I was right.

Way back on April 19th of this year, I wrote about the potential for patent reform occuring this year, and stating my case for why I was against it (http://www.lld-law.com/2007/04/will-patent-reform-occur-this-year.html#links). Recently, the Wall Street Journal ran a commentary article on the Patent Reform Act of 2007. Although I missed this article, I was lucky enough to see the responses the article generated in the letters to the editor section that was published in today's (8/14/07) Journal.

I'm not sure if it was my blog article which paved the way for these reponses or not (I'd like to think it was), but thier sentiments echoed much of what I wrote about in my original article 4 months ago. For instance, David P. Vandagriff, the VP of IP for Helius, Inc. (www.helius.com), an IP broadcasting company, noted how interesting it was that the medical industry, universities, and most venture capitalists are all opposed to the act, which was somthing I mentioned four months ago. Mr. Vadagriff goes on to echo what I stated in April - saying "this reform bill is the brainchild of a small group of very large computer technology companies including Microsoft, Intel, and Oracle. It is not coincidental that each of these companies has been a defendant in an antitrust suit. They rely upon market power to maintain their dominant positions and are serial patent infingers."

I don't mention this article simply to show my view is commonly held. I'm writing this blog article becuase this Act is not going away unless you, the individual inventor, the small company with great IP, or just a member of the the general public who doens't want big business to win dirty yet again, contact your representative or senator and tell him or her why you DON'T want this bill to be passed. If we don't get this bill killed, the US patent system will essentially be "run" by the biggest technology companies on the planet.

Is InventSAI breaking the law?

The post is wholly one attorney's opinion and in no way states the opinion of the firm, or attempts to establish any facts.

Today I learned that an Invention Promotion Company, InventSAI, may not be fulfilling their required duty, by law, of disclosing the profitability of companies using their services. In fact, there appears to be a question as to whether The InventSAI Network, LLC is violating not only the the letter but also the spirit of the Amercian Inventors Protection Act of 1999 (the "Act").

Under the Act, whose full text can be seen at http://www.uspto.gov/web/offices/com/speeches/s1948gb1.pdf, an invention promoter or an invention promotion firm must disclose specific information regarding their past business practices. These mandatory disclosures are required by law. Specifically, invention promotion companies are required to provide "the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter."

InventSAI states "An exact number of inventors commercializing their inventions can only be estimated because InventSAI clients are not obligated to disclose financial data. Nevertheless, based upon client feedback, of the 815 total InventSAI clients contracting for commercialization services, at least 152 have reported commercial success with hundreds of cases still active." Thier online post can be seen here: http://www.inventsai.com/AIPA.html

The law requires InventSAI to disclose "the total number of customers known... to have received a net financial profit.". It appears InventSAI is playing the ostrich game - what I don't "know", I don't have to disclose. However, I read the law differently. The law requires InventSAI to disclose "known" profitably customers. InventSAI by its own admission does not know of any net profitable customer since its customers "financial data" is not disclosed. Therefore, under my estimation, InventSAI is required, by law, to state it knows of zero profitable companies that have used its services.

Moreoever, stating that "at least 152 [customers] have reported commecial success" is misleading and potentially dishonest. If InventSAI does not know their customer's financial data, how can they know if they're commercially successful? I'd like to know what InventSAI's definition of commercial success is. Moreover, by simply providing "commercial succes" data as opposed to "net financial profit" data, InventSAI seems to simply be providing data they want to provide, instead of the data they are REQUIRED to provide, by law.

WHAT ARE THEY HIDING? I welcome a phone call from InventSAI to explain thier position and why they feel they can get around this law in this manner.

DAVISON ROCKS!!!

OK, for thos of you who don't know me by now should realize that I'm sarcastic. Hence, the title of this blog article.

Addtionally, it would be remiss of me if I failed to say sorry. I'm sorry that we've been absent from posting any recent blogs - I suppose the summer blog malaise started to seep as the temperature outisde started to push 100 degrees on a daily basis. So, although this new blog article is waaaaayyyyy overdue, in the hopes of kicking off a new blogging season with the type of article we wish we did not have to post, but feel it is our job to so do...

Once again, an invention promotion company has reared its ugly head to show us just how inept they actually are. As our blog articles on InventHelp and Advent Product Development disclosed their inability to create profit for their clients, Davison's own website (http://www.davison54.com/disclosures/disclosure.php) states the same thing. Here's what Davison tells us about themselves:

(1) 41,128 consumers signed licensing agreements and purchased research services from Davison in the last 5 years.
(2) 11,598 consumers purchsed product design services from Davison.
(3) Of these, "THE TOTAL OF CONSUMERS IN THE LAST 5 YEARS WHO MADE MORE MONEY IN ROYALTIES THAN THEY PAID, IN TOTAL, UNDER ANY AND ALL AGREEMENTS TO DAVISON, IS EIGHT(8)."

So, you have about a .0002% chance at making money with Davison if you purchase their research services. That means, that about 2 out of every 10,000 people who purchase these services with Davison make more money on their product than they spend with Davison. And if you spend the big bucks with Davison and purchase product design services your chances at makign money with them go up to a whopping .0007%. Or, about 7 out of every 10,000 people who contract Davison to help design their product make more money off of their product than they spent with Davison. So, if you're thinking of using Davison, my suggestion would be for you to play the lottery instead. They appear to have better odds: http://www.coloradolottery.com/games/scratch/featured.cfm?FeaturedGameID=101 (please note sarcasm statement at beginning of post).

Oh, and one more thing. Davison also states "THE PERCENTAGE OF DAVISON'S INCOME THAT CAME FROM ROYALTIES PAID ON LICENSES OF CONSUMERS' PRODUCTS IS .001%." This means that for every $1 Davison makes from licensing a product submitted to it, Davison is making $1000 off of the people submitting the products.

Numbers don't lie - and these are Davison's own numbers! As we suggst to our clients, do not use these companies - you are more likely to succeed if you are willing to put in the effort yourself and use reputable marketing and manufacturing organizations, while protecting yourself legally along the way. Contact Leyendecker and Lemire (www.coloradoiplaw.com) and we can steer you in the right direction.

Numbers are current as of June 30, 2007.

Business Method Patents - Are they worth it?

Good Question.

A recent article in the ABA Journal by Steve Seidenberg discusses the most recent group of business method patents to hit the PTO - tax patents. These patents cover useful, unique and nonobvious implementations of the tax law. Mr. Seidenberg's article takes on an anti-tax patent strategy theme in discussing whether tax patents in particular and legal strategy patents in general should be valid, mentioning that Congress may be changing the law to limit tax patents.

This got me thinking about business method patents ine general and whether they were worth the cost, given recent decisions by the Supreme Court. At Leyendecker & Lemire, we charge at least 25% more for business method patents, and one reason for doing so is to ensure that we take into account recent changes in the law so that your patent is as broad as legally possible, and sill retaining the likelihood your patent will issue.

