Unscrupulous promoters often take advantage of an inventor’s enthusiasm for a new product or service by making false and exaggerated claims about the market potential of inventions.  According to the Federal Trade Commission, some inventors pay thousands of dollars to unscrupulous invention promotion firms promising to evaluate, develop and market inventions.  These firms then do little or nothing for their fees.  Sometimes the actions taken by such firms jeopardize an inventor’s ability to patent his or her invention.

Invention promotion firms advertise through television, radio and internet advertisements, as well as in newspapers and magazines.  Their advertisements typically target independent inventors with offers of free information on how to patent or market an invention.  Those responding to such ads often only receive a sales pitch to buy a market evaluation and claims about the invention promotion firm’s contacts and marketing expertise.  Inventors who succumb to the sales pressure applied by unscrupulous firms often do not receive an honest assessment, but rather a mass produced, positive but inaccurate report.

Both Minnesota law and the American Inventors Protection Act give inventors certain rights when dealing with invention promoters.  Under the American Inventors Protection Act, before an invention promoter can even enter into a contract with an inventor, the invention promoter must disclose to the interested party the following activities which have occurred in the preceding five years:

1. how many inventions it has evaluated;
2. how many of those inventions received a positive or negative evaluation;
3. its total number of customers;
4. how many customers earned a net profit from the promoter’s services; and
5. how many customers have licensed their invention due to the promoter’s services.

Minnesota law requires other disclosures be made including the median fee charged to all of the invention promoter’s customers.  Most importantly, the invention developer must give notice:

            No patent, copyright or trademark protection will be acquired for you by the invention developer.  Your failure to inquire into the law governing patent, copyright or trademark matters may jeopardize your rights in your idea or invention, both in the United States and in foreign countries.  Your failure to identify and investigate existing patents, trademarks or registered copyrights may place you in jeopardy of infringing the copyrights, patent or trademark rights of other persons if you proceed to make, use, distribute or sell your idea or invention.

Both Minnesota law and the American Inventors Protection Act provide inventors whose rights have been violated a cause of action against unscrupulous invention promoters.  Such law suits rarely restore lost patent rights.  We recommend you contact us to discuss ways to protect yourself and your rights before disclosing your invention or otherwise beginning work with an invention promoter.  Entering into a contract with an invention promoter is no different than any other major business or financial arrangement.  Your contract should contain all the terms necessary to protect your rights and, at the same time, clearly identify the services to be provided by the invention promoter and the payment terms.  As Benjamin Franklin so simply stated, “An ounce of prevention is worth a pound of cure.”

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com

By far the most common mistake made by people new to the patent world is revealing their inventions to the public too early.  Any public disclosure of an invention - by word of mouth, demonstration, advertisement, journal article, an offer for sale, or any other disclosure - before you apply for a patent can jeopardize your ability to secure valid patent rights. A public disclosure is not limited to the general public; it can also be a disclosure to one or two individuals. 

If you feel the need to describe your invention to someone before you apply for a patent, such as a potential business partner, or a manufacturer, you should ask that person to sign a confidentiality agreement before you disclose your invention.  This means they have to treat what you tell them with confidence and they are not allowed to tell anyone else what your invention is.  This will assist you in assuring your invention is not disclosed to the public.  We can assist you in preparing this type of agreement.  Any conversation a client has with one of our attorneys is confidential.  

It is often best to apply for patent rights before any public disclosure of an invention is made.  Applying for a U.S. patent is done by filing a legal document called a patent application with the United States Patent and Trademark Office.  The content of a patent application is used to determine whether a patent can be granted, and also what rights a patent provides. 

It is possible for an individual to file a patent application without the assistance of a patent attorney; however it is very rare for individuals who are not patent attorneys to have their patents granted.  Individuals who are not trained in U.S. patent law generally do not know or have the legal skills needed to prepare an application for you; nor are they are familiar with the Rules of Practice imposed by the U.S. government.  Not having someone who understands the ins and outs of the patent system could result in either you not obtaining patent rights or not obtaining all the patent rights you deserve.  We can assist you in preparing and prosecuting patent applications both in the United States and in foreign countries.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com

The Patent Rules require an applicant to identify any related patent applications.  This generally comes in the form of a list of co-pending applications in the body of a patent application under the heading Cross-Reference to Related Applications.  Typically these related applications will be a continuation (a new application claiming substantially similar claims as the original application), continuation-in-part (a new application claiming matter related to the original application, but with new material) or divisional applications (a new application claiming subject matter discussed in the original, but not claimed in the original application).  These applications can also be the co-pending parent or an earlier filed application and must be identified by the serial number, filing date and preferably title.  A common way to identify whether an application is related is typically there will be one common inventor to all the applications.

