Do I Need to Know How to Make My Idea in Order to Patent It?

I have an idea that I think is/could be patent-able based on the requirements of patent-ability, but I do not yet know exactly how to make it. For example, I want to add a certain useful feature to a shoe, but do not know the best way to add that feature because I do not work in the manufacturing of shoes.

I believe I have found a company that could develop a prototype for me, but I am worried who would own the idea if they are the one’s adding expertise and deciding the best way to add the feature.

Would a provisional patent with general language about the feature and it’s useful benefit be enough to protect this idea while working with a manufacturer to develop a prototype, or would a specific description of how the shoe with the new feature is made be necessary (which I would not know until after the prototype is developed)?

Provisional patents, in large part, are designed to help the inventor secure their patent priority date while they take their invention from a ‘concept’ to a reality. During this process, you will be interacting with many parties: investors, engineers, developers, manufacturers. All of these parties may be better funded and better equipped than you are to bring your idea to market. Having a provisional patent on file will help ensure that, if anyone is entitled to a patent on your  invention, it would be you. This protects you against potential misappropriation of your invention by the parties you engage in helping you bring your idea to market.

That being said, how much do you need to know about actually making your invention for a provisional patent? Well – at the provisional level, you should be able to describe your invention conceptually. You may not know all the tricks, but the requirement is that you describe your concept such that an engineer will be able to derive how to make your invention based on your description. So, as an example, you don’t need to know how to be a programmer to patent a software application – you just need to have an understanding of how the software application what the software application should be built to do.

As another example, you don’t need to be a shoe-maker to patent a new feature/design on a shoe. You just need to describe your concept sufficiently to enable a shoe-maker, when reading your patent description, to make your concept into a reality.

So, I would agree that filing a provisional patent application is very important – and, if you know enough about your invention to describe it to someone who has the means to build it, then you have enough information for a patent application filing.

I will also add that it’s important that you should have good agreements in place with the manufactures/engineers during your work with them in creating your invention. Even if you have a patent filing, you make sure that  these manufactures/engineers sign IP Assignment agreements. These agreements require the people you work with to transfer their IP rights to any contributions they may make to your patent-pending invention during their work for you.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Winter Must-Have: Sled Pants

Anyone who has ever thought of sledding as an activity reserved only for children has clearly never seen this trendy winter accessory. The sled pants patented in 1996, are a quick and easy way to sled anytime, anywhere. The convenient apparatus straps to your waist much like wearing a belt, and contours comfortably to your body with contractible leg extensions to make walking in them bearable. As soon as you are ready to hit the slopes, you can conveniently pop down the hinged legs and be on your merry way. It’s time to ditch the heavy garbage bin lids and inflatable tubes for this mature alternative. Who wants to ski anyways? (Patent Information: http://bit.ly/1xEvX3Y)

sled-design-patent

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

My New Invention Has Many Uses – Do I Need Multiple Patents? Part 3

You’ve decided that the best approach to protect your invention is by filing patents separately for all the different functions/uses and components. This approach, if affordable, provides numerous benefits (e.g., licensing benefits). Starting the filings out as provisional applications while the invention, as a whole, is still undergoing development or ‘proof-of-concept’ can be an affordable means to protecting the various aspects of your invention. If done properly, protections for needless public disclosures may be provided.

Do you want to keep some components a secret?

The subject matter of a provisional patent application is never disclosed to the public. This affords the inventor an opportunity to continue to improve the subject matter without sharing the disclosure to the public in its ‘patent-pending’ phase. It also prevents the subject matter from entering the public domain in case the inventor decides not to pursue a non-provisional patent on the subject matter.

Recommended Approach:

Break your idea up into components (if possible) and file them as provisional applications first. A full patent application (non-provisional) can claim priority to more than one provisional application. However, as soon as you claim priority to a provisional application, the provisional application becomes public record. If you want to keep different segments of your ideas from being disclosed, file them in separate provisional applications.

