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

When to Seek Legal Advice | The Pros and Cons of Acting as Your Own Attorney

Can you be your own lawyer?

Yes. Maybe. No. Sort of.

In truth, it really depends on the situation. For the easy stuff? Sure. For the more difficult things? Probably not. The big problem is how do you know what is DIY-friendly and what isn’t?

A good comparison that I like to use is this: Can you fix your own car? Well, it depends on your automotive know-how, general handiness, the tools and equipment you have, and the scope of your project. A lay person with a modern car can typically replace the wiper blades, top off some of the fluids, maybe even change the oil. However, if the repair requires replacing worn piston rings, most people would recognize that as a big job and seek out a technician who knows what he’s doing.

The same thing can be said about doing your own legal work – you can (and should) do some things yourself, but other, more complex procedures are best left to those with the right skills and training. While this seems very intuitive, knowing when to turn to an expert and for what is a hard task. In law, like in modern auto repairs, the help a layperson needs is twofold:

  1. Diagnosing the problem; and
  2. Proposing and implementing the right solution.

Knowing when to seek some help only becomes more difficult with the mounds of available online advice and with many popular self-help websites. Many of them promise solutions without having any way to know what the underlying problems are. To again use an automotive analogy, this is akin to a mechanic offering to sell you a part or perform a service without even seeing your car or knowing anything about it. This is one of the underlying reasons for Consumer Reports finding that legal DIY websites are no match for hands-on legal professionals.

So, what can you do?

  1. Find a lawyer who focuses on working with people like you. For example, if you have a startup, find a lawyer who mostly works with startups. He or she is more likely to deal with your specific issues and will know to provide doable payment options.
  1. Find a lawyer who is technologically savvy, and uses the latest efficiency tools. Look at it this way: If your attorney knows how to use technology to become more efficient, then he or she has the ability to provide services to you at a lower cost.  For example, sending documents by mail for review or signature is more costly and time-consuming than using a secure electronic file transfer service.
  1. Look for a trusted website that efficiently puts you together with a lawyer. A simple lawyer listing or referral service is the modern equivalent of a phone book and is not very useful. Look for a trusted website that will walk you through part of an intake process and then put you together with an attorney. That is money saved for you.  If you can arrange a free consultation through the site, that is a bonus.

In conclusion, you will be better off consulting with a lawyer, especially for things that are important to you – such as your business, which is your livelihood. The key is finding and working with the right lawyer in a way that works for your needs and your budget.

 

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

How to Protect Your Idea When Building a Team

An old African proverb comes to mind when writing on this topic: “By ourselves, we can move quickly. Together, we can go far.” Ideas aren’t meant to be confined to a single mind. They’re meant to be shared and formed into a common vision. I’ve seen many entrepreneurs with good ideas afraid to share their good ideas with others. They either believe that they can do it all themselves or, more often, fear misappropriation, loss of ownership, and competition.

As a result, they remain soloist amongst teams, undertaking the task of building a company with a fraction of the resources they need to realize their visions. Very few have succeeded as soloists… come to think of it, no one comes to mind.

This article hopes to provide those entrepreneurs with a means to ease and mange what I believe to be the most common cause of the soloist entrepreneur – the “I don’t want to share my idea mentality.”

Collaboration is a right of passage for entrepreneurs. It is the natural transition from a single person’s idea to a team mission of realizing a collaboratively improved idea. This right of passage represents the entrepreneur’s becoming of a leader.

As an Intellectual Property Attorney, I would encourage collaboration because it is a much more certain path to an ideas successful realization of an idea. But, as that same Intellectual Property Attorney, here is the order in which I would recommend your approach on – of course – an entrepreneur’s shoe string budget:

