Archive for May, 2008

Filing a Provisional Patent

Thursday, May 29th, 2008

Filing a Provisional PatentFor 99% of inventors, filing a provisional patent is a smart decision. But what exactly is a provisional patent? What separates it from a “real patent?” The short answer is: a few hundred dollars and a lot less paperwork. But there’s more to it than just that. A provisional patent is a way for you to stake your claim, to get your application into the USPTO’s system, while you decide whether it would be worth it to get full patent protection.If you have ever seen a label that read “Patent Pending”, you know what a provisional patent is. For 12 months, you get the full protection a patent offers. In that time, smart inventors hustle to see whether or not there is a real market demand for their invention. If nobody is all that interested, they know it would be a waste to spend the time and money getting a full patent. If they are interested, they know it will be money well-spent. If you do decide to apply for a non-provisional (full) patent, your provisional patent is used as a starting point.

This is the USPTO’s official application for provisional patents.
SRC: http://www.uspto.gov/web/offices/pac/provapp.htm
Unfortunately, while it spells out each step of the process, it isn’t exactly what you could call “user-friendly.” So let’s dive into the meat and potatoes ourselves.

There are two main parts of a provisional patent application. The first part is the written description of what your patent covers. Arguably, this is the most important part of the application and the one you should spend the most time and energy making sure is accurate. About.com offers some helpful tips in this regard:

Writing Your Description

Under patent law “the written description of the invention and of the manner and process of making and using the same invention must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the invention.”

“Skilled in the art or science” is a somewhat subjective legal standard. If the description of your invention is so secretive that it would take a person of extraordinary skill to reproduce or practice the invention, that would not be considered clear or concise. At the same time, the description does not have to be so step-by-step that a layman could reproduce the invention.

About.com also has an article called “Tips on Writing the Description.” It will prove very helpful when you sit down to tackle this crucial task.

SRC: http://inventors.about.com/od/patentsbasics/a/descriptions.htm

Above all, remember that your written description should be airtight: exact in every way, with every trace of vagueness cut out. When it comes to intellectual property, vagueness equals death.

The second part of the provisional patent application is drawings. This, obviously enough, is where you graphically represent what is going to be patented. However, there are some conventions that you should adhere to during this process. To follow them, consult these handy guides from About.com.
– Creating Patent Drawings For A Utility Patent
– Tips on Making Patent Drawings
– The Rules For Patent Drawings

Another article discusses the USPTO’s standards for drawings, which are exact. Rather than conventions, these are requirements that absolutely must be satisfied for your provisional patent application to even be taken seriously. Some of them include size, dimension, type of paper, and formatting. You can read about them all in a simple, easy-to-follow fashion here.

SRC: http://inventors.about.com/od/patentdrawings/a/drawings.htm

If all of this seems daunting, it really isn’t. Once you acquaint yourself with what’s required you will find that it is not all that difficult to comply with the USPTO’s requests on drawings.

Finally, your application must also include the filing fee and a cover report with the following things on it.

– the application as a provisional application for patent;
– the name(s) of all inventors
– inventor residence(s)
– title of the invention
– name and registration number of attorney or agent and docket number (if applicable)
– correspondence address
– any US Government agency that has a property interest in the application.

Make sure all these things are taken care of, and you will be well on your way to being the proud owner of a provisional patent! And remember that once your provisional patent is approved, the clock is ticking. You have 12 short months to drum up interest in your invention and see if it will fly. Take it to trade shows, demo it for customers, do all you can to see whether it is worth getting a full patent. If you are smart and diligent, a year is plenty of time to do this type of research. In fact, it’s why the provisional patent exists at all!

That is the unique benefit and advantage that a provisional patent offers you. Best of luck!

About the author of this article:

Eric Corl is the President of Idea Buyer llc, a marketplace for new technology and products that gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. you can email him at ericcorl@ideabuyer.com. you can visit the site by visiting this address; http://www.ideabuyer.com new technology and products, patents for sale.