In this way, when you follow with a non-provisional, you can pick and choose which components are “ready” to become public record, and which ones can remain undisclosed protected ideas. Otherwise, if you put every aspect of your invention into a single provisional application, then the non-provisional that follows will render all of the components available to the public.

 

For the full story please visit Part 1 of this series.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

2 Tips on How to Market Your Equity Crowdfunding Campaign

A business thinking through the best way to sell a successful equity crowdfunding campaign should remember these two important points:

  1. Focus on your network. While the relatively new ability to advertise a local public offering to everyday investors (see Invest Georgia Exemption Guide) significantly expands a startup’s traditional investor pool, the reality is that the vast majority of funds raised comes from a business’s pre-existing network.   In fact, recent reports show that only 6% of funds raised through equity crowdfunding come from strangers.  While this percentage is expected to increase as this market matures, for now, a business considering an equity crowdfunding fundraise will get more bang for its buck if it cultivates the relationships it already has – rather than expensive advertising campaigns designed to attract potentially new investors.
  1. It takes longer to attract investors in an investment offering than Kickstarter backers. Based on my own experience helping companies close investment crowdfunding offerings and my observations of the industry and consumer behavior, converting an investor takes significantly longer than converting a backer in a rewards crowdfunding context.  This distinction shouldn’t come as a surprise, since the Kickstarter mentality functions on novelty or consumer appeal, which is driven by the desire for instant gratification, while investing creates a more long-term relationship – often governed by complex terms that take folks a while to comprehend.  Nevertheless, it warrants pointing out to businesses who come to an equity crowdfunding transaction with the false confidence created by a successful Kickstarter raise.  If your strategy is to close a deal in 30 days, or to generate traction by immediately moving the funding needle, be mindful of the fact that an investment transaction is a different animal – even if it has the word “crowdfunding” after it.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Megan K. Johnson is a business lawyer with over 7 years of experience. She helped champion securities crowdfunding at the local level and worked with the first company to successfully close an equity crowdfunding involving everyday investors. She is a partner at Founders Legal and can be reached at [email protected]

megan

Source: Smartup Legal

Elon Musk’s Early Patents before Tesla

Elon Musk, the brains behind Tesla Motors, PayPal, and SpaceX, seems to have always been quite the innovative thinker. In the early 90s and 2000s, he submitted a series of different patents relating to the way we use the internet in terms of search and communication. As originally covered in qz, his ideas predate many of the apps we are so familiar with today.

In 1997, Musk filed for a patent that is comparable to various communication applications such as FaceTime, Google Hangouts, and Skype. The patent describes giving computers the ability to place calls online as users came across various phone numbers. The user could click on a company contact and get connected via a call center, similar to what happens when you tap on a phone number from your smart phone today.

calling-from-the-web

In 1998, Musk submitted another patent in which the main purpose was to increase the speed of geographic searches. The goal was to create an automatic search process that would widen the area of your search until the appropriate amount of results were found. This would allow you to find the closest businesses in your area, without having to do multiple searches. This is exactly the process that Google currently uses for location-specific searches.

In 1999, Musk filed two patents (1)(2), for a directory service that would consist of a single database that would hold information about a particular business, as well as directions and contact information for its location(s). This idea is reminiscent of what Yelp and Google Places provide. The applications also suggest the functionality of the tool could be extended to various other categories.

directory

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

My New Invention Has Many Uses – Do I Need Multiple Patents? Part 2

A single invention (for example – an automated cleaning robot) may have many different innovations (let’s call them ‘components’) making up the entire invention. Inventors often struggle to decide if separate patent application filings are necessary for each innovation. To assist you in deciding, answer the following questions.

1. Could the Components be used independently of the entire invention for a different invention?

If your innovative component can be used across many different platforms, then it is best to focus a single patent application on the component itself. In addition, a patent application on the invention as whole itself may be filed, incorporating by reference the patent application on the component.

In contrast, if your innovative cannot be used across many different platforms, then it’s best to file a patent application on the invention as a whole and detail the innovative component therein.

