The Intellectual Property Owners Education Foundation currently has an open Call for Nominations for the 40th Annual Inventor of the Year Award. Nominations are due by May 15, 2013, and the winner (and the nominators) will be honored on Monday, December 10, 2013, in Washington, D.C. at a gala event. Last year the awards ceremony was attended by approximately 300 people, with the event being held in the old Patent Office building in Washington, DC, which is now home to the Smithsonian American Art Museum and the National Portrait Gallery. In my opinion, the IPO Inventor of the Year award ceremony is one of the best events our industry hosts, and one I look forward to every year.
The purpose of the award is to increase public awareness of inventors and how they benefit the nation’s economy and our quality of life. To accomplish this goal the IPO Inventor of the Year Award recognizes the most outstanding recent inventor (or inventors in the case of joint invention). Thus, nominations are being solicited from independent inventors, as well as inventors employed in industry, universities, and government. While some of the material you may have read indicates that the invention must be U.S. centric, inventions originating outside the U.S. are eligible for the award.
If you do decide to nominate someone keep in mind the invention must be of recent vintage. This is not a lifetime achievement award as would be the case with the Inventors Hall of Fame, for example.
This is one of those articles that I write every so often, in slightly different ways, in order to try and explain to inventors what it is that they need to know before they make an enormously costly mistake. For better or for worse, there is a popular conception that patent attorneys and patent agents are not really necessary and an inventor can do it themselves and save money. The truth is that patent attorneys are among the most highly trained attorneys you will ever meet. In addition to having to successfully complete law school and take a State Bar Examination, patent attorneys must have a scientific background or else they cannot even sit for the Patent Bar Examination. As my friend John White explains, a person becomes a patent attorney when they lack sufficient personality and charisma to do tax work! But when it comes to describing your invention in a document that will grant you exclusive rights with respect to only what is disclosed and claimed, isn’t that the exact type of person you want in your corner?
It is extremely common for inventors to make mistakes that will render their hopes and dreams of a patent null and void. I cannot tell you how many times over my career I have talked to inventors who have come up with something really special and are now ready to file a patent application. Frequently the story is that the inventor created something several years ago (perhaps more) and they have been using it and people love it. They finally now have the money to pursue a patent and want to get started. Those familiar with patent law know they cannot get started, because rights have irreparably been lost. The only recourse is to improve your magnum opus enough so that it is patentably unique compared to your original invention, which is not something that is typically easy for individuals to do.
Another thing I see with increasing frequency is the inventor who doesn’t have much money and who wants to do things themselves. The first question inventors without much money should ask themselves is whether they should even be pursuing an invention. The cost of filing for and obtaining a patent is typically quite minor in comparison to the amount of money required to create, market and distribute the invention. So if you can only muster several hundred dollars and need to file your own application because that is all you have, what are the realistic chances that you will be able to move forward in the commercialization process? Have you thoughtfully considered what you will do with the patent? Have you explored whether there are realistic licensing opportunities? Do you know there is a market for the invention?
The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA). See Changes To Implement Micro Entity Status for Paying Patent Fees 77 FR 75019 (December 19, 2012). Certain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities. The USPTO is revising the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount.
In a separate rulemaking, the Office is in the process of proposing to set or adjust patent fees under the Leahy-Smith America Invents Act, including setting fees for micro entities with a seventy-five percent reduction. The Office has sought to address the concerns of its stakeholders as expressed in the public comment, and plans to seek additional public comment on the micro entity provisions after the Office and the public have gained experience with the micro entity procedures in operation. The Office will pursue further improvements to the micro entity procedures in light of the public comment and its experience with the micro entity procedures.
On October 15, 2012, I went on the record with inventor coach, inventor and author, Stephen Key. To many Key is known as the man behind InventRight, which is a comprehensive 10-step program to help aspiring inventors.
Over the past several years, however, Key is becoming known as an author. Nearly two years after his first book — One Simple Idea: Turn Your Ideas Into a Licensing Goldmine — was published it continues to be in the top 50 books for small business on Amazon.com, and is #1 in small business marketing. In this segment of my interview we will learn that the book is still selling 100 copies per week, which is no small accomplishment two years later.
