Notices

Any inventors on here?

Old 02-28-2012, 10:16 AM
  #1  
Senior Member
Thread Starter
 
Join Date: Jun 2009
Location: The Social Republic of NJ & SW FL
Posts: 1,760
Default Any inventors on here?

I've been working on some designs recently. I knew it'd be hard but not this hard... How do you get by patent laws without infringement. I am not well versed in legal code but some of these patents are very vague yet others are highly specific but have vague clauses in the descriptions. Can I hire an attorney or something along those lines to make sure I won't find myself in an infringement lawsuit?

On a side note, I already have a big investor and a few more companies interested. I also have a team of engineers to assist in research and development to get the prototype up and running. We are just waiting on the green light to make sure it is legal to do what we are planning
Boatless33 is offline  
Old 02-28-2012, 10:28 AM
  #2  
Senior MemberCaptains Club Member
 
Garett's Avatar
 
Join Date: Feb 2003
Posts: 24,220
Default

Good for you.

Yes by hiring a patent attorney he/ she will take care of everything for you.

Billable Hours (Kevin) is our resident patent lawyer.
Garett is offline  
Old 02-28-2012, 10:29 AM
  #3  
THT SponsorCaptains Club Member
THT sponsor
 
Join Date: Mar 2007
Location: Wisconsin And Marathon,Fl
Posts: 8,728
Default

do some research and look for a good patent attorney. My grandfather was an inventor, and was way to trusting and it cost him royally by not protecting his inventions. GE snatched a few of them and gramps never saw one penny.
mikeloew is offline  
Old 02-28-2012, 12:15 PM
  #4  
Senior Member
 
Join Date: Aug 2011
Location: St. Pete
Posts: 1,240
Default

Your concern is infringement, not patenting your design, is that correct?

Your team of engineers should be able to do some patent research. Unless you find an attorney that is already an expert in the field of your invention, he's going to have to come up to speed and that won't be cheap.

You also need to confirm that the patents you think you might be infringing have not expired.
drkptt is offline  
Old 02-28-2012, 12:39 PM
  #5  
Senior MemberCaptains Club Member
 
Join Date: Jan 2002
Location: Raleigh, NC
Posts: 1,111
Default

One of the lesser understood concepts of patent law is that you may be able to develop a concept that is patentable (and you may be able to get a patent), but once you start making, using, selling, or offering for sale the corresponding product or process in the US, you may be at risk of infringing the patent(s) of a third party.

On the infringement side, we can evaluate the risk of your product/process infringing the patent(s) of a third party (i.e., from a patent law standpoint, your risk is low/high that you may infringe Patent X). However, we cannot tell you whether you will be sued for patent infringement or not.

In practical terms, regardless of our conclusion as to your risk of infringement, a third party can sue you for infringement even though their theory of your infringement may be very thin. Often times, hitting the market with big backing $$ and sophisticated development may raise your profile and get you noticed by these third party patent holders.

In this regard, you may wish to do some research on your potential competitors and see whether they hold any patents or have a history of filing lawsuits against other competitors. However, don't forget that there may be other patents out there that are still active, but are not being practiced - these are the ones that could really bite you, if you're not careful.

Feel free to PM me if you'd like to talk further . . .

Kevin

P.S. We do not have an attorney-client relationship and this post does not purport to expressly establish or imply such a relationship. Further, this post is merely to provide some friendly information and does not constitute particular legal advice. Please consult your own attorney, your mileage may vary, professional stuntperson - do not attempt at home, yada yada . . .
Billable Hours is online now  
Old 02-28-2012, 05:12 PM
  #6  
Senior MemberCaptains Club Member
 
Join Date: Nov 2004
Location: Amelia Island, FL
Posts: 4,782
Default

Here is a great book to answer a lot of questions and walk you through the process.

Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office



http://www.google.com/products/catal...ed=0CG4Q8wIwAA
Reel Boobs is offline  
Old 02-28-2012, 08:57 PM
  #7  
Senior Member
Thread Starter
 
Join Date: Jun 2009
Location: The Social Republic of NJ & SW FL
Posts: 1,760
Default

Thanks for the replies everyone. I'm definitely going to check out that book.

Kevin, thank you for your reply. Very informative. As far as the notion of doing some research on competitors and their past history of lawsuits, do you know of any good sources for me to look into. Start at the USPTO site and work down possibly?

drkptt, I admit that I know very little about laws in this area. I simply had an idea and came up with the resources to potentially make it happen. I mentioned infringement specifically as I have heard the term used before and had done a little research on the topic. All areas on the legal spectrum are a concern at this point in time. I know how litigious people are and I want to cover my end as much as possible. Of course there is always the possibility of an extraneous third variable problem that can arise. My intention is to be best prepared for everything foreseeable and that can be immediately addressed.