2. Is there novelty within the Component itself?

Of course, you would feel that your innovative component is ‘novel’ – but would it pass patent examination without the context of the invention as a whole? In order to pass patent examination, the component itself would need to be deemed by the examiner as: Useful, Novel, and Non-Obvious or Inventive.

If the component, independent of the invention as a whole, has a use on its own – it would meet the ‘useful’ requirement. If the component is the first of its kind (or an improved derivative of existing components), then it would meet the ‘novel’ requirement. If the component is more than just a combination of other existing components, then it would meet the ‘non-obvious’ and ‘inventive’ requirements.

For more information visit Part 3 of this series.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

My New Invention Has Many Uses – Do I Need Multiple Patents?

A single invention (for example – an automated robot) may have many different uses and functions. Inventors often struggle to decide if separate patent application filings are necessary for each use and function. To assist you in deciding, answer the following questions.

Does the single invention have different uses?

Generally, a patent application should only claim a single use of an invention. The first and foremost reason: If you are claiming multiple uses of the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single use and file separate patent applications for each other use.

The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.

Does the single invention perform different functions?

As with the ‘use’ analysis above, a patent application should only claim a single function of an invention. The first and foremost reason: If you are claiming multiple functions for the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single function and file separate patent applications for each other function.

The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.

 

For more information visit Part 2 of this series.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Equity Crowdfunding in 2015

It’s a good time for small and emerging businesses to think about what the landscape for capital raising will look for the rest of 2015. The traditional channels will likely be unchanged: bank loans (if you can get them), angel investors (if you are a tech company based in San Francisco), or venture capital (if you invented a perpetual motion machine). For the remainder of the 99% of small and medium sized enterprises that don’t check one of the boxes above, what other options might emerge in 2015?

Equity (or, more broadly, securities) based crowdfunding will likely emerge in 2015 as a go-to choice for small and emerging businesses to raise capital. Unlike traditional “rewards” or “donation” based crowdfunding, equity crowdfunding is structured for businesses to sell interests (securities) in the enterprise itself to the crowd at large through a mini-public offering. At the end of a successful offering, the business has raised the capital it needs to start-up or expand, and the public now owns an interest in the fortunes (or failures) of that business going forward. Although equity crowdfunding already exists in the United States, it has been underused, and undervalued (for an example of an intrastate crowdfunding exemption, see Georgia’s here: Invest Georgia Exemption). We expect 2015 to be a breakout year as awareness and marketplace acceptance expands more rapidly.

The Trends

Why do we see this happening in 2015? Well, for many businesses (start-up or growth stage), equity crowdfunding may be their only source of access to capital. This includes a massive amount of SMEs in the United States who are either too young, or too industry or geographically challenged to attract capital from other sources, but who nevertheless have a great idea and a loyal customer or affinity base.

Furthermore, the regulatory trend is toward expansion and permissiveness of crowdfunding. In 2012, it was only permitted in two States (Georgia and Kansas). In early 2015, the list of States which have enacted (or have considered) intrastate crowdfunding exemptions will be upwards of 15 (including, now, Texas), and is growing geometrically (see NASAA’s excellent resource center here: Intrastate Crowdfunding Resources. That means that businesses in these States can use equity crowdfunding now, they do not have to wait on federal rules under the JOBS Act from the SEC that are now years late. Eventually, when the SEC does release final rules under the JOBS Act, national equity crowdfunding will be legal and available as well. This trend will continue ahead.

The Benefits

The benefits to SMEs wishing to conduct an equity crowdfunding are numerous, and include the following:

  • Access to capital that might be otherwise unavailable.
  • The Company drives the terms of the capital raise.
  • Engagement of customer/affinity base on a going forward basis.
  • Low or zero cost to rewards fulfillment following completion of the campaign.
The Drawbacks

SMEs wishing to conduct an equity crowdfunding should, of course, consider the limitations of such a campaign as well, including the following:

  • Currently, only legal in certain States, and not on a national/interstate basis (yet).
  • Low maximum raise thresholds (generally $1M).
  • Requires legal compliance structuring (unlike rewards/donation based crowdfunding).
  • Backers will own a security in the company following completion of the campaign.
The Takeaway

Equity crowdfunding—like other methods of capital raising—can be challenging and time consuming. However, for those SME’s with a natural customer or affinity group that they can tap into for support, equity crowdfunding will likely be the cheapest and easiest source of capital that they can access, and will offer the collateral benefits associated with completing a successful crowdfund.

