Is the Accelerated Patent Process Right for You?

January 1st, 2014

accelerated-patent-processFor those innovators who might not be able to hold out for a two year patent process, the government offers an accelerated patent process.  As of August 2006 the United States Patent and Trademark Office (USPTO) has offered potential patent holders an accelerated examination program that could cut wait times by up to 75 percent.  While this program provides a faster patent, the application process requires the applicant to be more specific and accurate about their invention.

The first patent granted under this new government program was to Brother International, Ltd. for a printer ink gauge.  The application was submitted September 29, 2006 and the patent issued only six months later on March 13, 2007.  This was a quarter of the time usually required to receive a patent.

Accelerated Patent Process Benefits

Jon Dudas, Undersecretary of Commerce for Intellectual Property, said that accelerated examination allows innovators in any technology a patent review and decision within 12 months.  In return for a faster patent decision, the agency expects the applicant to provide a better application and process, Dudas said.

This should be no problem for those with truly innovative ideas and a drive to get results relatively quickly.

According to a press release from the USPTO, “Any invention that is new, useful, non-obvious, and which is accompanied by a written description disclosing how to make and use it can be patented.”  This is no new news to inventors.  Where the requirements differ slightly is that those seeking patents must prove that their idea is new and non-obvious (known as “prior art”) in the accelerated examination application, the press release said.

In the standard patent process, inventors are only required to provide prior art related to their idea of which they are aware.  The USPTO would then do their own search and identify any prior art that would make the invention not patentable.  In the accelerated patent process program, inventors are required to search and provide reference to all prior art with their application.  They also must explain what the prior art taught them and why their invention is different.  This significantly speeds up the patent issuing process for the USPTO.

Are the Benefits Worth It?

Ultimately, the choice one makes about whether or not to use the accelerated patent process depends on the amount of time and work the inventor is willing to put in to applying.  An extremely thorough application is required, as is a better description of the invention and prior, related inventions.  While the process might seem lengthy and overwhelming for some, others might consider it a great opportunity to get a quality patent in less time.

Those considering the accelerated examination program to pursue their patent should definitely research the procedure to ensure that it is right for them.  The USPTO web site has official guidelines and applications available to those interested.

Standard Licensing Agreement Terms

December 25th, 2013

Standard Patent Licensing Terms

Do you feel like you are throwing darts trying to come up with reasonable terms and performance obligations for your patent license agreement? If so, there is no need to panic. Patent licensing is an established field with standardized terms and considerations that you can use as benchmarks. In this article, we will walk you through some of the standard licensing agreement terms and offer tips on applying them to your own unique situation.

The first thing you need to decide is whether your patent license will be an exclusive or non-exclusive license. An excellent article called “Patent Licensing” explains the difference between each type: and which one your licensee is probably going to want:

“A patent license is a waiver by the licensor of the right to exclude the licensee from practicing under the patent rights. Licensees would prefer to obtain an exclusive license if possible. In addition to the commercial disadvantages of a non-exclusive license, a non-exclusive licensee acquires no affirmative rights with respect to the enforcement of the licensed patents. Unless the non-exclusive license specifically provides some protections, the licensor has no duty to protect the non-exclusive licensee’s interests in the event of patent infringement, abandonment of the patent, or other licensee’s with better terms.”

SRC: http://www.zeromillion.com/entrepreneurship/patent-licensing.html

Standard Licensing Agreement Terms to Avoid

Once you have settled the matter of exclusive vs. non-exclusive, you will move on to what performance obligations and requirements get written into the license. There is one clause, however, that you should avoid: the generic “best efforts” clause. The article continues:

“Both parties should avoid this clause in favor of more objective standards. The courts may interpret such a clause to require the dedication of all of the licensee’s resources towards exploitation of the licensed patents, when realistically most licensees will have a number of other significant business endeavors to support.”

Fortunately, there is a better way to ensure that your licensee performs on a high level: specific, numeric performance obligations. The idea is that you want each party’s responsibilities to be crystal clear, unmistakable, so that they can be enforced. For instance:

For example, the licensee may be required to obtain an approved New Drug Application with the Food and Drug Administration by a certain date. Licensees should be aware that there is an implied obligation to exploit the licensed patent on the part of an exclusive licensee.

An obligation like this is very specific. If it is not met, you as the licensor will have the right to revoke the patent if you feel that is warranted. Of course, you will need to tailor the performance obligations in your contract to your own needs and desires. You may decide to give your licensee more relaxed terms, say, if you are close friends or longtime business partners. The choice is really between you and your licensee.

But how should you set those obligations? This is where many patent holders stumble and feel that they are shooting in the dark. Fortunately, it does not have to be this way. There are 2 main benchmarks that you can use in setting performance obligations and royalty requirements.

1)      Your costs up until this point

Whatever you have paid to patent your idea, document it, advertise it, and bring it to life should be factored into what you expect out of your licensing agreement. After all, you want to recoup those costs, and profit some, besides. That’s the whole point of licensing the patent in the first place.

2)      How much you are making from the patent

If you are already capitalizing on the patent, you should aim to replace and exceed that income with your license agreement. For example, let’s say you created a product based on your patent and are earning X dollars a month from it. If you want to grant someone an exclusive license to take the reins and capitalize on your patent, you should be getting X + something from the agreement. Otherwise, why not just keep exploiting your own patent yourself? If you are going to introduce a middleman (the licensee), it had better be worth your while.

Discuss Your Royalty Requirements

The same goes for royalty requirements. This is when you specify “This agreement must provide me with X dollars monthly, annually, or semi-annually, regardless of where it comes from.” Here, too, you want the amount to compensate you for what you have already spent or what you are already earning. The way to avoid the “throwing darts” feeling is to run the numbers and set your royalty requirements based on those.

As you can see, the key to a license agreement based on numbers instead of guesswork is to assess your own unique situation. While the basic framework of patent licenses is standardized (exclusivity, performance obligations, term lengths, etc.), the exact manifestations are up to you and your licensee to hammer out amongst yourselves. Have questions? Contact us.