The Maverick’s Do-It-Yourself Patent Licensing Library

Saturday, May 24th, 2008

Patent Licensing LibraryWhile it’s usually preferable to have an attorney draft your licensing agreement, it’s not always necessary. Legal-minded inventors can certainly draft their own patent license agreements with appropriate study and preparation. This article is about books and articles you should read – and precautions you should take – should you choose to do this.

One excellent free article on the subject comes from IPWatchdog.com, and is entitled “Drafting a License Agreement.” Patent attorney Eugene Quinn begins the article by cautioning that while it is okay to draft your own agreement, you should probably have an attorney review it before you use it. The key, Quinn writes, is finding an attorney who will agree to review an agreement that he did not personally create:

“There are some attorneys who will, no doubt, not want to review your work, but there are a number of attorneys that routinely work with independent inventors and understand the need to keep costs down by offering review services, such as reviewing patent applications or reviewing licensing agreements.”

SRC: http://www.ipwatchdog.com/inventing/licensing-agreement/

The next thing Quinn encourages do-it-yourself license writers to do is forget about the “template” mentality. There is a myth among intellectual property laymen that there are “standard” contracts for patent licenses that everyone uses. According to Quinn, this is wrong, and attorneys actually roll their eyes when clients ask for standardized or “template” license agreements. While there are standard elements of every agreement, the exact manifestation of those elements is virtually never the same for any two patent licenses. So don’t approach the task by trying to emulate what you believe to be a standard form.

Instead, the far smarter thing to do is focus on the specific clauses – things like performance obligations and royalty requirements – that will go into your unique patent license. IdeaBuyer has a comprehensive article on precisely this subject called “Writing Good Performance Obligations Into Patent Licenses.” Consider that required reading for any do-it-yourself patent licensing.

That said, you do want to at least look over a few sample patent licenses to get an idea of the structural elements they all share. Sample patent licenses can be found in abundance on the Internet, such as this one:

SRC: http://contracts.onecle.com/occulogix/brunner.lic.2004.10.25.shtml

However, Quinn recommends using an encyclopedia of legal forms, such as this one, which he describes in detail in his article:

West has an encyclopedia set called West’s Legal Forms. In the Second Edition it is Volume 25 that relates to patents (I know this because I own that volume myself). There are a number of good sample licenses in the West book. If you find a library that has a good intellectual property section (which is becoming easier given the growth of this field of practice) there will be several smaller encyclopedias dedicated to patent licensing, such as Milgram on Licensing. In most libraries the form books will be in one location and the IP books in another location, so be sure to check both locations.

Many will read this and think “yeah, that’s all well and good but I can probably get the same information from a local bookstore with less fuss.” However, this is often not the case. Many bookstore books on intellectual property are what John T. Read calls “dictionaries not in alphabetical order”. That is, they simply define some basic terminology of the field without laying out a concise sequence of steps for achieving the goal, which, in your case, is writing a patent license on your own. For this reason, you should stick to encyclopedias such as the one referenced by Quinn.

If you cannot or will not use such an encyclopedia, sample forms from universities are the most reliable alternatives. In any event, once you have a sample form to work with, you should adopt a “buffet” mentality. Rather than copying the structure of the patent license verbatim, simply take clauses that seem to match what you are hoping to convey in your agreement.

Using the sample patent license referenced earlier, let’s say you wanted to use this clause in your own license agreement.

Advance Royalty Payments. Licensee agrees to pay Brunner Fifty Thousand

Dollars ($50,000 USD) annually as an advance and credited against any and all Royalty Payments paid in accordance with this Agreement. Such Advance

Royalty Payments shall be non-refundable and be paid to Brunner and in

equal payments of Twelve Thousand Five-hundred Dollars ($12,500 USD), made

quarterly, on or before the expiration of Forty-five (45) days after the

reporting close of each prior calendar quarter.

According to Quinn, royalty requirements are one of the things do-it-yourself patent license writers should focus on most. So in the case of this clause, you would simply modify it to suit your needs. If your quarterly royalty payments are $50,000, you would just erase the $12,500 currently in that clause and replace it with $50,000. Repeat this process of taking clauses from other agreements and modifying them until you have a complete agreement that covers everything you want it to.

At this point, you are ready to show your agreement to an attorney and have him iron out any of the kinks that might be left. Good luck!

Click here to read more about Patent Licensing.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

License an Invention to a Retailer

Monday, May 19th, 2008

Retailers

Once you have created your invention, the next thought is obviously “How can I capitalize on it?” One time-tested way of doing this is licensing your invention to a retailer who will bring it to paying customers. Retailers can be anyone with the ability to reach your market, whether it’s Wal-Mart, Target, Home Depot, or even an Internet website. The idea is that you will be cutting them in on the profits from the sales they make possible. However, there are a few things you should know about this approach before you dive into it. In this article, we will touch upon the most important considerations.

The first think to keep in mind is the notion of “inventory available.” Generally, successful retailers will want to know that you can supply them with enough inventory to handle a large volume of sales. This is simply part of the planning process that retailers engage in, especially catalogs. Therefore, you should have some type of strategy for addressing this before you go trying to license your invention to a retailer. Do you have the facilities and equipment to mass-produce your invention? Do you need to hire staff? If you are not sure what your capabilities are, ask the retailer in question what their inventory available requirements are. This will give you an indication of what you will need to do to produce enough inventory.

Another term you should get familiar with is the purchase order. About.com defines a purchase order as such:

“A written sales contract between buyer and seller detailing the exact merchandise or services to be rendered from a single vendor. It will specify payment terms, delivery dates, item identification, quantities, shipping terms and all other obligations and conditions.

Purchase orders are generally preprinted, numbered documents generated by the retailer’s financial management system which shows that purchase details have been recorded and payment will be made.”

The basic idea is that the retailer you license your invention to will be sending you purchase orders which say how much product they are buying from you at that time. It will be crucial for you to store and file these records in an efficient way, as they will over time contain almost all of your financial history with that retailer.

Another all too important aspect of licensing an invention to a retailer is the terms of payment. There are four main terms that are common today: net 30, net 60, net 90, and net 120. However, many retailers are known for using other, more creative terms of payment. Wikipedia offers some helpful hints that will help you clear up the confusion.

“Net 30 is a trade credit which specifies payment is expected to be received in full 30 days after the goods are delivered. Net 30 terms are often coupled with a credit for early payment; e.g. the notation “2% 10, net 30″ indicates that a 2% discount is provided if payment is received within 10 days of the delivery of goods, and that full payment is expected within 30 days.

 

For example, if “$1000 2/10 net 30″ is written on a bill, the buyer can take a 2% discount ($1000 x .02 = $20) and make a payment of $980 within 10 days, …

If credit terms of “2/10, net 30″ are offered, the approximate cost of not taking the discount and paying at the end of the credit period would be as follow:

[2/(100-2)]*[365/(30-10)]=0.3724 in percentage = 37.24%”

Obviously, you as the licensor will want to secure the timeliest payment terms possible; most likely, this means Net 30. However, you should be warned that not every retailer will go along with this. The bigger the retailer is, the more clout they have in compelling you to accept their terms. One way around this is to start by licensing your invention to smaller retailers, building a successful track record that you can use as leverage when it comes time to negotiate payment terms with larger retailers. Either way, you want to try and negotiate as hard as possible for payment terms that benefit you.

Another way to license your invention to a retailer is to go through what are known as “reps.” Although reps are somewhat less commonly used today than in the past, they still have a large role to play. Reps are people who are on good terms with the buyers at various retailers and who convince those buyers to stock certain products. If the buyer’s store does stock those products, the rep gets a kickback from the product manufacturer for getting them into the store. While you might balk at the idea of paying someone to get you in the door, it may be worth investigating. Sometimes all it takes is an introduction to get the deal done.

Keep these tips in mind and you should find that licensing your invention to a retailer makes more sense than it did before.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

How to License a Tool Product Invention Idea

Wednesday, May 14th, 2008

Licensing a tool product invention idea starts with first preparing and protecting your tool invention.

10 Steps to Licensing a Tool Invention:
Tool Manufacturers1. Initial Market Research
2. Technical Drawings & Costing
3. Physical or Virtual Prototype
4. Patent Preparation and Filing
5. Identifying Potential Licensees
6. Preparing Presentation Materials
7. Setting up meetings
8. Meetings
9. Negotiations
10. Transaction

1. Initial Market Research
Initial market research is an important step in licensing a tool product invention idea. It is like evaluating the land where you are going to build you a house on. Yes, you can simply choose to plop down on a piece of land you see or seems like a good deal and decide to build there. Or, you can research the best areas and type of land to build on long term. There are several items you want to research here.

Market Research Items:
– Is there a patent on a similar patent already? If so, it isn’t entirely limiting. However, you need to be aware of all similar IP filed. These will need to be referenced in your patent filing.
– What are the current products available that are already solving the problem? Why is your solution better?
– What are the current costs of these alternative products?
– Why would customers buy your product instead of the current solution?

Answering these questions will help you develop a strong foundation for the value of your invention or uncover that it may not be as great of an idea as you originally thought.

2. Technical Drawings & Costing
Technical drawings are important to ensure that the product can; A. Be made with current technology, and B. Be made at a reasonable cost with a reasonable profit margin. They will also be essential for production quality prototyping and manufacturing.

There are several critical engineering aspects for a tool invention to consider.
– What material will be used to construct the item? What will it’s strength be?
– What will the estimated life cycle of the tool be? This is critical for industrial tools but it is also important to ensure quality and reliability for consumers.

3. Production Quality Prototype or 3D Virtual Prototype
A production quality prototype is the best route to go. People react much better to a tool invention when they are able to physically touch, see, feel, and use it. However, 3D virtual prototypes can be a very useful and more budget friendly way to ‘prototype’ your invention while allowing to show what the ‘end result’ should look like. You can take a 3D virtual prototype a step further by having an animation created to demonstrate the function or use of the invention.

4. Patent Preparation and Filing
Patent preparation and filing of your invention idea is critical to recognizing value from your new tool idea. If you skip this step, you will severely limit the value and protection for your intellectual property. Make sure you find a patent attorney that has experience preparing and filing patents for tool inventions.

5. Identifying Potential Licensees
The fifth step is identifying potential licensees of your tool idea. You will want to consider both major and minor tool product manufacturers in this step. Do not simply limit yourself to large manufacturers like Craftsman, Black & Decker, Bosh, and Dewalt. There are many smaller and mid market players that may be more willing to review your new tool invention and it may end up being a more lucrative deal.

6. Preparing Presentation Materials & Business Case
Being able to show these tool companies why investing in your tool product instead of other opportunities will set you far apart from the amateur inventor. With the proper presentation materials in place, you will be able to get more meetings, be taken more seriously, and end up having a better opportunity to get a lucrative licensing deal.

Licensing Items to Consider:
– A major manufacturer will likely require an exclusive license. Are you OK with this?
– What royalty rate will you expect in exchange for providing an exclusive license?
– Are you open to selling your patent outright?
– Are you expecting an upfront some in addition to a royalty rate?

7.  Setting up meetings with Potential Licensees.
We have a great article discussing how to talk to anyone and get into the doors of major companies. You can find that article here; How to Talk to Anyone.

8. Meetings
Giving a good sales presentation is paramount in your quest to license your tool invention. Learn how to craft a good sales pitch and prepare your material in the proper manner. Learn what companies what to see by reading our seven part series on the subject.

9. Negotiations
Negotiating can be the make or break of any deal. Even small contract details can have a huge impact on how you end up making out on the deal. It can also lead to confrontation and kill deals if you aren’t careful. You can read our article on patent licensing negotations here; Patent Licensing Negotations

10. Licensing Transaction
The last step comes down to actually getting the transaction done! You will want to have an attorney with experience in patent licensing review all documents. If you get to this step, congratulations. The next milestone of course is seeing your product on store shelves and collecting those royalty checks!