In addition the patent application should be cross-referenced to any other co-pending applications closely related to the invention claimed in the application.  For example, applications cross-referenced are often inventions with different components of a common apparatus or method and each invention requires knowledge by the reader of the other inventions for sufficiency.  In this situation the inventors will typically be the same or the related applications will be assigned to a common assignee.

At Nikolai & Mersereau we can help you identify these issues and ensure your patent application satisfies the rules regarding codependency and related applications.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

Under U.S. Law, the person entitled to receive a patent on an invention is not the first person to make the invention, but rather the first person to make the invention in the U.S. who did not abandon, suppress or conceal the invention.  This makes sense given the constitutional basis for the patent system — to promote the progress of science and the useful arts.  However, it does create a dilemma for a first inventor who is not interested in patenting an invention, but who also does not want someone else who discovers the same invention later to be able to obtain a patent.  One solution available to the first inventor is to create a “defensive publication”.

If an invention was described in a printed publication in the U.S. or a foreign country before the invention thereof by an applicant for a patent or if the invention was described in a printed publication in the U.S. or a foreign country more than one year prior to the date of the application, the applicant will not be entitled to a patent.  Thus, any printed publication early enough in time could bar a subsequent inventor from securing a patent on any invention disclosed in the publication.  Two questions often arise with respect to defensive publications.  First, what is meant by “published” under the patent laws?  Second, how much detail must be disclosed in the publication to achieve the goal of preventing others from patenting the invention?  Of course, the answers to these questions may depend on the situation so you should seek legal advice before proceeding.

Of course, these questions can be avoided by filing a Statutory Invention Registration (SIR) with the United States Patent and Trademark Office.  The SIR permits the inventor to forego the grant of a patent while preventing others from patenting the invention for themselves.  See Hyatt v. Boone, 146 F.3d 1348, 1356 (Fed. Cir. 1998).  A SIR will be published without formal patent examination.  A published SIR is treated the same as a U.S. patent for all defensive purposes and is “prior art” as of its filing date.  SIRs are classified, cross-referenced and placed in the search files, disseminated to foreign patent offices, stored on U.S. Patent and Trademark Office computer tapes, made available in commercial data bases and announced in the Official Gazette.  See MPEP § 1111.  The SIR prevents others from patenting the invention.  An inventor who files a SIR does not, however, obtain any rights to exclude others from practicing his or her invention. 

One problem with the SIR route is the cost.  First, the inventor must disclose the invention sufficiently to satisfy all of the requirements of 35 U.S.C. § 112.  The inventor must submit a specification having a written description capable of enabling a person of ordinary skill in the art to practice the invention, a best mode of practicing the invention and at least one claim.  The inventor must also pay fees to the United States Patent and Trademark Office that virtually are the same as those required for a patent.  Thus, a better approach might simply be to file a patent application, electing to have the application published after 18 months from filing and then abandon the application after the application publishes.  This provides the added benefit of time, time to assess the value of your application and decide whether it makes business sense to actually patent the invention.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

On October 30, 2008, the Court of Appeals for the Federal Circuit in a nine-to-three decision in a case entitled In Re Bernard L. Bilski and Rand A. Warsaw, affirmed a decision by the U.S. Patent and Trademark Office Board of Appeals and Interferences that a process patent directed to a method of managing risk in the commodities market is not subject matter that patent laws have been designed to protect.

Under § 101 of the Patent Statute:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

The Court effectively held that the word “process” used in the statute must involve “a transformation of an article to a different state or thing”, and that purported transformations of business risks in the commodities market does not involve physical objects or substances.  As such, the Court determined that the claims in the Bilski patent application did not define a process that constituted patentable subject matter.

The dissenting opinions were critical of the legal analysis by the majority, but did not differ on the outcome that precludes Bilski from securing a patent on his particular method for hedging risk in commodities trading.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com