 

Patent Statistics

December 2nd, 2013

Patent StatisticsIn this article, we share helpful patent statistics from The US Patent Office. The US Patent Office was officially established in 1790, by Article One: Section Eight of the US Constitution. The Establishment of the USPTO was to “promote the progress of science and useful arts, by securing limited times to authors and inventors, the exclusive rights to their respective writings and discoveries.”

On April 10th, 1790, George Washington signed the first Patent Act of The United States into law. The first patent was issued to Samuel Hopkins on July 31st, 1790, for a process of making “potash” which is an ingredient used in fertilizer. Patents of the time were signed off by both the President and the Secretary of State. Soon that proved impractical and the job was assigned to the clerks in the US Department of State. Dr. William Thornton was assigned the job of first clerk of the Department of State in 1802 and given sole responsibility over patent applications on June 1st of 1802, which in effect opened the first US Patent Office. Trademark registration was added to the functions of the USPO in 1881. Now the USPTO has a campus comprised of five main buildings.

Since that time, over 6.3 million patents have been issued and the patent office receives more than 326k patent applications per year. There are over 300 Intellectual Property and patent offices worldwide which WIPO is attempting to organize. Statistics show that over 2 million patent applications were filed worldwide in 2011; that was the largest increase in patent history, showing a 7.8% increase over 2010.

Of the 503,582 patent filings in the US in 2011, roughly 50% were granted. The USPTO has been working with a backlog which holds up the patent process resulting in nearly three years of wait time between filing and the end of pending status. In 2012, the USPTO reduced their backlog from 750K in 2009 to just over 603K which means the office has increased efficiency since the Leahy-Smith America Invents Act (AIA) was signed into law. The AIA represents the most significant change to patent law since 1836, according to David J. Kappos, the Director of the USPTO. The AIA switches the US patent system from “first to invent” to “first inventor to file”, eliminates interference proceedings and develops post grant opposition. AIA was signed into law on September 16, 2011 by President Barack Obama; its central provisions will go into effect on March 16th, 2013.

Whenever an application fails the USPTO it is generally because those filing the application failed to meet one or more of the three main criteria; the most often being whether the invention is obvious. In other words, inventions must be novel or unique from any other, so a can opener is a can opener, unless it is an electric one, or it fits in a pocket, or folds in half. The second criterion is if the invention is obvious based on whatever is already in use. For instance, a motorized bike has already been invented and patented, but if a new design makes it more efficient then the new design may be patented, so long as it is not the obvious result of technology that already exists. Finally, the invention must be useful.

The USPTO has grown from one clerk to over 11,000 employees in 2012. To put that into perspective, we have an elected congress of 435 State Representatives and 100 Senators; the PTO has over 14 times as many employees working as patent examiners. Patent examiners are generally recruited from universities around the country, while trademark examiners must be licensed attorneys. The USPTO is a forerunner of telework with over 7300 employees working from home at least one day per week in the 2012 fiscal year.

Intellectual Ventures holds the most US patents. Intellectual Ventures, a private company with a focus of developing a large patent portfolio, and the licensing those patents to other companies. Their estimated patent portfolio was 15k-20k in 2011, and has been growing with patent deals made this year.

IBM has the distinction of being the corporation awarded the most patents since 1997. The last statistics available from the USPTO showed that IBM still held the number one position in 2010, but that office no longer issues a top ten list.

Of all available data, Kia Silverbrook has received the most patents from the USPTO for utility patents (new inventions) every year since 2007. Kia Silverbrook is from Australia, and considers himself a “serial entrepreneur” having founded companies and developed products in a wide range of areas. Kia Silverbrook is also the most prolific inventor of all time, with a total of 4508 granted US patents as of October 2012. He has 9740 patents or patent applications registered nationally.

According to a report from the USPTO, 97.1% of patents are now filed electronically; up from 71.7% in 2008. The USPTO goal of clearing the oldest patent applications first (COPA) achieved a 99% success rate, with only 32,365 of the original “Tail” or backlogged cases remaining to be worked. The new First Action Interview Pilot Program allows participants to conduct an interview with the examiner as soon as the prior art search has been conducted. This program has resulted in greater efficiency by increasing the ability to prosecute an application; enhancing interaction between the applicant and the examiner, and the resolution of patentability issues through a one-on-one with the examiner.

Top 10 Venture Capital Investments of 2012

May 16th, 2013

The following data is based on reports from Pricewaterhouse Coopers, the National Venture Capital Association, and the Angel Investor & Venture Capital Network, Startups.co. The top 10 venture capital investments of 2012 incorporated data from the first three quarters. Fourth quarter data will be published in 2013.

The Top Ten begins with a tie for the tenth spot:

#10 Bloom Energy

Bloom Energy Inc. of Sunnyvale CA is an Industrial/Energy company that develops solid oxide fuel technology. They tied for third largest venture capital investment in the second quarter of 2012 with $100 Million USD. The investment was requested for Later Stage Development and provided by Apex Venture Partners and an Undisclosed Firm.

Total Venture Capital Investment: $100,000,000.

#10 Pinterest

Pinterest Inc. is a Media and Entertainment Company from Palo Alto, CA. Pinterest operates a vision board-styled social photo sharing site. Pinterest Inc. tied for third in the second quarter of 2012 with $100 Million from Andreessen Horowitz, Bessemer Venture Partners, FirstMark Capital, LLC, and an Undisclosed Firm. The money was slated for Early Stage Development.

Total Venture Capital Investment: $100,000,000.

#9 Fab.com

Fab.com, Inc. is a New York, NY Retailing/Distribution Company, and operates as a marketplace for discovering everyday design. The venture capital investment of $100,800,300 came from a variety of sources; Andreessen Horowitz, Atomico Ventures, Baroda Ventures LLC, DoCoMo Capital, First Round Capital, Mayfield Fund, Menlo Ventures, Pinnacle Ventures, ru-Net Ventures, and an Undisclosed Firm.  The venture capital was slated for Expansion.

