The Nevada INVENTOR
Official newsletter of and by the Nevada Inventor's Association
Volume: XVI No. 6 -Education, Assistance, and Networking for the Inventor- July 2005
Next Meeting: July 23, 2005 9:00 AM Washoe Medical Center Room cr101
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.
MARKETTNG-LICENSING - PROTECTION ROYALTIES
The June 25th meeting will be the time and place to ask those questions and receive cxpert answers and opinions.
Patent attorney Mark Holmes, and marketing expert Lany Udell, both from the Bay Area, will be on hand to field questions and give some free advice.
Mark will be our featured speaker Saturday morning June 25 promises to be one of our most interesting and infonnative meetings to date. Bring your questions (not too personal) and bc prepared to listen to some valuable advice.
Good time lo bring a friend . . .
By: Detmis Femandez and Neal Sainani
1. Too late to start filing Canadian and international patent applications. Unfortunately for many good technology companies, it may be too late to file for patent protection. The current Canadian rule provides applicants with a one-year grace period during which a patent application must be filed after certain public or private disclosure of the invention. Such disclosure may arise, for example, from a mere "offer for sale" of the technology, even if the product has not yet been built or prototyped.
The US offers a similar period. Patents are also given to the first inventor to file an application, regardless of which party conceived the invention. In comparison, the foreign rule--which applies to many uldustrialized jurisdictions, such as Japan and various European countries--do not give applicants thc bcnetlt of any grace period after a public disclosure has occurred. Thus, it is legally compelling for applicants to consider filing for patent protection sooner than later.
Although in some situations there may be some special exception, which still allows for late filings, it is not advisable for applicants to count on those exceptions.
2. Too narrow legal scope of claiming patent-able inventions Many issued patents are not commercially valuable because the scopes of their submitted claims are particularly narrow, and can be relatively easily avoided by determined competitors. Thus when submitting new patent claim language, applicants should broadly define novel concepts that include potential design-a rounds by other parties.
Althought this legal blocking strategy sounds easy enough to state as an objective, in fact, the serious exercise of analyzing future competitive and industry directions can be an extremely difficult task-particularly because the analysis often requires sophisticated market understanding, as well as technical and engineering vision.
3. Filing a patent too soon. Sometimes, patents are filed too soon for fear of disclosing the invention heSnre it is protected. It is important to file the patent once the invention has been fully developed or is close to completion. Filing for a patent during the development stage may lead to the exclusion of features that can become critical to the invention. If this happens, the filed patent is no longer protecting the completed invention. This also leaves an opening for other inventors to create a similar invention without infringing the original patent. Another factor to consider is the additional costs associated with having to reapply for a patent if the original was filed too SOON.
Copyright protection, however, is legally vulnerable to reversecngineering efforts by competitors, dunng which no copyright infringement may arise when the reverse-engineering results does not result in literal copying of the original code, but merely an understanding of the underlying ideas and functions. In this vulnerable scenario, perhaps patent protection may be more appropriate to secure any novel algonthm, methods and computing apparatus.
5. Inadvertently tainting intellectual property rights with third party co-ownership rights. During the course typically of joint-development engineering projects, ideas may originate from many sources, such as advisors, consultant, employees and even customers. This collaborative scenario sets the stage for creating intellectual property rights that may be co-owned by multiple parties. Unless the nghts of such joint owners are specified up front, for example by contract terms, then there is a problematic possibility that certain parties later may assert not just their partial ownership interest, but actually endeavor to offer licensing rights to other third parties or even competitors
6. Communication with non-lawyer agents. A mistake occasionally madc is assuming information shared with non-lawyer agents is confidential and is protected similar to communication between clients and attorneys. In some countries, this privilege exists for non-lawyer agents and their clients. However, in Canada, any information shared between clients and non-lawyer agents, whether written or verbal, is not protected. Furthermore, should litigation arise, this information may be admissible in court. For this reason, it is imperative that any information shared with a non-lawyer agent is protected with a non-disclosure agreement (NDA).