  • File for IP Protection – You can file these under your own name, claiming exclusive ownership. But a good strategy and incentive for building a company with committed team players is to license and assign the rights to the IP to your company. Now, everyone has some skin in the game and everyone is equally protected. Often times, you can first license the idea to your company, reserving the right to revoke the license if your team members don’t follow through with their contributions.
  • Don’t be afraid! Share your idea with those you trust. Get their feedback. Build their support. Start to build a team. So what if the idea ends up being not all yours and only yours? You’ve got a team! Now, I’m not saying to share your idea with big corporations. Rather, I’m suggesting that you reach out to your personal and professional network with your idea.
    • Pros: By adding more minds into the mix, you begin to build an idea into something worth protecting and pursuing. More importantly, in the process, you’ve enabled those collaborators to feel ownership in the idea – which I find to be the best motivator in getting people to help you realize the idea.
    • Cons: Your idea is completely unprotected at this point, and you aren’t asking ones you trust to sign a Non-Disclosure Agreement. Keep in mind though – this trustee may always betray your trust and steal away with your idea… and they law doesn’t provide you with any recourse to claim that idea as yours in such circumstances.
  • Solidify your commitment to the idea and, preferably, with a team sharing a common vision for the idea. Before spending money on forming a company and securing your intellectual property, you want to make sure you (and the rest of the team) are committed to realizing the idea. As a patent attorney, there is nothing that makes me feel worse than having my clients pay me for a patent on an idea that they don’t end up realizing.
  • Craft a Customized Non-Disclosure Agreement and IP Assignment Agreements – Not the template kind. But the kind that ensures that not only are your disclosures protected in confidence, but that any ideas that the recipient may derive from your disclosures are subject to your first right to use and ownership. Sometimes, this agreement is reached in exchange for reasonable compensation for the contributions. Having an NDA will enable you to reach out to individuals, contractors, and entities that you may need to contract with or employ in order to realize your idea. Without such an NDA coupled with an IP Assignment Agreement, you may reserve your IP rights, but will not have any rights to the contributions made by those who you’ve shared your idea with!

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 I Use a Video Recording of a Concert in My Documentary?

When using a recording of a concert, there are actually several copyrights at play. Copyright law is interesting, so bare with me. First, there is the copyright that belongs to the composer of the music. This copyright covers the “musical composition” – think of it as the ‘musical notes on a piece of paper.” No matter who plays these notes or who records music using those notes, they would need to account to the composer.

Next, there is the copyright that belongs to the performer of the musical composition. Because every rendition of music can be considered a work of art in itself (taking those musical notes on a paper and transforming them into sound), the performer of the music composition is granted a copyright on their performance of the musical work.

Finally, there is the copyright of the actual recording of the performance. This is where the ‘record and production’ companies come in to play. They take music performances and produce them into something tangible, like a digital sound/video file (mp3, CD, music video, concert recording, etc.).
Sometimes, the music composer is also the performer and the recorded… but that is rare. If you obtain a copy of the recording, with permission from the recorder, you are only receiving ONE of the THREE copyrights you need to make a distribution or a derivative work therefrom. Firstly, you should make sure if the recorder of the performance had permission from the Performer of the work AND the Composer of the work to record the performance. If so, then you need to make sure that the Recorder had permission to not only record the performance of the musical composition, but to also Replicate and Distribute it to You.

Let’s say the Recorder does have a license to record and distribute from both the Performers and the Composers. Then, should you intend to produce derivative works of the performance or musical composition (ask, do you plan on changing the arrangement of the song?), then you need seperate permission from the composer of the work to change his musical composition!
But there is an exception

Educational Use – since you are making a documentary, the law may provide an exception know as “fair use”. If you are only going to be taking excerpts of the performance, and not playing the entire thing, and using it for educational purposes, then you might be able do so without obtaining permission from the composer/performances – ASSUMING that the recording of the work that you use was obtained with permission to begin with.

To rely on the “fair use” exception is a recipe for trouble, however… it is typically used as a defense once you are being accused of copyright infringement. I would recommend trying to locate all the parties (don’t worry to much about the Dancer) and tell them you are making a documentary under the fair-use exception and see how they react. In the documentary, you may be using photographs, background music, video exceprts, etc of Third Parties… you’d need to notify those third parties as well.

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

What Is a Trademark, Service Mark, and Patent?

