NEVADA INVENTORS ASSOCIATION

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"Education, Assistance, and

Networking for the Inventor"

The Nevada INVENTOR

Official newsletter of and by the Nevada Inventor's Association

Volume: XVI No. 2 -Education, Assistance, and Networking for the Inventor- Feb. 2004

Next Meeting: Febuary 28, 2004 9:00 AM Washoe Medical Center Room cr102

Our web site is 'www.nevadainventors.org' Founded in 1988

We are a 501(c)6 group under IRS rules.

The purpose of NIA is to educate inventors and potential inventors through whatever means available, including regular meeting, classes, seminars, workshops, and evaluations, within NIA or in cooperation with other persons or organizations. The education of inventors, or potential inventors, may also include the publishing of written materials, such as a regularly published newsletter, flyers, notices, or letters.

Additional goals of NIA are to inform its members of private, civic, governmental, and public resources which may be of assistance to inventors; to promote a positive public image of inventors; to provide for its members a referral/resource directory; and to furnish assistance to its members, whenever possible, by directing their efforts toward the successful development of their inventions.


I N V E N T I N G as a CAREER Choice

from INVENTORS DIGEST

by James Robert Daniels

Jim Daniels lives in Port Townsend, Wash. His careers have included the design of roads, aircraft ships, buildings and devices; invention and design consulting; community planning; writing, editing and publishing. As a professional writer, he's had both fiction and nonfiction work Published in newspapers, magazines, anthologies, books and online media. This article is based upon his latest book, How To Become An Inventor (September 2001, http://www.booklocker.com/bookpages/inventor.html).

ARE YOU AN INVENTOR? If you invent, you are an inventor. But how do you earn a living? That's an entirely different question, of course. It's not easy to establish a successful career in a creative field, whether it's art, writing or inventing. However, there are career inventors, many of whom I am sure are readers of Inventors' Digest. You can probably name a few professional inventors. How about Thomas Edison or Bill Gates? There are also a lot of professionals in the inventing business: patent attorneys, development and marketing specialists, and so forth.

Most of the time, we talk in terms of how you get things done as an independent inventor. However, some inventors do work at jobs for employers. You may work at a job that requires an inventor, but your title is "Planner," "Designer," "Software Engineer," etc. Hopefully, it's a fit with your interests, education and abilities. One man I know began as a "Plant Engineer." He was hired by various companies for different positions, but always ended up being transferred to "Product Development." During his career in that industry, over $600,000,000 worth of products were patented in his name. I would say he was an inventor.

Another inventor I've talked with told his employer about something he'd invented before he was hired. The Vice President gladly accepted his idea, but didn't put him to work on it because he was a "Development Engineer," not a "Research Engineer." A lot depends upon your employer's policies and attitudes when you work for someone else. Many government agencies also stifle creative thinking by restricting people to the niches that the "Human Resources" bureaucrats put them in. However, there are places such as the Army Research Office where inventing is the goal. During the 1980's, another Army agency experimented with dune buggies that they got from hot-rod builder Dean Chenowith, arming them with machine guns, cannon, and missile launchers. The sight of seventeen-year olds attacking M-60 tanks in dune buggies was unforgettable if short-lived, but it was a grand opportunity for some inventors while it lasted.

I think that some companies, perhaps Microsoft or Real.com for example, are likely to allow more creative input from any employee than a 50 year-old engineering firm. Research and development companies, organizations, divisions or departments offer many jobs that involve developing new products or processes. Specialty manufacturers such as software companies and wheelchair makers often design or modify customized products, and imagination and problem-solving are valuable to them.

It's true that those who take the biggest risk reap the biggest reward. Perhaps being a risk taker and having a strong need for independence indicate that going it on your own as an inventor is right for you. However, there are jobs out there for inventors who want a paycheck. The inventor of the Army's Hawkeye missile worked for Mattel Toys for 20 years. Inventing toys has its own rewards.

You can work for somebody else as an inventor. You just need to find the right job in the

right place--or invent your job. Researching the U.S. Office of Personnel Management listings for civil service jobs and looking up government contractors can yield some of the most interesting opportunities for you as an inventor, because they have the money. The Commerce Business Daily (CBD) reports contract awards to private companies. It also lists government procurement, subcontracting leads and surplus government equipment sales. These are all leads that can help you find a job with a contractor; bid on projects as a contractor or subcontractor; and find useful items and exotic materials as an independent inventor. The CBD is available by subscription or by FAX, email or online subscription, and it's also in public libraries. Your local library also has the official "Newspaper of Record" for your area, where calls for bids and the contractors awarded local government contracts are reported.