After making a few calls today, I found out that a good friend's father holds a few patents. I am going to pick his brain a little as soon as I get a chance. Additionally, from what I hear anyway, my school has a rather good law program. I am also going to talk to some Deans over there to get some aditional ideas. With any luck, maybe I can work out a deal with the school to help finance the legal piece of the puzzle. While I don't want to take any shortcuts, I'd much rather the funding go into R&D than legal fees.
Boatless33 is offline  
Old 02-28-2012, 09:00 PM
  #8  
Senior Member
 
Join Date: Jul 2009
Posts: 125
Default

Originally Posted by Billable Hours View Post
One of the lesser understood concepts of patent law is that you may be able to develop a concept that is patentable (and you may be able to get a patent), but once you start making, using, selling, or offering for sale the corresponding product or process in the US, you may be at risk of infringing the patent(s) of a third party.

On the infringement side, we can evaluate the risk of your product/process infringing the patent(s) of a third party (i.e., from a patent law standpoint, your risk is low/high that you may infringe Patent X). However, we cannot tell you whether you will be sued for patent infringement or not.

In practical terms, regardless of our conclusion as to your risk of infringement, a third party can sue you for infringement even though their theory of your infringement may be very thin. Often times, hitting the market with big backing $$ and sophisticated development may raise your profile and get you noticed by these third party patent holders.

In this regard, you may wish to do some research on your potential competitors and see whether they hold any patents or have a history of filing lawsuits against other competitors. However, don't forget that there may be other patents out there that are still active, but are not being practiced - these are the ones that could really bite you, if you're not careful.

Feel free to PM me if you'd like to talk further . . .

Kevin

P.S. We do not have an attorney-client relationship and this post does not purport to expressly establish or imply such a relationship. Further, this post is merely to provide some friendly information and does not constitute particular legal advice. Please consult your own attorney, your mileage may vary, professional stuntperson - do not attempt at home, yada yada . . .
This is the best advice you could get. I am not an attorney, but a consulting expert/witness in patent infringement cases. The other side of infringement cases is when you actually get a patent and think you are home free. Some company with a financial stake in the market can claim your patent should be invalidated for as many reasons as they can think of. The usual claim is that what you patented is previously disclosed. You will spend as much defending your patent as you will if you are sued for infringement, and the other guy gets to keep practicing your development while suing you.

Patent cases are quirky, long to resolve and generally expensive. If you are contemplating entry into a crowded market, or a situation where your development will displace existing market players, I would go heavy on the patent research and see who owns what.
DAL1955 is offline  
Old 02-28-2012, 09:12 PM
  #9  
Senior MemberCaptains Club Member
 
Join Date: Jan 2002
Location: Raleigh, NC
Posts: 1,111
Default

Originally Posted by Boatless33 View Post
Thanks for the replies everyone. I'm definitely going to check out that book.

Kevin, thank you for your reply. Very informative. As far as the notion of doing some research on competitors and their past history of lawsuits, do you know of any good sources for me to look into. Start at the USPTO site and work down possibly?

drkptt, I admit that I know very little about laws in this area. I simply had an idea and came up with the resources to potentially make it happen. I mentioned infringement specifically as I have heard the term used before and had done a little research on the topic. All areas on the legal spectrum are a concern at this point in time. I know how litigious people are and I want to cover my end as much as possible. Of course there is always the possibility of an extraneous third variable problem that can arise. My intention is to be best prepared for everything foreseeable and that can be immediately addressed.

After making a few calls today, I found out that a good friend's father holds a few patents. I am going to pick his brain a little as soon as I get a chance. Additionally, from what I hear anyway, my school has a rather good law program. I am also going to talk to some Deans over there to get some aditional ideas. With any luck, maybe I can work out a deal with the school to help finance the legal piece of the puzzle. While I don't want to take any shortcuts, I'd much rather the funding go into R&D than legal fees.

1. That is a good "do it yourself" book - I recommend it myself - however, it is more geared to writing your own application (as far as I can recall), and not guiding you with respect to the big picture and your particular situation.

2. Neither a patent holder nor a law school dean will likely have any idea as to how to properly advise you.

3. A good place to start looking for competitor patents is by doing an assignee search on the USPTO site - however, realize that it is a very clunky and limited search engine.

4. I'm not saying any of this to get you to call me - I am, however, encouraging you to get professional advice from a qualified patent professional instead of chasing sources that do not have any more expertise than you do now . . .

Good luck!
Billable Hours is online now  
Old 02-28-2012, 09:53 PM
  #10  
Senior MemberCaptains Club Member
 
Garett's Avatar
 
Join Date: Feb 2003
Posts: 24,220
Default

I hope you fully understand the ramifications of "IF's" when it comes to patents.

