March 27, 2011 3:53 am at 3:53 am #595932
Is anybody here knowledgeable about the patent process?
First, there is a clause in patent law that an invention must be unobvious. What is the standard? Suppose no companies make such a product, but they claim that the new idea is a no-brainer, would that invalidate the patent?
Second, what is the going rate for a patent lawyer? Do they charge if the patent is not approved?
Third, what is the usual arrangement for licensing? Does one get an upfront fee from a company that is willing to pay for the use of the patent, or does one get a percentage of sales, or either? What is a fair percentage? Does the same lawyer who filed the patent perform the negotiations and licensing contract, or is that a separate area of law. If funds are tight, would any lawyers be willing to file the patent for a percentage of future licensing fees, rather than an upfront payment?
Anybody with experience, please comment.March 27, 2011 4:05 am at 4:05 am #753038GrandmasterMember
As a parent, I advise to wait till the child is 18 before allowing him to get a license.March 27, 2011 4:38 am at 4:38 am #753039popa_bar_abbaParticipant
I also read it as “parents”. I thought this was going to be about getting a license to be a parent.March 27, 2011 1:24 pm at 1:24 pm #753040
I thought this was going to be about getting a license to be a parent.
…which would not be a bad idea. 🙂March 27, 2011 2:57 pm at 2:57 pm #753041
Did I have a typo somewhere? Why am I getting all these strange responses?March 27, 2011 3:30 pm at 3:30 pm #753042WolfishMusingsParticipant
I, too, misread it as “parents” when I first saw it.
As to your question, I think your best bet is to contact an IP (intellectual property) lawyer.
The WolfMarch 27, 2011 3:31 pm at 3:31 pm #753043ItcheSrulikMember
Probably because nobody here has ever applied for a patent. Just like every other young geek, I have followed patent law debates and various high-profile suits but never applied for one myself, so I only have some vague theoretical knowledge.
The only part I can answer for sure is your question about “unobvious.” There is no standard, but the burden of proof is on the company manufacturing your product to prove that it was obvious. IOW, when you sue them they have to prove that it was obvious to the point that it occured to them on their own without having looked at your designs.
If you have specific questions along the way, I recommend you try onstartups.stackexchange.com. The stackexchange model is great for getting good answers quickly and they have sites for a lot of different topics.March 27, 2011 3:38 pm at 3:38 pm #753044
Itchesrulik, thanks very much. Finally, some real info.
Wolf, I will need to do that, but I wanted to get an idea of what I am getting myself into.March 27, 2011 3:48 pm at 3:48 pm #753045GrandmasterMember
I wanted to get an idea of what I am getting myself into.
If you are judging from this thread, probably a lot of hot water.March 27, 2011 4:56 pm at 4:56 pm #753046
I have seen threads go off topic, but this is really something else. An entire crowd of people bent on changing the topic from patents to drivers licenses.March 27, 2011 4:57 pm at 4:57 pm #753047ItcheSrulikMember
To clarify, what I said before is assuming your patent has already been granted. When your patent is granted it means that the patent office is suitably convinced that your invention is “unobvious” meets the “prior art” requirements etc. I’m kind of fuzzy on what you have to provide and what they review though.March 27, 2011 6:19 pm at 6:19 pm #753048
sorry pashutah yid – at least we kept this thread going, until you got some real answers. 😉March 27, 2011 6:41 pm at 6:41 pm #753049HomeownerMember
When I read this thread, it makes me ill. If you know nothing about the subject, then say nothing.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)-
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
(3) For purposes of paragraph (1), the term “biotechnological process” means-
(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if –
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
As can be imagined, there are numerous “meforshim” (i.e. court decisions) on every word of this statute and this is clearly a subject best left to attorneys who specialize in it. The Coffee Room is not going to help you.March 27, 2011 6:45 pm at 6:45 pm #753050
okay. okay. sorry.March 27, 2011 6:51 pm at 6:51 pm #753051popa_bar_abbaParticipant
please. it’s no different than half the halachic discussions here.March 27, 2011 6:55 pm at 6:55 pm #753052WolfishMusingsParticipant
When I read this thread, it makes me ill. If you know nothing about the subject, then say nothing.
My apologies for making you ill. Next time I won’t recommend an IP attorney.
The WolfMarch 27, 2011 7:15 pm at 7:15 pm #753053mewhoParticipant
PY, i just went through this about 2 months ago.
