Austin RISE Week Intellectual Property Series Hosted By the Business Success Center

The Villhard Patent Group cordially invites followers of this blog (and their colleagues) to a series of intellectual property seminars to be held during Austin RISE Week 2012.  The Business Success Center will host these sessions which include:

March 19     Intellectual Property 101 For Entrepreneurs (10:00)

Austin RISE Week, The Business Success Center, 7600 Burnet Road, Suite 130 (West Side of the Building), Austin, TX  78757

March 20    Protecting Intellectual Property on a Bootstrap Budget (4:00)

Austin RISE Week, The Business Success Center, 7600 Burnet Road, Suite 130 (West Side of the Building), Austin, TX  78757

March 21    Blocking and Tackling For Entrepreneurs: How Intellectual Property Helps You Block Your Competitors & Tackle Financing (10:00)

Austin RISE Week, The Business Success Center, 7600 Burnet Road, Suite 130 (West Side of the Building), Austin, TX  78757

An overall schedule for Austin RISE Week is available at https://www.riseglobal.org/sessions/day/2012/03/26.

More information on the Business Success Center is available at http://www.bscusa.com/. 

More information on the Villhard Patent Group is available at www.villhardpatents.com.  For more information on this series of IP seminars contact us at contact@villhardpatents.com or call (512) 897-0399.  

Note that both Austin RISE Week and the Business Success Center are organizations which are independent of the Villhard Patent Group.

Don’t Stop the Train: More on Developing Products and Trademark and Prior Art Searches

It is a rare pleasure when a new entrepreneur (or one with a new product/service) approaches an Intellectual Property (IP) Attorney with concurrent requests for trademark (TM) and prior art searches early on.  Both types of searches can save avoidable costs.  But, this is not to suggest that you slam the brakes on the train before you get their results. 

First, the name of your company might change during your marketing efforts.  In the meantime, you can usually use a working name for the company/product without seriously impeding your efforts.  But, keep records of what names you use and if you do develop any advertising, packaging, trade dress, etc. keep a dated copy of it.  You will want a “sample” of those materials for your trademark application.  In the meantime, hold off committing serious money to such advertising until you receive the results of the TM search.

Your own patenting efforts operate on a different time table.  The stretch of track between where you are and the Patent Office has two primary road hazards.  One, the public disclosure bar to patentability, can be avoided by keeping your discussions under non disclosure agreements (NDA); by marking all documents, prototypes, etc. with words indicating their proprietary nature; and by obtaining verbal confirmation of confidentiality before discussing your idea with others. 

The other hazard, the on-sale bar to patentability, can be avoided by planning your development, marketing, and sales efforts together.  The combination to watch for in your plans is when the idea becomes “ready for patenting” and when you expect to be making commercial offers for sale.  Here, “ready for patenting” means that you can explain the idea well enough to enable someone else to make the invention.  When both conditions converge, or a public disclosure occurs, they trigger a one-year grace period in the U.S.

Bottom line, plan your early development, marketing, and sales activities with your IP in mind.  We at the Villhard Patent Group welcome these early planning efforts.  Please contact us at bo@villhardpatents.com or (512) 897-0399 for more information.

Trademark Search First, Then Brand

All too often an entrepreneur requests a trademark search after they have settled on a branding strategy.  Indeed, in many cases, the company has been formed under a particular name, the product and its packaging has been designed around that name, and (sadly) the product has launched sometimes with great fanfare.  Then comes the news that the trademark search turned up another competitive product with a confusingly similar name.  Or, worse still, a competitor has been found with the exact name or one so close as to represent no significant difference.

An expensive re-branding effort follows that news and/or the entrepreneur has to assume some (potentially significant) risk of a trademark infringement suit.  A better way to launch a company and/or product exists.  First and foremost, have a trademark search performed by a professional early in the formation of the company.  That way, your formation documents (e.g., LLC, LLP, Articles of Incorporation, etc.) can be filed under the name that you are likely to operate under.  In addition, the money spent on designing your advertising, website, packaging, etc. will probably need to be spent only once. Not twice, as with waiting to search your company and or product name.

In addition, you will have a smaller risk that your name will infringe an existing mark.  Plus, should an infringement threat arise, you will have the search results and the advice of a trademark attorney upon which to fall back.  While that information might or might not completely save you from liability, it will help show your good faith and that you exercised care in selecting your company’s name. 

The intellectual property attorneys at the Villhard Patent Group would like to guide you through this process.  For more information about us and intellectual property, please see www.villhardpatents.com or call us at (512) 897-0399.  

World Series, Angels, and Trolls: More on the Value of Intellectual Property

During the World Series, a patent troll friend of mine (yes, I know that’s hard to believe) offered up two insights that I wanted to pass along.  First, a patent or other intellectual property (IP) might be an angel investor’s last defense against a shut out (total loss) and, second, patent trolls only value patents that have been infringed.

With regard to angel investors, he noted that if a play goes bad, sometimes the IP gets stranded on base in a failed company.  Team management may have called in the wrong plays, pitching (marketing) collapsed, and opposing pitchers may have thrown sliders around your entry barriers.  Yet, the IP remains on base.  That IP (particularly, the patents) can be bought and sold.  The angel investor therefore has something left to sell to recoup losses.  Unlike baseball, while the team lost, the angel gets the save and improves his ERA (over what might have been).  That, it seems, explains to me why some angels won’t play for entrepreneurs who have not applied for a patent much less actually won a game (obtained one).