Total Venture Capital Investment: $100,800,300.

#8 Elevance Renewable Sciences

Elevance Renewable Sciences, Inc. is a Biotechnology Company in Woodridge, IL focused on producing renewable specialty chemicals. Elevance Renewable Sciences received the third largest venture capital investment in the third quarter of 2012. The company garnered $104,360,000 USD for Later Stage Development from Total Energy Ventures International SAS, and an Undisclosed Firm.

Total Venture Capital Investment: $104,360,000.

#7 Harvest Power

Harvest Power Inc. is an Industrial/Energy company in Waltham, MA, providing organic waste management services. Harvest Power took the second largest venture capital investment in the second quarter of 2012 with $112,000,200 from a number of investors: Duff Ackerman & Goodrich LLC, Generation Investment Management LLP, Kleiner Perkins Caufield &Byers, True North Venture Partners, L.P., and two Undisclosed Firms. The venture capital investment was raised for Expansion.

Total Venture Capital Investment: $112,000,200.

#6 Drilling Info, Inc.

Drilling Info, Inc. is a software company based in Austin, TX; they provide online data and tools for the oil and gas industry. Drilling Info, Inc. ranked fourth in the first quarter with $116 Million from Battery Ventures, L.P., Eastern Advisers Private Fund, L.P., and Insight Venture Partners. The venture capital was requested for Later Stage Development.

Total Venture Capital Investment: $116,832,000.

#5 Box, Inc.

Box Inc. is a Software company based in Los Altos, CA. Box Inc. provides a secure content sharing platform. The company took the #2 spot in the third quarter  with over $125 Million from Bessemer Venture Partners, Draper Fisher Jurvetson, General Atlantic LLC, New Enterprise Associates Inc., SAP Ventures, Scale Venture Partners, The Social + Capital Partnership and an Undisclosed Firm.  The venture capital was acquired for Expansion.

Total Venture Capital Investment: $125,000,200.

#4 Sapphire Energy

Sapphire Energy, Inc. is an Industrial/Energy company based in San Diego, CA. The company develops algae-based green crude oil. Sapphire Energy Inc. took the #2 spot in the first quarter with $200 million from ARCH Venture Partners, Monsanto Corporation, an Undisclosed Firm and Venrock Associates. The venture capital was slated for Early Stage Development.

Total Venture Capital Investment: $139,000,000.

#3 Square, Inc.

Square Inc. is an IT Services company based in San Francisco, CA, providing mobile payment services. Square Inc. took the #1 spot in the third quarter for $200 Million from Citi Ventures, Rizvi Traverse Management LLC, and an Undisclosed Firm. The venture capital was slated to fund expansion.

Total Venture Capital Investment: $200,000,000.

#2Square Trades

Square Trades Inc. a Consumer Products and Services company, providing extended warranty services for electronics. The company is based in San Francisco, CA and held the #1 spot for $238 Million from Bain Capital, Bain Capital Investments in the first quarter of 2012 for Later Stage Development.

Total Venture Capital Investment: $238,000,000.

#1 Fisker Automotive

Fisker Automotive, Inc. is an Industrial/ Energy company, designing and manufacturing electric vehicles. The company is based in Anaheim, CA. and was #1 on the quarter two report with $147,599,000and #3 in the first quarter with $129,790,000 from Kleiner Perkins Caufield &Byers, New Enterprise, Inc. Fisker Automotive, Inc. also took the #4 spot in the third quarter with $103,667,200 from Advanced Equities Inc., KPC&B, New Enterprise Inc., as well as an Undisclosed Firm.  The venture capital was slated for Later Stage Development.

Total Venture Capital Investment $381,056,200.

Companies receiving first time venture capital declined 8% in dollars this year, but the number of deals increased by 1%. First-time financings accounted for 16% of all dollars and 33% of all deals in the third quarter showing a 1% increase on both fronts over quarter 2. This is good news; the first quarter reports had declared an unusual drop in venture capital investments. The average first time deal in the third quarter of 2012 was 3.4 million, down slightly from quarter two averages. Seed and early stage companies received the bulk of first-time investments, an impressive 82% of the deals.

The Top 10 Inventions of 2012

May 15th, 2013

There are simply so many great inventions out there that choosing only ten is a difficult task. In order to choose, we based our analysis on “how many people could be affected by this invention. For example, while “The Curiosity Rover” made Time’s Techland list, it does not directly affect the earthbound user; nor does NASA’s Z-1 space suit. For our top ten inventions of 2012, the gadgets must have the ability to help people, the environment, or change lives. The invention must also be accessible to those who need it.

For the Top 10 Inventions of 2012, the choices come from Time’s Best Inventions of the Year and POPSCI’s 6th Annual Invention Awards.

#10 HeatSeeker

The HeatSeeker is a powerful and affordable mister for overheated firefighters. When Hurricane Sandy was busily knocking homes off of their foundations in the north east, fires started springing up from open gas lines and burned hundreds of homes. Firefighters fought those flames through the night, and through the storm. Even though many homes were lost, many more were saved because of those volunteers. The HeatSeeker fog can cool the surrounding area by 30 degrees and uses just 2 gallons of water per hour.
According to POPSCI, Michael Robinson invented HeatSeeker and built the prototype after he saw a fellow firefighter struggling to get up off the ground. They were fighting a house fire and the man was wearing 70 pounds of gear. Robinson moved the man to a safe distance from the flames and cooled him down with wet towels; luckily the man recovered. On average, 300 people die from heat exhaustion each year. Many are construction workers, athletes and firefighters. 71% of firefighters are volunteers. Most of the people who die from heat exhaustion, heat stress, heat stroke and related illnesses don’t recognize the symptoms in themselves, even though they would in others.
Robinson created the mister in a friend’s fabrication shop. He installed it on one of the fire trucks, and his captain asked him to build and install 15 more. He has since outfitted fifty fire trucks with the device and added a cap for fire hydrants to cool children in the summer, and one for garden hoses to cool people at outdoor venues.