The question to ask yourself is whether it's worth it for you (an individual or small company) to protect your unique way of doing business - be that providing tax services or otherwise? Well, maybe. Like other patentable areas, and likely more imprtant in the business method arena, you need to ask yourself how great your idea is as compared to what's currently being done by your competitors? Does your idea give you a competitive advantage over other persons providing similar services and products such that you will can forsee obtaining a return on your patent investment which is higher than the cost of the patent? As discussed on our new website www.coloradoiplaw.com, the answer to these questions ultimately come to whether you have the perseverence to see your idea to patent issuance and to subsequently enforce any patent that may issue. Although this process may cost more with a business method patent, the reward can be just as great or greater - allowing you to provide your unique service that no one else can provide.

If you can answer these questions positively, then you have what it takes to see your business method idea through to the end and should contact our office.

Inventhelp and Davison - the truth behind the polish

Anyone who has read this Blog knows my opinion concerning invention promotion companies: I don't like them and I believe that they offer little if any value for the amount of money they charge. And you also know some of these companies do not like me (see my Sola posts).

One of the largest players in this field is InventHelp, who can be found at www.InventHelp.com. They were formally known as the Invention Submission Corporation. You can learn more about these guys and other promotion company's at www.inventored.org. Anyhow, InventHelp has a new (at least it is new since the last time I looked) website that is very polished and inviting. In perusing it, I can across this statement pulled directly from their site:

"From 2003 to 2005, we signed submission agreements with 6,592 clients. As a result of our services, 119 clients have received license agreements for their products, and 15 clients have received more money than they paid us for these services."

See www.inventhelp.com/story-weed-thrasher.asp.

Let's do the math: Only 0.23% of all clients who paid money to InventHelp between 2003 and 2005 actually made more money than they paid into InventHelp by way of licensing agreements presumably obtained through InventHelp services: that is 1 in 439 clients. Also interesting is that another 104 signed license agreements but, at least when InventHelp reported these statistics, the licensees had made less from the licenses than they had paid InventHelp.

Truth be told: making it in the invention game is always difficult and success numbers are never going to be extremely high, BUT 0.2% is, in my humble opinion, really low. I believe I have seen surveys and statistics at various locations that indicate that anywhere from 5-10% of all patented inventions are successful (I will try to find some of these stats and publish them in the future). In reality, I believe the true figure is even a bit lower than 5-10% but I suspect it is much higher than 0.2%. One would think that using the services of an invention promotion company would actually improve the chances of an invention being successful but InventHelp's own statistics appear to indicate otherwise. I welcome a comment and response from InventHelp explaining their statistics.

And while I am on the topic, let's take a look at another player in the invention industry, Davison, who can be found on the web at www.davison54.com.

Here are their stats taken from their website current as of 10.26.2006:

"The AIPA requires the disclosure of "the total number of customers who have contracted with the invention promoter in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter." As of the date of this disclosure, the number of applicable customers for Davison is thirty six thousand nine hundred fifty four (36,954)."

They continue...

"The AIPA requires the disclosure of "the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter." Because the AIPA defines "invention promotion services" as "the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer" the company may exclude fees paid for services such as design and construction of prototypes from the expenses incurred by its customers and may report that twenty one (21) customers received a net financial profit since the company was founded in 1989. However, if design and prototype expenses are considered as part of the customer's expenses for determining net financial profit under the AIPA, the number of customers who received a net financial profit over the company's history is twelve (12)."

See http://www.davison54.com/disclosures/aipa.php. So since 1989 and the Davison's inception, 12 customers have made more than they paid to Davison. But we do not know the total number of clients since inception since the number of customers reported pertains only to the last FIVE years. However, if we for sake of discussion divide 12 by 36,954, we come up with a whooping 0.03% success rate or 1 in over 3000. And we can conclude the real number is much worse since Davison must have had a few clients from 1989 through much of 2001. Actually, Davison makes InventHelp look good. By the way, I welcome comments from Davison as well.

Why do I think the success rates for these companies are so low. Perhaps I will comment in a future post. However, as I stated above, I would really like to have someone from Davison and someone from InventHelp post explanations as comments to this post.

Will Individual Inventors Lack the Capacity to Enforce their Patents?

On August 3, 2006, Senators Orrin Hatch (R-UT) and Patrick Leahy (D-VT) introduced Senate Bill 3818, the Patent Reform Act of 2006. Although it remains to be seen what effect a Democrat-controlled House and Senate will have on the bill's progress, recent discussion has arisen regarding what effect the fee-shiting provision of the bill would have on individual inventors (see Dennis Crouch's "Patently O" patent law blog article at http://www.patentlyo.com/patent/2006/12/ipo_supports_at.html).

If passed, federal law governing the distribution of attorney's fees in a patent infringment lawsuit would change. Currently, the federal law governing attorney's fees states that a court "may" award attorney's fees, but only in "exceptional cases." The bill would change the language to requiring a court to award attorneys to the previaling party ("The court shall award, to a prevailing party, fees and otther expenses...").

Why does this matter? Well, this practice may enable deep-pocket defendants to bully indvidual inventor plaintiffs. Essentially, the argument is as follows:

Little Inventor wants to sue Big Infringer, but doesn't have the money to fund litigation. Today, a law firm may take such a case on a contingency basis (a percentage of any settlement or judgment received), financing the litigation costs out of it's own pockets. In this scenario, although Little Inventor only receives a portion of what he is actually due, with the rest going to the law firm, he is able to receive some of the compensation that Big Infringer has essentially stolen from him. Plus, simply filing a lawsuit many times increases the chances for settlement.

If Senate Bill 3818 were to pass, patent litigation firms may be less likely to represent Little Inventor on a contingency basis due to the increased risk of paying opposing counsel's fees. When Big Infringer gets sued, Big Infringer can easily run attorney's fees up in excess of $1M, (between 2 large companies battling over a patent, attorneys' fees can easily be in the $10M or even $100M+ range). $1M+ is a huge liability for a law firm to take on, especially given the unpredictability of judgments in patent infringment cases. Therefore, if passed, the new Senate bill may kill the ability for any Little Inventor to take on a Big Infringer. Result? Chalk up one more win for Corporate America.

However, all is not lost at this point. First, Senate Bill 3818 is simply that - a bill. It is not law, and with the change of committe chairs from Republican to Democrat, the direction of congressional laws may shift from a pro-corporation stance to a pro-individual inventor stance. This means the bill may be amedend prior to passage, or killed altogether before a vote is taken. Additionally, other options such as insurance have been discussed. Under this scenario, it is possible that law firms would continue to take on contingency cases under the new law, but would purchase insurance to help cover the costs of any loss where attorney's fees were required.