7. Underestimating the importance of trade secrets and confidentiality. Since patent protection may not arise for many years until after filing patent applications, and copyright protection may not be applicable to protect functional aspects of various technologies, trade secret protection may serve realistically as a solid backstop against competitive piracy or other misappropriation of company know-how.
Again, the importance of diligent use of NDAs and in-house policies and systems to secure confidential and proprietary information rises to a more significant level of management priority. Additionally early disclosures, for example through customer marketing presentations may irreparably hurt company rights to file domestic or international patent applications.
8. Overlooking legitimate opportunity to set up offshore licensing tax shelters. Often neglected by early-stage start-up companies and entrepreneurs are offshore strategies for mitigating federal tax exposure. Such international tax strategies are especially relevant when foreign licensees of intellectual property nghts are contemplated possibly in the company business plan. To deploy one or more corporate entities offshore much sooner, rather than after licensees are identified, in order to minimize certain taxable valuation exposure associated with transferring such licensed rights.
9. Responding slowly to CIPO actions. Because the Canadian Intellectual Property Office (CIPO) rules now provide 20 years of enforcement patent protection after the Canadian filing date, it is important to expedite the claim amendment and application prosecution process, otherwise the applicant's enforcement penod is effectively eroded by unnecessary delays in the process. Accordingly, applicants should endeavor to respond in timely fashion, expediting all office action responses and facilitating communications with patent counsel whenever possible.
10. Over/under-spending on legal fees to prosecute patent applications. In the realistic context of the current economic recession, start-up companies and entrepreneurs who are strapped for cash may negotiate for substantial fee discounts from patent counsel to prepare and file patent applications. However, patent applicants should be careful, to ensure that the most-qualified legal counsel in terms of technical and business experience are selected and engaged to work on critical company inventions... perhaps with bottom-line pricing being just one of a number of significant factors to consider.
New survey reviewing the, most famous inventors in the world. New York, NY (PRWF.B) June l 5. 2005 -- Who-Invented Org (http://www.who-invented.orR) just launched a new invention article site dedicated to inventors learning more about the process of inventing, reviewing the famous inventors of the past and encouraging them to enhance their invention process.
The top ten most famous inventors and their inventions are as follows:
Thomas Edison (1847-1931), the first great invention developed by Thomas Edison was the tin foil phonograph. A prolific producer, Edison is also known for his work with light bulbs, electricity, film and audio devices, and much more.
Alexander Graham Bell (1847-1869), in 1876, at the age of 29, Alexander Graham Bell invented his telephone. Among one of his first innovations after the telephone was the photo phone, a device that enabled sound to be transmitted on a beam of light.
George Washington Carver (1864-1943) was an agncultural chemist who invented three hundred uses for peanuts and hundreds more uses for soybeans, pecans and sweet potatoes and changed the history of agriculture in the south.
Eli Whitney (1765-1825) invented the cotton gin in 1794. The cotton gin is a machine that separates seeds, hulls and other unwanted materials from cotton after it has been picked.
Johannes Gutenberg (1394-1468) was a German goldsmith and inventor best known for the Gutenberg press, an innovative printing machine that used movable type.
John Logie Baird (1888-1946) is remembered as the inventor of mechanical television. Baird also patented inventions related to radar and fiber optics.
Benjamin Franklin (1706-1790) invented the lightning rod, the iron furnace stove or Franklin Stove, bifocal glasses, and the odometer.
Henry Ford (1863-1947) improved the "assembly line" for automobile manufacturing, received a patent for a transmission mechanism, and popularized the gas-powered car with the Model T.
James Naismith (1861-1939) was a Canadian physical education instructor who invented basketball in 1891.
Herman Hollerith (1860-1929) invented a punch-card tabulation machine system for statistical computation.*
To learn more about the most famous inventors in the world please review: http:l/www.who-invented.org
By: Craig Fieschko
patent is often described as a monopoly (generally limited to 17-20 years) granted to the inventor of a new and useful machine, process, or other invention in exchange for the inventor's complete written description of how to make and use the invention in a patent application.