We pick up our conversation with where many inventors stumble as they attempt to move from idea person to small business person. We also discuss lessons learned from a Big Bang Theory episode, as well as the important of taking reasonable risks, protecting your innovations (Key is a fan of provisional patent applications to start) and the importance of knowing the market for your product. For part 1 of our conversation please see: Discussing Startups & Entrepreneurship with Author Stephen Key.
In addition to being an inventor coach and successful author (both of Key’s books are in the Amazon.com top 100 for Small Business and Entrepreneurship), Key is also a successful inventor. Perhaps Key’s biggest, most successful invention relates to a rotatable label system and associated method. The earliest patent I found relating to what became a patent portfolio to cover this innovation is U.S. Patent No. 5,809,674. Key’s innovation adds 75% more labeling space to a container. This patent family was owned by Stephen Key Designs, LLC, which was acquired by Accudial Pharmaceuticalin the Fall of 2011. See Key Scores His Own Big Success. Thus, Key is more than the typical coach or author. He has had real success in his own right and many of the students he teaches and consults with have succeeded in their own right. Simply put, Stephen Key knows a thing or two about inventing, licensing, taking reasonable and appropriate risks and succeeding as an entrepreneur.
I spoke with Key on the record on October 15, 2012. We discussed his new book, as well as some of the critically important considerations that go into starting a business based on a product idea. Over and over again Key will preach to keep things simple, not in a patronizing way, but rather to make sure that things are pursued in a reasonable fashion in workable increments. Inventors and would-be entrepreneurs will learn a lot from this interview, and for under $14 on Amazon.com you won’t go wrong with his new book either.
Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the start of two new regional pro bono patent programs in California and the District of Columbia—the result of the USPTO’s cooperative efforts with the California Lawyers for the Arts and the Federal Circuit Bar Association (FCBA).
The California program, run by California Lawyers for the Arts, will provide legal assistance to individuals and businesses throughout the region that might otherwise be unable to afford solid patent protection. The FCBA’s program will provide services to individuals and businesses in the Commonwealth of Virginia, the State of Maryland, and the District of Columbia.
“With these programs, qualifying independent inventors will have greater access to intellectual property counsel,” said Under Secretary for Intellectual Property and USPTO Director David J. Kappos. “The inventors stand to benefit from the improved access, and our examiners benefit by receiving better quality applications that they can examine more efficiently and effectively.”
Have you ever wonder how could the skilled person look like? What about an inventor? We talk about the mythical person of skill in the art, and romanticize the inventor, whether an independent inventor or professional inventor, but what comes to mind when you talk about these people?
Well if you have never given time to consider an appropriate representation of these people no worries. Pierre Favre, an examiner from the European Patent Office who is one of 18 examiners working in the area of solar cell technology, and Tina Heuter, an artist from Berlin, Germany, worked together for many years to create a representation of both the skilled person and the inventor.
Many corporations do exactly the wrong thing during a recession, namely downsize, spend less on research and development and essentially shoot themselves in the foot. But myopic corporations are not the only ones who engage in activities that are contrary to their own interest. Independent inventors and small businesses are struggling and for every encouraging economic sign there are many others that show a stalled recovery; a recovery that was already going to slow to start with. There is nothing wrong with being cost conscious, but there is a difference between being cost conscious and being cheap.
As is the case with all recessions or economic downturns, more and more people are turning to inventing. Just over the last several months, since at least late winter 2012, I’ve seen an uptick in the number of inquiries from inventors of various levels of experience who are interested in doing their own thing, starting a company or expanding the small business they already have to incorporate some new invention. This is not at all surprising, and is in fact exactly what you would expect. For many of these individuals and businesses, however, cost is the primary driving concern. They want to succeed, but they need to keep costs down. That is understandable and commendable, but when cost consciousness grows to the point where it interferes with proper execution of the plan then one has to at least ask whether it makes sense to pursue the plan.
There is a maze of information available online for new inventors, much of it very good and much of it highly questionable. Therefore, it is not surprising that aach and every week I receive multiple general inquiries from newbie inventors. Although the inquiry can take many different forms, the question inevitably boils down to something like this: “I have recently come up with an idea that I would like to pursue. I have never invented anything in the past, and I have no idea where to start. Help!”
The first step toward commercializing an invention and making money from it is typically to pursue the patent path. On the road to a patent there are many mistakes that inventors can make unwittingly, some of which will ultimately make it impossible to obtain a patent.
With that in mind, here is a list of the top 5 mistakes inventors make, followed by discussion of what you should do to move your project forward in an appropriate and responsible way.
