Editors Note: Kevin E. Flynn is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A. This is the second of two articles.
Part I: www.localtechwire.com/article.cfm?u=8338 So what should an inventor do?
My preference would be to consult a patent attorney.
There are patent attorneys, myself included, that will work to hold down the expense of drafting a patent by allocating some of the work back to the inventor. A good patent attorney will point out obstacles towards obtaining a patent and the particular problems with your application. Without a crystal ball, a patent attorney cannot say with certainty that a specific invention could or could not be licensed. But, a good patent attorney will point out that, assuming a meaningful patent can even be obtained, a very small percentage of people are able to license their patent to a “big company” without having first produced and created a market for the invention.
There are certain factors such as availability of alternative solutions that impact the likelihood that a particular invention can be licensed. It is also important to consider whether earlier more basic patents will interfere with your ability to make, use, your invention. These barriers to making and using the invention impact the ability to license it. This discussion causes many inventors to scrap their plans to seek a patent. That is acceptable to me, as I would rather see a potential client leave after being appraised of the longs odds of making money rather than take money from a client who is oblivious to the long odds.
On the other hand, I must be fair and point out that not all attorneys are good and there are attorneys, unfortunately, who may promise more than they can deliver. As with choosing any important advisor, it is important to check the academic credentials, the local reputation and experience of the attorney before choosing one with which to work.
Ten steps for prevention
For people that do not choose to start out with a patent attorney, I recommend the following steps:
1) Become and stay extremely wary about Invention Promotion Firms.
2) Carefully read the warnings about Invention Promotion Firms on the Federal Trade Commission web site. www.ftc.gov
3) Become educated about the patent process through inexpensive books or through the extensive resources prepared by the US PTO for independent inventors. This material is free. Good starting places include: http://www.uspto.gov/web/offices/com/iip/index.htm or http://www.uspto.gov/main/profiles/newuser.htm.
4) Learn about the option to file a provisional patent to preserve your rights at a reduced cost. A provisional application can be in virtually any format as long as it adequately describes the best way you know to make and use your invention and your description is adequate for “one of ordinary skill in the art to make and use your invention.” While there is significant value in getting assistance from a patent attorney in preparing a provisional application, you may want to consider filing a provisional application yourself if your choice is between filing a provisional and doing nothing at all. By filing a provisional application your invention becomes “patent pending,” and you have time after the filing to explore the commercial value of your invention while delaying the costs for drafting a more formal patent application. As long as the provisional application is replaced with a regular application within a year, your regular patent application can obtain the benefit of the earlier filing date.
5) Don’t rely on unopened letters to yourself to protect your rights. A provisional application puts you on the path of seeking real rights and the filing fee is only $80.
6) Keep your dreams, but get real. It will be work to develop and sell your idea. It will take time and perseverance and the odds are against you as most inventors do not make money on their inventions. Become educated in the ways of the industry that you hope will adopt your invention. There are organizations and people that may help you, but you must accept that it will take your effort and passion to make your invention into a commercial product. Invention Promotion Firms thrive because people want to believe that there is an easy way to convert an idea into money.
7) If you do all of the above and still feel tempted to hire an Invention Promotion Firm go to http://www.uspto.gov/web/offices/com/iip/data.htm#Complaints and scroll down to the place where the Patent and Trademark Office provides links to complaints and responses about Invention Promotion Firms. Read these complaints. Go to www.ftc.gov and type “invention promotion” and the name of the Invention Promotion Firm you are considering to see if the FTC has investigated this firm, and if so what resulted from that investigation.
8) If you still are considering an Invention Promotion Firm, use your favorite web search tool and type in Invention Promotion Firms and the current month and year. At the time of writing this article this led me to a web log listing a recent MSNBC article: Got an invention? You, too, can be scammed. http://msnbc.msn.com/id/4863987/
9) If after becoming educated, you still want to work with an Invention Promotion Firm, then improve your odds of finding a worthwhile Invention Promotion Firm by carefully checking references for the firm and actually talking to inventor clients of the Invention Promotion Firm. It is best if you find inventor clients that developed an invention in the same general field as your invention.
10) If you decide despite all the warnings to work with an Invention Promotion Firm and then beat the odds to find an Invention Promotion Firm that delivers what they promised at a reasonable price, please send me an email and let me know. (contact me at kflynn@d2vlaw.com).
What to do if you have been a victim
If you decide despite all the warnings to work with an Invention Promotion Firm and subsequently come to believe that you were defrauded, please become vocal asking the Invention Promotion Firm to live up to its promises. Do not accept offers from your Invention Promotion Firm offering to extend the service to you for an additional period of time if you sign paperwork indicating you are totally satisfied by all work it has done for you–your complaint to the authorities will be difficult if the Invention Promotion Firm produces a recently signed paper indicating you are satisfied with all the work they did for you. Send your factually accurate complaint with the USPTO, the FTC, the State Attorney General where you live and where the Invention Promotion Firm is based and every other government entity that has oversight or regulatory jurisdiction.
In addition to the above remedies, you may have additional rights under the laws of your state. For example, North Carolina residents have specific rights under §66-209 of the North Carolina General Statutes, the law which deals with Invention Development Services rendered to residents of North Carolina. Under that law all persons or firms who are not patent attorneys/agents, certain charitable or scientific organizations or a few other specific exceptions, and who undertake to evaluate, perfect, market, broker or promote an invention, patent search or preparation of a patent are required to provide certain very specific disclosures and warnings, in writing, prior to any other communication with the inventor.
These Services are also required to provide a contract that includes specific terms listed in the statute. These requirements cannot be waived, even if the contract tries to provide a waiver. So, if the requirements have not been met (which is likely as the required terms would deter most people from entering into the contract), then you have the right to void the contract and owe nothing. Further, if you are injured by a person purporting to provide these Services and the requirements have not been met or you were provided with false or fraudulent statements, representations or omission of material information by the invention developer you are entitled to bring a lawsuit to recover not only what you paid, but three times that amount plus all costs and attorneys fees. There are comparable remedies under the American Inventor’s Protection Act, but federal courts are often a more difficult forum for smaller claims.
Finally, be sure to tell others and let your tale serve as an additional warning to those who may subsequently consider using an Invention Promotion Firm.
Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. Kevin Flynn combines the knowledge and experience that he has obtained as an engineer, lawyer, and patent lawyer to provide guidance to clients on a range of patent and other legal issues. Questions or Comments can be sent to kflynn@d2vlaw.com