Given the potential windfall for a lawfirm who takes on a patent infringement suit on a contingency basis, it is likely that some firms will see the upside as too good to pass up. Let's keep our collective fingers crossed. One thing I am certain of, however, is that even though this is my first blog article as Leyendecker & Lemire's new associate, it won't be my last blog article on this subject.

Sweet & Low

In Sunday's Denver Post, Al Lewis wrote a column about Rich Cohen, the grandson of the inventor of Sweet & Low and his book about his family. The article is a book review of sorts of Cohen's book about his disfunctional family that disinherited his mother and her children. But the point of this post relates not to the topic of the article or the book but rather a particular statement made in the article.

Apparently, Benjamin Eisenstadt, Cohen's grandfather, invented the sugar packet in 1945. According to the article and the book, "Eisenstadt brought the idea to Domino Sugar, which promptly stole it." It is this quote that is the point of my article.

As best I can tell, Mr. Eisenstadt never patented the sugar packet and as such had no legal claim to the intellectual property related to the sugar packet. Simply, Domino Sugar could not have stolen his idea, because Mr. Eisenstadt did not own it. The only effective way to own the sugar packet invention would have been to patent it. Since he did not, once he disclosed it to the public he dedicated the invention to the public (the one year grace period notwithstanding). Domino Sugar could not have stolen the sugar packet. More correctly stated, Mr. Eisenstadt freely gave the invention to Domino Sugar.

The point of this post is instructive: think long and hard about approaching a company with your invention if you have not taken the proper steps to protect yourself. Learn from Mr. Eisenstadt's example. Her certainly did. He patented the formula for Sweet & Low and the result was the Sweet & Low fortune that ultimately prompted Mr. Cohen to write his tell all book. Hopefully, when you make your riches, your family will not fall apart the way Mr. Eisenstadt's family did.

American Inventor Season 1 Final Post

Well it’s all over. Congratulations to Erik Thompson, Francisco Patino, Ed Hall and the winner of the whole enchilada - Janusz Liberkowski. The host seemed to hint that there was going to be a next season. Hopefully, in the down time they will make some improvements to make it a show of more substance and potentially tap into the great learning tool the show could be for the American public. As for Janusz and the spherical safety seat we will see what happens. As previously discussed, I still have serious doubts as to whether the product will ever make it to market due to the web of government regulation and laws surrounding child safety – but I have been know to be wrong on an occasion. Maybe I will be wrong and it will be the next great American Invention.

So if you found our little blog due to your interest in American Inventor, please check out the other articles – they are packed with a lot of useful information and interesting topics. Also you can follow the links to our website where we have a ton more information on things ranging from patents, trademarks, copyrights, entertainment law and business matters. And by all means if the entrepreneurial spirit takes a hold of you – give us a call and we can help you on the legal end of things.

My Final American Inventor Post

I hate to say it but our Blog might as well be entitled the American Inventor blog. It seems that Pete and I have written about nothing else for the past two months. We have to dispense words of wisdom to our readers in our posts but nonetheless I will be glad to get back to other topics.

In some respects I feel dirty: we let ourselves be dragged into commenting on what has to be one of the worst shows on TV today: I really do not expect to to be back. Peter Jones and Simon Crowell wouldn't have even made it past the first round of "American TV Producer" if a similar show existed concerning television shows. Perhaps the problem is both of these gentlemen are not from this country and they have sorely underestimated the sophistication of the natural target audience for this show.

Instead of making a show that was both entertaining and informative they decided to pander to the low common denominators: emotion and poverty. What does it matter how good the inventor feels his/her invention is or the financial difficulties that the inventor has suffered. For one to be named the American Inventor, the quality of the invention is all that matters.

We have talked to two American Inventors as chronicled here. I will tell you that the show does not do them justice. They are much more complex, savvy and intelligent then the show makes them out to be. They actually told the contestants to play up their poor financial situations. At least one we know of was not comfortable doing so.

Anyhow, tonight is the finale and I like all four finalists. Truly the show does them a disservice. Anyhow, may the best man win!

American Inventor Heard From Again !

Lo and behold I arrived to my office yesterday morning and had a message from American Inventor Eric Thompson – the inventor of the receivers vest. From the beginning I thought he has a great combination of the inventor spirit and pure passion and confidence that it takes to win the competition.

Anyway, he was calling to encourage people to vote for him on thursday and to offer to talk about his experience thus far on the show. We were able to connect later in the day Monday and were able to speak Erik for a few minutes about his experience so far with the show and what's going on with him in general.

One of the most interesting aspects of the conversation was how much of a business sense that Erik has about him as well as a keen awareness of the other issues out there surrounding inventors and bringing a product to market. As with our discussions with Mark Martinez, it was apparent that the ABC show doesn’t really start to scratch the surface as to the real qualifications and personalities of the featured inventors. I learned that Erik has actually invented at least eight other products prior to the receivers training vest. As with Mark Martinez, the exposure has apparently been good and Erik is receiving a lot of interest in his other products. Additionally, the conversation seemed to support our theory that ABC doesn’t seem to be doing much in the way of patent searching to screen out the candidates. While, as we have previously discussed on the blog, you don’t need a patent to make and sell a product in certain circumstances, such as the case of an individual inventor, they certainly can be a valuable asset. However, with the name recognition of American Inventor and the supposed resources they will be throwing at the chosen product, they could probably do a successful first to market strategy - we'll have to stay tuned to see how it goes. More than likely, the scenario that could actually play a factor in the American Inventor contest is whether or not the product actually infringes on a patent that already exists. Erik seemed to have a good grasp of the different aspects of patenting and while he said that the decision as to whether the receiver’s vest will ultimately be patented us unknown (as is up to the show), he personally takes a strategic view and often chooses for a first to market strategy. I definitely think that the First to Market vs. Patent debate would have been a very beneficial topic for ABC to have at least minimally addressed and the pro’s and con’s of each.

The other interesting aspect seemed to be that the producers of the show are keeping the contestants in the dark about what is going on. At the time we spoke Erik had no idea what was going to happen on Thursday’s final episode. An interesting aspect of our conversation was the actual camaraderie that seemed to exist between the contestants. Erik mentioned that he really got along with Mark Martinez and Sheryl McDonald and the other people in his “team” as the shows producers called them. It was only later that the contestants found out that they were actually competing with their “team mates”.

Anyway, it was a pleasure to talk to Erik and we wish him the best of luck. He has setup a website for fan registration and a personal video message. As for any of the other contestants on the show - feel free to give us a call and we would be more than happy to discuss your experience.

How A Product That Could Win American Inventor Could Possibly Never Make It To Market.

Kurt and I were talking the other day about the American Inventor series and how we had hoped that it was going to a bit more of a “how to” or a bit more educational for inventors or at minimum illustrate the types of issues inventors should be looking at when bringing their inventions to market. The reality is that getting a working prototype is merely the beginning – there are issues of intellectual property rights (most likely patent, and trademark), there are market and pricing issues and there are other challenges such as government and/or other sanctioning body regulation. The last issue is the one that I think ultimately dooms one of the final 4 contestants and is a point that has not been brought up on the show.

If you have watched the show, you undoubtedly are familiar with Janusz Liberkowski. His invention is the Spherical Child Safety seat and was inspired by the tragic death of his daughter some 7 years ago. The invention is a personal favorite of Kurt’s and I personally think its pretty cool too – the physics behind it make sense. However, even if he wins, I do not believe that the product will ever make it to market. Why, you may ask? Quite simply it comes down to government regulation.

Automobiles safety systems and child systems in particular are regulated by a huge body of federal and state regulations. 49 CFR 571 governs child safety seats and every state has its own laws concerning the placement and use of child safety seats. The one that jumped out at me first is that the car seat positions the infant in a forward facing manner. If we take Colorado as an example, the use of child safety seats is governed by CRS 42-4-236, which states in part “if a child is less than 1 year and weighs less than 20 pounds, the child shall be properly restrained in a rear facing child restraint system.” The issue here is that Janusz’s car seat has the infant facing forward. Additionally, all of the tests that they conducted concerning the safety of the seat were conducted with the infant facing forward. I assume that the laws of the other 49 states mirror the same conventional wisdom. Mr. Janusz is in the situation that his design, while it may actually be safer than the other products on the market may actually be illegal to sell and use because the states have all codified their own laws requiring an infant to be rear facing. Therefore, he is not only going to have to persuade the public to change their views on child safety, but his is most likely going to have to change 50 state laws and potentially federal government regulations for his product to go to market and be legally used by consumers.

This situation reminded me of a popular science article I read a while back. I was able to find the article from 2002 concerning a radical new style of car seat that was designed to work in the front seat of a car equipped with air bags. The seat was designed by Xportation Safety Concepts, Inc., which also happened to be a Colorado corporation. The company’s rationale was that studies had shown that locating the infant seat in the back seat was distracting to drivers, which may actually increase the risk of an accident. Therefore, they designed a rear facing car seat that will actually work with airbags. Immediately, the product received both support and opposition concerning the concept. Some of the people who didn’t want the laws and regulations changed stated that we have been telling people that kids need to go into the back seat for so long that they didn’t now want to make exceptions to that and possibly send a “mixed message”. This shows the resistance in this area to new or revolutionary product ideas or designs. Xportation petitioned the Department of Transportation to amend the air bag warning requirements, however the National Highway Traffic Safety Administration, denied the request. Sadly it seems from the brief amount of research I did, that Xportation has faded into the sunset. Their Colorado corporate filing have lapsed, their web site is gone and I could not find a reference to them on the web any later than 2003. If anybody knows anything else about the company please let me know and I will update the article. Regardless, it is an illustration of how an invention could be revolutionary and potentially beneficial to society, but it never sees the light of day due to a variety of reasons – government red tape being one of them.

If Mr. Janusz does win the competition, he will either need to change the invention to meet current laws and safety standards, if that is even possible, or embark on a nation-wide crusade to change federal law and the laws of all 50 states. Given his deep personal commitment to the design, he may view it as the perfect way to spend his $1 million in royalties. The question is whether the show is willing to wait potentially years to go to market with the product. Only time will tell as to whether his car seat saves the world or is reduced to the long list of other products killed by the bureaucratic machine.

American Inventor - A Conversation with Mark Martinez

You will notice that I did not provide live commentary for last Thursday's episode of American Inventor. Why? Several reasons: first, I a becoming more and more disillusioned with the show. We just do not get the whole story of what is going on. In short, I have it on reliable information from and about clients of the firm that participated in the show (but never made it on the air) that there are other audition rounds and elimination rounds outside of those that were aired.

Case in point, in Denver an inventor with off-road inline skates was passed to the second round, BUT for one reason or another he never made the second round. And how about numerous contestants that won a place in the second round that were never seen again. What happened to them? There most have been secret unbroadcast elimination rounds. What was the criteria and basis for these elimination rounds? Will we ever know?

And then there is the complete failure to address anything relating to the protectability of the inventions or whether the inventions have been invented before. Peter Lemire suggested to me that perhaps the show doesn't care about patents because they know that patent or not they can produce and sell the product and make millions just based on the promotion for the winning invention. This is probably true but the reality is for the gross majority of inventors, who have not had their inventions promoted week after week on a national television show, their only chance at success against more well heeled competitors is a patent. You would think that the show would endeavor to inform and help the inventing public by giving them pointers and such on how to do things right, BUT I suspect the producers really don't care about anything but ratings maximization.

Enough ranting...

I was really glad to see the dual traction bike advance to the next round. I believe it beats the Receiver's Training pole if only because of its broader appeal. It would probably sell well in an infomercial to be later transitioned to toy stores and national retailers, such as Wal-Mart.

Anyhow, I received a call Friday. I didn't immediately realize who it was. He was talking a mile a minute and was obviously very excited. He mentioned his name was Martinez, but that did not ring any bells as I have at least one client with that surname and have had consultations with several Martinez’s. But then something he said clicked in my brain and I realized it was none other than Mark Martinez of the Sackmaster 2000.

I will not reveal specifics about he told me because I imagine that he is still under a confidentiality agreement with ABC and the show but I can say he wanted to give his side of things concerning what really happened and how he was portrayed on the show. SUFFICE IT TO SAY: everything you see on a reality show is not in fact REALITY. Things are presented certain ways through editing and only telling part of the storing that can drastically change how a person, such as Mark, appears to the TV watching public. To a large extend this appears to have happened to Mark.

Anyhow, based on my conversation Mark Martinez seems to be a good if not great guy. I have had people call me or email as a result of a blog articles I have written about them, their company or their products and just spew anger and hatred.

I might have suspected that of Mark considering how critical I have been of him in my posts. BUT Mark just wanted to give his side of the story and didn't appear to be at all angry with me. I don't know if I would have been as civil and genteel as Mark if the situation was reversed. So kudos to Mr. Martinez's high character.

I did ask Mr. Martinez how things have been going since the show, and he told me the phone is ringing off the hook. So good luck to you, Mr. Martinez. I hope to hear that you have made millions for you and your family in the coming years and that the Sackmaster 2000 has helped save lives and property as you hope it will.

The First Three Finalists LIVE COMMENTARY

Mark Martinez (sackmaster 2000): He is not going anywhere. He refuses to listen to professionals that can help redesign his invention. Short sightedness will kill an inventor. Succeeding is often knowing when to let go and lets others take your vision and remold it as necessary. He lost when he fired the Designers and spent some of the 50k on a suit. How would you feel if someone you invested in spent some of the money you gave him/her on himself or herself?

Erik Thompson (Receivers Training Device): I don't know about this products potential. I think it can sell well to a small consumer base but it probably is not the Great American Invention. Nevertheless, I really like this guy's drive and attitude bith concerning his invention and his dedication to convincing inner city kids go to college. And he doesn't whine! IF personality was the primary consideration this guy should win this round if not the whole thing. Frankly, even if he loses, there will be plenty of people willing to invest in him and his product.

Sheryl McDonald (un-brella): I like the invention but the design may need more work. Sheryl doesn't have the same drive as Erik and although her invention has greater potential than Erik's I think Erik will win this round in a squeeker.

We will see in about 25 minutes....

UPDATE: The winner is ERIK!!!! I called the first one, but I am realistic and I don't expect to go four for four. Erik won't win the million (the invention just does not have the mass appeal) but I suspect in the end nothing will keep this great competitor in like down.

American Whiner

Well after weeks of watching, I thought I should chime in on the American Inventor escapade. Additionally since I will be commenting a lot on last weeks double episode, I figured I should post it before this week’s episode airs (sorry I’ve been a bit busy this week). Sadly, I have become a bit disillusioned with the whole thing – the idea seemed really cool – but the reality has proven to be less then spectacular. As Kurt has already commented on the producers do not seem to really be concerned as to whether the “inventions” are truly novel or can be protected. While you do not need a patent to sell a product in the market place, you need one if you want to prevent competition from coming in and selling the exact same product. If I was going to pay someone a $1,000,000.00 advance on royalties, I would make damn sure that no one else was going to be able to copy the product 6 months after we go to market. In fact, the #1 watchers of American Inventor should be R&D people for major corporations – I’d be looking for ideas that we could pick off (because they are not eligible for protection, or they are not protected) and flood the market with the goods as soon as possible.

The second and possibly most annoying aspect of the show is that it has degraded into this whine fest about which contestant has the best sob story to tell. After watching the 1 minute presentations and then the personal statements I was about ready to chuck my TV out of the window! I mean come on - is this what America has degraded into – that these people believe that they should be the winner not because their invention will revolutionize the world, save lives, or make life truly better for people– but because they are penniless and all they have left is a dream?! These people don’t need to win - they need counseling – or possibly My Therapy Buddy!!! I have to tell you folks but thousands and thousands of people are in the same boat. Over 80% of all businesses fail in their first year and you can bet your house that all of those people gave it everything they had. Probably 1 in 4 of the companies I form for clients in a given year will go belly up by the end of that year. Tons of people out there put everything on the line and loose. Did anyone notice that 25% of the semifinalists were essentially destitute – one lady even brought in her last unemployment check! This pandering to the lowest common denominator is not what I expected when I first heard of the concept for the show.

The other interesting observation is that the inventors were really lousy at relaying why their product should be chosen as the best or would be the most successful in the market place. The most common answer was – “Because I believe in it”. Great, you believe in your product – so does everybody else who stood in line for hours trying to get onto the freaking show! How about providing basic market information concerning the industry your product is in – how many kids across the US play football and what is the dollar amount spent on football equipment each year, what’s the umbrella market doing these days, or on average how many women that have breast cancer actually loose their hair (and no its not all of them) and end up wearing wigs.

But I guess there is always hope. Hope that the contestants will get their acts together and stop playing the charity case, hope that the producers will give us a more in depth look at the process instead of the superficial crap we have been fed so far, and hope that America hasn’t degraded into a society that is just looking for a handout based on the best sob story. There’s always hope – but I’m not holding my breath. Call me cynical.

American Inventor - Why he shouldn't have received 50k

I am speaking of Mark Martinez, the man with the sand bag scooping apparatus. Frankly, I think his invention is one of the best of the final 12 BUT I wouldn't invest a dime in it.

Why? Simply, it isn't protected. Sure, Mr. Martinez has a patent but his patent will not prevent any serious competitor from essentially copying his invention without fear that they would lose an infringement suit.

You see, Mr Martinez's patent is a DESIGN PATENT. Design patent protect only the aesthetic aspects of an otherwise functional article. And here is the important part: when the functionality of a device merges with its aesthetics, the design patent drawn to the aesthetics is INVALID. This is precisely the case here!

So if a client came to me and asked me if he could make Mr. Martinez's invention legally without infringing the Martinez patent, I would tell him to change the look a little but not in a fashion that hinders the products functionality and he should be home free.

It is really a shame, because whether or not Mr. Martinez wins American Inventor, he would have had a significant amount of investor interest and more importantly investment following the show IF he had a good quality utility patent. Instead with no real patent protection, no serious investor will give him a dime.

Who is to blame? I wonder if his patent attorney told him about the negative aspects of design patents. Perhaps, he did, but the design patent route was chosen because of its low cost relative to a utility patent.

Please understand the following comments are not directed at Mr. Martinez's attorney: I don't know anything about him, and would not presume to draw any negative conclusions about this particular attorney.

No matter Mr. Martinez's attorney's actions, many patent attorneys improperly sell design patents as a cheap alternative to utility patents. Historically many of these patent attorneys have been associated with Invention Promotion Companies. They are more concerned with keeping the invention promotion companies happy rather than advising the client/inventor what was in the best interests of the client.

Frankly, if you ask me, attorneys and agents that don't act in the best interests of their clients by fully informing them of the limited scope of protection should be disbarred.

In the next installment, I will comment on the patent protection held by another finalist. Here is a hint: he has a utility patent but the claim protection is so narrow that designing around the device would be a piece of cake. In fact, I suspect the redesign that results from spending the 50k may not even read upon his own patent.

This Week's installment of American Inventor Commentary

The thing missing on American Inventor or at least the segments broadcast is any discussion of the patentability of the inventions. Many of the inventions that have got through to the second round are just not patentable.

And the producers of the show are not going to give a one million dollar advance on royalties to an invention that cannot be protected. Why? Because if the invention is not protectable, any number of competitors will simply copy the device potentially undercutting the manufacturer chosen by the producers.

Actually, I shouldn't be so harsh; there is a chance that an unprotectable invention can be successful. But the chances are just so much smaller than with an invention that can be protected with a strong broad patent.

The panel of judges just don't seem to get the importance of protection. Tonight a nice old lady with paper sheets was passed on to the next round. I would be shocked if the product or the method of using the product could be protected. I suspect with a few minutes or the help of my expert patent searcher I could show that a significant portion of the inventions that advanced to the next round over the last three weeks are not even novel. In other words, they were likely invented by others before the new inventors decided to appear on the show.

What the show needs is a patent attorney judge to render an opinion on the protectability of the inventions. I really expected to see one among the panel. Instead they appear to have a businessman, a couple of marketing types, and a very successfully inventor/engineer. While Doug Hall, the inventor, comes close to filling the role an attorney would fill, he isn't a patent attorney and he just doesn't approach the decision of who to pass the same way a patent attorney would.

So Simon, if you by some strange coincidence you come to read this, I am available ;>)

American Inventor Take III - the thin line

Tonight there was one inventor featured in Chicago that had spent the last 26 years working on and promoting his invention, bulletball. 26 YEARS! And the invention a sort of cross between ping pong and knock hockey just wasn't that good. 26 YEARS!! He had quit his job; ruined at least one marriage; and lost his house.

What is even sadder than this guy's story is that it is all too common. I have known inventors who have spent everything they had chasing the dream. There is a fine line between the dedication and devotion needed to make an invention successful in the marketplace and going so far that you lose sight of all other aspects of one's life.

The one thing to always keep in mind is that an invention should merely be a means for an inventor to enhance his/her life not destroy it and often when an invention gets in the way of what's really important it should often be sidelined.

If your spouse is against spending tens of thousands of dollars on an invention; the question you must ask is this invention worth ruining my marriage over? By the way, marriages fall apart over these kind of things all to often.

Some inventors spend so much on their inventions, such as Mr. Bulletball above, that they will live in virtual poverty for extremely long periods of time. Even if they eventually make it, is a few years of wealth worth the years of poverty? Remember life is finite, no inventor should put all aspects of his/her life on hold to blindly devote everything to his/her invention.

I guess this brings me to my next bit of advice: enjoy the journey. So often we look exclusively to the future and the rewards that await us then and are out of reach in the present. Inventors are, of course, famous for this always planning for and searching out the next big break. And the sad truth is that in most cases the inventions will never be successful.

I do not suggest that inventors do not plan for the future. In fact, failing to plan is a recipe for disaster. However, inventors should reveal and take great joy in the journey and the mini successes along the way. When you first conceive the invention, revel in it. When you built the first prototype sit back and congratulate yourself. When the patent application is filed, go out to dinner and celebrate. When the patent issues, throw a party. When you get in to see a representative from a major company you would like to license your invention, realize that you have made it further than most inventors in just getting the meeting.

And perhaps most importantly, know when to say its over and let it go. Also realize that with ultimate failure, the process need not be so. You will have learned so much that can be applied later in life to the next great idea. The knowledge gained from the process can far outweigh the ultimate failure. Believe me, I have been there and done that.

In the early nineties, I founded a Mountain Bike component company built around a handlebar of my unique design. Luckily, I was single at the time so that I did not have to worry about family time and family finances. In the end, everything fell apart and I walked away owning almost nothing more than the shirt on my back. Some might be inclined to think the three years I pursued this venture was ultimately wasted. But the knowledge and experience gained during those three years has made me the person I am today.

For example, many people fear starting their own businesses because of the uncertainty in contrast to a regular paycheck and because of this they never follow their dream. I have not such fear; I have been to the bottom and while not particularly fun, it wasn't as bad as fear would lead you to believe. I know more about the practical side of startup businesses and bootstrapping than your typical MBA graduate. In short, my experiences in the early nineties have helped make my practice successful today. Always keep in mind failure can be the manure from which success grows (wow what a terrible metaphor).

So to end: Chase you dream but do smartly and try to enjoy the chase along the way.

Till next time...

American Inventor Take II

Yeah, I am watching the show. After all, I am a patent attorney. Hokey show? Sure, but strangely enjoyable. Hopefully, the show will inspire those on the sidelines to create and go for their dreams. After all, many of you can do better than many of these inventions.

One moment I would like to highlight was where the engineer/inventor judge told the African American inventor that her invention already existed. She informed the judges they she spent over $12,000 on the invention with one of those companies that advertise on late night TV and have an 800 number. All she got from the experience was a book (I have seen many of these books and they are essentially worthless) and a narrow patent. The engineer inventor basically told that those companies steal from people.

While I cannot definitively say these companies steal from people, I will say they give you very little for the huge sums of money. I will reiterate do not use invention promotion companies if you truly believe in your invention. I will not name names here, but if the company advertises on late night or low budget TV or the radio avoid them. If the company uses buzz words like "we will submit your invention to industry", avoid them. If they make the whole process seem easy, avoid them.

Enough said. Good Night!

PATENT TROLLS!

The Denver Post had an article this past Sunday discussing the fearsome “patent troll” (you may want to read the article before proceeding). Apparently, a Patent Troll is anyone who (i) had a great idea, (ii) reduced the invention to practice, (iii) filed a patent application, (iv) received a valid United States Patent, and then (v) had the gall to request a giant multi-national company to pay for the right to use the invention. Oh, how terrible.

Doesn’t the enterprising, entrepreneurial, forward thinking and intelligent independent inventor know better than to THINK about how to solve problems that confront business, society and industry! How dare they?! After all this is AMERICA and how can we permit the small guy (or gal) to be on a level playing field with the multi-national corporation!

Is it really fair that one person (or a small group), who beat out a huge corporation with thousands of engineers and designers and a multimillion dollar R&D budget in resolving a problem of at least some significance (as evidenced by the fact the huge corporation saw fit to implement the invention), expects to derive a little wealth from his (her) ingenuity? Don’t these trolls realize that the multimillion dollar salaries are reserved for upstanding corporate CEOs that include such pillars of community as Ken Lay, Joe Naccio and Jeffery Skilling in their ranks?

This is AMERICA! We can’t expect the huge corporations to compete with the pitiful little troll. It’s like asking dinosaurs to compete against tiny pesky mammalian rodents. It’s like asking the King to grant independence to a bunch of silly men dressed as Native Americans parading around Boston Harbor drinking coffee instead of tea. It’s like allowing a few hundred ungrateful students to gather in a far eastern square and protest the oppressive policies of their government. IF these trolls are permitted to continue, what will become of this Nation?

(Huge Corporation): NOT FAIR, NOT FAIR, NOT FAIR! And if you don’t do as I want, I am going to shower Washington with hundreds of high paid lobbyists, I am going fill the campaign coffers of all the congressman and women I can buy, and I am going to wage a vicious PR campaign to paint you as Beelzebub’s minion and me as God’s angelic right hand. We must stifle competition at all costs!

And is this the one sided fight where David is killing the poor hapless Goliath. Not on your life! Some of the very corporations that complain about trolls are some of the biggest players of the patent game. Do you think they think twice about squashing a start-up that is infringing one of their thousands of patents? You just don’t hear about it; the squashed and penniless cannot afford to pay their PR firm.

OK, my sarcastic rant is over. Time to get back to doing some work. Who knows maybe the very application I am working on is one that will bring a corporate giant to their knees. Viva La Troll!

Low Quality Service Providers, Part II

Last month I wrote about "low cost providers". This month I talk about an even more insidious provider, "the high priced charlatans". I mentioned in the previous article that below market pricing was a pretty good way of identifying patent practitioners that as a general rule provide low quality patent applications and associated services. The high priced charlatan is a bit more difficult to identify and that is what makes them so insidious: they sell you on high quality and charge a price commiserate with that of a high quality provider.

Luckily, I only know of one of these type of practitioners, so they may not be all that common. On the other hand it behooves you to be aware and completely question an attorney or agent before hiring him or her.

One good way to check on any attorney or agent before you hire him is google him or her. Look at least a few pages of results. Is there any indication the practitioner has been sued or disciplined by the Patent Office or his/her state bar? If so, move on. OR if the infraction doesn't seem so bad, make a note to ask the attorney or agent about it during an initial consultation.

Check inventor education sites, such as www.inventored.com, to see if there is any negative information about the agent or attorney. There are so many attorneys that are reputable: why take a risk that has negative material written about him/her by a credible source?

When you meet with an attorney ask him/her very pointed questions. Most people have trouble repeatedly and consistently misleading others. If you continue to ask hard difficult questions of your patent attorney to be; most unscrupulous operators will break or at least show the strain. Those that are quality operators will answer the questions without hesitation or concern. After all, good patent practitioners understand you are potentially spending a significant amount of money on the patent process and that you owe it to yourself to investigate the expenditure thoroughly.

What sort of questions should you ask? I am not going to get into those here. If interested, visit our website and check out the FAQs in the Patent Section to get an idea. There is one question you should ask that I will discuss here. And it may surprise you or at least the correct nature of the answer should surprise you.

The question: What do you think of my invention?

The answer should not be too positive, too giddy, too enthusiastic. Those of us that have been around the block in this business know that most of our clients will never make it rich from their inventions and that it is nearly impossible to predict which inventions are winners and which are not. So for a patent practitioner to come off as though your particular invention is the greatest thing since sliced bread is disingenuous and often smacks as dishonesty.

And their is no right answer to the question. Some attorneys will honestly tell you they like the idea. Others will refrain from giving their opinion. The key to the response should indicate how difficult the inventing game is and how much work and energy is typically required from an inventor to make a success of their invention. They may not say ii in so many words but it should be clear from their demeanor.

One final way to check out patent attorneys: check out their affiliations. For instance, our firm is a member of the Troubleshooter Referral List. If we mess up with our clients we could find ourselves being exposed on a daily national radio show. Honestly that reality doesn't worry me. Why? Because we make treat our clients the way they deserved to be treated: honestly and forthrightly. We will tell you the way we see and we will not pull punches. We are your advocates and fiduciaries and because of that it is our duty to put our self interests second to your interests at least in so much as it relates to our representation of you.

But I digress, I don't mean to imply that my affiliation is the only one of merit. To the contrary, there are undoubtedly plenty of others: just do your homework and there is no reason why you cannot identify a quality patent attorney to draft and procure a patent to your invention.

Next up in PART III, I will write about invention promotion companies as I have done numerous times before. And if I can stop one inventor from giving their money to these predators, well, then the forthcoming entry will be a success.

Low Quality Patent Service Providers, Part 1

A while back I promised to write an article about low quality patent providers or perhaps I should say patent providers that provide low quality patent applications and other services. Well, here is the first of which will likely become a series on the topic. This installment discusses the dreaded “low cost provider”.

The first point an inventor should consider is a simple one that is often lost in the process of shopping for a patent attorney (or agent): Patent applications are not commodities! A patent application written to your invention by one attorney can vary from very poor quality to excellent quality.

Patent application quality is an easy thing for an inventor to lose sight of when deciding who to hire. It is extremely difficult for someone who is not intimately familiar with the patent process to judge the quality of one patent practitioner’s work versus another. So what the inventor does is choose on one the few aspects of the process he/she understands: price.

In about 25-35% of all the calls I receive from inventors inquiring about obtaining a patent, the first question is “how much do you charge to prepare a patent application?”. I actually know at this point that I will not be drafting this person’s patent application. I am not a “low cost provider” and I have no interest in competing with “low cost providers”. I tell the prospective client the general range I charge for a typical application. Often, I explain to them that they can find other practitioners that will prepare their application for less but I also explain that by and large the quality of patent applications prepared by “low cost providers” are in my opinion very poor. Almost universally with price first inquiries my explanation has absolutely no effect. It is too bad really as they will still spend a significant amount of money with a “low cost provider” and they will probably end up with a weak and essentially useless patent that will be (i) very difficult if not impossible to license to a company and (ii) extremely easy for a competitor to design around.

I have had a few applications written by “low cost providers pass” through my office in the last year or so generally for me to respond to an office action rejecting most if not all the claims. The initial rejections are not uncommon and the “low cost provider” is not to blame for the rejection. However, in responding to a rejection, I often need to reference the application’s specification to refute an argument or contention made by the Patent Examiner. With many of the low cost provider applications, there just isn’t any depth to the specification leaving me with little to draw upon. The inventor should keep in mind that in the great majority of cases, I cannot fix the situation because that would require adding new matter to the application and this is not permitted. And for the rare application I can fix, the process is not inexpensive and usually eliminates any savings realized by using the low cost provider in the first place.

I don’t want to imply with this post that I am extremely expensive. Rather, my rates are quite reasonable if you consider the quality of patent application you are receiving. The cost for having me prepare and file an application is usually 25-50% less than using a large national or international law firm. The quality is at least comparable. How do I know; well, I used to work for several large firms before forming my own firm.

I guess something some of you may be wondering is how much can you save using a “low cost provider” to draft and file a patent application for you over using me. Well, anywhere from a $500 to $2000, so if you really just want a patent to hang on the wall with your name on it, go ahead and use a “low cost provider”. However, if you are looking for a quality patent having as much breadth and strength that is available to you under the law, then give me a call.

Wait, wait, wait… there is a kicker: in most circumstances, while an average inventor will spend less using a “low cost provider” over me to draft and file a patent application, in a majority of the circumstances an inventor will spend more money overall going with a “low cost provider”. Confused? Let me give you a hint: it concerns the patentability search and opinion.

Stay tuned: the second installment will deal with patent searches but the third installment will discuss someone even more insidious than the “low cost provider”, the “high priced charlatan”.

Client Spotlight #3

Tactical Video Solutions is the producer of video camera that mounts on the end of a semi-automatic pistol's magazine, and feeds video to a small LCD screen that is typically mounted on the user's wrist.

SWAT and other law enforcement personal can use the camera to see around blind corners expossing only their firearm and perhaps their hand. Some versions of the system include infrared illumination to permit the officer to see in the dark.

Yuriy Umanskiy, one of the camera's inventors recently won the INVENTOR OF THE YEAR award from the Divinci Institute as discussed in this Rocky Mountain New Article. Congratutlations, Yuriy!

The product has also been featured on the local WB2 news and Channel 4 news as can be seen on their distributor's site (Tac-Arts, LLC) under News, Video & Stuff.

We prepared the patent application for the camera system and formed the company, Tactical Video Solutions. Further, we drafted and negotiated the company's distributor agreement.

You can also check out the camera at Tactical Video Solution's website.

Client Spotlight #2

The title of this entry, "Client Spotlight", is particularly appropriate for this client, Camerabright!, Inc.

The company manufactures a unique LED light that fits into the tripod mount of a camera. The light serves several purposes: (1) it can be used to illuminate a scene to facilitate video capture using a digital camera or a camcorder; (2) it can be used in place of the flash when taking portraits to help minimize or eliminate the occurrence of redeye that is common with strobe flashes; and (3) it can be used with macro photography where a high powered strobe flash would washout details of the subject.

The product is Patent Pending and we expect that a Patent will issue sometime in 2006. The company is also in the process of obtaining several Trademarks. Furthermore, the company is growing rapidly and is working on new lighting solutions particularly advantageous to digital photography.

Check them out at www.camerabright.com.

Americaninventor.tv

Apparently, ABC will be broadcasting an inventor contest reality show in 2006, and you can be one of its stars. The grand prize is a one million dollar advance against royalties. Open casting calls are December 1st in Denver.

I reviewed the website for the show and it is honest and well written. If you got a great multi-million dollar idea, you may want to consider trying out.

But I would be remiss if I didn't give you a couple things to consider if you do not already have a patent application on file:

1. If you disclose your invention to the show, you will probably start a one year clock running in which you will have to file the patent application in the United States or lose your patent rights altogether. This, of course, assumes you have not made a public disclosure or offer for sale of the invention earlier.

2. Perhaps more significantly, if you make a disclosure of the invention, you will likely lose you right to file for a foreign patent in most major nations. Honestly, for most independent inventors this is not a big deal, but it definitely should be considered before proceeding.

3. The one way to overcome the potential disclosure and the negative effect on your foreign filing rights is to file a provisional patent application before December 1, 2005. As my clients are familiar, I am not a fan of provisionals but given the timing, there is no other alternative: utility applications take too long to prepare. And to be completely honest, I can't guarantee a last minute provisional will be sufficient BUT it may be better than nothing if you have any thought that you may want to foreign file and you want to try out.

Anyhow, if you read this and attend the audition, please give us an update here.

How to choose a patent attorney

Below is an updated version of an article I had published about a year and a half ago at www.Troubleshooter.com. For those who have not read the original enjoy.

And in one of my future posts, I will offer some additional pointers on choosing a good patent attorney. Unfortunately, I have found that after leaving the big firm environment and working primarily with small companies and individual inventors that a significant portion of the practictioners who work with individuals do not provide a work product that I consider satisfactory.

So here is the updated article:

In this article, I will answer the question: How does one choose a good patent attorney who will draft a patent application that is more likely to issue into a good patent? Unfortunately, the question does not have a simple and easy answer, but I can provide you with a several pointers.

First, since even a high quality patent application for very simple invention takes about 18 hours to draft and file, be very wary of an attorney who quotes you a price that indicates he will prepare the application in less time. To figure how long an attorney will probably spend on your application divide the attorney's quote by his hourly rate. Remember that the claims, the most important part of the application, are the most likely to suffer if the attorney does not spend enough time writing the application. A general rule of thumb is to avoid attorneys who say they can draft your application for less than $3300.

On the other end, you probably want to avoid very high priced large firm attorneys. They are usually very good, but they bill at extremely high rates ($250-$420 an hour). A significant part of the premium goes to funding overhead services that a small company or independent inventor will probably not utilize. Another significant portion of the premium goes into the law firm partners' pockets as profit. Additionally, the large firm lawyers are not likely to give you very much personnel attention, as their primary focus tends to be on their large corporate clients. I speak from experience: until relatively recently, I was a large firm patent attorney. One of the reasons I left was so that I could work with more small companies and individual inventors. Many patent attorneys at the large firms recognize that working with individual inventors is not a good fit and they will refer you to good solo or small firm practitioners. I regularly receive referrals from my former colleagues. Ultimately, if you are going to error on one side or the other, I recommend you error in hiring a large firm attorney over a low cost provider.

You should also avoid invention promotion companies or anyone that works with them including attorneys. In my opinion, the primary purpose of the invention promotion companies is to part you from your money and not to help you maximize the potential of your invention. By Federal law these companies must provide you with certain information concerning their success at helping inventors before they can accept your money. This information is almost always provided in small print since their success rates are either zero or extremely small. If you are interested, get some information from one or more of these companies and read their promotional materials, and you might be surprised that they really don't offer to do much of anything for you in terms of commercializing your invention. But be careful when contacting them, because if you give them a phone number, they may call you several times to express great interest in your product and encourage you to proceed. Usually, the first step with these companies is to prepare what some of them call a "patent portfolio". In my opinion, the "patent portfolio" is essentially useless. The portfolio typically contains SIC codes for your invention, a drawing of your invention, a rather generic market study and a preliminary patent search. I have seen a couple of these "preliminary patent searches" and it seems to me that what they really mean when that add the term "preliminary" to the phrase "patent search" is "worthless". Now, given the questionable practices of these companies, why would an inventor ever use an attorney they recommend? Always remember that any attorney you hire is obligated to work on your behalf and to your benefit. However, I strongly suspect a patent attorney with a symbiotic relationship with an invention promotion firm probably has a greater loyalty to the invention promotion firm than his/her clients.

So what specifically should the individual inventor or entrepreneurial company look for when hiring a patent attorney? Look to patent attorneys that are either solo practitioners or are affiliated with a small firm. You should expect hourly billing rates between $175 and about $250 an hour. A good place to identify these attorneys is by contacting local inventor or entrepreneur support organizations in your area. Suitable patent attorneys may be members of such organizations, and if not, the members can probably point you to patent attorneys they have used. And, of course, you should always consult the Troubleshooter Referral list.

Once you have identified one or more patent attorneys, you should meet with or have a phone conversation with him (or her). Ask the attorney about the potential breadth of protection you can receive for your invention. Quiz him/her on how easy it would be for someone to copy your invention by making insubstantial changes to the invention. And here is a big one: gauge whether he/she truly understands your inventdoesn'tand if he doesn't after you have made a reasonable effort to explain it to him, move on. Ask him/her about the total cost to get a patent. Does he hem or haw? Typically, the cost to get a patent to issue is about as