License Your Idea to a Manufacturer

Tuesday, May 6th, 2008

Manufacturers

If you do not want to go through all the time and hassle of bringing an idea to market yourself, there is an alternative: license your idea to a manufacturer. In doing this, you are granting someone else the right to create your idea and bring it to buyers via the marketplace. However, there are some important steps and considerations that you should keep in mind if you choose to do this. In this article, we will make you aware of them.

First, a few words about what it means to license an idea. Licensing an idea actually means licensing a patent, which protects your idea. If your idea is not patented already, you will want to apply for one. You can call 832-683-1527 for more information on filing for a patent. Once your patent is filed it will be considered ‘patent pending’ which will give you the ability to begin presenting it to investors, patent buyers, manufacturers, and retailers looking for patents to license or purchase outright.

Important Steps to License Your Idea

Legally speaking, you have licensed your patent when you (the licensor) grant exploitation rights over your patent to a licensee (the person you are licensing it to.) In this case, the licensee is whichever manufacturer you have licensed your patent to. “Exploitation rights” simply means the right to create, market, and/or sell something based on what that patent protects. A patent license is also a legal contract, and that contract is what will spell out terms precisely which exploitation rights are being granted. These include any performance obligations the licensor might demand of the licensee. This means that if any performance obligations are included in the contract (ie, “You must produce X number of sales by the year X.”), and they are not met, this could lead to the license being terminated in its entirety.

If this sounds complicated, it can be, but it is actually quite simple. The biggest consideration is finding the right manufacturer to license your patent to. To do this, you should check resources like the Thomas Register to find manufacturers related to your idea. These are the people most likely to want to license it from you. There are other easy ways of finding manufacturers to license your idea to, as well. See our article “Researching Your Market Online” for more details. Once you have narrowed down a list of 10-20 relevant manufacturers, the next step is deciding on the terms of your license agreement.

License Your Idea: Terms of Your License Agreement

As mentioned earlier, most license agreements include one or more performance obligations. These are simply requirements that the manufacturer (licensee) must fulfill in order to keep the license. If you have certain expectations that you want to enforce, such as X number of sales in the second year or a 4% profit margin, performance obligations is the way to enforce them. Of course, both parties will have to agree on the obligations before they become final. There is also the issue of royalty requirements, where you can specify that you must receive X dollars in royalties monthly, annually, or semi-annually to keep the license agreement alive. These are ways of ensuring that your own financial needs are met from licensing your idea to the manufacturer.

Making sure those needs are met is probably the biggest consideration of all. How much are you going to ask for in royalties? You cannot get greedy, but you must ensure that your costs are paid back and the money you get is worth your while. Tally up the money you have spent so far and keep the total in mind when setting royalty requirements.

Another consideration is the term of the agreement. Do you want a longer or shorter agreement? Well, that depends on your circumstances. Do you want to someday capitalize on this patent yourself? If so, you might opt for an agreement of 5 years or less. However, if you’re the kind of person who just wants to collect the royalty checks and move on to something else, a longer agreement might suit you best. The key is to choose the length consciously, based on your true needs and goals.

Of course, you should also use a patent attorney for the duration of this process. Licensing a patent is not something you should “wing it” with, as there are complex laws involved and severe penalties for breaking them. Additionally, a good patent attorney can also warn you if you are about to license your idea in a way that harms you. What if the manufacturer tries to get away with paying you a pathetically small sum in royalties? Situations like these are when it pays to have an attorney on your side, so don’t feel shy about spending the money to get one.

If you can keep these considerations in mind and the timing is right for your product in the market place, you will have a much better probability of profitably licensing your idea to a manufacturer.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.

