PATENT: SEVEN WAYS TO KEEP YOU FROM THE WOLVES

You have an invention or an idea for an invention. The first people you may hear about - or even may contact you - are from an invention development company. They advertise on radio and TV, and in magazines that cater to the inventive mind - and even some newspapers.

Invention development companies are private and public research companies that purport to help inventors develop, patent, and promote their ideas so they can be commercially licensed or sold. While many of these organizations are legitimate, some are not.

I state my stand on the use of such companies on my website - www.gadgets-gizmos-inventions,com. But, you may want to go that way anyway to develop your patent or invention. If that's the case, here are seven helpful tips for you to make smart patent and invention development decisions:

1. Learn About the Patent Process.

When you understand the basics of how to get a patent, you will know when invention marketers are making promises they, or the patent system, can't deliver. Knowing the steps to do a patent search, and what is required, as well as knowing what happens in the patenting process can only help you in making the right decision. You will have a better idea about whether the company you are talking to knows what they are doing for you - and not just their pocketbook.

2. Do Your Homework.

Check the organization's references, ask for credentials, and then check them. Ask them for statistics on how many successes they have had compared to how many total clients. They are required by law to offer you this type of information. In fact, the American Inventors Protection Act of 1999 gives you the following rights when dealing with invention promoters.

Before an invention promoter can enter into a contract with you, it must disclose the following information about its business practices during the past five years:

* how many inventions it has evaluated,
* how many of those inventions got positive or negative evaluations,
* its total number of customers,
* how many of those customers received a net profit from the promoter's services, and
* how many of those customers have licensed their inventions due to the promoter's services.

This information can help you determine whether the promoter has been selective in deciding which inventions it promotes, and how successful the promoter has been. Ask for names of "successful" clients, and talk to them.

Invention promoters also must give you the names and addresses of all invention promotion companies they have been affiliated with over the past 10 years.

This information can help to determine whether the company you're considering doing business with has been subject to complaints or legal action.

You can call the U.S. Patent and Trademark Office (USPTO) at 1-866-767-3848, and the Better Business Bureau, the consumer protection agency, and the Attorney General in your state or city, and in the state or city where the company is headquartered to check them out.

3. Be Realistic.

Not every invention is patentable. Know that very few ideas - even the good ones - become commercially successful. Be wary of any developer willing to promote virtually any invention. If you are presented with the phrase - "We think your idea has great market potential" - beware, and take it for what it is - in a lot of cases, just a sales pitch.

4. Know Where Your Money Is Going.

Ask the organization how your money will be spent. Be on guard against large up-front fees and find out exactly how the money is spent. If the company gives you something like - "Our company has evaluated your idea, and now wants to prepare a more in-depth research report. It'll be several hundred dollars" - ask them if the idea is good enough for more research why don't they foot the bill.

5. Protect Your Rights.

DO NOT disclose your invention to a developer over the phone (or at any time) before first having them sign a confidentiality agreement. You could forfeit valuable patent rights. A sample confidentiality agreement is available on my website. ??6. Track Your Invention's Progress.

If you decide to use an invention development organization, deal directly with the agent or patent attorney who will be handling your patent application. A lot of these type of firms outsource the work which is not good for you.

Many invention promotion firms also may claim to perform patent searches on your idea. Fraudulent invention promotion firms usually do patent searches that are are incomplete, conducted in the wrong category, or unaccompanied by a legal opinion on the results of the search from a registered patent attorney.

Because unscrupulous firms promote virtually any idea or invention without regard to its patentability - they may go ahead and market an idea for which someone already has a valid, unexpired patent. In that case, you may be the one subjected to a patent infringement lawsuit - even if the promotional efforts on your invention are successful. Most probably, the way the infringement suit is attracted is through a successful product.

7. Don't Get Discouraged!

The patent process can be very complicated, so you will probably need professional help. There are many good patent agents and attorneys that can help you. The U.S. Patent and Trademark Office maintains a nationwide register of attorneys and agents who meet the legal, scientific and technical requirements of the office.

The first step should be a patent search done by a reputable searcher. Your patent attorney can help with this, and should review the search for a package price, depending on the complexity of the invention.

Hang in there. It is a long and complicated process. But if your idea passes the initial search test and evaluation, there is a good chance you can receive a patent - in two or so years.

