6 hour class handout with prices

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6 hour class handout with prices

  1. 1. Eric A. Hanscom2141 Palomar Airport Road, Managing AttorneySuite 320 United States Patent Bar # 48,393Carlsbad, CA 92011 California State Bar # 183,359Email: info@iciplaw.com Phone: (760) 651-0142http://www.iciplaw.com Email: eric@iciplaw.com Eric A. Hanscom, Patent Attorney #48,393 Managing Attorney, InterContinental IP IP Strategy, Patents, Trademarks, Copyrights, Licensing & Invention Advice Office Address: 2141 Palomar Airport Road, Suite 320 Carlsbad, CA 92011 Phone: (760) 651 0142 FAX: (760) 931 0014 Email: Eric@icipLaw.com Website: www.icipLaw.com Inventions 101: What an Inventor needs to know about Patents, Trademarks, and Copyrights. We’ve been teaching these classes for quite a number of years, and have found that students often leave the class with more questions than they had when the class began. If you have questions about starting an application, or would like to run an invention or other patent, trademark, or copyright- related issue by us, please give us a call, drop us an email, or set up a meeting . We will always be glad to try to answer your questions. Initial consultations about starting a patent, trademark, and copyright application are always free. Note: If you have tried to file your own patent, trademark or copyright application, and have been rejected by the USPTO, we cannot review or discuss these issues during the initial consultation. Asking us for advice on how to respond to a USPTO rejection is like asking a surgeon to talk you through setting a broken leg over the phone after you tried it yourself -- we cannot professionally do it. If you get rejected by the USPTO on an application you personally file, we can take over the application as your representative, but we cannot advise from the sidelines. The information presented in this class, written or oral, is for informational purposes only and does not constitute legal advice. If you have a specific legal issue, please seek out qualified legal assistance. If you would like a copy of the PowerPoint presentation, email me: Eric@icipLAW.com 1 of 9
  2. 2. Average Expect to Type of time until pay Practical Length of Renew-Intellectual Protects issue or (attorney examples protection able? Property final fees + in business rejection? costs) 2 1/2 years Inventions, 20 years from (exceptions, substances,Patent (Utility) “How something works". $7,000 - 50,000 date of filing No Accelerated business application Examination) methods. Gives inventors a one year Inventions, grace period (license / seek Patent substances, investors) before they have Lasts 1 year $3,000 - $6,000 1 year No(Provisional) business to file a Utility Patent methods. application. Patent (US 14 years from Unique shapes “How something looks". 10 months $2,000 +/- No Design) date of issue. of products Patent Up to 25 Unique shapes (European “How something looks". 5 months $2,000 - $5,000 years from No of products Design) date of issue. A word, name, symbol or device which is used to Potentially Company indicate the source of the Infinite w/ 10 names, brand Trademark 10 months $1,000 - $5,000 Yes goods and to distinguish year names, them from the goods of extensions slogans. others. Owners Original works including manuals, literary, dramatic, musical, Life of author Copyright 3 weeks $300 - $1,000 No packaging, artistic, and certain other plus 70 years. advertising intellectual works. materials. 2 of 9
  3. 3. How to Pay for Patents, Trademarks and Copyrights • My own pocket • FFF (Friends, Family & Followers) • Government Grant (Need solid business plan with IP strategy) • Investors (Need solid business plan with IP strategy) • Can I just do it myself or on-line? Questions: is it a business or a hobby? Is it for money or for fun? Patents • Should I bother getting a patent? Yes: protection against knock-offs, essential for Venture Cap., essential for licensing, can you compete against Wal-Mart or Target on price? No: if shelf life of product is shorter than application to issue time. Ex) teenage girls fashions. Ex) McDonalds doesn’t have a patent on the hamburger but they make billions of dollars each year because they have branded (trademark) so well. A. Can I get a patent (101, 102 and 103) Is my idea really patentable? • 101: Is the subject of my invention patentable? (no perpetual motion machines, nothing illegal; you can patent products, some methods, substances). • Prior Art Searches to expose 102 and 103 problems Looks for issued patents, published patent applications (and products on the marketplace)that are similar to yours. 1) Did someone else beat me to it? 35 USC 102: Is there a patent, published paper (such as a published patent application), or product already out there that is my invention? 2) Is my invention truly unique? 35 USC 103: Is my invention a mere “obvious improvement” over someone else’s patent, published paper, or product? 3 of 9
  4. 4. 3) We often use Bill Fry of National Patent Services for our prior art searches. You can use him directly if you like. www.nationalpatentservices.com. There are many other prior art searching companies, but my advice is to use one that does not also write patent applications (conflict of interest).The life of a Utility Patent. 1. Application prepared and filed. 2. Sits at USPTO for 1 to 1 ½ years (unless you pay for Accelerated Examination). 3. First examination, Office Action goes out. A. All Claims allowed -> pay issue fee and you are done. B. Some Claims allowed -> 2 options: 1) take the claims they gave you, pay issue fee and you are done, or 2) Response to Office Action, arguing for more claims, amend your application (but no new matter). C. No Claims allowed -> 2 options: 1) give up, 2) Response to Office Action, arguing for at least some claims, amend your application (but no new matter). 4. After you Respond to the Office Action, USPTO usually sits on the Response for a few months, then reads it and sends out another Office Action (at this point, you go back to 3 above, and repeat the cycle until you either accept the claims they offer or get a Final Refusal on all your Claims. 5. If you end up with at least some claims, you get a Notice of Allowance, and you have to pay the Issue Fee. 6. Your official Patent is printed and mailed to you several months later. You get a nice, frameable patent, and you can order “Advance Copies” as well for $3/each. Infringement Keys: A patent gives you to right to exclude others from making, using, or selling your patented invention in the country in which the patent was granted. To infringe a patent, you must infringe at least 1 claim. To infringe a claim, you have to infringe every element of the claim. 4 of 9
  5. 5. Trademarks (and Service Marks) 1. Trademarks (products), Service Marks (services) 2. What can be protected? (company name, brand name, slogan, logo, etc.)Foreign Patents and TrademarksMust be filed in each country.PCT and Madrid ProtocolFactors: # people in a country, $/person, will they buy your product, will thatcountry enforce IP laws? CopyrightsWhat can inventors protect? Websites, brochures, packaging, owner’smanuals. Websites: good idea to get preliminary infringement analysis donebefore you post a website (to see if your website developers stole contentfrom others), and at least once a year after (to see if your competitors arestealing your content).Copyright Infringement Lawsuits: Up to $150,000 in statutory damages foreach copyright infringement.Who wins and who loses the invention game.Who loses: Common Mistakes Inventors Make. 1. Wait too long. 2. Under funded /poor planning / no $ spent on IP. 3. Spend too much money on IP. 4. Too scattered.Who wins? Good invention (1/3) Tenacity (1/3) Good Luck (1/3). 5 of 9
  6. 6. Do it yourself? Is it a business or a hobby? Remember that if you file your ownapplication for a patent, trademark or copyright, you may not find out if you made amistake for anywhere from months to years later. During that time, you may loseyour IP rights.Inventor Paranoia: Good to be careful, but not to the point where you don’tmove forward.Patent and Trademark Scams. For more information, the USPTO,http://www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf has an excellenteducational presentation on invention promoter scams. Try to Make Some Money off your invention. A. Find your target buyers / do field research: 1) Internet searches. 2) Trade Shows (www.GlobalSources.com has a very good trade show calendar). 3) Visit local stores. B. Sales Tools. Do you need a Prototype? (Joe Donoghue of Leardon, can produce prototypes, samples, engineering, and arrange for (and oversee) manufacturing in Hong Kong/China and other countries. www.Leardon.com, Joseph.Donoghue@Leardon.com) Do you need a website (Stan@StanLieberman.com), illustrations (I use Bill Beatty at bbtyrec@cox.net), brochures, 3D animations, videos? C. Make/sell it yourself or license/assign? Make and Sell it yourself: Factory, Transportation to Dock, Shipping, Warehouses (outbound port, inbound port, warehouse for distribution), Customs, Distribution / fulfillment houses, Sales, charge-backs, advertising allowances, defective policies, Accounting. Consider Franchising if you are successful. “Assignment” is a “sale” of your patent to another. “License” is a “rental” of your patent to another. 1) Exclusive or non-exclusive license? 2) Territory (state, country, internet v. retail shop). 3) Royalties: minimum guaranteed royalties v. % royalties v. flat fee / unit sold royalties. 4) Royalty accounting period (quarterly or yearly?) 5) Audit rights and who pays if the audit is off? 6 of 9
  7. 7. 6) Ending the agreement, automatic renewal, continuing royalties after termination by one party.Putting it all together: Suggested Approach to Inventing: 1. Is it patentable? (Prior Art Search for Utility/Provisional, Design?) 2. If you think you can get a Utility Patent on it, get patent pending (Utility or Provisional) and try to license your pending patent. 3. Even if you don’t think you can get a Utility Patent (and remember, patent laws change all the time and we expect a swing back toward more patents being granted), is it worth filing a patent and trying to use the “patent pending” status to scare away copiers? 4. If you don’t think it is patentable as a Utility Patent, will a Design Patent protect you? 5. If a Design Patent won’t protect you, focus on Trademarking a clever name, getting first to market, and promoting the product heavily. 6. Don’t forget the business entity formation (Ryan Alexeev, Ryan@NorthCountyLega.com is an excellent attorney who handles business, estate planning and immigration law).Prototypes: 3 basic types: 1. Proof of Concept: show it works. 2. Integrated Design: this is how we can make it. 3. Production: this is how it will look when mass-produced.www.LeardonSolutions.com is a prototyping and engineering firm inEscondido.Starting a Business: 1. Know your business. 2. Assess the risks. 3. Formulate the plan. 4. Test the plan.Form an entity: Sole Proprietorship, Partnership, Corporation, S-Corporation, LLC. 7 of 9
  8. 8. InterContinental Price ListServicesWe provide services on an hourly or fixed fee basis. Our clients include individual inventors, businesses,and other law firms that benefit from our specialized knowledge and experience. We provide freeconsultations on select days in person, over the phone. Please call us at 1 760 651 0142 or send anemail to info@iciplaw.com to schedule an appointment.Sales and LicensingWe can help you with all the steps of licensing, from drafting agreements to negotiations. As statedabove, we also provide IP due diligence services, to provide a better frame of reference for the intellectualpropertys value and enforceability.ProsecutionProvisional PatentsCost: $3,000 and up.Utility PatentsPrices: $6,500 for simple mechanical and substances, $7,500 for simple electrical and simple businessmethods. $9,500 for software and complex inventions. Drawing fees are extra.Accelerated Utility Patent Application: Under this program, a "comprehensive" Prior Art Search isrequired, which can cost $3,000 or more. We can then submit the application under the United StatesPatent & Trademark Offices Accelerated Examination program, which has a goal of dealing with yourapplication in one year or less. Cost: $9,000 to $15,000 depending on complexity of invention.Office Action Response: More often than not, a utility patent application will receive at least one officeaction. An office action is a rejection, at least in part, of your application. An office action response can beused to make amendments to your application, argue the patentability of your application, and to correctprocedural issues. Most simple mechanical, substance, or business method office action responses canbe handled for a fixed fee. Please contact us for a more specific fixed fee quote for your office action.Appeal: Unfortunately, an appeal may be an applicants only route to obtain patent protection. It caninvolve a significant amount of time and energy to meet the procedural requirements in addition toovercoming the substantive rejections of the Examiner. Before filing an appeal, we often suggest at leaston in-person interview to review the application one-on-one with the Examiner.Interview: Applicants can request an interview with the examiner to discuss the rejection of theapplication. These range from informal discussions over the phone to in-person interviews with theExaminer and his or her Supervisor. We have found interviews to greatly reduce the time it takes toresolve issues with a particular patent application.Design PatentCost: $900 for preparation, $230 filing fee plus drawing fees. 8 of 9
  9. 9. International and Foreign FilingsOur services include foreign filings, such as PCT applications, Euro design patent applications, andnational stage patent applications in a variety of countries. We associate with law firms around the globeto provide our clients with a wide range of national stage options. For more information on ourinternational and foreign filing services, please contact us.Trademarks.Trademark Search. A trademark search looks for potential conflicting trademarks. We then advise ourclient of the likelihood of success in obtaining the desired name as a trademark. Cost: $375 / class.Trademark Application.Cost: $500 to prepare, $275 filing fee.Office Action Response: Often a trademark application will receive at least one office action. An officeaction is a rejection, at least in part, of your application. We can respond to Office Actions under hourlyrate or fixed fee scenarios.Trademark Appeals, Oppositions, and Cancellations.Appeals, oppositions, and cancellations appear before the Trademark Trial and Appeal Board (TTAB).Each of these matters can have significant impacts on the trademark rights of the owner and should notbe treated lightly. We provide representation for all of these matters, whether defending or invalidating themark.Copyrights.Filing: $300 start to finish price.Copyright Infringement Analysis: $200 / page search, analysis and report. Good to do this before youpublish a website and once (or more) per year to see if your competitors are stealing your websitecontent. 9 of 9

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