Thursday, March 29, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 4


Question: Can I get a patent on my idea or invention?

We have observed over the years that many people think that in order to receive a patent a person must invent something earthshaking or of great significance. The truth is that merit, potential and/or groundbreaking significance have nothing to do with obtaining a patent for an invention. The United States Patent Office makes no judgments as to the merit or potential value of your invention. Rather, they look to see that an invention satisfies three basic requirements: (1) utility; (2) novelty; and (3) nonobviousness.

Utility is by far the simplest requirement to satisfy requiring only that the invention serve a utilitarian purpose. In other words, the invention must be useful. Most inventions easily satisfy the utility requirement. Some types of creations excluded from patentability for lacking utility include: creative works, such as music, literature and sculpture; scientific or mathematical algorithms, which are considered to be discovered rather than invented; and purely mental processes, which can be performed solely in one’s mind.

Novelty merely requires that someone else did not invent your invention and disclose it to the public before you. In general, a patent search combined with a patentability opinion is very effective in determining whether an invention is novel. If your attorney believes that your invention isn’t novel, he/she will usually recommend that you do not file a patent application.

Nonobviousness simply requires that the invention not be obvious in light of prior art to someone of ordinary skill in the art in which the invention is to be practiced. Obviousness or the lack thereof is very difficult to objectively judge. Not surprisingly, nonobviousness is the most common hindrance to having the claims in a patent application allowed. Further, it represents the greatest source of disagreement between patent attorneys and the patent examiners in the patent office. An examiner will contend that a claim is obvious, the attorney will respond with a legal argument why it is not, and this may go on and on until one side gives up. Mind you, arguing with the examiner costs money in terms of (i) having your attorney draft office action responses and (ii) continuing the prosecution of the invention. Many attorneys will try to reach an accord with an examiner in a telephone interview after the second and typically final office action has been presented. We will, however, almost always recommend a telephone interview being conducted after the first office action

An obviousness rejection by a patent examiner usually takes the form of two or more prior art references (typically issued patents) that when combined teach all of the elements in one or more of the patent application's claims. Often, however, the attorney can successfully argue that the combination of the references is not proper even if the two references contain all the elements of the claim. In order to combine references, the examiner must demonstrate that the two references pertain to the same field of art as the subject invention and that there is a motivation to combine the references. Interpreting these legal standards and applying them to the facts of a particular patent application and rejection are not easy and are best left up to a qualified patent attorney. Suffice it to say, just because you think an invention may be obvious does not mean that the invention is obvious in terms of the requirements for patentability. Obviousness as viewed by you is probably based on your common sense and life experiences while obviousness relating to patentability is based on statute and case law. In our experience, the legal standard of obviousness is much narrower than one would imagine and accordingly, can often be argued around to obtain a patent.


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Tuesday, March 27, 2007

A Denver Colorado Trademark Attorney Answers Your Frequently Asked Questions: Part II

So last time we discussed common law trademarks so now its time to turn our attention to registered trademarks.

Q: if trademark rights aren't created by registration, what does it mean to have a federally registered trademark?

A: The second broad class of trademarks is known as “registered trademarks.” Trademarks can be registered at the state or federal level. In general, the benefits of registering a trademark with a particular state will be confined to the state of registration. If a company solely does business in one state, this may be an attractive option. However, it should be noted that a state registration would not prevent someone from registering or using the trademark in a different state. For companies or individuals that are involved in interstate commerce (business between two or more states) federal registration may be available. Federal registration of trademarks provides certain advantages over common law trademarks. First and foremost, the protection has a nationwide scope regardless if you are selling in a defined geographic area or not. For example, if I am selling my goods in Colorado and Wyoming, I would be eligible for a federal trademark. If after I obtain a federally registered trademark and someone starts selling the same or similar goods using the same or similar trademark in Florida – I can prevent them from using the trademark and potentially sue for damages. This is true even if I am not selling my goods in Florida. This benefit is HUGE for small companies and startups. Secondly, a federally registered trademark carries certain presumptions. The first presumption is that the trademark rises to the level of a trademark. While a defendant can always challenge the presumption, the burden is placed on the defendant to show that the mark does not rise to the level of a trademark. Additionally, five years after the registration date, a federally registered trademark is eligible to become incontestable. This means that a defendant cannot challenge the presumption that the mark rises to the level of a trademark. The second presumption is that the registrant is entitled to use the trademark. Federally registered trademarks are also eligible for certain heightened damages including three times the defendant’s profits derived from using an infringing trademark for willful infringement and potentially attorney’s fees if the infringement is determined to be malicious.