For information on registered patent attorney and agents, you may visit the USPTO's Office of Enrollment and Discipline Web site at http://www.uspto.gov/go/oed.

Gary J. Cogley, JD, after being a musician, a TV Producer/Director/Writer, and an entertainment and IP attorney, now writes about all kinds of gadgets, gizmos and inventions. He also gives tips and info on patents, and scams to watch out for. Get info at: http://www.gadgets-gizmos-inventions.com

Paralegal FAQs

Paralegal is a legal assistant who works under the guidance of attorneys or lawyers. These persons carry out various legal tasks, which include legal research, legal document preparation, and law office management. These persons gain corresponding qualification by education, training or by work experience at law offices, government agencies, and other law related fields.

How to become a paralegal?

You can become a paralegal by securing an associate degree from community colleges. Bachelor and master degrees and certification programs in paralegal studies are other options to become paralegals. Some employers even provide on job training for college graduates without any legal experience or take individuals who have experience as legal secretaries. Those persons with experience in technical field needed for law firms can also become paralegals.

What are the basic work qualities needed for a paralegal?

A paralegal should ideally have good skills for organizing and managing law offices. He should be capable of doing complex and detailed work in a fast and accurate manner. He should have excellent communication skills.

Where do paralegals work?

Paralegals work in almost all areas related to law. These include law firms, law departments, insurance companies, banks, courts, legal clinics, and government agencies. Paralegals can work independently or as team leaders.

Whether license is required for paralegals?

Paralegals do not require license to perform tasks in most cases. This is because these persons work under the supervision of licensed attorneys or lawyers.

Whether any certification is necessary for paralegals?

Certification depends on the area of service. Some areas require certification whereas some others do not. To become a certified paralegal, individuals should have CLA (Certified Legal Assistant) or PACE (Paralegal Advanced Competency Exam) certification.

What about the salary for paralegals?

Paralegal salaries are based on education, experience, special skills in the relevant field, and the nature of the employer. It can start from 16000 dollars and can go up to 34000 dollars.

Paralegal provides detailed information on Paralegal, Paralegal Jobs, Paralegal Schools, Paralegal Training and more. Paralegal is affiliated with Notary Public Supplies

Product Trademarks

So, you've just come up with a snappy product name and you've decided you want to trademark it. What should you do next? Is it really as easy as the website at the US Patent and Trademark Office says it is? Can I really do it without a trademark lawyer? These and other questions will be answered in this article.

Once you come up with your product name, you must first find out whether or not that name is already being used for the type of product or service that you wish to use it for. You can do this by doing a web search for the name, searching it through the US Patent and Trademark Office website to see if it's been registered or applied for, or by contracting with a special search company who also check through telephone listings, company names, and has further resources available than either of the previous options. If it's already being used, you will likely have to consult a trademark attorney to find out whether or not your use is different enough from the one already in use, to justify spending your money on trying to promote a name that is going to have to be changed later.

Let's say you can't find any other uses of the name out there. Does this mean you are home free? Well, not quite. If the name you have chosen is merely "descriptive" of the product, such as "Red Rubber Ball" for a rubber ball toy, or "Meaty Dog Food" for a dog food made of meat, it might be great for the consumer, but it is not necessarily a name that the US Patent and Trademark Office will accept as a trademark. A name that is "merely descriptive" is not going to pass muster, and will not be awarded a registration. There are other categories of name that are also not registrable, however they are a bit more complicated, and you really should consult a trademark attorney regarding how best to proceed in those cases.

If your product or service name is not already being used, and is not descriptive, what then? Well, at that point you have a number of choices. You can begin using the name, spending the necessary money to promote it, print it on labels, etc., relying on your "common law" trademark rights, or, if you are only going to be using the name locally you COULD go after a state trademark (check with your particular state for details), or you could then proceed with national trademark registration.

Your "common law" trademark rights are good, and you CAN sue someone for infringement if they were to copy your name for a similar product, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but what happens when you border another state, and the guy just over the way starts using your product name for a similar product? It's rather difficult to limit your "territory" in the days of the Internet and easy transportation. Again, a national trademark would definitely make your life easier. (Please note that you can also register your mark internationally once your company grows to the extent that you are trading overseas. I positively recommend a qualified trademark attorney for international registrations.)

