Posts Tagged ‘inventor’

The Three Most Common Ways to Make Money From Your Invention

Monday, 02 January, 2012 22:49 Written by Mark Malek 1 Comment

By: Mark R. Malek

One of the things that I have encountered over the years is an inventor that comes up with an incredible invention, but that does not know what to do with the invention in order to make money with it.  During my consultations, I generally break down the very complicated business side of inventing to the three most common ways that I believe the inventor can make profit from an invention.  Of course, this article assumes that the invention is patentable, will eventually be granted a patent, and does not infringe on someone else’s patent (many assumptions, but I will discuss those in a future post.)

The first way that I know how to make money on your invention is to manufacture it and sell it yourself.  Why do you need a patent to do that?  To tell you the truth, you don’t.  There is no requirement for you to patent your invention in order to sell it. If, however, you start selling your invention, or otherwise disclose it, and one year passes, you can kiss any hope of getting a patent goodbye.  Suppose that obtaining a patent is not that important to you.  That’s fine, but I guarantee that it becomes important to you once your invention starts getting knocked off and there is no reasonable remedy to stop the knock offs.  Also, one thing that I have notices about trying to launch your own product, i.e., trying to manufacture the product and get the product into a distribution chain, is that the patent is usually the cheap part.  Depending on the invention, just getting manufacturing set up can be extraordinarily expensive.

The second and third ways that I suggest profiting from an  invention does require a patent, or some other protectable right.  Way number two to make profit from an invention is to license a patent covering the invention.  This is usually the case when an inventor can come to terms with an entity or person that desires to make, use or sell an invention that is covered by the inventor’s patent.  In such a case, the two parties can enter into a licensing agreement.  A licensing agreement is an agreement that allows the inventor to maintain ownership of the patent, and grant rights to another to use the patent for some sort of compensation (or other consideration) and for a fixed amount of time.  Licensing agreements are not something that are scratched on the back of a Denny’s napkin in crayon.  They are very complicated, and require a great amount of detail.  If you find yourself in a position where you are shaking hands in a bar and thinking that you have just saved money on your licensing negotiation by not using an attorney, chances are you will be using an attorney in the not to distant future – in a much more expensive lawsuit.

The third way to profit from an invention is an outright sale of your rights to the invention.  This, almost always, involves the sale of a patent.  I have had many conversations with inventors that want to skip the patent process and just go right to the big company (say Johnson & Johnson, for example) and sell their invention for millions.  Really?  What would Johnson & Johnson be purchasing?  The inventor’s thoughts?  It doesn’t really work that way.  An invention inside of one’s head does not result in a protectable right.  Johnson & Johnson does not have any reason to pay for the invention because there is no protectable right in that invention until a patent is granted on it.  Put another way, there are no lawsuits for idea infringement, but there can be a lawsuits for patent infringement.  The above simplistic outline does not discuss other legal remedies, such as theft of trade secret, for example, but that is not really applicable to this situation.

There are several other ways, some more complicated, to profit from an invention.  I will continue to write on this topic, as well as provide some additional details of the above in future posts.  This is just a short intro to satisfy some of the common questions that inventors sometimes have.

“There’s Nothing Like This Out There” and Other Quotes That Are Common For Inventors

Friday, 16 December, 2011 14:55 Written by Mark Malek 0 Comments

By: Mark R. Malek

Many times during a patent consultation I will hear a very common line used by many inventors.  “This must be patentable, because there’s nothing like it out there.” My first response is usually “where did you look?”  The issue is that the very idea you came up with might not be found at the local Wal-Mart or Home Depot.  That does not necessarily mean that it is not “out there.”

Think of this – there are over 8,000,000 patents out there.  That’s just the issued patents.  As you probably know from many of the stories that we have done on the patent application backlog (see past stories here, here, and here) so, as you can imagine, the number of patent applications pushes the amount of “prior art” out there even higher.  At the time of this article, the patent dashboard indicated that the number of patent applications that need to still be examined are 671,409.

The point is that it is not sufficient to just assume that since you cannot purchase one, it has not been invented.  There are several different places to do some research when you first invent something.  For example, two of my favorite sites to look at to do some initial patent searches are Google Patents and FreePatentsOnline.  These are great places to get started on your patent searches.  Many times, this exercise will help an inventor to narrow down the invention.  For example, the inventor may have come up with a broad concept of some sort, e.g., a u-turn signal for a car.  That is a very broad idea and, as such, upon initially searching for this invention, one would notice a great number of patents that are already issued for it.  The next step is to look at all of those patents, and figure out what makes your invention different.  Another great place to do some patent searching is the Patent Office’s website.  There is a quick search available and an advanced search available as well.  I like the advanced search because it allows the inventor to search by classifications and art units.  When all else fails, just do a simple Google search and see what people are posting on the internet.

For great information on patent searching, see this article on IPWatchdog written by Gene Quinn.

 

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 4 Comments

By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

Angry Birds Developer Latest Invitee to the Lodsys Patent Infringement Party

Wednesday, 27 July, 2011 09:34 Written by Mark Malek 0 Comments

By: Mark R. Malek

This story hits a little close to home because of my love for the Angry Birds game.  I don’t think it is the game that gets me so much as it is the noises that the birds make as they are rocketed from a sling shot to perform all manner of acrobats while destroying a structure in hopes of making a green blob explode.  It doesn’t hurt that the games are generally free through the Android Marketplace or the App Store.