The big one for me, let's say I invent and patent something in the audio field and Sonie steals the idea out from under me, right in front of my eyes. This is a slam dunk case of they are in the wrong and I am golden. I take them to court but Sonie's legal team tells Sonie I only have one cent to their $1,000,000 and at best I "might" be able to come up with $1,000 to their $1,000,000. What do you think is going to happen? The legal time of Sonie is going to drag their heals until they bury me so far under I've forgotten what a penny looks like and then they’ll give me a token settlement out of court that isn't enough to get my things out of the pawn shop. Oh, and in that out of court settlement chances are I will have to sign something saying Sonie did NOT infringe on my patent rights and they have legal rights to continue down the road they are on.

As I said, understand the “IF’s” before you start laying down the green because it can be a Very Deep Pit.
Garett is offline  
Old 02-28-2012, 10:02 PM
  #11  
Senior Member
 
Join Date: Jan 2011
Location: West Palm Beach
Posts: 3,474
Default

Okay curiousity has gotten the best of me, what are you trying to get patented? I completely understand if you do not want to tell.
sailfish18 is offline  
Old 02-28-2012, 10:05 PM
  #12  
Senior MemberCaptains Club Member
 
Garett's Avatar
 
Join Date: Feb 2003
Posts: 24,220
Default

Originally Posted by sailfish18 View Post
Okay curiousity has gotten the best of me, what are you trying to get patented? I completely understand if you do not want to tell.
You must be terrible with presents under the Christmas tree with your name on them.
Garett is offline  
Old 02-28-2012, 10:09 PM
  #13  
Senior Member
 
Join Date: Jan 2011
Location: West Palm Beach
Posts: 3,474
Default

Originally Posted by Garett View Post
You must be terrible with presents under the Christmas tree with your name on them.
Shaking the boxes, tearing off corners, etc... anything to get a little idea as to what was inside.
sailfish18 is offline  
Old 02-29-2012, 08:29 AM
  #14  
Senior Member
 
Join Date: Jul 2009
Posts: 125
Default

Originally Posted by Billable Hours View Post
1. That is a good "do it yourself" book - I recommend it myself - however, it is more geared to writing your own application (as far as I can recall), and not guiding you with respect to the big picture and your particular situation.

2. Neither a patent holder nor a law school dean will likely have any idea as to how to properly advise you.

3. A good place to start looking for competitor patents is by doing an assignee search on the USPTO site - however, realize that it is a very clunky and limited search engine.

4. I'm not saying any of this to get you to call me - I am, however, encouraging you to get professional advice from a qualified patent professional instead of chasing sources that do not have any more expertise than you do now . . .

Good luck!
Not sure what field of specialty Kevin is in, but his advice is very good. I would add that if yours is a very technical field, seek out a Patent Attorney with previous or at least similar expertise in your field. You will get up an running much more quickly.
DAL1955 is offline  
Old 02-29-2012, 08:39 AM
  #15  
Senior MemberCaptains Club Member
 
Join Date: Jan 2002
Location: Raleigh, NC
Posts: 1,111
Default

Originally Posted by DAL1955 View Post
Not sure what field of specialty Kevin is in, but his advice is very good. I would add that if yours is a very technical field, seek out a Patent Attorney with previous or at least similar expertise in your field. You will get up an running much more quickly.

Registered Patent Attorney with 13 years experience in top tier law firms
Licensed Professional Engineer
Degrees in Mechanical Engineering and Materials Science, PhD dropout in Biochemical Engineering
Generally handle all types of technologies (mechancal, electrical, electromechanical, computer software, business methods, etc.), except hardcore chemistry and biotechnology

Maybe sometime I will explain why I believe it may be better to have a Patent Attorney that is a quick study in any technology, rather than one who has particular experience but preconceived notions in the given field . . .

Last edited by Billable Hours; 02-29-2012 at 08:53 AM.
Billable Hours is online now  
Old 02-29-2012, 10:44 AM
  #16  
Senior Member
 
Join Date: Jul 2009
Posts: 125
Default

Originally Posted by Billable Hours View Post
Registered Patent Attorney with 13 years experience in top tier law firms
Licensed Professional Engineer
Degrees in Mechanical Engineering and Materials Science, PhD dropout in Biochemical Engineering
Generally handle all types of technologies (mechancal, electrical, electromechanical, computer software, business methods, etc.), except hardcore chemistry and biotechnology

Maybe sometime I will explain why I believe it may be better to have a Patent Attorney that is a quick study in any technology, rather than one who has particular experience but preconceived notions in the given field . . .
I would agree that a PA with preconceived notions, regardless of their field of expertise or experience is not a good thing....