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by Tish Wolfe from INVENTORS DIGEST

Tish Wolfe is a freelance writer and is currently developing an invention. The article grew out of her recent experiences and research in finding an attorney. She can be reached at Crackpotinventor@ziplip.com.

TIM Haines is a successful INVENTOR who holds patents for medical devices in of field of joint replacement. He cofounded Hudson Surgical, Inc. to commercialize his inventions; he has since sold the company. Haines believes strongly in hiring an intellectual property (IP) attorney who keeps up with changes in the law, so as to fully utilize your patent's protection. How would you find such an attorney?

1. Invest time in your search. Haines stresses importance of a proper Search, commenting, "I invested a considerable amount of time in finding an attorney and ended up interviewing five."

2. Define the field of your invention in order to find a lawyer who specializes in your area. Just as physicians specialize in different areas so do IP attorneys For instance, if your invention is a mechanical one, like an engine, you wouldn't hire an attorney who specializes in plant patents

3. Use referrals to find an attorney. Ask friends, relatives, an attorney you deal with or business associates for referrals to a qualified IP attorney. You should ideally find an attorney within driving distance, for your own convenience. For example, you may have an invention that undergoes numerous changes in its prototype which you may need to show the attorney.

Call or join a local inventors organization. A group with members who are actively and successfully involved in inventing will be able to give you names of attorneys they're satisfied with/ Networking with such a group also has the side benefit of providing advice in your invention endeavors.

Local law schools can serve as another excellent resource. Ask your reference librarian for a listing. Call the Dean's office and ask for recommendations of IP law professors who also have a private practice.

Universities with research facilities can also give you qualified referrals. These institutions have in-house patent counsel offices that often outsource their actual patent applications. Ask them for a referral to the outside attorney they use. You can find these universities through your local reference librarian.

An intellectual property law association (IPLA) located in your area can also help with referrals. Find them through your county's bar association, which is often listed in the yellow pages of your phone book under "lawyers." You should be looking for a lawyer who's active in the IPLA and not just a member. Ask the IPLA for the names of their officers, since they're involved in keeping their membership informed of changes in IP law.

Before you contact any recommended attorneys, find out more about them in the Martindale-Hubbell Law Directory at your local library or online. To verify that they are registered to practice before the U.S. Patent and Trademark Office (USPTO), go to a Patent and Trademark Depository Library (PTDL) and ask for their publication, "Attorneys and Agents Registered to Practice before the U.S. Patent and Trademark Office."



When you've narrowed your list to a couple of potential attorneys, give them a call and talk to them on the phone. "I would make sure I was comfortable with working with an attorney, in view of the fact that it generally takes two to three years, or possibly longer to obtain a patent," says Michael Friscia, an IP attorney and partner at Wolff & Samson in Roseland, NJ. "I want to make sure that I would he comfortable working with him. I would start out by discussing some general questions with a number of practitioners on the phone, and then setting us a meeting with the ones I had good conversations with."

Following are some of the questions you could ask.



1) Will my initial consultation be free? It's important that you don't pay for your first office visit. You're interviewing prospective attorneys, and most IP attorneys do not charge for the first visit. Prolific inventor and author, Richard C. Levy, advises in his new book, The Complete Idiot's Guide to Cashing in on your Inventions, "Shop around. It's a buyer's market. If a lawyer is inflexible, go elsewhere."

2) Is your area of expertise in the field of my invention? (You will need to explain briefly what your invention is.)

3) How many years of experience do you have with patents in my field of invention? You want to make sure you don't hire someone who just passed the bar exam or only has a few years experience.

4) What is your billing structure? Do you offer a flat rate for patent applications? If not, how do you bill? Do you charge for overhead (i.e., secretary's overtime)? What are your additional charges, for instance, would you charge me if I call you with a simple question?

Clarify the billing structure to avoid any unpleasant surprises. If cost is a factor, it's best to try to get a flat rate. Most attorneys can estimate the amount of time they need to spend on your invention, once they understand the extent of it. Some attorneys will charge you for additional expenses,

i.e., photocopies, mailing costs, faxes, phone calls, etc. If you can't get these waived, ask for a cap or estimate on these charges.

5) Do you have any litigation and/or teaching experience? Litigation and/or teaching experience are not necessary prerequisites, but they can be additional qualifications. Haines believes strongly in choosing an attorney who has practical experience in litigation. He says, "The inventor should look for an attorney who both prosecutes and litigates patents. Someone who doesn't have litigation experience, doesn't get exposed to how patent law is interpreted in court. My attorney kept current in IP law by never dropping the ball. In addition to practicing it, he was teaching it."

6) How do you keep up with current IP law? Haines says his attorney's up-to-date knowledge of IP law helped him. "About two to three years ago, the interpretation of the term, estoppel by the courts was expanded significantly, and this affected patents universally The essential impact on our patent portfolio was that the application was severely narrowed, which affected changes in our claims. We modified the claims to account for this development.