These details can be highly useful to design engineers, who can use patents to learn how others have approached similar problems, what design strategies have and have not worked in the past, and to get a handle on what is state of-the-art in their field. But with almost 7 million U.S patents covering virtually every field of technology, it can be a lot like trying to find a needle in a haystack to locate the patents that are most relevant to your design problem. In this article, I share some of the basic search strategies I use as a patent lawyer (and former engineer) to sift through the clutter.
First a Few Basics en Patent Searching: The following discussion will assume that you're using the arch engine of the United States Patent and Trademark Office USPTO), the government agency that administers the U.S. patent system.
While you can simply enter a string of terms into the search engine and obtain all the patents or published applications that contain these terms, the USPTO's search engines, like most patent search engines, helpfully allow "ficldcd" scarching. Terms can be entered in certain fields, such as Title, Abstract, Assignee (Owner), etc., to locate patents or published patent applications having the entered terms in the specified fields (in the specified sections of the patents or applications).
The USPTO also allows strings of fielded search terms to be connected with Boolean terms such as AND, OR, and ANDNOT, and parentheses can be used to order the colmected terms (see a sample search on page 80). Additionally, the ends of search terms can bc truncated and the "wildcard" symbol $ can be substituted to scarch for variants of the terrn. For example, "circuits" will search for the terms circuit, circuits, circuitry, etc. (Note that a term may not be truncated to less than four characters.) [if you would like to receive the NIA newsletter by email, simply email us your address. Our email address is www.patents@gbis.com] Search terms can also be combined in strings by using quotation marks. For example, entering the term "circuit board" (in quotes) will search for the adjacent words "circuit" and "board," in that order.
It might seem that a good way of locating relevant patents is to search in the Abstract (ABST) and/or Title (TTL) fields. Unfortunately, this is rarely the case. Titles are usually vaguely worded because patent attorneys fear the potential ramifications of a specifically worded title. The same is true of most Abstracts, which poorly represent the contents of their documents. So it's no surprise, then, that an Abstract and/or Title search should never be regarded as complete and accurate.
A Specification (SPEC) search, which extends to the detailed bodies of the patents or applications, is far more complete. Nevertheless, if a search strategy results in a very large number of hits, it may be preferable to begin a search by limiting it to the Title (TTL) or Abstract (ABST) fields.
Other useful search fields include the Assignee (AN) field, which may list the owner of the patent, and/or the Inventor (IN) field.. you may be able to find relevant patents by searching for those that name a company and/or inventor who has expertise in your field of interest.
Nevertheless, while the use of fields, Boolean connectors, and wildcards can help you locate relevant patents and applications faster, many people still find it difficult to generate relevant search results.
All patents and patent applications are assigned "class numbers" by the USPTO codes that classify the patent or application into one or more very particular fields of technology, similar to the Dewey Decimal System. So if you can identify the classes of your problem or technology of interest, and then use the USPTO search engines to search documents in these classes, you'll often find relevant documents much faster.
To identify U.S. classes for particular fields of technology, you can access the Manual of U.S. Patent Classification at http://www.uspto.gov/web/patents/classification/. Unfortunately, most users find the manual confusing and difficult to use, and it usually takes significant experience before one can quickly and accurately locate the appropriate class (es) relating to a technology in question.
By following the six easy steps I have outlined on page 80, you can bypass the manual almost entirely (or at least minimize its use) and get superior search results immediately.
Now What? Once you're done, you can then use the search results in your research and design efforts. In some cases, you may even be able to adopt a patented invention as an "off-theshelf' solution. You're usually free to use matter described in a patent so long as:
(I) The matter is not secured by this (or another) patent (i.e. matter is not defined by the "claims" set forth at the end of a patent); or
(2) Even if the matter is covered by the claims, if the patent's expired. Usually, patents have terms lasting 20 years from their patent application filing date, or 20 years from the date of patent issuance, whichever date is later. Both of these dates are shown on the first page of a patent. However, patents can (and often do) expire earlier for failure to pay periodic maintenance fees to the USPTO.
You can check this out at the USPTO website at https://ramps.uspto.gov/eram/.
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