My friend also pointed out that non-infringed patents do not fit a troll’s game plan.  They want an IP asset that they can use to swing for the bleachers, and now.  So, just having a patent to offer won’t be enough to get a troll to swing.  Perhaps, what that means for the entrepreneurs is that if you have a patent that you want to sell (to a troll), you might want to identify a potential infringer.  Then you’ll want to gather information buttressing your argument that the potential target is infringing.  Having a patent attorney on the mound finding and/or reviewing that information for you will increase your odds of getting to the playoffs. 

We at the Villhard Patent Group would be happy to discuss patents and the patenting process with you.  Please contact us for more information at (512) 897-0399 or see www.villhardpatents.com.

Developing and Launching Products Without Patent Applications

Most start-ups find themselves faced with needing to use others to develop their technology (or the need to launch a product) while a patent application is unaffordable.  These situations present dilemmas. 

Under current U.S. law (patent reform will change things - stay tuned), publically disclosing a patentable idea (or offering products incorporating that idea for sale) triggers a one year deadline for filing a related application.  In other countries, either action places the idea in the public domain immediately.  However, entrepreneurs can avoid these penalties.

First, they should place all parties involved (including employees, vendors, alpha/beta testers, etc.) under NDAs.  Secondly, they should mark all drawings, prototypes, specifications, etc. with proprietary warnings.  Thirdly, they should get the other party(s) to verbally confirm that the entrepreneur considers the information involved to be proprietary – before making the disclosure.  These actions usually remove a disclosure from the public-disclosure rule.

They should also plan their “offers” carefully.  To fall within the offer-for-sale rule, the offer (not a consummated sale) must be legally binding (on the entrepreneur) and the idea must be ready for patenting (the entrepreneur must be able to describe how to make, use, and operate things incorporating the idea).  Entrepreneurs should therefore compare their anticipated marketing, sales, and development efforts to determine when they expect to be able to describe the idea (as noted above) and when they expect to make their first legally binding offer. 

Ideally, they should plan to file a patent application before 1) their first legally binding offer and 2) they can describe the idea well enough that others could make something incorporating the idea.  Failing that, they should plan to commit to filing an application within the one year deadline (while knowingly foregoing much potential foreign patent protection).  

Since you probably find yourself in a unique situation, we at the Villhard Patent Group would enjoy exploring your options with you.  For more information about us, please see www.villhardpatents.com or call us at (512) 897-0399.  

Halloween 2012: Revenge of the Entrepreneur

Bad patents are the bane of entrepreneurs.  These zombie patents wander the country-side apparently claiming well-known technology yet somehow managing to survive the invalidity grave yard.  For years entrepreneurs have pled for weapons with which to defend themselves against these monsters.  Finally, despite its warts, the 2011 patent reform law places three new weapons (third-party submissions, post-grant reviews, and inter partes reviews) in the hands of entrepreneurs-- and just in time for Halloween 2012.

More specifically, third-party submissions will allow anyone to submit potential prior art against pending patent applications.  These submissions must occur before the earliest of the patents' allowance -- or the latter of their first office action or 6 months after their publication.  While Examiners are not obligated to give such submissions more weight than other documents, at least they will enjoy a chance of driving stakes through the hearts of bad applications.  Moreover, third-party submissions will also be available against bad patents themselves.  These submissions though will not immediately affect the validity of bad patents.  Instead, their usefulness will hopefully include handing accused infringers a source of industry-gathered killer prior art. 

Entrepreneurs will also be able to petition the Patent Office for post-grant reviews of bad patents for a variety of reasons during their first 9 months after issuance. 


Thereafter, entrepreneurs will be able to petition the office for inter partes reviews of these monsters.  However, patent reform limits the grounds of these reviews to a limited set of prior art related issues.  Patent owners, moreover, will likely oppose these reviews meaning that they will probably be expensive. Nonetheless, patent reform will allow entrepreneurs to take revenge upon bad patents starting on Sept. 16, 2012.

We at the Villhard Patent Group would be happy to discuss these subjects and other aspects of patents and the patenting process with you.  For more information about us, please see www.villhardpatents.com or call us at 512-897-0399.

Patent Reform: First To File Effective March 16, 2013

Patent Reform arrived as law on September 16, 2011.  The good news is that the Patent Office will soon have a “micro” entity fee structure which will allow many entrepreneurs a 75% reduction in their Patent Office related fees.  However, the new law also transforms the U.S. into a first-to-file patenting country.

While we have bemoaned the negative impact such a change will have on entrepreneurs, it will become fact on March 16, 2013 and entrepreneurs will need to adjust.  Briefly, the first-to-file provisions set up a race to the Patent Office for inventors of new technology.  This result is especially so for technologies in which many companies are pursuing solutions.  Software, Internet, and Web-based solutions can often be described in that manner.  Clean energy plays and other environment friendly products and services also frequently have multiple companies working independently toward some goal.

As a result, when first-to-file begins on March 16, 2013, entrepreneurs should seriously consider filing provisional patent applications covering ideas which they believe might come to be worth protecting.  In other words, to avoid having someone else file provisional applications for the same (or a similar) ideas, entrepreneurs will need to act earlier than they would have under the current first-to-invent law.

Then, given the shortcomings of most provisional applications, entrepreneurs should consider following up quickly with non-provisional applications.  In this way, holes in the provisional application can be identified and filled in, limiting statements mitigated, and the ideas fleshed out .  Otherwise, in the interim, other filers might plug those holes with provisional applications of their own.  While the law still allows one year to convert provisional application to non-provisional applications, entrepreneurs should consider whether they want to leave their ideas to the mercy of their provisional applications for that full year.

We at the Villhard Patent Group would be happy to discuss these issues with you.  For more information about us please see www.villhardpatents.com or call us at (512) 897-0399.