I had a great idea and drew up pictures of how I felt it should be made. Sent the pictures plus a written description of it and how it would be used to a person to do search and he wrote back that the item was NOT patentable.
I could sstill maufacture it if I wanted to but he suggested agaisnt it.
If I manufactre it and someone else does so too and undercuts what I am charging I can get stuck with thousands of peices and be out major bucks.
Speak to someone who is knowledgeable. There is a radio show on the internet . I think its on Thursday nights called ”Got Invention”. The host is a Jewish fella named Fried.
Check it out and best of luck.March 27, 2011 7:19 pm at 7:19 pm #753054
Homeowner, thanks. However, my idea is not a high tech or biotech concept. It is a simple idea for an everyday household device for which I have an improvement.
An analogy would be the Swingaway can opener, which is much more reliable than previous can openers, but I think has just one extra gear, and is made in a better shape and out of much stronger metal. (My idea is not for a can opener.)
As far as going to an attorney, I will of course have to, but I also asked here about the going rate. I was hoping either some patent attorney reads this site who could advise what the normal procedure and rates are, or someone who has gone through this.
As far as reading or understanding the legalese, I can’t make heads or tails out of it.March 27, 2011 7:23 pm at 7:23 pm #753055
Me who, I just saw your reply. Why exactly did they tell you your idea was not patentable?March 27, 2011 7:30 pm at 7:30 pm #753056mewhoParticipant
PY most patent attys are a few thousand dollars.
i was told that the idea was not patentable coz there are other items out ther ethat can be made similar to my idea.
there is no such item as mine but the main part of mine is out there and in use on other items. not on the item i had planned the idea for.March 27, 2011 8:04 pm at 8:04 pm #753057
For something to be patentable, you have to have your application approved by the patent office (USPTO). To do this, you need to use a registered patent attorney or agent. I’m assuming rates are approximately a few thousand dollars; however, maybe if you can find an agent (who is not a lawyer), it might be cheaper. Nobody is going to be out to invalidate your patent now. What you have to do is convince the patent examiner that your application should be allowed (ie approved). The patent examiner will conduct searches and see if your invention is patentable subject matter (35 USC 101), if anything is out there that anticipates your invention (35 USC 102), or if your invention is obvious (35 USC 103). As Homeowner discussed, there are many cases out there that elucidate these standards. For something to be patentable, it has to be patentable subject matter. Since it sounds like you made an appartus (some kind of machine), then you shouldn’t have to worry about it. Anticipation is complicated, but basically you (meaning your patent agent) should conduct a search to make sure there are no patents or publications out there that disclose your invention. There are other things that might disqualify you under teh statute, such as public use, sale, etc. You don’t have to conduct a search before submitting an application, but is a very good idea, as patent applications are expensive. You also will need to make sure it is not obvious. There are also many court decisions on this: including KSR. However, the basic idea is that someone who is ordinary skill in your art (ie inventing simple household inventions) would not think it was obvious based on other inventions. While filing your patent, the main thing you have to do (or your patent agent has to do) is to convince the examiner that these sections do not apply and write up the patent in such as way that it is enabled. The only way companies get involved is if they chose to infringe your patent and then you chose to sue them or if they initiate a reexamination of your patent. Assuming you don’t have an invention worth millions, these scenarios are not likely.
You can probably use the internet to find patent agents/attorneys. You do need one if you chose to pursue a patent.March 27, 2011 8:27 pm at 8:27 pm #753058
Zxcvb1234, Thanks for the info. It is the non-obvious rule that is getting me worried and confused. On one hand my device is not a new device. It is one that people use all the time. Yet it has a major annoying flaw that people complain about all the time. I have a way to fix it. Yet it is not a high tech concept. Just a simple straightforward modification of the way these devices are made. Anybody seeing it would say, wow that is so simple, what is the big chiddush? Yet, I have looked at tons of these devices by many manufacturers, and none use this idea.
Some have other possible solutions to the flaw, which I believe are not as good or as reliable. None solve the problem the way I propose, but again, it is not major rocket science. So I am not sure what determines “non-obvious”. On one hand, if it was obvious, then why aren’t the millions of current models out there using this idea, and instead are being built the old way with the flaw? But on the other hand, the idea itself seems so simple, that a child could have thought of it.
I guess I will have to hire a knowledgeable attorney.