I was going to add (but had to take off to make a school pickup) that the very best PA's I have worked with are those with an Engineering background, whose exposure is somewhat more broad than the PA's that specialize in niche areas like genetics, medicine and biotechnology. I have a background the Chemical Engineering(MS) and am considered an expert in my limited field at this point in my career. My original plan was to go to law school and become a PA. Life intervened however and law school was not to be but I have always had an interest the patent process. I hold a number of patents in my field.

As an expert consultant/witness, I was involved with a situation where a small group of individuals received a patent on a chemical process for water treatment. The patent application was prepared by a small firm with specialties in the medical field and specifically medical genetics due to a family relationship with the inventors. Their associates commonly held MD's or advanced degrees in biology or microbiology. The patent was later disputed and much of the case centered around the use of words that were unusual in the context of the patent. This was not a case of obfuscation, but rather differences in the vocabulary pertinent to the relatively different fields of art. A settlement was reached with the disputing party allow to practice under license in geographically restricted areas not competitive to the patent holder.

DAL
DAL1955 is offline  
Old 02-29-2012, 10:56 AM
  #17  
Senior Member
 
Join Date: Sep 2008
Location: Lafayette, La.
Posts: 3,957
Default

Perhaps a hijack, but hopefully related enough to matter. I'm reading this with great interest. I have made a product that I could not find for my own use and I'm getting a LOT of interest from others to buy them. I'm talking about an item that will sell for about $10 each with several million potential customers. Is an item with such a low price worth the expense of getting a patent? I guess what I would like to see happen is for me to sell them and advertise them nationally and have one of the big boys buyh me out. Any advise?
Mike
beenie is offline  
Old 02-29-2012, 12:07 PM
  #18  
Senior MemberCaptains Club Member
 
Join Date: Jan 2002
Location: Raleigh, NC
Posts: 1,111
Default

Originally Posted by beenie View Post
Perhaps a hijack, but hopefully related enough to matter. I'm reading this with great interest. I have made a product that I could not find for my own use and I'm getting a LOT of interest from others to buy them. I'm talking about an item that will sell for about $10 each with several million potential customers. Is an item with such a low price worth the expense of getting a patent? I guess what I would like to see happen is for me to sell them and advertise them nationally and have one of the big boys buyh me out. Any advise?
Mike


With the usual disclaimers (I am not your lawyer, this is not legal advice, consult your own attorney, etc.), I have the following observations:

The item that you have described sounds fairly simple to make at a low cost, and appears to have a fairly large potential market. This actually sounds like a situation where someone may want to compete with you in that market.

The purpose of a patent, in this regard, is to prevent someone from making, using, selling, or offering for sale your product/process in the US, which may seem to fit the bill for preventing such competition. However, these rights are only conferred upon you by an issued patent – merely filing a patent application does not give you any enforceable rights that you can pursue against a competitor.

There are still further aspects that you should consider: just because your product/process did not previously exist, and people now want to buy it, does not mean that your product/process is necessarily patentable. Further, even if you filed a patent application now, it may be several years before you may see a patent resulting from the application, if at all. Even then, you would have to be committed to enforcing that patent against your competitor, in order to exercise your rights. The bottom line in all this, or course, is money – it will cost quite a bit to go through this process, whether you do it yourself or have someone do it for you.

In the end, it comes down to a business decision for you – are you willing to lay out the $$ to take the patent route and are you willing to lay out the $$ to enforce your rights down the road, if you even get those rights? Can you wait a long time for a patent, if any, to issue? Will your product/process be obsolete by then? Are there other ways in which your product/process can be accomplished or improved upon (notwithstanding cost/price)?

If you want some peace of mind, and at least something tangible to present to potential acquirers regarding your ownership of the product/process, you could consider filing a provisional patent application. For that, you would need to prepare a good description/drawings of your product/process and fill out a provisional coversheet for the USPTO. The provisional application costs $125 to file and, once filed, allows you to call your product/process “patent pending” – NOT “patented” - for a year. At that time, you would need to file a non-provisional application to proceed any further in the patent system.

Anyhow, you will note that these observations do not tell you what you should do, but just merely present that options that you can consider. The ultimate decision is up to you . . .

Good luck!
Billable Hours is online now  
Old 02-29-2012, 12:32 PM
  #19  
Admirals Club Admiral's Club Member
 
Join Date: Oct 2010
Location: Florida Panhandle
Posts: 3,935
Default

Billable, just curious how long the research takes to find if an idea is new or not and costs associated with the search? Your description explains a lot of what I've wondered before.
GulfC is offline  
Old 02-29-2012, 12:44 PM
  #20  
Senior Member
 
Join Date: Sep 2008
Location: Lafayette, La.
Posts: 3,957
Default

Billable,
Thanks for the info. So if I apply for a provisional for $125 or so then a year later I have to apply for a non provisional which costs approximately how much?
Mike
beenie is offline  

Thread Tools
Search this Thread