#9 Body Armor for Women

This comes in at just $555 and is from Time’s Best of 2012. Since women and men are built differently, it makes sense that there are gaps in the body armor if it is not sized properly. The usual answer was to give women body armor that was a men’s small. Those are too big for 85% of our troops. While the added protection is only that this provides a better fit; our troops must be able to move in their body armor for their ground maneuvers to be effective.

#8 Bounce Imaging

This is truly a bargain at $500; Bounce imaging is the size of a baseball with 6 cameras. It was created by an MIT student and Army Ranger. First responders, whether they are Navy Seals, Fire Fighters, or responding to hostage situations, can benefit from this technology and save lives. The baseball sized orb can be tossed or rolled into an area and the cameras send data to mobile devices.

#7 Over7

The Over7 is a higher efficiency, lower emission engine system. So many vehicles are going electric, hybrid or alternative fuel; the Over7 improves on engines that are already in use.
Frank Will has spent his life obsessed with engine performance. He started out racing motorcycles in the 70s and eventually became an automotive engineer for Ford in Australia. He left that job in 2008 and began applying his passion to his new project, the Over7. The system works by redirecting the engine’s oil and then heating it. The Over7 reduces gas consumption by 7% and emissions by 30%. Will is now working with Ford, testing and perfecting the technology. He is also working on a conversion kit for existing vehicles which will sell for $200-$400. PROSCI reports that “Putting the Over7 in every passenger vehicle in the US would reduce carbon dioxide emissions by 64 million tons a year and save drivers seven billion gallons of gasoline.

#6 PuzzleCast

A group of students designed the PuzzleCast during a bio-medical-engineering course. The challenge was to design something that was important to all of them, and this particular team had been injured or witnessed the injuries of others. After spending two months in a cast, the patient then undergoes months of painful physical therapy to regain muscle and loosen up stiff joints. The PuzzleCast is a modular design that allows sections to be removed when they are no longer needed, without resetting the limb. In testing, the modular cast cut physical therapy time in half.
In 2011 the students received a $10,000 grant from the National Collegiate Inventors and Innovators Alliance to test the effects on people who wore the cast, PROSCI reports, and the next step is to license the design to a manufacturer.

#5 Enable Talk Gloves

While Enable Talk gloves are at the outset a device for the hearing and speech impaired, it actually benefits all of us. Four Ukrainian students designed the $75 gloves that allow the impaired to communicate with people who do not understand sign language. A signal is sent from the gloves to the user’s smart phone as text, and an app converts the text to spoken words. This is truly fantastic.

#4 Self-Inflating Tires

Self Inflating Tires run about $200 each, which is pricey, but as soon as the pressure gets low in these Goodyear tires, they know it. These tires are equipped with a sensor that judges the pressure; and a regulator opens to allow air to flow though a pumping tube. Once the optimal pressure is reached, the regulator closes. No more flat tires. The driver won’t even know anything was wrong.

#3 Eliodomestico Solar Water Distiller

Gabriele Diamanti designed this solar powered distiller to use in areas deprived of fresh water. It is half the price and 67% more efficient than other models on the market. People living in coastal areas in third world countries are often deprived of the fresh water that could save their villages. At $50 this item is a must have and Diamante hopes that local manufacturers will adopt his design and go into mass-production for local populations.

#2 The Civilization Starter Kit

Marcin Jakubowski built a tractor in six days Time tells us, and then told the world how to do it. He created designs, a budget and an instructional video on line. Jakubowski isolated the 50 most important machines that are required for our lives, including an oven. He is working to make a low cost version prototype of every one of those 50 items so that anyone can do it. He says that if we can lower the barriers to farming and manufacturing, then more people will do it. According to Jakubowski, “we can unleash massive amounts of human potential.”

#1 Google Glass/iOptic

Yes, it is a tie for first because they are similar, but different. Both promise to bring an augmented reality to our lives. They’re tech right out of a spy movie.
Google Glass is a pair of glasses with a small screen that is activated when the wearer looks up and to the right. There is a computer built right into the glasses and the half inch display allows users to take and share photos, chat, check appointments and access the Web. Google has already given out the prototype during testing. Google Glass has upped their release date to 2013, after complaints from consumers who say they can’t wait two years. Google Glass has an estimated price tag of $1500.
IOptic does that with contact lenses. The user will still wear eyeglasses, which hold two small projectors and cast an image onto the inside surface of the lenses. Randy Sprague spent twenty years as an electrical engineer before quitting in 2008 to start a solar power company. One morning he had an entirely different idea, contact lenses that would act as a wearable display. The iOptic utilizes two sets of nanofilters embedded in each lens that permit different light sources into the eye. IOptic has a target release date of 2014 but no estimate on the price.

Sprague believes his device is useful for everyone from the home gamer, to the military while on a mission. Having access to the web and sharing data is one way to make the world a better and safer place, for all of us. There are others working on similar projects, but the race is on to see who gets there first and which of these products will reign supreme.

Top 10 Patent Sales of 2012

February 20th, 2013

Top 10 Patent Sales of 2012The team at IdeaBuyer.com has compiled the top 10 patent sales of 2012. These sales add up to a grand total of over $20,000,000,000. The patents these technologies protect are often key strategic acquisitions by the purchasers. This year, a number of the top patent sales were liquidations of patent portfolios from defunct or struggling corporations such as Kodak, Nortel, Motorola, and AOL.

#10 Acacia Research Pays $100 Million for Adaptix Patents

January 2012- Adaptix sold 230 patents to Acacia Research; according to reports, the patents cover 4G technology. This deal was Acacia’s first major move to buy patent rights, according to The Wall Street Journal. Acacia has previously partnered with Universities and other organizations to help them enforce patents.  Acacia Research makes most of its money by licensing patents and filing lawsuits, earning them a reputation as a Patent Troll.