If you decide to go for a national mark, and wish to try to apply on your own, you can go to the US Patent and Trademark Office website at www.uspto.gov and go through the entire application online. In some cases, where the name is very distinctive, and the product is easy to describe and fits neatly into one of the classes for trademarks that you can find on the website, and you can easily send a "specimen" showing that the name is in use in the way you say it is in use, your registration may go through without a hitch and you would receive a registration in approximately 18 months. Then, in most cases, you would be protected against anyone in the United States using your product or service name on a similar product.

Unfortunately, it is not always the case that your application for trademark registration goes through quite this easily. Oftentimes, you will receive what is called an "Office Action" from a Trademark Examiner in the US Patent and Trademark Office asking you to clarify something, rewrite your statement of use, submit a different sample, or asking for more information. Or, your name may be "published for opposition" (a required step in the process) and someone who you didn't find in previous searches turns up to "oppose" your registration. These are cases where you will most likely need the services of a qualified trademark attorney to assist you.

Once you have submitted your application, an attorney can help you with many of the changes that might have to be made to achieve registration status. However, there are mine fields and pitfalls associated here as well. It is entirely possible that you may have made a "fatal error" in the application, and it must all be started over again. If you don't find this out until your first office action, you may have wasted six months or more of time, AND your entire filing fee, just to have to start over again with a lawyer's help. If the problems come up at the time of publication for opposition, this is the point where you're almost entirely through the process. Starting over at this point would likely cost at least a year's worth of effort.

In summary, your product name can be protected either by common law trademark, state trademark, or national trademark. Both common law trademarks and state trademark registrations have serious limitations, but are available. For national registrations via the US Patent and Trademark Office, you CAN do them yourself, but be aware of the pitfalls and possible difficulties involved. Otherwise, consulting a qualified trademark attorney will likely save you significant time, and will probably save you money in the long run.

Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see http://www.mikkibarry.com This article is not meant to be legal advice.

Patent Primer

If you are in the business of thinking up new products or processes, or even if you are just a back-yard tinkerer, consider obtaining patent protection for your inventions.

What a Patent Is - And Is Not

Patents provide their owners with an exclusionary right. They grant 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, and, if the invention is a process, ? the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, ?." 35 USC 154(a)(1). A patent is not the exclusive right of the patent owner to make, use, offer for sale, sell, or import the invention or products made by using a patented process; rather it is the right to exclude others from doing so.

A patent is personal property. It can be bought, sold, given away, or licensed. It can be hoarded. The patent owner does not have to practice the invention to keep the protection afforded by the patent.

Types of Patents

Patents come in three basic varieties.

Utility patents are what we usually think of when we think of patents. The utility patent protects "?any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, ?." 35 USC 101. Utility patents protect most inventions. A utility patent usually expires 20 years from the date the patent application was filed, and it is not renewable.

Plant patents protect new plant varieties (except tubers) that can be reliably reproduced asexually and that do not occur in nature. A plant patent expires 20 years from the date the patent application was filed, and it is not renewable.

Design patents protect ornamental designs that serve no useful function on otherwise useful devices. A design patent expires 14 years from the date the patent issues, and it is not renewable.

Why Your Business Needs to Hold At Least One Patent

Patents are valuable commodities. A small company with at least one patent (and preferably a patent portfolio) is almost automatically a more attractive investment for venture capitalists and market investors than is a company that holds no patents. Even banks have been known to take an interest in a patent or a patent portfolio as collateral on a loan. Thus, patent protection can make marketing or research and development significantly easier because funding becomes easier to access.

Patents can become a source of significant income to their owners. Licensing fees paid to patent holders for the right to use the patented technology have turned small companies, or even individuals, into major players within their industries.

Obtaining A Patent

Although the US Patent and Trademark Office (USPTO) accepts patent applications from unrepresented inventors, writing a worthwhile patent application is a skill that is honed with practice. It therefore behooves the inventor or company to hire a registered patent practitioner to develop the patent application in cooperation with the inventor. Patent prosecution (the process of developing the patent application and shepherding it through to issuance as a patent) is a specialty within the legal and scientific/engineering professions.

