Q:       I have a great idea for a new product. Should I get a patent?

A:        Not necessarily. Very few inventions ever make it to the marketplace, and although getting a patent can provide valuable protection for a successful invention, it does not increase your chances for commercial success.

Q:       I saw a great ad about a company that promotes new inventions. What should I know before hiring this company to help me?

A:        Numerous television, radio, Internet, newspaper and magazine ads offer free information to inventors about how to patent and market their inventions. Generally, these ads come from invention promotion companies.

            Before hiring an invention promotion company, make sure it is a reputable firm. Be wary of the following claims, offers and demands:

·                claims of special connections to manufacturers that are interested in your ideas, since such “contacts” may be imposters posing as legitimate manufacturers;

·                the offer of market research or an initial “review” of your invention, which may involve substantial fees for a glowing, but fraudulent report on the merit or market potential of the invention;

·                the offer of a contract in exchange for helping you market or license the invention to manufactures;

·                demands for advance fees.

Q:       How can I protect myself against unscrupulous firms?

A:        The American Inventors Protection Act of 1999 gives you certain rights regarding invention promoters. Before offering you a contract, the promoter must disclose in writing the following information about its business during the last five years:

·                how many inventions it has evaluated;

·                how many positive and negative reviews the promoter gave these inventions;

·                how many customers received a net profit from the promoter’s services; and

·                how many customers have succeeded in licensing their inventions as a result of the promoter’s service.

           This information is designed to help protect the inventor and to aid those assistance companies that do, in fact, provide valuable services to inventors.

Q:       What else can I do?     

A:        Ask the promoter or firm for names of previous clients so you can decide who to call for references, but beware of imposters. Contact the Better Business Bureau, the Federal Trade Commission or the United States Patent and Trademark Office (USPTO) to determine if any complaints have been registered against the promoter. However, many unscrupulous firms change their names after the public is made aware of their activities, so exercise caution when dealing with any unknown promoter.

Q:       Does the USPTO investigate complaints about these unscrupulous promoters?

A:        No. The United States Patent and Trademark Office does not investigate complaints or participate in any legal proceedings against invention promoters, but the USPTO will:

·                accept complaints filed against invention promoters or firms;

·                forward those complaints to the invention promoter or firm; and

·                make the complaints and responses publicly available.

For more information on how to make a complaint, go to www.uspto.gov.

Q:       Where can I find inventor resources and patent assistance?

A:        The USPTO offers information on patents and trademarks (call 1-800-PTO-9199 or visit www.uspto.gov). Other good free sources of information include the Federal Trade Commission (www.ftc.gov) and the National Congress of Inventors Organizations (www.inventionconvention.com/ncio). You can also get information about local support groups for inventors through the United Inventors Association (www.uiausa.org).

            In addition, you can contact a law firm that specializes in intellectual property matters. Most patent attorneys will provide an initial consultation for a small fee, and sometimes for free. If you do not know of an intellectual property attorney, ask your personal attorney for a referral or contact your local bar association for a listing of local patent attorneys. A skilled patent attorney can assist you in obtaining the most legal protections available under the law, and can offer advice on invention development. 

This “Law You Can Use” column was provided by the Ohio State Bar Association. It was prepared by Brice Recker, a Columbus attorney associated with Okuley Smith LLC, and John Okuley, PhD, a registered patent attorney with the U.S. Patent and Trademark Office and managing partner of Okuley Smith LLC. Articles appearing in this column are intended to provide broad, general information about the law. Before applying this information to a specific legal problem, readers are urged to seek advice from an attorney.

Q:       I got a threatening letter from an attorney’s office claiming my business violated someone else’s patent. Should I be concerned?

A:        Yes. Your letter may have come from a “non-practicing entity” (sometimes called a “patent troll”). Such a person or company attempts to collect licensing fees for patent violations, but does not actually manufacture products or supply services based on the patents in question. Patent law does not differentiate between non-practicing entities and companies that produce actual products or services.   The patent infringement case is still conducted as any other lawsuit in federal court, and the cost of defending such a lawsuit may cost several thousand dollars or more. If a “patent troll” brings a suit against your company, you will have to hire an attorney well versed in intellectual property law to advise you about your options and to respond properly to the lawsuit. The letter may also be from a firm or a company that actually utilizes the patent. In either case, you should contact an attorney with patent defense experience.

Q:       What, exactly, is patent infringement?
A:        The United States Patent and Trademark Office ( USPTO) grants patents to give patent owners the right to exclude others from making, using, offering to sell or selling a patented invention (or a product made by the patented process) within the United States or from importing it into the United States. You might be “infringing” on a patent owned by someone else if you make, use, offer to sell or sell that patented invention (or a product derived from the patented process) before the term of the patent expires, unless you have received permission from the patent holder and/or provide compensation.

Q:       How might my company infringe someone’s patent?

A:        If your company markets, as its own, a product or method that includes each and every element or method step used in a patented product or method, then your company has literally infringed someone else’s patent rights. But, if there is even one element or method step that does not match the patented product or method, then you have not literally infringed that patent.

However, there is another way your company might be found guilty of patent infringement. Even though your product (or method) may not exactly match that of the patent-holder, there is a “doctrine of equivalents” in the law. This doctrine that says you still may be infringing if you have an “equivalent” for every element of the patented product or method that doesn’t exactly match. 

            The jury will ultimately decide if the patent claims are valid, and your company must prove that these claims are invalid “by clear and convincing evidence,” meaning that the evidence shows it is highly probable that the patent claims are invalid.

Q:       What happens if my small business is sued for infringing a patent?

A:        If that happens, a court can order you to stop infringing the patent, and may order you to pay an amount of money in damages. Because such a lawsuit can be significant enough to threaten your business, it is important to consult with a qualified patent attorney.

Q:       How would a patent holder prove infringement?

A:        The patent holder must bring a legal action and:

• show proof of patent ownership, usually by providing the patent registration certificate from the USPTO;
• prove that someone has imported, made, used, sold or offered to sell the patent holder’s invention or a product derived from the patented process;
• prove that this infringement harmed the patent holder (by depriving the patent holder of revenue, for example).

                 
            However, a “non-practicing entity” or “patent troll” that does not actually produce a product or service, but still owns a legitimate patent for the product or service, also may bring a lawsuit against you.  The “troll” might have purchased the patents from the original inventor or may even have invented the product or service, even if it is not currently being produced or used.  The law does not discriminate against patent owners that have yet to produce a product; it is expected that production of a product or service may be limited or even non-existent for some time after it is patented. Some companies simply aggregate all types of patents, intending to sue parties that might be prone to settle quickly. 

            While the law is designed to protect the innovator (who might have limited funds), the non-practicing entity can be viewed as unfairly exploiting the law.  Also, because litigation in the area of patents and trademarks is extremely expensive, defendants are often inclined settle rather than take on the massive cost of a lawsuit.

The Ohio State Bar Association (OSBA) provided this “Law You Can Use” column. Columbus attorney Brice Recker of Okuley Smith LLC prepared it. The column offers general information about the law. Seek an attorney’s advice before applying this information to a legal problem.