Total Sale Price: $100 Million

#9 Fujifilm to Universal Display

July 2012- Fujifilm Corp. sold 1,200 patents to Universal Display Corp covering OLED technology. OLEDs are Organic Light Emitting Diodes and are used to make high contrast low energy screens. The deal reportedly doubled the New Jersey based Universal Display’s portfolio.

Total Sale Price: $105 Million

#8 Real Network Patents Sold to Intel

January 2012- Real Network’s sale of 190 patents to Intel was just the tip of the iceberg. According to Businessinsider.com, the deal also included 170 patents that had been applied for that were awaiting approval. Some video streaming software was also included in the deal, according to The Wall Street Journal.

Total Sale Price: $120 Million

#7 InterDigital Sells 1.700 Patents to Intel

June 2012- Reuter’s reports that InterDigital had agreed to sell 1,700 wireless technology patents to Intel. The sale sent InterDigital stocks soaring by 27%. It was a win/win situation; Intel was interested in expanding its chip business beyond computers while InterDigital was hoping a patent sale would boost stock sales.

Total Sale Price: $375 Million

#6 Microsoft Sells 650 Patents to Facebook

April 2012- Microsoft sold 650 patents to Facebook. Part of the deal included a bunch of patents related to mobile, web and instant messaging technology, according to Nick Wingfield of The NY Times. The deal came less than two weeks after the Microsoft deal with AOL, and looks as though Microsoft was splitting that portfolio with Facebook.

Total Sale Price: $550 Million

#5 Kodak Sells Patent Portfolio to Patent Consortium

December 2012- On December 19th, 2012 arstechnica.com reported that a group of 12 buyers was organized by Intellectual Ventures, to purchase Kodak’s portfolio of 1100 patents. Part of the deal requires that Kodak drop legal proceedings against certain members of the purchasing group. Kodak sued several of the members for patent infringement. According to the LA Times, the bankruptcy filings show that the buyers are: Google, Apple, Facebook, Research in Motion, Amazon, Microsoft, Samsung, Adobe, Huawei Technologies, HTC, Fujifilm and Shutterfly.
While the group has paid for a portion of the portfolio, Intellectual Ventures will retain ownership but cannot sue these already licensed companies.

Total Sale Price: $525 Million

#4 Apple Buys 695 Nortel Patents from Rockstar Consortium

The deal has slipped under the wire and gone on all year. The Rockstar Consortium won the Nortel auction of 6000 patents for $4.5 Billion in July of 2011. By November of 2012, the US Patent and Trademark Office reported that 695 of 1024 patents had already been registered to Apple as part of a deal. Apple has purchased the patents from the Rockstar Consortium which includes Rockstar, Sony, Microsoft, Research in Motion, Ericsson and EMC.

Total Sale Price: $2.5 Billion

#3 AOL Inks $1.05 Billion Deal with Microsoft

April 2012- AOL sold 925 internet technology patents to Microsoft. The New York Times said that the “lofty price reflects the crucial role that the patents are increasingly playing in the business and legal strategies of the world’s ,major technology companies, including Microsoft, Apple Google, Samsung and HTC.

Total Sale Price: $1.05 Billion

#2 Google Sells Off Motorola Home Business to Arris Group

December 2012- As I write this, Google Inc. has announced an agreement to sell its Motorola Home business to Arris Group Inc. Bloomberg Businessweek reports that Google wasn’t interested in the television set-top boxes that were part of the portfolio purchased from Motorola in May of 2012. Google will focus on expansion of the smartphones and assign the television related patents to Arris.

Total Sale Price: $2.35 Billion

#1 Google Pays $12.5 Billion for Motorola Patent Portfolio

May 2012- In a deal that began in August of 2011; Google Inc. acquired a sizeable portfolio of patents owned by Motorola. The process involved final approval in February from the US Dept. of Justice, and the European Union. Then in May the company received the final stamp of approval from the People’s Republic of China. The trading commissions are required to approve deals of such magnitude to prevent monopolies on sensitive technology.

Total Sale Price: $12.5 Billion

IdeaBuyer.com is the world’s largest online marketplace for intellectual property. If you are looking to sell a patent or are interested in patent licensing, please call  us at 832-683-1527 for more information. If you are looking to purchase patents, please email us at Buyer@IdeaBuyer.com.

Top 5 Inventors of All Time

January 4th, 2013

top 5 inventors of all timeThe top 5 inventors of all time is a subjective list because on one hand the top inventors should include Leonardo Da Vinci, whose inventions are still being built and tested today. Unfortunately, Da Vinci never filed for a patent; patents didn’t exist yet and his designs were ideas, many of which were undeveloped. This list is based on the inventors holding the most patent families, and the most US utility patents. A patent family is the result of a single invention that is patented in multiple countries. A utility patent covers an actual invention rather than an idea, design or modification.
Some of these names will be unfamiliar, but when you learn why the inventor made the top five, the reason for their inclusion will be clear. By comparison, the number of inventions in today’s top five outweighs the inventions of the historical figures we’ve come to admire. By the same token, it must be admitted that without their predecessors, these five would not have made the list, because all inventions are a combination of necessity and the foundation on which to build.

#5 Leonard Forbes

Leonard Forbes was born in 1940 and is the owner of 1012 patent families. His primary inventions are concerned with semiconductor memories, thin film processes, CCDs and VLSI. VLSI stands for Very-large-scale Integration and involves combining thousands of transistors into a single chip. The micro-processor in your computer and other electronic devices is an example of a VLSI. A CCD is a charge-coupled device used to move an electrical charge from within the device to a place where the charge can be manipulated. This technology is necessary for digital imaging, among other things.
Leonard Forbes owns 946 US Utility Patents and 2010 worldwide. He is a retired professor from Oregon State University.