Unlike a simple rewards based crowdfund (like on Kickstarter or Indiegogo), equity crowdfunding involves the offering and sales of securities. Accordingly, any business that is considering conducting an equity crowdfunding campaign should consult a qualified securities attorney to make sure that the necessary compliance boxes are checked in advance. Finally, all the hallmarks of a great crowdfunding campaign should be assembled (video, copy, images, disclosure documents, etc.), and a strategic plan for execution should be formed. After that, it’s up to the crowd!

If you are interested in more detail related to your situation it is best to speak with an attorney.

Jeffrey Bekiares is a securities lawyer with over 8+ years of experience, and is co-founder at both Founders Legal and SparkMarket. He can be reached at [email protected]

jeff

 

Source: Smartup Legal

Four Ways to Protect Your Intellectual Property

The success of a business can largely depend on the protection of its intellectual property. With the overwhelming amount of protection options, it can be hard to know what method is the best for your specific need. This infographic illustrates the four ways you can protect your intellectual property as well as the benefits for each.

The first method of coverage is a patent which is categorized into three types:  utility, design, and plant. Each type of patent varies in terms of the type of intellectual property it protects, and the amount of time the patent protection lasts. The next method is a trademark. Trademarks provide protection for a word, phrase, symbol, design, color, and even the layout of a store. The third method is a copyright which delivers coverage for works that are fixed in a palpable medium. This usually includes music, video, books, and other similar material. The final available method is a trade secret which protects information with independent economic value. This includes works such as blueprints, chemical formulas, research and development, and marketing strategies.

Each form of intellectual property is unique, and it is important to analyze the benefits of each form of security to make the best decision for your needs. It can also be helpful to consult a patent attorney to make sure you have considered all of your options.

four-ways-to-protect-your-intellectual-property

You can find our other infographic on Entrepreneur.com

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

andrei

Source: Smartup Legal

Can Social Media Apps Get Process Patents?

I am creating a social media app. Do I have to patent the process of what the app does? To avoid copycat versions? Or do I have to launch and create a big network effect? I am not creating any new software or technology, but the way the process puzzles together is innovating.

Processes are patentable if they are innovative! Sometimes, the process of using the app is innovative – other times, the function of the app enabled by the process is innovative. Both instances are patentable, even if the hardware/software that facilities the processes is not innovative in itself. I strongly advise against making any launch until at least a provisional patent application is filed. Here is why:

  1. First Come, First Serve: The US patent system will only award a Patent on an idea or invention to the first inventor who files a patent application. If you aren’t the first to file, you risk losing your patent rights.
  2. The Clock is Ticking: If you don’t file a U.S. Patent Application within 12 months of public disclosure (such as sharing your idea with others) or within 12 months of offering your invention for sale to the public, you lose your patent rights. Even still, the longer you wait, the greater the risk of someone else filing a patent application for the idea you came up with first.
    • Important Note: Although the US gives you a 12 month “grace” period to file a patent application after your first public disclosure, most other countries in the world do not. This means, in those countries, you will have lost your patent rights if you’ve made a public disclosure before filing the U.S. patent application.
  3. Filing a Provisional Patent Is a Great Place To Start: It’s affordable and it’s an essential take away from these 3 facts. A provisional application secures your priority date (your spot in line) to the patent rights while you develop your idea, market it, and raise funding. This helps to ensure that no one will beat you the patent office. Our platform has made the provisional patenting process quick, easy, and affordable for thousands of entrepreneurs and businesses across the nation.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal