Details or not, right or wrong, hairs can be split all day. So, we both agree he needs an attorney. Great. I didn’t even mention extensions and revisions. My point in all this is that louis has strategic options if executed properly. Semantics are irrelevant and I don’t think I’m misguiding him.
I think that louis will be fully aware if he would be producing a
product based on a current patent after consulting his patent attorney.
The patent search will reveal his options.
So, you feel he should wait until he gets a patent to produce the product. Thats fine. Like bartt the engineer, I think he should go for it if there is evidence that his odds are in favor of positve action from the USPTO. All I’m suggesting are examples of what can be done to overcome certain obstacles. A maufactuer is allowed to sell items that are patent pending. Plain and simple. Why should louis not do that?
An entrepreneur would find a way to make it work rather than miss the market. Louis will have a been on file for likely 3 years from the 12 month provisional period to whenever the action of the non-provisional app. occurs. If he was to refile, that assumes that he would have tweaked the design to justify it. He could make a killing in that time. Even if he’s rejected and has to shut down the operation, he’s got a bird in the hand that he can make money on. All he can do is go through the patent process with the best claims he and his attorney can develop.
Louis claims to have a new mechanism for a fin system which is likely innovative to the industry and may serve as disruptive technology in the market place.
In the below link, Surfco has a direct replacement for FCS fins with the addition of the flexible rubber edge and was prosecuted by FCS. Surfco prevailed.
I think you’re misunderstanding me entirely and if you read everything else I’ve written (see above) you’ll see that I’ve advocated “positivity” in this process myself.
Quote - “So, you feel he should wait until he gets a patent to produce the product.”
This is NOT AT ALL what I am suggesting. Once a patent is applied for (assuming it is properly applied for), you are generally free to attempt to commercialize your product without legal issue (e.g., related to possibly losing patent rights). The opposite situation is what I am warning about - and it’s particularly important to warn about, because if you get that part wrong, there is no amount of money which can fix the problems you cause (i.e., buy back the rights you lose). For example, in many countries, if you sell or even advertise your product for one day prior to applying for a patent, you lose the rights to obtain patent protection for that product in that country forever. Thankfully, in the United States, there are grace periods - but, if you miss the deadline of one of those grace periods, you are similarly out of luck permanently.
Those types of rules aren’t semantics - they are unforgiving, black letter rules which come from patent statutes. And, I’m just trying to help here so that someone doesn’t misunderstand something posted in this thread and end up losing rights themselves (as my way of giving back to this forum).
This is one of the classic debates between businessmen and attorneys. With preparation, louis will be able to mitigate the risks through proper channels.
I think everyone here means well…or at least I hope they do.
Anyway, I’m not really intending to debate here. I recommend all the time that people/companies produce/market/commericialize their products PRIOR to patent issuance BUT AFTER the filing of properly prepared patent applications and appropriate use of non-disclosure agreements, etc. During application pendency is a great time to try and find success with a product (however accomplished).
non disclosure agreement is done, patent is inquired, the idea of dealing with a Us fin company would be better than going china but no one is calling back so i might have to go east, not really high deal as they will copy anyway.
i need a bit more flow to order stock.
will see what happen.
if anyone know any connection for a fin factory in the Us let me know, i can maybe visit them with a non disclosure agreement and see what they think?
There’s an interesting article now up on The Surfers Journal website by Tom Morey on developing product, patenting (he’s against it), trademarking (for it), etc.
Article is called “Tips For Inventors-Garagemanship”
Written by one who should know…all be it a very well off one…
That article is so wrong and does such a disservice to inventors on so many levels, I can’t even think of where to begin…except, I guess, to say he is absolutely dead wrong about patent rights not being upheld/honored by the courts (I think that is what he is trying to say, in part, anyway).
While there was a period in legal history where patents in certain district courts were typically invalidated, Congress created the Federal Circuit Court of Appeals in 1982 to correct this problem (so maybe he’s got the 20 years ago issue right) and to unify the interpretation of patent laws in this country. Now we have a system where patents are quite effective and can be quite valuable (hence the occassional billion dollar patent infringement award).
If you listen to him, you’re giving away your invention to the world for free and possibly killing all chances at obtaining patent rights - kind of dumb from a business perspective but certainly altrusitic in some weird sort of way (if you consider it altruistic to give away your valuable business ideas to other business men).
Quote - “Because
you gave this idea to the public, if someone improves upon it, you have
every right in the world to incorporate said improvement into your next
iteration.”
Unfortunately, this is also absolutely dead wrong. People can improve upon your idea - patent the improvement - and then prevent you from practicing the improvement of your own original invention.
Quote - “The best use of your money for protection is a trademark.”
I procure both patents and trademarks for a living (as well as help protect trade secrets and copyright), so I consider myself rather unbiased (among the different types of intellectual property). Noting that, procuring a trademark would be secondary at best in any personal efforts I would make with respect to protecting my own innovations/inventions.
Very bizarre stuff, this article…(oh yeah, and the Patent and Trademark Office is not in the District of Columbia).
Hey mattp, forgive my ignorance in the matter, but I'm wondering about the validity of procuring a US patent when what we're dealign with here is a global issue. I picked up a couple provisional patents for some biotech stuff a number of years ago, and was just floored by the $$ involved in having a patent lawyer make it air tight, the difficulty of finding someone to license the idea, and the corncern that anybody in any other part of the world was not obligated to respect a US patent. Is that true?
Thanks for chiming in on this one. That Morey article is pretty compelling and liberating, but the reality check you're countering with is probably what a lot of us creative types could benefit from.
I filed a provisional patent application in 2003 and filed the associated non-provisional application about 51 weeks later. The patent was granted in 2006. Monetary cost for the patent application was the various fees that the USPTO imposes (as I recall at that time it was between 1000 and 1500 dollars) plus about $60 for a set of drafting instruments. Cost in time to search prior art, draft the provisional and non-provisional patent applications, generate the artwork, and respond to comments from the patent office took about 3 months of my time. No attorney was involved**, so according to comments made within this thread the patent may be of little or no value in a court of law. However, there’s always the satisfaction of accomplishment in seeing a new project successfully completed (concept, prototype design iteration, construction, testing, and patent).
** A friend of mine, who has drafted and obtained a number of patents, was, however, nice enough to review my draft non-provisional application.
My quick answer, because I’m a little short on time at the moment, is as follows:
Although a U.S. patent will not stop people from making and selling the patented thing outside the U.S., it CAN be used to stop something from being made outside the U.S. and then imported into the U.S. (as just one example). You could literally have U.S. Customs stopping incoming infringing shipments at the U.S. border. So, if you had a surfboard configuration patented in the U.S., even though you could not stop someone in China from making and selling the patented configuration in China with a U.S. patent alone, you could stop that same Chinese entity from shipping those products to the U.S. to compete with your U.S. sales (or you could collect damages for infringing goods which reached the U.S.).
Then there’s always the option of obtaining Chinese patent protection in which case you could even stop manufacturing activity, etc. in China.
Difficulty in licensing, etc. is a case by case sort of thing - I have some clients which became rich from their ideas (at least one became VERY rich). I’ve had others turn down literally millions thinking they could make more on their own (they didn’t want to give up control of their company), but then they proceed to run their business into the ground because they weren’t very good business people. Others - even though I get them a patent, the idea is never successful from a commericial standpoint. Much just depends on how much people want to buy what your patent covers (and whether or not you partner with the right people, know how to market it, efficiently manufacture it, etc.).
Costs for obtaining U.S. patent protection can vary widely but shouldn’t be too outrageous. If an attorney prepares the application - costs should run between 6-20k to file the application, inclusive of USPTO fees (depending on complexity - think surboards vs. semi-conductor designs). Eventually, there are more costs as well (usually much less than the initial costs). Some people will do it cheaper, but it’s usually cheaper for a reason (and not a good one). They can also get more expensive.
In australia (in my experience) you can cheaply cover youself with a design registration...this is prior to a provisional patent. It allows you to show your ideas to others, however i would get them to sign a confidentiality agreement even if its just for the B.S factor. Patent attourneys will give you opinions which are just that...sometimes good sometimes not, Remember its a business to them, they create obstructions to justify there jobs..they are lawyers!! iI say ,if you dont have the funds to defend your patent take an offer to be bought out at a fair price and move on! Unless it can get what used to be called "novelty" protection its easy to challenge your design with small changes. I had a patent on a surf product 30 years ago that was current in the U.K USA France, Japan. I dont wish to discourage you..in fact, far from it however faced with the same scenario......10% of something is better than 100% of nothing. If you get a good offer , TAKE IT! Good Luck mate!