#4 Thomas Edison

Thomas Edison was born in 1847 and lived until 1931. Edison is credited with 1084 patent families, and 2332 international patents. He is best known for the light bulb which he did not actually invent, but perfected. Thomas Edison actually invented the first practical electric light bulb; but before that he had to harness electric power in a usable form. He is the father of Direct Current which is used in batteries and generators. In addition to electrical power and lighting, his patent areas include the Phonograph, Cement, Telegraphy, and Mining.
Thomas Edison held 1093 US Utility patents, when he topped Time Magazines list of top five inventors in December of 2000.

#3 Paul Lapstun

Paul Lapstun is an Australian inventor holding over 1240 patent families and 3135 international patents. His areas of expertise include printing, digital paper, internet, electronics CGI and VLSI. Paul Lapstun works with closely with our number 1 inventor of all time.
In May of 2011, Business Insider credited Lapstun with 969 US Utility patents; he filed for 85 additional patents that year.

#2 Shunpei Yamikazi

Shunpei Yamikazi was born in 1942 and is an inventor from Japan. Yamikazi holds 3013 patent families and 12019 international patents. His area of expertise is in thin film transistors, LCDs, solar cells, flash memory and OLED which is an organic light emitting diode. OLEDs are used to create digital displays in devices like television sets and computer monitors. They are also used in portable devices such as mobile phones, PDAs and handheld game consoles.
Shunpei Yamikazi is credited with 2,591 granted U.S. utility patents and 9,700 patents worldwide.

#1 Kia Silverbrook

Kia Silverbrook was born in 1958 and is an inventor from Australia. Silverbrook is the holder of 4544 patent families and 9777 international patents. His areas of expertise include printing, digital paper, internet, electronics, CGI, DNA, LOC, MEMS and VLSI along with chemical and mechanical patents. He also holds patents in LOC which is a laboratory on a chip, integrating multiple lab functions. LOCs are a sub-set of MEMS devices which are referred to as micro-machines in Japan or micro-systems in Europe.
Kia Silverbrook is credited with 4508 granted U.S. utility patents as of October, 2012 and 11,146 patents worldwide.

As stated in the beginning, many of these inventors wouldn’t be anywhere without the following inventions and inventors.

#5 The Camera

Louis-Jacques-Mandé Daguerre is considered the inventor of the first practical process of photography in 1837.

#4 LASERS

LASER is short for Light Amplification by Stimulated Emission of Radiation and is used in everything from home blu-ray players to advanced weaponry. Albert Einstein was the first one to initiate its development in 1917 when he proposed that atoms could be stimulated to emit photons in a single direction. Three decades later, this phenomenon was first observed. And in 1960, Theodore Maiman, a physicist, built the first working laser. (Credit http://www.businessdictionary.com/article/749/the-top-5-inventions-of-all-time/ )

#3 Television

In 1884, Paul Nipkow sent images over wires using a rotating metal disk technology with 18 lines of resolution. Television then evolved along two paths, mechanical based on Nipkow’s rotating disks, and electronic based on the cathode ray tube. American Charles Jenkins and Scotsman John Baird followed the mechanical model while Philo Farnsworth, working independently in San Francisco, and Russian émigré Vladimir Zworkin, working for Westinghouse and later RCA, advanced the electronic model. (Credit http://inventors.about.com/od/famousinventions/tp/topteninvention.htm )

#2 The Internet

The Internet and the World Wide Web are the foundation on top of which the top five inventors of today have built their massive portfolios. The internet was created by the Department of Defense and the World Wide Web by Sir Tim Berners-Lee, an employee of CERN which is the European Organization for Nuclear Research.

#1 The Telegraph

The telegraph is the basis for digital sound and imagery as well as the transfer of data packets over long distances via the internet protocols and the World Wide Web. Without the telegraph as a fore-runner, Alexander Graham Bell would not have invented the practical telephone. Thomas Edison started out his early career as a telegraph operator. He came to use what he learned from life in his later inventions of the phonograph and the motion picture camera.

So it is easy to see that the inventions of the past have heavily influenced the inventors of today and these top five will clearly lay the foundation for the inventions of the future.

Patent Licensing Facts 2012

January 4th, 2013

patent licensing factsPatent licensing and sales are an alternative for inventors who don’t have the resources to bring their product to the marketplace. In patent licensing, the inventor completes a prototype or at a detailed drawing, acquires a patent, and then finds a buyer interested in manufacturing and marketing the invention. One patent that is still licensed today is the lateral control design of The Wright Brothers flying machine.
Government funded inventors spent tens of thousands of US dollars on failed projects, while the Wright Brothers design and testing cost around $1200. That design is used to this day in every flying machine from a child’s toy to the space shuttle. Extensive patent wars were fought over that license because of the wording and the diagrams used in the original patent. The Wright Brothers had not only patented the first viable formula that enabled flight, they had also mentioned other ideas that were subsequently covered by that patent as well. It is impossible to estimate how much that patent license would be worth today.
There are different types of licensing agreements that may be of use to the inventor who has neither the time nor the resources to manufacture and market a new product. The first is an exclusive license and is used in the case of a new useful product such as a special tool or machine. The manufacturer initially pays more because the patent holder is not going to allow anyone else to use the design. The patent holder becomes owner in name only and has no rights to lease the patent to anyone else, nor release the product in the marketplace. The licensee, on the other hand, is allowed to lease the product to other manufacturers. An example of an exclusive license is the processing chip included in computers and electronic devices.
The non-exclusive license is a little bit different. In that case, the licensee can’t be sued for selling the product but does not have the right to give others license to manufacture or sell. The owner of the patent may license the patent to other manufacturers and may also go into production. This could create competition in the marketplace. Patent wars are often fought in the courts over the wording of the non-exclusive licensing agreement.
The third type of licensing agreement is the Sole License which is a cross between the other two. The owner of the patent agrees not to license the invention or idea to anyone else, but is not prevented from using the invention or technology in their own devices. This is another area of contention between inventors and manufacturers.
The scope of the licensing agreement is an area that must also be examined. For instance, an inventor may license their idea to one manufacturer in a specific geographical area. In this case, the license may only cover North American sales, or the European market. The territory involved must be listed in the agreement. That leaves the patent owner with an option to license the patent to another manufacturer in a separate territory. This type of licensing is what prevents an item made in Japan from being sold in the US; while the US manufacturer may market a similar product here. In order to license to the world markets, the patent owner must have an international patent.
The licensing agreement may be broken down into fields of usage. In the case of a microchip, for instance, the licensing agreement may specify that the technology can only be used in phones while a separate license allows the chip to be used in another electronic device.
Permitted acts cover whether the licensee may manufacture, sell or both and the territories involved in that agreement. A license to manufacture and sell in the US does not cover sales outside of the US territories.
Licensing agreements will also cover the term of the agreement, whether that is the life of the patent or a shorter period of time. The short term licensing agreement is often used by pharmaceutical companies to prevent generics from competing before the cost of development and testing is recouped. This allows the patent to be licensed again at a later date for a generic version.
Finally the licensing agreement will cover royalties paid to the owner of the patent. This is an area best dealt with by experienced patent attorneys who have the best interest of the inventor in mind. After the initial sale of the license, the owner will receive residual income off of the royalties. The royalty is either a nets sales or gross sales percentage varies between 1% and 20% with approximately half at less than 5% and 90% less than 10%. These rates often vary based on the exclusivity of the patent license, and the up-front payment.
In short, the patent licensing agreement will include many sub categories that may confuse the layman while the manufacturers are already well versed in the contracts and legal jargon. In order to make the best deal it is important to understand the agreement or hire someone who can. Remember that in the best seller “Rich Dad, Poor Dad” Robert Kiyosaki states that one of the keys to success is to “hire people who are smarter than you” and do it. This is where a patent attorney or a patent licensing service can really be an asset. Of the ½ million patent applications filed each year, only half are approved. Out of that a small percentage comes from individual inventors. Only 1 in 5000 will make it to the marketplace in the same year, without the benefit of a patent licensing contract or sale. It is in the best interest of every inventor to get the best help available to make their dreams come true.
Robert Kiyosaki also said that “the best way to know the difference between a good expert and a bad expert is to become an expert yourself.” While entering into the patent licensing market may be so scary for some that they give up on their ideas entirely, it is wise to become informed. There is no feeling that is worse than seeing an item in the store and thinking “that could have been money in my pocket, if only I hadn’t given up on my dream.”

Patent Licensing Steps for Success

January 4th, 2013

patent licensing stepsNew products and inventions seem to come out every day; suddenly there’s a new device, gadget or tool that no one can live without. People often ask whether their undeveloped idea could bring them riches, and even watch others pursue that dream on reality shows. With the promise of riches and fame, it’s a wonder that everyone hasn’t gotten into the inventor’s market. The average person comes up with hundreds of ideas every day and at least one would be a winner, if they knew what to do with their ideas. Doing an internet search often proves time consuming and most ideas are forgotten until someone else thinks of it and takes action. The biggest problem that inventors face is getting the item to market. For a new inventor, this problem may seem insurmountable. Here are some basic guidelines for inventors to follow, in order to profit from a great idea.
Licensing a patent is one way to profit from an idea without the added expense of manufacturing, distribution, and advertising that would break the bank for most inventors. Before a patent can be licensed, there is a lot of work to do.

The first step to licensing a patent is obtaining a patent from the US Patent Office. In order to do that some inventors turn to a professional because of the time and steps involved. The lengthiest part of the patent process is the patent research, so it’s a good idea to research the idea before beginning the process. Should there already be an invention, that isn’t the end. The wheel chair, for instance, has already been patented, but there are many design patents that improve on the original idea. If the research shows that a patent is in place, decide whether there is a better, more efficient design and apply for a design patent.

While awaiting the patent, start researching companies that may be interested in the new idea. In the case of a new wheel chair, researching medical supply manufacturers is a good start. Perhaps the invention is a new kind of wheel, or an added safety feature. If that is the case, check manufacturers of safety restraints and wheels. The same wheels may work from other devices such as a child’s stroller or a wagon or push cart. If it’s a really great part that changes the original design, patent it separately. Individual parts such as wheels, springs, rivets and even computer chips, receive separate patents. Parts alone can become a lucrative part of the patent licensing business.

The next step is to make a list of at least twenty manufacturers who may be interested. Draw up a professional letter describing the new product or part and the features it will provide. Make the letter as persuasive as possible, while keeping it professional. Plan a marketing strategy that includes a web site and brochure if possible. Photographs and product details give the invention a higher marketability. Manufacturers who have received a marketing inquiry and become interested may go to the website and download the brochure to present the idea to their board of directors. Be sure to disclose the type of patent applied for, whether it is a design patent, or a provisional patent. This information may heavily influence the patent licensing agreement.

If the funds are not available to patent the idea, a provisional patent covers the inventor for a year at which point a regular patent may be applied for. It may be advisable to get a loan to cover the cost of the patent in order to reap a higher return. As a last resort, if a manufacturer is interested in licensing, an agreement may be struck where they pay for the patent in exchange for the licensing, and the inventor receives a percentage of the profits from sales. The man who reinvents the wheel could make a tidy income off of that percentage. At this point in the process it is recommended that the inventor has an attorney to negotiate the contract. Legal jargon can get very confusing and in order to protect the owner of the patent, it’s important that all terms are understood.

During the negotiation process, be sure to direct questions to the manufacturer through the attorney and get everything in writing before signing. Word of mouth does not hold up in a court of law, especially with patent law. Remember that there is a difference between licensing the patent and selling it outright. Patent licensing brings residual income while the sale of a patent offers only a single profit.

Once the process is done, be sure to share the new product with friends and family. The more the word gets out about the new product, the higher the return. Remember to keep in touch with the attorney, should any problems arise. In negotiation there are often stipulations that the manufacturer must abide by, such as a number sold per year. Ensure that both owner and license holder carry their part of the bargain in order to receive the ongoing payments.

Patent Wars: Apple VS Samsung

December 31st, 2012
apple vs samsung

Img Credit: WebProNews

The patent war between Apple and Samsung is far from over. This is a war that crosses borders and boundaries. The lines of division have been drawn and people are divided over the various outcomes. Here is what is at stake and what it means to you:

Apple’s own Steve Jobs said that two hundred patents would protect Apple’s iPhone design and technology. The length, width and shape of the iPhone, iPad and iPod are all protected by design patents; which means that no one can use that shape and size for a product without going to Apple for permission.

Samsung’s Galaxy devices have the same shape but the dimensions are different; only slightly different. You could look at both and hold them in your hands and barely tell the difference. Still the measurement is different and so it is not exactly the same. Apple’s devices are white and Samsung’s are black, but looking head on, even Samsung’s attorney couldn’t tell the difference at ten feet.

Apple claims that the rounded corners are their idea, but can you patent rounded corners even if you have specific degrees on those corners? This and other questions have consumers confused over what the war is about.

If Apple wins in the US then Samsung products can be stopped at the border which means that you would no longer have a choice between Apple and Samsung. You have to ask yourself if that is fair to the consumer who would like to have a choice. Competition generally means lower prices to the consumer.

If Samsung wins then that means inventor’s ideas, even though they are protected by an international patent through the United States Patent Office, could be copied and mimicked by other countries and they could undercut your price by selling their knock-offs all over the world. That could mean higher prices moving forward as inventors try to protect their own interests as more lawsuits are filed. When companies have to pay attorney’s fees, the cost eventually trickles down to the consumer.

We have already seen many people in this country imprisoned or fined for selling knock-offs but those carried the same or a very similar logo. Many knock-offs are designed in such a way as to be indiscernible except by an expert.

Samsung’s Galaxy is clearly marked as a Galaxy, so what is the problem? The consumer will make their choices based on features most of the time; occasionally the decision is made on price. Regardless of who wins, these cases could set a precedent for future releases. Think about “You Didn’t Build That.” The comment that had so much recent press applies here. You can build something new out of components and patent the new device, but you have to pay the previous patent holders for using their components. What if you had to pay the patent holders for the nuts and bolts that put the device together? Even though other inventions were using the same components without paying the patent owner? Usage is implied in that case. You already pay to use them, when you buy those nuts and bolts in the marketplace. That is what the difference is between a design patent which is the look and feel and the software patents and chips inside that make the device do the work.

If every company has to have a software developer, a design team, a chip company, and the rest, new items would be slower coming to the marketplace. Costs would rise exponentially and we’d be back where we were when a personal computer cost over two thousand dollars. Normally a patent covers your invention for twenty years. The question is, with information technology, should the patent cover you for that long?

Apple pays Samsung for every component that is used in their iPhone 4 and other products. Samsung refuses to pay Apple for copying their design ideas. Samsung claims that without their technology and earlier patented designs, the iPhone wouldn’t even be possible. Among the earlier technology that Samsung wanted to be paid for was an Intel chip. Apple pays Intel for the chip; Intel has already paid Samsung for licensing of the patent; Samsung wants Apple to pay them for that usage even though the law is clear. Intel has paid for licensing the chip’s patents and is allowed to sell the chip to others. If Samsung is allowed to charge for that again, what are the consequences for all of the other companies that purchase the chip from Intel? This is patent exhaustion and Apple won the battle of the chip.

Apple claims that Samsung requested the iPhone, iPad and iPod products so that they could make sure their ideas would not infringe on the copyrights. If that is true and proven in court then they have clearly tried to design their Galaxy products to be similar but not exactly the same.
Many countries have already made their decisions. South Korea has decided not to carry either of the products (http://www.bbc.co.uk/news/business-19364875 ) while the Dutch have decided in favor of Samsung. The British court simply threw parts of the case out and ruled that the Galaxy Tab does not infringe on any of Apple’s patents. A California court decided in favor of Apple but Samsung has appealed that decision and the battle continues now in Washington.

With all of that being said, when one of the attorneys for Samsung was asked if he could tell the difference between the Apple iPad and the Samsung Galaxy 10.1 from across the room he said “Not at this distance, your honor.” Consumers say that they could tell the difference at the estimated ten feet so you would think that the attorney who is working for Samsung would be able to. I found a blog that had photos for a side by side comparison and it’s pretty sketchy.

Samsung’s most recent lawsuit is against Apple for technology used in the iPhone 5. The disputed technology falls under “software” which as you know is often shared by a lot of devices. The software includes the method to capture and share video, and the way to synchronize photos, video and music across multiple devices. These are advertised perks that come with the iPhone 5 and software falls under a special type of law called FRAND.

FRAND stands for “Fair, Reasonable and Non-Discriminatory” rights. Without the FRAND clause there is a lot we would not be able to do over the internet and across devices because Samsung owns about 30,000 US patents. Apple could be forced to pay Samsung but the price would have to be fair and reasonable, and they wouldn’t be able to charge more than they charge another company for similar usage.

This is a battle that Apple has won in US courts already as one judge stated that software and technology evolves at such a rapid rate, by the time the lawsuit is over there will be new technology and a new product on the market. The problem, he says, is that the laws were written for Pharmaceutical companies because they spend millions in research, development and testing before bringing a product to market. Software is rapidly discarded as new developments are made and the clause should not apply. He also accused Samsung of abusing US patent law.

The temporary US ban on Samsung’s Galaxy Tab 10.1 was lifted at the end of the California ruling in August 2012 (http://www.bbc.co.uk/news/business-19796178 ) because the Galaxy didn’t infringe on any of Apple’s design patents. Apple had won the case and Samsung was ordered to pay $1billion in damages. The resulting appeal hadn’t been filed yet, nor had Samsung’s suit over Apple’s iPhone 5. I have a feeling this will be going back and forth for a long time; the battle continues.