Selling or Licensing an Automotive Patent

Tuesday, May 6th, 2008

Automotive Patent

With the energy crisis and the worldwide push to “go green”, innovation in the automotive sector is at an all time high. This puts automotive patent holders in a prime position to sell or license their patent. However, it would behoove you to do some research on how automotive patents are typically capitalized on, as well as who would be most likely to buy or license said patents.

Most of the action in the automotive industry takes place in Michigan, specifically Detroit, or “Motown.” A recent article called “Auto Industry Fueling Growth in Michigan’s Patent Applications” describes the recent surge in auto innovation there:

“The auto industry may be bleeding money throughout Michigan, but it is fueling a rise in innovation in the state, federal data on patent activity shows.

The state saw a 20 percent rise in the numbers of patents granted between 2000 and 2006, the years for which the most recent data is available, compared with the seven-year 1993-1999 period, according to the U.S. Patent and Trademark Office.”

SRC: http://www.mlive.com/business/index.ssf/2008/03/auto_industry_fueling_growth_i.html

However, a number of auto leaders do business internationally as well. Wikipedia offers a handy chart that breaks down, by volume, the largest auto makers and their divisions and subsidiary companies. The table is based on the most recent OICA data.

SRC: http://en.wikipedia.org/wiki/Automotive_industry#World.27s_largest_vehicle_manufacturing_groups_.28by_volume.29

General Motors, Ford, and Chrysler are the largest players in the United States market, in that order. Under the GM flag are brands like Buick, Cadillac, Hummer, Pontiac, Saturn, and Saab. Ford encompasses Lincoln, Mercury, and Volvo, while Chrysler markets the Dodge and Jeep line of trucks and SUVs. The divisions of each auto maker should inform your decision on who to contact about selling your patent.

If your patent pertains to low-mid range sedans or gigantic SUVs, you might look to score a meeting with someone from GM. If your patent applies to luxury models like the Lincoln Towncar, a call to Ford might be best. And if your invention would be best utilized in a heavy-lifting work vehicle like a Dodge Ram or Jeep Cherokee, Chrysler is probably the ideal networking target. Of course, there are several other auto makers worth considering who operate outside of the U.S., but it often helps to start closer to home.

It is also worth noting that many automakers own stock in and have business partnerships with other automakers. This means that even if you fail to sell or license your patent to one automaker, they might be able to put you in touch with one that would be more amenable to your proposal. Here is a quick reference of ownership overlap within the automotive industry.

However, not every automotive patent holder should necessarily target auto makers. Instead, some patents are probably more attractive to auto dealers, of which there are tens of thousands across the United States. If you are unsure of which auto dealer to contact or how to get in touch with them, the National Automobile Dealer Association is a good place to start. They are an automotive industry trade group that represents some 20,000 dealerships across the U.S. and boasts some 43,000 worldwide franchises. They also develop comprehensive research data on the auto industry, which might be of use to you in putting your pitch together.

You can contact the NADA by phone, e-mail, or snail mail.

National Automobile Dealers Association
8400 Westpark Drive
McLean, Virginia 22102
(703) 821-7000 or (800) 252-6232
nadainfo@nada.org

Of course, you will want to consult a patent attorney before diving headlong into negotiations. Furthermore, this attorney should be one with experience and success in the auto sector. One proven winner in this field is Quinn Law Group, PLLC. “Auto Industry Fueling Growth…” discusses the track record and auto industry connections Quinn has at its disposal:

Principal Christopher Quinn said patent applications in areas such as hybrid technology, vehicle safety and electronics are helping drive annual revenue increases of 20 percent or more. The 19-member firm works with customers including General Motors Corp. and suppliers, as well as with out-of-state companies, many with Michigan offices, whose patents wouldn’t necessarily show up in USPTO data, he said.

Quinn can be contacted at the following web URL:

http://www.quinnlawgroup.com/contact.htm

All in all, your quest to sell or license an auto patent should begin with a careful matching of your patent to the right auto maker, and end with the assistance of a proven attorney in the field.

Eric Corl is the President of Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property.  The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com.