A trademark is what you use as a source identifier of the product or goods you offer to the public. When consumers see your products or goods, they instantly recognize your brand as the source of those goods.

A service mark is very similar to a trade mark. Except it doesn’t apply to products or goods, it applies to services. Often times, these to terms are used interchangeably.

A patent is right to exclude others from making using or selling an invention.

While a trademark/service mark protects against others using your NAME/LOGO/SLOGAN/DESIGN associated with your products or services, a patent protects others against making using or selling copies of your products or services under ANY mark.

Patent law is complicated, and every inventor’s situation is unique. SmartUp can connect you with a licensed Patent Attorney who will give you a free consultation and answer your specific questions.

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

Can I Get a Patent on My Idea?

Any person who has invented or discovered a new and useful process, machine, article of manufacture, or composition of matter may obtain a patent for it. This also includes any new or useful improvement on a past invention. Laws of nature and theories are not patentable. You do not need to have actually constructed or used your invention to get a patent on it. Having a good idea of how your invention is made and used is sufficient.

In general, the basic principles of patentability could be based on two questions:

Is the invention useful? and Is the invention new?

You may obtain a Patentability Opinion from a Patent Attorney who will determine if you’re your invention qualifies for patent based on the nature of its subject matter and its comparison to a Prior Art search.

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

What Is Required in the Specification of My Patent Application?

If you’re trying to write a patent application on your own,please take caution – it has been my experience that almost all of the inventors who attempt to prepare and file their own application end up never obtaining any patent rights and inadvertently forfeiting their invention to the public domain.  Use this guide as an outline of what you’ll need to know in order to have a licensed professional prepare and file your patent application.

A utility patent application is comprised of three primary portions (excluding all of the paperwork involved):

  1. Drawings
  2. A Specification
  3. Claims

This article discusses the requirements of the 2nd element – the Specification. In the US, a specification must consists of at least the following parts:

  1. Background;
  2. Brief Description of the Drawings;
  3. Detailed Description of the Invention; and
  4. An Abstract.

International patent applications require two additional parts:

  1. A Statement of the Technical Filed of the Invention; and
  2. A Brief Overview of the Invention.

1. The Background

The Background portion of your application should, generally, describe the state of the art at the time of the inventions conception.  It should present the problem that being solved by the invention. The drafter should be careful never to disclose the actual invention in the background section, as anything disclosed in this will be considered by the patent examiner as “Prior Art.”  Prior Art, in turn, is what the examiner will use to reject your application for ‘lack of novelty’ or ‘obviousness’.

2. Brief Description of the Drawings

This section should provide a brief, one sentence description for each Figure (referred to as a “Figure” or “FIG.” within the specification) that is submitted with the patent application.  This section should not discuss the labels or elements of the figures.  The drawings are required to show all elements that the patent application claims as the invention.  Even in the case of software patent applications, the drawings should present Block Diagrams of the system architectures or wire-frames of the user interface.

3. Detailed Description of the Invention 

The Detailed Description should answer two very basic questions: 1. How does a “person having ordinary skill in the art of the invention” (PHOSITA) make the invention, and 2. How does a PHOSITA use your invention.

Though you never need to have made or implemented your idea or invention to obtain a Patent, you still need to have a concept of how your idea or invention is made.  You are required to disclose the best way you envision making it.

The portions of the invention that may be easily derived by the PHOSITA need not be disclosed in detail in your application.  In other words, if you invented a solar powered car, you wouldn’t need to disclose how to put together the automatic windows – since that portion is already well-known in the field of your invention.  Here are some questions that your specification should answer:

  • What problem does your invention solve?
  • How does your invention solve the problem?
  • What’s new about this solution?
  • Does your invention perform a method or process? If so, describe the method step by step.
  • If your invention does something that’s been done before, but in a different way – what’s the difference?
  • Does your invention yield unexpected results?
  • What is the best way you would make your invention? (You never actually had to have made your invention, just tell us how you envision your invention being made.)
  • What components make up your invention?
  • How do you put the components together?
  • Is there a method of putting the components together? If so, describe the method, step by step.
  • Is there a special reason why are they put together that way?
  • What are the components made of?