Choosing an attorney who's sophisticated enough to keep current on intellectual property law, and who doesn't rest on his laurels, is important. The interpretation of the law changes. A good attorney can account for that, whereas, a had one can make your patents worthless."

One way to tell if an attorney keeps current with IP law, is to ask if he's actively involved with an IPLA. An organization that serves as an umbrella group for more than 50 IPLAs is the National Council of Intellectual Property Law Associations (NCIPIA). The NCIPLA helps its member associations by informing them of Legislative and executive actions affecting the IP law system and also acts as a catalyst for change. Paul Prestia, Secretary of the NCIPIA, and a partner at Ratncr & Prestia in Valley Forge, Penn., advises, "The NCIPLA helps independent inventors by getting them in touch with local organizations. A lot of organizations maintain their own membership lists. If you have trouble finding an attorney, yoy can email a request to the NCIPLA."

An attorney who benefits from an IPLA's educational and networking opporttmitics1 is Heidi Harvey, a partner at the law firm of Fish and Richardson in Boston, Mass., and a member of the Intellectual Property Law (IPL) Section of the American Bar Association (ADA). She comments, "You come in contact with a network of high quality attorneys, which increases your chances of being made aware of changes in the law. you want an attorney who is pro-active, and not passive, in acquiring knowledge."

7) Who will be working on my patent? Find out if the attorney you are interviewing is the one who will be working on your patent or if he'll assign it to someone with less experience. You're interviewing and screening him; if he's not able to make the commitment to work for you, find someone who will.

Questions to ask an attorney's references .

Are you currently using this attorney's services? If not, why not?

Would you hire him again, if need be?

How did you find him?

How long have you been with him?

What did you like about his services?

What would you change about him, if you could?

Were there any problems with him?

How timely and responsive was he with your needs?

Were there any problems with billing? If so, how were they resolved?

Is there anything I should be aware of, or anything I should have asked, that I didn't?


8) Ask for three to five references of clients who are independent inventors, in your field of invention. (See sidebar above questions to ask.) Get the names of independent inventors, and not corporations, since you want to he able to judge how the attorney works with clients similar to you. Haines ended up choosing his attorney because of the positive references he received on his attorney's professionalism. "It's difficult for a layman to judge competency. After all, if you don't trust someone, you can't use them. you can spend $5,000 - $10,000 in the U.S. alone in pursuing a patent, and that's without the maintenance fees. You have to know what you're getting."

Your search for the right attorney is an important factor in your invention's success. Richard Levy advises, "I using savvy patent counsel increases the odds of getting an enforceable patent. Remember, if it's not on the page, it's not on the stage."


From: Donald G. Costar

The speaker I lined up for this coming (February) meeting is coming from Alabama to Reno on business, but has agreed to arrange his schedule so that he will be able to demonstrate to the members of NIA the new software that creates drawings for patent applications from sketches. It is called "SmartSketch Invent!" I mentioned this new software at the last meeting. As I understand it, the software is so new it is not yet available to the public. I know of no other product that is suitable for creating patent drawings except "AutoCAD" and that is reported to be very difficult to master. If this new product is what the company claims, the inventor community has waited for it much too long.

Now that we have software to create patent applications, and provisional patent applications, the obvious next step is one that creates drawings to go with them. SmartSketch Invent! appears to be that product.

Mr. Kiran Kumar

Manager, Business Development

Intergraph/PPO, Design Systems in Madison, Alabama, an international design systems company.

Some of the highlights of the software to be demonstrated are:

Visual prompting while drawing -- Easy to learn and use -- Easy dimensioning and annotation -- Contains standard set of symbols for electrical, mechanical, and general diagramming. One of the features

allows scanning and importing of a hand sketch to create a clean annotated drawing from it, or scanning of a picture of a prototype or model, and create drawings from that. It also offers interoperability with "Excel", "Word", "Powerpoint" and other Microsoft products.

Kiran said he expects about an hour will cover the demonstration, and then he will stay to answer questions from the members. If we can take care of club business within the first hour we should be able to offer the floor to Mr. Kumar.

Don

Patent #333,564 "System of Electric Lighting" patent by William Stanley Jr. 1886

Patent #97 "Art of Manufacturing Bricks and Tile" patented by James Wood, of Rockland County, N.Y. 1836

(Mixing of coal dust with clay to increase the efficiency of manufacture.)

Patent #3,548,384 "Procedure Entry for a Dada Processor...." patented by Benjamin A. Dent,1976 (Black Inventor)



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Created on April 10 2004
Updated on November 29, 2005