How is an agent different than an attorney?March 27, 2011 8:46 pm at 8:46 pm #753059
There is a lot of interesting material here, which is a good place to learn about this issue by following its various links:March 27, 2011 8:47 pm at 8:47 pm #753060
Tons of patents are modifications of other devices/inventions. It is very rare to have a truly new invention. Without knowing the invention (and I do not advise you to disclose it to the coffee room), I can’t really tell you if it is obvious or not. The one nice thing about obviousness is hindsight is impermissible. Yes, it may be obvious after you see it, but the point is that it has to be obivious at the time of the invention given the state of the art at that time. Also, you can use secondary considerations to argue against a finding of obviousness: things like the (1) The invention’s commercial success, (2) Long felt but unresolved needs, and (3) The failure of others might apply in this case.
My recommendation would be to go to an attorney or patent agent. The difference between an attorney and an agent is that an attorney has a law degree. A patent agent is someone who took the patent bar and can prosecute patents before the USPTO. They are functionally equivalent and there is no distinction when you are prosecuting (ie getting) a patent. The only difference is the agent cannot represent you in litigation (ie in a court). Since an agent does not have a law degree, he is probably going to be cheaper.March 27, 2011 9:08 pm at 9:08 pm #753061
Thanks again, Zxcvb. I just saw some of those considerations mentioned in the Wikipedia article as well. They discuss whether a combination of previously known elements can be considered non-obvious. As you say, almost all inventions use previously existing components. I believe my idea may meet your criteria 2 and 3.
You seem knowledgable. Are you in this field?March 27, 2011 9:11 pm at 9:11 pm #753062
Here is another idea. Google has a lot of patents. http://www.google.com/patents (Moderators, I know that you don’t post links, but if you can’t post this, then just post Google Patents). Obviously, I would not rely on this as a search, but you can search google for keywords that have to do with your invention to get a sense of inventions already out there. Again, I would not rely on this as your only search. There are many more things that you have to look for.
You can also find a list of agents and attorneys by searching: https://oedci.uspto.gov/OEDCI/query.jsp (or if Moderators do not let that link go through type patent agents into google and click on the first link (should be the OED of the USPTO)). The higher registration numbers (60,000s mean newer attorneys are agents). Some of the lower numbers may have retired. Maybe finding a 40 or 50,000 registeration number would be good. You can also search by geographical area.March 27, 2011 9:18 pm at 9:18 pm #753063enahakMember
i have a few patents overseas and some in the usa. if u decide to pursue it, i’d start by quickly calling all the patent attorneys in the phone book and online in your area and asking for their price.
i called about 60-80 different ones until i found a real cheap and good one. most prices on patent are minimum $1500-5000. i found someone to do it for $600. most patents like your describing can be easily bypassed by a simple modification anyways. it’s usually only beneficial for major corporations to deal with patents in the usa.March 27, 2011 9:38 pm at 9:38 pm #753064
I meant 60,000s means newer attorneys or agents.March 27, 2011 9:55 pm at 9:55 pm #753065
Zxcvb, thanks again for your help.
Enahak, I wonder if you would be willing to post name of the attorney you recommend if the CR allows it.
As far as bypassing by making modifications, the texts of the patents I have read in the past usually include a lot of variations, and also say that they encompass other conceivable implementations of the core idea.
The reason I want to patent the idea, is that I want to make some money, but I have no interest in starting a company to produce the product I have in mind. There are plenty of them already, and I don’t want the hassle of running that kind of company. I am mainly in a totally different field.
As an example I found on the internet, suppose somebody has a good idea for some improvement on a car. He is not going to start another car company. So how else would I be able to get anything for my idea if I don’t patent it and sell the rights?March 27, 2011 10:00 pm at 10:00 pm #753066
Another question I have (I know this is counting the chickens way before they hatch), is what is the deal with foreign patents? If one can successfully patent something in the USA, how does he prevent someone from making a cheap knockoff in another country. Do you have to get a patent in every single country? There are hundreds of them. It must be very expensive to file so many applications.March 27, 2011 11:17 pm at 11:17 pm #753068
A Patent grants the right to exclude others from making, using, offering for sale or selling the invention throughout the United States or importing the invention into the United States. If you want protection in other countries, you have to file in other countries. You can file a PCT application, which allows you to file in one country and then pick countries that you would also like rights in. This delays some of the costs; however, you will still have to prosecute the patent in those countries if you want protection. You can pick and chose countries (ie pick the ones that would most likely infringe) but if you want protection, you need to actual get the protection.
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