For more information on the drawings check out our Drawings Article.

 

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

Who Should I List as an Inventor in My Patent?

Legally, an inventor is anyone who has contributed to the conception (not the realization) of what is claimed as the invention you wish to protect. So, if an employee conceived of Feature 4, but you only wish to Patent Features 1-3 and 5, the inventor does not need to be listed in the patent application. In general, however, it’s good practice to list everyone that has made a contribution to the conception of the invention.

Scenario One
When a first co-founder provides all of the ideas for the invention, and the second co-founder performs the steps in making the ideas into a developed app, the patent application should only list the first co-founder as an inventor.

Scenario Two
If the founders conceived of the ideas for the invention but hired employees/contractors to develop the app, only the founders should be listed as inventors.

Scenario Three
If an employee provides an idea for the invention, but his employer provides all of the resources and financial support in realizing the invention, the employee must be considered an inventor. However, in this scenario, the employee may be obligated by Employment Contract to assign his patent rights for the invention to his employer.  In this instance, the employer may be considered an ‘assignee’ of the invention and will own all of the rights to the invention. The employee’s listing as an inventor will merely be a formality.

You can read our latest blog article on assignments here: Who can be considered an inventor on my patent application?

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

Do I Need a Patent Search?

Most of us like to feel that we were the first to have conceived of our great idea.  Before investing the time and resources into applying for a patent, it is good to know if there are any other patents or publications disclosing something similar to your idea. Ultimately, this information will help you and your Patent Attorney decide if pursuing a patent is a good decision, or if designing around may be needed.  Please note – a patent search is not the same as a clearance search (see My Article about the differences).

Typically, the importance of filing a Provisional Patent outweighs the costs of conducting a professional Patent Search.  This is due to both relatively low costs of Provisional Patent filings and the time sensitive nature of Provisional Patent protection.

Think of it this way – if you only had, for example, $600 to spend, what would you prefer to get with that $600?

1. You can spend that money on filing for a provisional application for patent and gain legal priority to any potential patent rights for your innovation, as well as “Patent Pending” status on your innovation; or

2. You can spend that money to determine if your idea will be patentable in the long run.

For provisional patent applications, we recommend approach (A).  Firstly, provisional applications are never examined for patentability.  Rather, they are reviewed by the patent office for formalities, and then stamped with a priority date.  The longer you delay filing for provisional patent protection, the less likely you are to be the first one to file for patent protection on your innovation – and if you’re not the first inventor to file, you may lose your chances of getting your innovation patented.  As such, a patent search may only further delay and increase the expenses associated with filing provisional patent applications.  It’s not a bad idea to perform a quick ‘knock-out’ search on Google’s Patent Search tool – this will give you a good idea if anything similar to your idea has been patented or patent pending.

Formal, non-provisional patent applications, however, are more costly and resource intensive than provisional patent applications.  For that reason alone, it is usually wise to invest in a professionally conducted patent search prior to undertaking the expenses of non-provisional patent filing.

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

When Should I Submit Patent Drawings?

The standard for submitting drawings in a provisional patent application is rather simple. Ask yourself, are these drawings necessary for “one of ordinary skill in the field of my invention” to understand what it is that I am trying to patent. If the answer is NO, then you don’t need drawings in a provisional at all. If the answer is YES, then you could submit ANY type of drawings – whether they are non-formal sketches, or expertly drafted figures.  What about when drawings ARE required for a formal patent application?

For the regular patent application that follows the provisional patent, there is a requirement for formal drawings. There are a number of requirements to which these drawings must adhere. You can look through the MPEP (manual of patent examining procedure) Section 608.02 for some of those requirements.

Lastly, if the drawings you submit with your regular (non-provisional) patent application don’t conform to the formal drawing requirements, you will NOT loose your priority date (so long as they were initially filed within a year). The patent office will give you a chance to correct your informal drawings. Here is the catch: If those drawings that you resubmit show some concept that was not understood from your provisional patent application, you may likely loose your priority date to those new concepts.

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