inventors. Note, however, that a person who contributes is not a joint inventor and cannot be joined in the application as an inventor.

Often, an inventor will assign all or a portion of their legal interests in an invention to a third party, such as an employer, prior to filing the patent application. The third party may have the patent application prepared, however, the Declaration or Oath must still be signed by the inventor. Typically, an Assignment document would be executed and submitted to the U.S. Patent & Trademark Office with the application. The Assignment document, would then allow the third party to prosecute the patent application through the U.S. Patent & Trademark Office.

If an innocent mistake is made regarding the inventor or inventors, it usually can be corrected.

Sometimes the name of a joint inventor may have to be deleted from the patent application. Usually this occurs when joint inventors have invented separate elements in certain claims and those claims, during prosecution of the patent application, have been deleted entirely or modified to delete the specific elements.

Officers and employees of the U.S. Patent & Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.

 

Distruptive Technology? How does your business respond?

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How does your company respond when a new product or service offered by a competitor becomes available that has the potential of destroying your business model?   You can accept your fate and wind down or merge your business with another business.   We recommend you study the marketplace and the impact these products or services will have on your business.  How long do you have before the new product or service will substantially affect your business?   If the time is long, (1 to 3 yrs), then we recommend you develop  products or services that compete directly with the new product or service; (D)  If the time is short, (less than 1 yr), then we recommend you quickly develop hybrid products or services (i.e. products or services that are similar to your existing products and services but have new features that offer some benefits of the new product or service offered by the competitor and may address some drawbacks not addressed by the competitor. An example of using hybrids to respond to disruptive technology is General Motors’ development of the Volt in response to the Toyota Prius. The Volt is a new product that competes directly with the Prius that includes a large battery that allows it to be driven sole with electricity for short trips and includes a gas motor that allows it to be driven for longer trips or when charging stations are not available.  

Another response is to develop your own disruptive technology to the new product or service.  An example of a disruptive technology to Toyota’s Prius would be Honda’s fuel cell technology.  Unfortunately, this is very expensive

We recommend you constantly look for disruptive technology products and services offered by competitors. If a disruptive technology product or service appears in the market, then determine how long you have before the new product or service commercially impacts your business. Then develop a hybrid response.   

 

 

 

 

Websites 101: What is the Purpose of your Website?

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Before you create a website and choose a domain name, it is helpful to determine the purpose of the website.

A website may ‘create demand’, ‘fulfill demand’ or ‘collect leads’.  A ‘create demand’ website is intended to introduce new products or services to consumers.   The purpose of ‘create demand’ websites is to introduce a new product or service to website visitors and thereby create a demand for the product or service.  When you type in Google search engine, “What is a ‘high definition television’ , various links are generated to websites that present information on ‘high definition televisions’.   A radio or TV advertisement about a product or service is intended to ‘create demand’ in the listener or viewer for the product or service.

A ‘fulfill demand’ website is intended to sell products or services to customers who already know they want a particular product or service.   Often product manufactures operate ‘fulfill demand’ websites that allow customers to directly buy the product from the website.  Walmart.com and Amazon.com are primarily ‘fulfill demand’ websites.  

A ‘collect leads’ website is intended to collect email addresses, names and telephone numbers from potential customers that later may be used to send ‘create demand’ oriented advertising and/or fulfill demand’ oriented advertizing to this potential customers.   Websites that offer information about a particular topic often include a blog site that allows visitors to sign up and receive period news and information.

Today, most websites have a primary purpose, and one or two secondary purposes.  For example, the primary purpose of Amazon is to ‘fulfill demand’.  Its secondary purposes are to offer information on onter products (create demand) and collect email adresses (create leads) so it may send you information via your email address on other products in the future.

 

Do not use of common adjectives and adverbs in trademarks when choosing a trademark.

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When choosing a trademark, a common approach is to think of common adjectives, (such as easy or quick) or adverbs (such as easily or quickly) that can be combined with a descriptive term of the product or service (‘e.g. Easy Spray Cleaning Solution’ used with a spray on cleaning solution that removes dirt and grime from a surface).  Unfortunately when this approach is used, the proposed trademark often directly infringes  other registered trademarks or is quickly rejected by the USPTO as being too descriptive or likely to cause conflusion in the marketplace.   To avoid these issues, we recommend the following general aproach when selecting a trademark:

First, identify the generic term or phrase that describes the product or service to the customer.  (i.e. ‘spray cleaning solution’).  These words will probably be used in your advertising and marketing materials, but should not be part of the trademark.   

Second, identify novel features or qualitities of your product or service, identify the most important characteristics of your potential customers, and identify aspects of the problem your product or service addresses.  Assign words to these features and qualities, characteritics and aspects.   

Third, identify your brand (i.e. what is the emotional feeling you want to generate in the customer when your trademark is presented to the customer?)

Fourth,  try different combinations of these words that produce a positive, strong connotation or association consistant with your brand. 

 

Should I use a patent professional?

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Patent attorneys and patent agents (called patent professionals) must have a science or engineering background and must pass the arduous U.S.P.T.O.’s Patent Bar Exam proving they have sufficient knowledge of U.S. patent laws and regulations.  Like most professions, the competency of the patent professional depends on many factors, such as the individual’s background, intelligence,  work experience, work load, his or her thoroughness, and their attention to detail.  