Thursday, March 22, 2007

Pull My Finger!

As stated in the Patently-O blog, a couple days ago, the 7th Circuit in JCW Investments v. Novelty, Inc., held that the copyright on the novelty item "Pull My Finger Fred" was infringed by the novelty item "Fartman". The two items are similar dolls of balding middle-aged men sitting in a recliner while wearing a white tank-top & blue pants, where the doll emits a farting noise and a phrase when the finger of either doll is pulled. This case highlights when a person may want to obtain both patent and copyright protection for thier invention.

Generally speaking, a person wants to obtain a patent on how an item works. Here, assuming that a patent search showed that there was reasonable coverage available for such an item, that would include filing a patent application on a doll which emits a bodily function noise when an appendage is pulled, or something to that effect. As stated on the FAQ portion of our website (, a copyright is available on an article of manufacture whose nonfunctional portion can be seaprated from the function elements of the article. Since Pull My Finger Fred is essentially a "sculpture" that performs a function, the sulpture portion could be copyrighted.

Why does this matter? Because the patent portion of such a device would be broader than the copyright. Although the court held that the copyright on Pull My Finger Fred was infringed, the cort also said that a figurine having "a blond mullet and wear[ing] flannel, [with] a nose that is drawn on rather tha protruding substantially from the rest of the head, [] standing rather than ensconced in an armchair, and be wearing shorts rather than blue pants" would not infringe the copyright, even if the figurine farted when his figure was pulled. However, such an embodiment WOULD likely infringe the patent described above because the patent would protect the concept of a farting doll, whereas the copyright just protects how the doll looks.

We get a fair amount of ptential clients who come into our office asking why they need a patent on their invention instead of a copyright or a design patent. This case shows why - you can win on a copyright infringement claim, but as stated by the 7th Circuit, only when nearly an exact replica is created. If you want to protect your unique concept, be it a fart-doll or otherwise, your best bet is to go with a patent.


Wednesday, March 21, 2007

Denver Colorado Patent Attorney Answers FAQs: Part 3


Question: What is a Patent?

Simply, a patent is a personal property right granted by a government that gives the owner an exclusive right to prevent others from making, using or selling a claimed invention for a certain period of time. In the United States, the term of a utility patent grant is 20 years from the date of filing a patent application and the term of a design patent is 14 years from the date of the design patent grant.

Of particular note, a patent does not convey to the holder the right to make, use or sell their invention. Rather it only prevents others from making, using or selling the invention. In certain circumstances a patent owner may be prevented from making, using or selling his/her invention because the invention is also covered by another patent owned by someone else.

For example, let’s assume you invented a pencil with an eraser on it, and no one else had ever put an eraser on top of a pencil. You apply for and receive a patent. Now, nobody can make your pencil with an eraser without your OK. But let’s also assume the pencil was invented a few years before and another inventor owns the patent on the pencil. Your pencil has all the features of the other inventor’s pencil except you have added the eraser. Unfortunately, your pencil reads on his patent and you must get permission from him before you can make your pencil. In the real world of business, you would probably approach the other inventor and reach some sort of agreement so that you can have your pencil produced and sold. Perhaps, you would have to license his pencil patent and give him a percentage of the revenues generated from the sale of your pencil with an eraser.

In reality, more often than not, no one else will hold a patent that prevents you from producing your invention, but the prudent inventor is wise to have his/her patent attorney review the patent references identified in a patent search to not only determine whether your invention is patentable, but also whether your invention will likely infringe another’s patent if it is made, used or sold. While both patent attorneys and patent agents can legally provide advice on whether a particular patent is patentable, only attorneys, preferably patent attorneys, can provide advice about whether your invention might infringe another patent. Stay tuned to this series for more about the distinctions between patent agents and patent attorneys.

Till next time.....


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Monday, March 19, 2007

Denver Colorado Patent Attorney Answers FAQs: Part 2


Question: What are the chances that I will make money from my invention?

We have absolutely no idea! Your invention could be incredibly valuable to the particular market segment to which it pertains or it could be a dud. You are in a better position to evaluate that than us. Sometimes timing and luck play a significant role in bringing an invention to market. And then of course there is your commitment to the invention. Are you willing to spend the time required to promote your invention? Are you willing to spend the money necessary to pursue your invention to its logical conclusion?

One thing is very certain; your chances of success are lowest if you do not protect your invention with a well-drafted patent. In fact, your chances at licensing your invention without a patent are essentially zero (of course, there are always rare exceptions). The decision to patent your invention should not be entered into lightly, but if you are willing to devote the time, the money, the energy and the perseverance necessary to pursue your invention, the rewards can be huge, and not just in terms of money but in terms of accomplishment.

One of our attorneys (Kurt Leyendecker) invented a product, formed a company to produce and market that product, and lived through the failure of the company. However, he does not regret having taken the chance. In fact despite the outcome, he claims to learned so much from the experience that it has made him a better businessperson and lawyer today. He feels his entrepreneurial experiences allows him to better assist the Firm’s clients in their ventures.

In our opinion, the two most important factors to the success of an invention are (1) a novel and good idea for an innovative product or process, and (2) a high degree of commitment by the inventor. Everything else pales in comparison. And we would even be so bold as to say a very high level of commitment can even turn an idea that perhaps isn’t so great into a successful product or process. So if you have the will, the desire and the fortitude to see the process of bringing a new product to market through, than your ultimate chances of success increase significantly. The actual invention of a new or improved product or process plays a very small part in a product’s ultimate success.

Obtaining a patent for your invention also plays a crucial part in the process of bringing your invention to market, especially if your goal is to license it to others. Most large corporations will not even look at your invention unless you have at least applied for a patent.

If you are going to produce and market your invention, a patent is not an absolute necessity. However, if your product is successful, watch out because a well-heeled competitor may copy your product and cannibalize your market share, and there will be nothing you can do about it.

To summarize, you are the key to the success of your invention. If you have a good idea along with the will and the persistence to pursue your invention, your chances of success, although not guaranteed are much improved over the typical independent inventor. Obtaining a patent for your invention is your price of admission and the first step on the road to success.

See my previous post for the answer to the first question: Who can I tell about my idea/invention, and what precautions should I take?

Bookmark this Blog or better yet sign up for either an RSS or email feed (both at the right) to receive all the posts in this series. Next up: What is a Patent? Also, we have another set of FAQ posts running concerning Trademarks. You may want to check those out as well.


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Saturday, March 17, 2007

Updated InventHelp Success Numbers

This is direct from the InventHelp Website:

"From 2004-2006, we signed Submission Agreements with 6,269 clients. As a result of our services, 108 clients have received license agreements for their products, and 15 clients have received more money than they paid us for these services."


Not much different from the numbers reported for 2003-2005 in my previous blog post that you can read HERE (second article).

To restate Invent Helps numbers:

Only 1 in every about every 418 clients actually made more money from their inventions than they spent with InventHelp: a whopping 0.24%.

Draw you own conclusions...

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Friday, March 16, 2007

Colorado Trademark Attorney Answers Frequently Asked Questions: Part 1

Q: Do I have to have a federal trademark registration to have rights in a trademark?

A: This one we get asked a bunch. In fact, if I had a dollar for every time I was asked this question . . . well needless to say I probably wouldn’t be sitting here doing this blog post.

Contrary to popular belief, trademark rights do not arise through the actual registration of the trademarks. Trademark rights arise through an individual's or company's use of the trademark to identify their goods or services in commerce. The rights that arise though this use are referred to as common law rights. Common law rights have certain characteristics. First, the rights extend only to the geographic area that they are being used. Therefore, two people could be using the exact same trademark for the exact same goods and if the territories in which they are offering their goods or services do not over-lap, each person has a right to use the trademark and cannot prevent the other from using it. Secondly, common law trademarks do not carry any presumptions with them at trial. This means that no matter how long you have been using the trademark you will have to prove 1) that the identifier rises to the level of being a trademark and is not merely a generic term or a term that is merely descriptive of the good or service that it identifies, 2) that you are entitled to use the trademark and 3) that the defendant is using the trademark in the same geographic area. Additionally, you will need to prove that the defendant had knowledge that you considered the identifier a trademark (which can usually be satisfied by using the TM symbol with your mark). Lastly, you will have to prove your actual damages with a good degree of certainty. Often times this is a difficult and laborious proposition. If two people in the same geographic area are using the mark and neither has registered it, the individual or company that has the earliest first use date will have the rights to use the mark – the other is well, absent any other circumstances out of luck.

Although you don’t have to have a federal trademark registration to have rights in a mark, federal registrations do confer some extra added benefits that can be hugely valuable to your business – we will talk about those benefits in a future post.


Thursday, March 15, 2007

Denver, Colorado Patent Attorney Answers FAQs: Part 1 in a series


We are in the process of redesigning our web site to add more content and make it more useful to potential clients. We have beefed up the patent section and added a substantial amount of new content to the business, trademark, copyright and other sections. The new site will truly be one of the most comprehensive law firm sites on the web. We are very excited about its launch in the next month or so.

Anyhow, we thought we would make some of the FAQs that will appear on the website available now on the Blog in several new blog series. This is the first installment in the Patent series. Enjoy, and please leave comments or follow up questions,

1. Who can I tell about my idea/invention, and what precautions should I take?

Loose lips sink ships. Or applied to inventions, disclose and lose your patent rights! OK, not immediately, BUT if you do not get a patent application on file within one year of a public disclosure or offer for sale, you have just dedicated your invention to the public meaning anyone can make it, anyone can sell it and anyone can use it and you cant stop them. This one year grace period applies only to the United States and select few other countries. In most other countries, you lose the right to patent the invention the minute you make a public disclosure. Luckily, the filing of a U.S. application will preserve your right to foreign file for one year provided the filing is made before a public disclosure or offer for sale.

Accordingly, it behooves an inventor to avoid making a public disclosure for as long as possible. Luckily, this isn’t very difficult: have anyone you disclose the invention to sign a Non-Disclosure Agreement (or NDA). We even have one that you can use right HERE. Simply, an NDA prevents a disclosure to a third party from being a public disclosure meaning the one year clock DOES NOT start ticking and your rights to file for foreign patent protection are preserved. So if you want to talk with a machinist about making a prototype, have him sign an NDA. If you want to talk to an injection molder about the cost of producing your invention, have him sign an NDA. If you want to talk with marketing specialists about whether you invention is marketable, have them sign an NDA. If you want an engineer to help you design your invention, have him/her sign an NDA. If you want to tell your friends or co-workers about your invention to get their opinion, have them sign an NDA. Although a disclosure to close friends may not be a public disclosure, it is wise to play it safe. About the only people you do not need signed NDAs from are your family and your attorney.

Yes, you read that correctly, you can tell us about your invention and not jeopardize your patent rights. Attorneys have a legal duty to keep communications from clients and prospective clients confidential. IF we were to break such a confidence, we could lose our licenses and find ourselves on the wrong side of a legal malpractice lawsuit.

You must be careful, however even with a singed NDA, not to offer your invention or a product or service embodying your invention for sale because just like disclosing your invention to the public an offer for sale will start the one year clock ticking. In the case of an offer for sale, unlike a mere disclosure of your invention, an NDA WILL NOT prevent the one year clock from beginning to run.

In the end, you are always advised to seek legal consul before making any disclosure. The answer provided herein is simplified and cannot take into account the various particulars of your situation. Accordingly, extreme caution should be exercised before making any disclosure whether under an NDA or not. Remember to play it safe you may want to get a patent application on file prior to any public disclosure or offer for sale. We do realize, however, that this may not be practical for all inventors in all situations, SO it bears repeating, get advice from a qualified patent attorney as soon as is reasonably possible.

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Sunday, March 11, 2007

LegalZoom: Bill O'Reilly Spinning In The No Spin Zone

I was driving home the other day when who do you think I heard shilling for LegalZoom: no other than Bill O'Reilly. I guess I shouldn't be surprised. LegalZoom does have a HUGE advertising budget and they use radio as one of their primary advertising mediums. I believe I have heard Denver's own Peter Boyles also personally advertises for Legal Zoom as well. BUT for Bill O'Reilly to shill for them, the self-anointed straight talker, seriously damages his credibility in my book.

Yeah, Bill will tell it to you straight without the spin UNLESS he is paid to spin then he will spin, spin, spin like a top! And LegalZoom is probably the most egregious purveyor of spin out there. Hey, that is not surprising, lawyers are some of the best spinners. Yes, Legal Zoom was founded by lawyers and they trumpet that fact, BUT lawyers do not work with Legal Zoom clients. See LegalZoom's own disclaimer statement: "LegalZoom is not a law firm, and the employees of LegalZoom are not acting as your attorney. LegalZoom does not practice law and does not give legal advice." No, the founding attorney owners of the zoom are just sitting back and taking your money without any of the heavy lifting.

Consider Robert Shapiro, part of the legal team that spun the events concerning Nicole Simpson's murder to gain a not guilty verdict for O.J. Simpson, he probably woke up one day and said to himself something like, "hmm, if I can convince a jury, despite a wealth of evidence to the contrary, that OJ didn't do, imagine what I could do with the American Public". And a Master Spin Machine was born. Actually, I suspect the idea for Legal Zoom didn't come from Shapiro but another founding attorney who brought in Shapiro because of his national notoriety.
So where is the spin? Well, let me lay it out for you as simply as possible. For any one of their legal document services, LegalZoom prominently tells you on their website how much you are going to save over using an attorney. For instance with preparing and filing a trademark, the Zoom will charge you $489 ($159 for their services and $325 for the Trademark Office filing fee) saving you $1285 over using an attorney according to them. And, of course, if you want a comprehensive trademark search that will add another $299 for a grand total of $788 saving you all told a whopping $2354 over using an attorney to perform the same process. Sounds good, right?
So here is the spin: First, the amount saved over going to an attorney is highly exaggerated. I don't doubt that many large national firms charge the amounts listed by LegalZoom for trademark services, BUT the individual entrepreneur who is the Zoom's customer is not likely to use a large national law firm but rather a sole practitioner or a small firm, like ours. Small firms rarely charge anything close to $3142 to search and file a trademark. Case in point, our standard fee for a trademark clearance search and the filing of a trademark application in a single international classification is $1250 including the filing fee. Still more than Legal Zoom's $788, but with us you get a boatload of LEGAL ADVICE.
Are you getting dizzy yet?
This brings me to Legal Zoom's second spin: they are comparing rotten tomatoes to ripe juicy apples. LegalZoom's document preparation services cannot be fairly compared to providing legal advice. Even they say in their fine print, "This website is not a substitute for the advice of an attorney." Wait, Wait, Wait! If LegalZoom's services are no substitute for an attorney than why are they comparing their pricing to that of attorneys? I will tell you why: they are spinning it. they know that only a fraction of customers are ever going to read the disclaimer and they are counting on it and they know people are going to be enticed by the huge, if not misleading, quoted savings amounts.
Hey Bill, things are looking a bit blurry over at the NO SPIN ZONE: do I see you rotating?
OK, one final spin and I will wrap up this monster post. Just take a look at this statement pulled directly from LegalZoom's Advantages web page: "Did you know that 70% of those who try to complete their own legal documents make mistakes? With LegalZoom, you can rest assured, knowing that your documents are treated with the utmost care and attention. Before completing your order, LegalZoom will review the answers you provide on the questionnaire for consistency, completeness, spelling and grammar." Sounds pretty good, right? After all, they review the answers for "consistency, completeness, spelling and grammar". Isn't that what a lawyer does when he reviews a document? Well, yes it is but we also review it for legal correctness, something the Zoom does not. We have seen a lot of Legal Zoom prepared documents in our office and guess what, nearly all have mistakes related to legal correctness. What does Legal Zoom say about all this? Let's read the LegalZoom disclaimer once again: "At no time do we review your answers for legal sufficiency".
Spin, Spin, Spin, Spin. O'Reilly, your looking a little flushed. Are your sure your OK? Maybe you want to get off this top and set things straight for the American public about LegalZoom. Or maybe not, so long as the big endorsement checks are coming in. So much for journalistic integrity!
Hey, if you want, send Bill an email telling him what you think about his endorsement of LegalZoom. Here is a handy link. And Bill if you read this and want to talk, I am always available whether privately or on the air.
To read more LegalZoom commentary see my other post, here.

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