We are so confused by this Patent Troll

Going past the free levels, however, is where the problem allegedly lies.  Although many of the levels are free, there are some additional levels that are available for purchase by users.  According to this story on Benzinga, which sites another story on The Telegraph, the Lodsys patent allegedly includes claims that cover a method for allowing players to purchase new levels inside its mobile application.  (See also this story on CBR)

Of course, the common theme that I have been seeing in many of these stories is that there is a problem with allowing patents on software – let the comments begin.  I, of course, do not see any problem with patents on software.  Many software developers disagree, but I do not believe that they are applying U.S. patent law when making their arguments.  In short, a U.S. patent, and patents in general, are meant to provide protection on the functionality of an invention.  So what is wrong with protecting the functionality of a piece of software?  The software field is so crowded, that any allowable software patent application is generally focused on a very specific function, and the manner in which that function is carried out.  We got a bit (a very little bit) of direction from the United States Supreme Court in their Bilski decision a little over a year ago (see my story on Bilski here), and with that, we were presented with the “machine or transformation” test, but were also told that this test was not the only test out there.  I guess we will have to wait and see what other tests there are, but we know that “machine or transformation” does not stand alone.

I was pleased to read the article regarding this matter by my good friend Gene Quinn, founder of IPWatchDog.com, and one of the teachers of the patent bar review course presented by PLI.  Gene points out what I believe is the bigger issue – the patent troll.  Gene notes that a patent troll generally gets the process started by finding an attorney willing to take a patent infringement case on contingency, and filing a complaint riddled with broad allegations.  That is part of the reason why the story’s regarding this Angry Birds infringement matter are a bit vague.  We are not too sure what aspect of the Angry Birds game is allegedly infringing.

We will have to wait and see how this, and the other Lodsys suits, turns out.  It will be interesting to see if Apple keeps out of this somehow.

Infringement in 3D – A brief patent attorney’s analysis of the alleged Nintendo 3DS patent infringement

Thursday, 07 July, 2011 20:38 Written by Scott Nyman 1 Comment

Scott Nyman

 

A couple months ago, Nintendo launched its newest 3D handheld gaming device, the 3DS. Being a gamer with little free time, I picked one up to satisfy my gaming itch in piecemeal sessions. I will say, the 3D works and the novelty has not worn off yet. Also, this little device is a blessing when you’re stuck in ATL because Delta forgot to assign your plane a crew.

But, not everybody is overjoyed with Nintendo’s handheld venture into the third dimension. Tomita Technologies is claiming that the 3DS violates one of its patents, which issued in August 2008. U.S. Pat. No. 7,417,664 issued to Seijiro Tomita, titled, “Stereoscopic image picking up and display system based on optical axes cross-point information,” certainly has a verbose title, but does it have the legs to support a patent infringement lawsuit against the Big N?

The Tomita ‘664 patent includes one independent claim:

1. A stereoscopic video image pick-up and display system comprising:

a stereoscopic video image pick-up device including two video image pick-up means for outputting video information from said pick-up means;

a stereoscopic video image display device for displaying different video images for the eyes of a viewer; and

a medium for transmitting video image information from said stereoscopic video image pick-up device to said stereoscopic video image display device,

in which said stereoscopic video image pick-up device includes cross-point measuring means for measuring CP information on the cross-point (CP) of optical axes of said pick-up means and outputs information including the CP information and video image information to said medium; and

in which said stereoscopic video image display device includes offset presetting means for offsetting and displaying said different video images based upon said video image information, said cross-point information and information on the size of the image which is displayed by said stereoscopic video image display device.

Now, without going into why I don’t care for means-plus-function language in the claims (I’ll write more about this in another article), we have to go into the specification to pick out what pick-up means may include. Yay! We also get to figure out what a cross-point measuring means might be. Double yay! It’s like a treasure hunt.

Please keep in mind, everything said below is based on a skim of the patent and a guess. A full analysis and report would take a great deal of time, which I’m not willing to devote without a big check from the Big N (hint, hint, Nintendo…) Also, I have not ordered, and do not plan to order the prosecution history to see how the claims have been narrowed between filing to allowance. With that said, please take opinion below for what it is, a guess.

Digging through the spec with a word search for “means,” by far the second most used word in the patent (next to “the”), I have some rough idea of what these various “means” include. For example, a “pick-up means” looks to be a stereoscopic camera used to record a left and right video image.

My guess is that with enough money, and a search more thorough than any Patent Examiner can give, Nintendo will likely be able to invalidate this patent. But how can Nintendo’s search be better than an one performed by an Examiner, a person whose career is to search and determine patentability? The answer is simpler than you may think. The Examiner has roughly 5-10 hours to dispose of a patent application, ending in a rejection or allowance. A litigating attorney has as much time as the client is willing to fund.

So let’s take another look at that claim, viewing them as broadly as they allow.

A pick-up means, viewed broadly, could be two artists sitting next to each other, drawing in a flipbook from what they see at their angle. Let’s give the right artist a red pen and the left artist a blue pen. They record a motion picture (video) to paper in the flipbook (medium). The paper is then removed from the individual flipbooks and ordered sequentially, red page 1, blue page 1, red page 2, blue page 2, and so on. Where the vision of the artists intersects may provide the CP information. The stereoscopic flipbook, with the pages rearranged, (display) may pass through red-blue glasses (offset presetting means), like you may get with comic books. A motion picture image may be received from the paper (medium) of the flipbook, after which it is offset into a right image and a left image by the glasses (offset presetting means), and received by the eyes of a viewer with the CP information preserved.

It’s a stretch, I know. But, how many display devices do you think have been invented between the flipbook and the Tomita ‘664 patent? Time to get searching, Nintendo. This one’s in the bag.

 

View the full patent at issue at the link below:

http://www.google.com/patents/about?id=ngetAAAAEBAJ

 

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