U.S. and foreign patent rules and regulations have strict rules regarding behaviors and timelines that must be followed in order to obtain a patent.  If a particular act occurs, or a time deadline is missed, the opportunity to file a patent application may be permanently lost.   The rules regarding behaviors or timelines must be sorted out before a patent application is filed and a patent professional understands these rules and regulations. 

It is important that the invention be adequately described in both provisional and utility patent applications.  
Communication between the inventor and the patent professional is vital so that the invention is fully understood. 

Experience in writing and prosecuting  patent applications is  also important because it provides a historical perspective and a sensitivity to issues that guides the patent professional.    

 

 

 

Clues vs Trademarks? What are Clues?

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Clues are visual, audio, or odiferous tools used by product sellers, service providers and marketing companies to help customers to either remember their products or services or that implies or suggests an important feature or aspect of a particular product or serivice or of the general catagory that the product or service belongs.  Although some clues may also qualify as a trademark, they are often ‘functional’ that prohibits them for qualifying as a trademark.  For example, in the early 2000’s -the Harvey Davidson company unsuccessfully tried to trademark the classic sound of the Harvey  Davidson motorcycle.   Today, the company still uses the sound of its motorcycle as a ‘clue’ in its advertising.   Other well known examples of ‘clues’ are:  Santa Claus’ red suit was actually changed by Coca Cola to match the ‘red’ color associated with Coca Cola Company’s ads (Santa Claus’ suit was green prior to 1950).  

When considering trademarks also consider possible ‘clues’.

 

 

 

‘Consumer Approach Patenting’ . . . What is it?

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It is well known that less than 10% of patented products or services are commerically successful.   At larger IP law firms, inventors often spend $20K to $25K seeking patent protection on a product and service that at the end, has little or no commerical value.   Often  consumers (individuals or business) did not need or want the product or service disclosed in the patent or the claims in the patent did not adequately protect the inventive concept thereby enabling others to avoid the patent altogether.   We believe there is a better way, called ‘Consumer Approach Patenting’ which combines the principles of IP law with the Science of Consumer Behavior to determine whether a product or service would be desireble to consumers and whether the marketplace value points can be protected by IP law.  The Science of
Consumer Behavior, which is will known in the advertising and marketing industries, focuses on the consumer’s ‘needs,’ ‘wants’ and ‘motivations’.  The successful products and services must include value points that address the ‘needs’ of the consumer.   The advertising and marketing industries are then used provide the ‘motivation’ to convert these ‘needs’ into ‘wants’ that eventually leads to sales.  Products or services that address these ‘needs’ must fall within an ‘inventive concept’ protected by a patent.   Unfortunately, the products or services that enter the marketplace do not address the ‘needs’ of the consumer or the patent does not adequately protect the ‘inventive concept’. 

Bringing a product or service to the market is an iterative process.  As a product  or service is being developed, the ‘needs’ of consumer may need to be re-evaluated.  Often, the product or service will change to address the re-evaluated ‘need’.  The re-evaluated ‘need’ may require the re-evalution of the ‘inventive concept’ covered by the claims recited in the patent application.   It is important that the inventor and Patent attorney  communicate and closely work together during the entire patent process.

 

 

Problem Solving Statements (PSS)? Why are they important?

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Mr. Ronld D. Slusky, in his book Invention Analysis and Claims (published by America Bar Association), recommends that patent attorneys use a problem solving statement to identify the ‘inventive concept’ of an invention.  We agree.

The claims in a patent define what is the invention protected by the patent.  Ideally, the claims should protect the ‘inventive concept’ underlying the invention and not limited to a specific embodiment of the invention described in the patent. 

A problem solving statement helps the inventor and patent attorney identify the ‘inventive concept’. It is expressed as follows:  ‘The problem(s) of _______ is (are) solved by ________. ‘    It most instances, there are several problem solving statements for an invention.   Often, different problem solving statements can be written from different perspectives – the user, the manufacturer, the buyer, the licensee, etc.  By drafting and re-drafting the problem solving statements, eventually a problem solving statment that clearly identifies the invention concept will be found.  

In addition to identifying the ‘inventive concept’, the problem solving statement also (1) helps the patent attorney draft a suitable Title, Background Section and Summary Section in the application; (2) draft fallback claims;  (3) helps draft a full suite of claims; and (4) develop broad language that can used in the Claims Section. 

 

Invention vs. Innovation: What’s the difference?

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When you think of a new product or service, it has no real commercial value.  It may have potential value, but has no ‘real’ commercial value until is it developed into a  commercial product or service and then sold in the marketplace.   Until the product or service is sold, it has NO commercial value. 

A patent is a tool used to maximize the commercial value of a product or service. If a patent is granted for the product or service then the owner can preclude others from m manufacturing, selling or using the product or service in the jurisdiction covered by the patent. The patent owner may either license or sell his patent rights to others so they may manufacture, sell or use the invention.    

The first step in securing patent protection is to file a provision, utility or design patent application. 

An invention is an idea for a product or service that is novel (new) and non-obvious. An innovation is product or service that has commercial value.   An innovation that is also protected by a patent is ideal.    An invention that has no commercial value is not an innovation. 

How to Monetize your Product or Service

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Check you this October, 2014 Youtube video on how Venture Capitalists evaluate and decide whether to invest in a product or service.

 

Harvard i-lab | How Are You Going to Make Money? – YouTube

 

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