To obtain a patent, the inventor applies to the USPTO and pays the requisite fees to have the application examined. If the examiner agrees that the invention is novel, useful and non-obvious, and meets the standards for patentability set out in the statutes and regulations that govern patents, then a patent will issue on the invention.

The Patenting Process

When an inventor develops a novel, useful and non-obvious invention, she must reduce that invention to practice before a patent application can be submitted to the patent office. Years ago, "reduction to practice" meant building a model of the invention. Today, the patent application itself can serve as a constructive reduction to practice of the invention, so long as the application tells the reader how to make and use the invention.

Once the invention has been reduced to practice, an application is sent into the USPTO. If desired, this application can have the effect of filing a patent application in approximately 90 countries. This does not actually file the patent application for examination in all of these countries; you must eventually select the countries where you wish to have the application examined and have a patent issued. You may select to have only one country examine the application (if you file in the US, you should select the US), or any combination of all of the countries. You must pay examination fees in each country you select.

The USPTO initially examines the patent application for defects. If a part required by statute or regulation is missing, the USPTO rejects the application entirely. If a part that is needed but not required is missing, then the USPTO grants a filing date but sends the applicant a notice requiring that the defect be cured before the patent issues.

The application is then assigned to a patent examiner, who works with the applicant's representative to determine the exact metes and bounds of the invention. This process is time-consuming, often taking several years to complete. When the examiner is satisfied that the patent application claims the invention properly and the invention is patentable, a patent will issue upon payment of issue fees and correction of any outstanding defects.

Patent Considerations

The following is a list of some of the more common problems with obtaining a patent on an otherwise patentable invention. This list is not all-inclusive.

A patent cannot issue in the US if the invention was patented or published in any country, or in public use or on sale in the US, more than one year before the filing date in the US. Ideally, you should therefore submit a patent application to the USPTO before publishing the invention in any country (including on the internet) or putting the invention on public use or sale in the US.

A patent cannot issue in the US if you file for a foreign patent or inventor's certificate more than 12 months before you file your US patent application. If you file a patent application in a foreign country and wish protection in the US, you must file the US application within 12 months of the foreign application.

You cannot file for a patent on an invention that you did not make yourself. That invention may be patentable, but it is patentable to the inventor or inventors only.

You cannot file for a patent once you have publicly abandoned the invention. If you publish that you dedicate your invention to the public, it is no longer patentable.

Most inventions dealing with atomic or nuclear reactions are not patentable.

You should consult a registered patent practitioner with any questions about the patentability of your invention and to see the invention through the patenting process.

You can find more information about patents at www.USPTO.gov.

Disclaimer 1: This article is based on United States law. It makes no pretense to be accurate for any other country.

Disclaimer 2: Nothing in this article creates or is intended to create an attorney-client relationship between any reader and the author http://www.ipattorneyfirm.com.

Do You Need Your Business Name Trademarked

 

Do You Need Your Business Name Trademarked November 2001
By Bob Brolhorst

A name is important to a business. It's so important, in fact, that names can
be trademarked, which means they're owned. Kind of like domain names, once
it's used it's gone. But you can't trademark a person's name if it doesn't
belong to you. I could not trademark Jay Leno no matter how hard I'd want
to try.

You apply for a trademark through the Department of Commerce. You can
either do it yourself or hire an attorney. I did it myself to save money. Once
the application goes in, you can use "tm" after the slogan or name to indicate
you lay claim to it. It takes up to one year to get permission and the
certificate from the Department of Commerce, although their goal is to
shorten that to a matter of 4-6 months, but it was worth every penny of
investment.

To own a name or a slogan, to make it truly yours, to gain the recognition that
marketing that slogan can give you, trademark it and protect it. Every seven
years, renew it.

Yes, trademarks are necessary, because it gives you an identity, a goal, and a
source of pride toward what you took your time and money to protect your
business.

What can happen if you don't trademark your business name? You could be
given a court order to reliquish part or all of your profits from a product
that you sell. How is this possible?

Let's say for an example that you use a business name that has been
trade marked by another company. By law, if this other business owner
finds out that you are selling products under her/his business name and
you are taken to court a judge can rule that you give up all your profits
to the business owner that has the business name trademarked.

Bob Brolhorst
Wave 5 Marketing
bbrolhorst@wave5marketing.com
http://www.wave5marketing.com