Need some PATENT advice - anyone?

Bassamatic · #1 10-05-2011, 09:28 AM

I have a client that has invented a new sound processor technology. He has no money, even to pursue a Provisional Patent. He wants to build 2-3 of the gadgets and rent them out to the studios to use during mixdowns to earn the money to start the Patent procedure.

Question - I know that you cannot apply for a Patent on something that has been offered for sale. Does this also hold if he rents the product out, thereby still maintaining ownership?

Thanks!!!

KenHR · #2 10-05-2011, 09:39 AM

My fiance is a legal asst for a patent law firm. I sent her the Q, if she can get an answer from one of the attorneys I'll post here...

warnergt · #3 10-05-2011, 09:44 AM

Once an idea/process/etc. has been disclosed publicly, you have
one year to file for a patent. If you have your customers sign
non-disclosure agreements, you can extend that period as
the item has still not been disclosed publicly.

fdeck · #4 10-05-2011, 06:26 PM

I'm not a patent lawyer, but I've got roughly a dozen patents, and have faced the same dilemma about disclosing to a customer. I've been advised to do as warnergt says, and get a non-disclosure in place. It's not 100% without pitfalls, and you may need to get some legal help drafting the agreement.

But it's worth considering what you will get from a patent: The right to defend your patent against infringers. This can be difficult if your technology is hidden in a product, e.g., buried in a digital processing algorithm. OTOH a patent can have value for other reasons, such as helping an investor assess the value of your business.

Bassamatic · #5 10-05-2011, 07:37 PM

Thanks guys for your help. What he has is a new technology that needs to be licensable to be really successful. If he was just making a new product it is not so critical, but for someone to buy a license to incorporate his process in their own products the technology must be protected.

I am not concerned about him showing and demonstrating it. My concern is that he may become unpatentable by offering his units for rental before applying for a Patent.

fdeck · #6 10-05-2011, 07:59 PM

That's cool. I hope his idea is a winner!

Chebass88 · #7 10-05-2011, 08:08 PM

A couple of questions to consider:

What are the rates of your local patent attorneys? Can you afford a couple of hours of counsel?

Is it a novel invention? Have you performed a search & if so, how thorough was your search? A patent attorney might be able to help you with a significantly deeper search. Just a thought...

How does the business case look for this product, i.e., if patented, how likely is someone to license it? If it has a good cash flow, it might make sense to borrow the money to patent it, knowing you can eventually recoup it. ***Note - this is an off-the-cuff suggestion - I don't know the marketability of said product, the credit of the inventor, or even his salesmanship, etc.***

Bassamatic · #8 10-06-2011, 08:56 AM

Thanks for the suggestions, However,

I do product development and manufacturing for a living and have a couple of patents of my own, so I am familiar with the process. I should have made that clear in the beginning. I have already done an pretty thorough Patent search, and have yet to find anything close. I don't doubt it is very marketable, IF it can be Patented.

YES- getting an investor is a great idea. But is is always the chicken and egg issue - no money without Patent, no Patent without money. Lenders are always EXTREMELY conservative, especially in this economy. For someone to put up the $5-30,000 to go through the Patent process with no guarantee, they will want a hefty part of the proceeds. Venture Capital would want to own the technology and also doesn't make small loans - and it would still have to be proven that it is Patentable.

It is really hard for a poor engineer to make money, and the new Patent laws are going to make it much harder. This was not a good thing as they favor big business, like most of the legislation in this country.

runmikeyrun · #9 10-06-2011, 09:20 AM

I've often wondered about this. I have an idea for the seat belts used on ambulance cots. I'm not sure how to do things- should I make a drawing up? I don't have any programs like autocad. Should I make a prototype? I could probably go to the junkyard and get the parts. Idk what you need to actually get the patent. Maybe I should talk to a patent attorney as well.

Bassamatic · #10 10-06-2011, 11:35 AM

Go to Google Patents and spend a couple of days looking for something similar to yours. Use very broad and then very specific search terms. As you start looking, it will be come obvious how such devices are described. Each Patent will cite previous Patents - be sure to look at all of those as well, down at least 3 layers.

If you find nothing like yours, you may consider filing a "provisional Patent" that allows you a year to find financing and file the real Patent. If you get it, the date of protection goes back to the date you files the Provisional. Bear in mind that nothing can be changed from the Provisional. They are cheap and easy to do, but it would probably be a good idea to spend at least a couple of hours with an attorney if you really believe that your idea is marketable.

Your idea needs to be truly unique to be successful. If it is merely an improvement to an existing system, the Patent office calls this "obvious to those skilled in the art", in other words, anyone working with that type of product could easily come up with a similar improvement.

I usually advise clients to sell off or license their ideas rather than to try to make and market and sell the item themselves. Bear in mind that our bright ideas are never worth as much as we think they are - the hard work is in the development, marketing, promotion and sales of an item. An expected royalty may be only 2-5% of the gross profit of an item.

Good Luck!!

runmikeyrun · #11 10-06-2011, 02:10 PM

Thanks Bass I'm going to check it out!

runmikeyrun · #12 10-06-2011, 06:40 PM

Searched google patents... Someone already patented my idea

fdeck · #13 10-06-2011, 06:47 PM

Quote:

Originally Posted by runmikeyrun

Searched google patents... Someone already patented my idea

On the bright side, you just saved yourself a lot of money.

fdeck · #14 10-06-2011, 06:48 PM

Quote:

Originally Posted by Bassamatic

... the new Patent laws are going to make it much harder...

How so? The new laws will be more like the European laws.

Bassamatic · #15 10-06-2011, 09:07 PM

The new laws say that the one that gets the Patent is the first one to file, NOT the first one to invent the item. This totally benefits the big corporations with their deep pockets and in-house staffs of lawyers. Little guys will have much less chance to compete, like my friend that cannot afford the Patent process at this time.

Bassamatic · #16 10-06-2011, 09:08 PM

Quote:

Originally Posted by runmikeyrun

Searched google patents... Someone already patented my idea

Well -

1. It shows that you had a good idea - so keep at it!

2. There are a lot of smart people out there!

(and you saved a lot of money)

seventhson · #17 10-06-2011, 10:42 PM

A provisional filing only costs like $150(?)...he can't afford that?

L-A · #18 10-07-2011, 05:28 AM

Building two or three of his new, unique sound processors would cost less than a provisional? I doubt that makes sense.

fdeck · #19 10-07-2011, 06:25 AM

Quote:

Originally Posted by seventhson

A provisional filing only costs like $150(?)...he can't afford that?

Plus the lawyer's fee for drafting it.

fdeck · #20 10-07-2011, 06:29 AM

Quote:

Originally Posted by Bassamatic

The new laws say that the one that gets the Patent is the first one to file, NOT the first one to invent the item. This totally benefits the big corporations with their deep pockets and in-house staffs of lawyers. Little guys will have much less chance to compete, like my friend that cannot afford the Patent process at this time.

Thanks. That's interesting. I have to admit that I work for a corporation, so I had not thought about it from the standpoint of the little guy.