Every good invention starts out with an idea, but the answer to the question – can you patent an idea – is a resounding NO! See Can Ideas be Protected? Therefore, in order to obtain a patent and become an inventor it will be necessary to move from idea to patent, which means that travel along the path to invention will take time. As with any lengthy project, keeping notes and tracking progress, success and failures becomes exceptionally important.
In the United States we are still a first to invent country and will remain first to invent up to March 15, 2013. On March 16, 2013, the law changes and the U.S. will become a first to file country, but not exactly like the rest of the world. Inventors will be given an extremely narrow grace period even under the first to file provisions. See USPTO Publishes Proposed First to File Examination Guidelines.
As a first to invent country the party who invents first gets the patent even if they are the second to file a patent application, but this is true if and only if the first to invent has the proof required by the law to demonstrate that they were in fact the first to invent. For many independent inventors and small businesses they simply will never be able to prove they were first to invent because the records they keep are not capable of making the required evidentiary demonstrations.
As you can probably imagine, over the years I have had the opportunity to work with many inventors, the majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are also capable of meaningfully participating in the preparation of their own patent applications. These folks are motivated, but they simply do not know what to do, or exactly how to do it, and they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this patent stuff is really hard and very complicated.
As I tell students in the patent bar review course I teach, you could not – drunk and on a bet – come up with a more screwy patent system than we have in the United States. The rules are complex, and unnecessarily so in many (if not most) situations. For example, do you know how long “a month” is? I bet you think you do, but I bet you haven’t a clue how long “a month” is considered to be under the rules in place at the USPTO. See Do You Know How Long A Month Is?
Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention as is possible. As a general rule you should, however, stay away from laudatory language and puffery (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”). When you puff the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application. Further, is anyone really likely to take your word for it being “the best”? That is why infomercials demonstrate the functional capabilities of an invention. In a patent application you need to describe the functionality and leave the selling to the salespeople later.
By way of example, many times inventions are not one of a kind, but rather they are improvements upon existing solutions. In this situation it is common that the advantage of the new invention lies in that it is cheaper to make, easier to use, more efficient, less noisy, easier to clean, more durable, stronger, faster, more resilient, etc. etc. These are things that you should include in your disclosure, but frequently this type of patentably relevant information is not conveyed with as much detail as possible and appropriate.
I am frequently asked a version of the same question by inventors, which goes something like this: “I have an idea but I am unable to do it myself. I am going to need some help. What should I do to make sure I am protected?”
Patent attorneys and agents reading will likely start to immediately say that ideas cannot be patented and it doesn’t sound like you have anything that could be protected. I too have explained that to many inventors of the years and written about that very topic (see Protecting Ideas and Moving from Idea to Patent). But with this presentation there is no way to know yet whether there is an invention lurking there or whether the individual has merely a raw idea without any knowledge about how to bring it into being. Thus, this question begs the essential inquiry, which is this: At what point does an idea take enough form to be considered an invention that can be protected?
Munich, 2nd May 2012 – Two American scientists have been nominated for the European Inventor Award (EIA), which is presented annually by the European Patent Office (EPO) to outstanding inventors for their contribution to technological, social and economic progress. The winners of the 2012 EIA will be announced during an award ceremony in Copenhagen on June 14th.
Prof. Federico Capasso created an entirely new class of semiconductor lasers, called Quantum Cascade Lasers (QCLs). Dr. Stanford Ovshinsky, a leading American scientist in the fields of energy and information, developed clean-energy NiMH batteries.
Lifetime Brands, Inc. will host its first-annual Inventor Open House on Thursday, May 31, 2012 at the company’s headquarters in Garden City, NY, just outside New York City and only 20 miles from both John F. Kennedy and LaGuardia Airports.
The Inventor Open House event offers independent product developers an opportunity to learn about Lifetime Brands’ external licensing review process, and hear from key decision makers. A day of presentations, discussions, guided tours, and other activities are planned. In addition, inventors, designers, and product developers attending the Open House will have an opportunity to privately present their new product ideas.
In addition to key executives from Lifetime Brands, on hand for the day will be Warren Tuttle, Lifetime Brands External Open Innovation Director and President of the United Inventors Association. Steve Greenberg, author of Gadget Nation and host of Food Network’s television program Invention Hunters will also be at the event to meet and greet inventors.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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