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

It is a rare pleasure when an entrepreneur 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 without seriously impeding your efforts.  But, keep records of what names and any advertising, packaging, etc. that you use.  Hold off committing serious money to such advertising, though, until you receive the results of the search.

Patenting operates on a different time table.  The time between where you are and your (potential) patent 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 of your documents, prototypes, etc. with proprietary warnings; 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 your idea becomes “ready for patenting” and when you expect to be making offers for sale.  Here, “ready for patenting” means that you can explain the idea well enough that someone else can make the invention.  Under pre-AIA (America Invents Act) law, the convergence of both conditions (or a public disclosure occurred) triggered a one-year grace period in the U.S.  


Under the AIA, though, an offer for sale could well be fatal for your later filed application.  Entrepreneurs should take heed and not make any offer for sale until they at least have a provisional patent applicaiton filed.

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 need to use others to develop and/or launch a product while a patent application is unaffordable.  These situations present dilemmas. 

First, publicly disclosing an idea triggers a one year deadline for filing a related patent application.  In other countries, a disclosure places the idea in the public domain immediately.  Worse still, under the America Invents Act (AIA), offering a product/service for sale that incorporates a patentable idea (or attempting to commercialize the idea) arguably places that idea in the public domain.  However, entrepreneurs can avoid these penalties.

First, they should place all parties involved (including employees, vendors, alpha/beta testers, etc.) under NDA.  Secondly, they should mark all drawings, prototypes, etc. with proprietary warnings.  Thirdly, they should get the other party(s) to verbally confirm that the information involved is 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 and the idea must be ready for patenting (the entrepreneur must be able to describe how to make, use, and operate products/services 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 and when they expect to make their first legally binding offer. 

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 it.  Failing that, they should plan to commit to filing an application within one year in the hopes that the courts reinstate the one year grace period for offers for sale.  Of course, entrepeneuers should also plan to file an application before any public disclosures.

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.

What Makes an Idea Likely to Click?

Often an entrepreneur concludes that their once-brilliant idea is unpatentable and they let it wither on the vine.  Yet a patent attorney (if they had been consulted) might have thought the idea would click at least to the extent that the likely claims would have had good breadth.  To understand such tragedies, remember that patentable ideas must relate to patent eligible subject matter and be useful, new, and non-obvious. 

Even seasoned patent attorneys cannot positively determine whether an idea is non-obvious.  Instead, they speak of the likely breadth of claims directed toward the idea. To begin their obviousness analysis, many attorneys look for a piece of the idea that to their knowledge no other approach has included (e.g., a handle for a widget when no other widgets have handles).  If the idea passes this test, the likely breadth of the claims increases.

Moreover, if the idea runs contrary to current approaches, the likely breadth increases.  Conventional approaches to an issue, in contrast, narrow the likely claim coverage.  Indeed, substituting one known approach for another lowers the likely claim breadth.  However, if the idea delivers benefits not foreseeable to those in the industry, then the likely breadth increases.  Repeated failure of competitors to implement the idea and their skepticism about it also point toward likely broader claims.  Likewise, praise from, or adoption of the idea by, industry points to broader claim coverage.  The foregoing discussion, of course, assumes that neither a public disclosure nor an offer for sale involving the idea destroyed its patentability prior to the entrepreneur’s patent application.

While the above list neither pretends to be exhaustive nor definitive, the author hopes that it provides some guidance for entrepreneurs as to what makes an idea click with a patent attorney.  But, as with any legal issue, professional guidance is advised.  For more information about patents and the patenting process, please contact us at www.villhardpatents.com or call us at (512) 897-0399.  

Angels, Entrepreneurs, and Gadflies: How Angels View NDAs

Many entrepreneurs ask angel investors to sign non-disclosure agreements (NDA) prior to discussing their businesses. They never hear back from the angels and wonder why.

One reason may be that, initially, angels only want enough information to determine whether a deal interests them. All they want to hear about are the problem(s) solved and the benefits of the entrepreneur’s approach. Rarely do angels want more, much less detailed disclosure of the entrepreneur’s intellectual property (IP).

Indeed, too much early information can hurt the angel. For instance, if a play has widespread applicability, an NDA might preclude the angel’s participation in other deals. Also, pre-existing deals can ensnare the angel in a conflict of interest if they learn too much about a competitive approach under an NDA. Besides, if a deal comes to the angel through an investment screening group, the information usually carries with it a condition of non disclosure.

Thus, often, an entrepreneur-NDA-request goes something like the following. The entrepreneur confronts an angel with an NDA. The investor thinks, “They don’t have any IP protection! Otherwise, they wouldn’t need my signature.” Next the angel thinks, “What will this group do at go-to-market time? Haven’t they thought through their IP position? They are going to get ripped off.” From many angels’ perspectives, therefore, NDA-bearing entrepreneurs are gadflies.

As a result this blog recommends that, prior to fund-raising, entrepreneurs develop and begin executing an IP plan. Of course, not everything must immediately be formalized into a patent, copyright, or trademark application prior to speaking to financiers. Many elements of a business can be held as trade secrets during pre-launch fund-raising. Then, once an angel becomes interested in a play they will ask for more information and won’t mind signing an NDA.

Hall Martin (Vice Chairman of The Baylor Angel Network, Director of The Wilco Angels Network and Director of The Texas Entrepreneur Network) co-authored this article. 

For more information about entrepreneurship in general see The Texas Entrepreneur Network.  

For more information about developing and executing an IP plan see www.villhardpatents.com or call The Villhard Patent Group at (512) 897-0399.

A Lot of Zeros for Patents

$12,500,000,000. That’s a lot of zeros to pay for intellectual property (IP). But that was the price Google paid for Motorola Mobility and, mostly, for their patent portfolio.

In light of the Google/Motorola deal, it bears repeating that investors and companies in the market for acquisitions often look for some combination in their targets of a good idea, a good management team, a developing (or complementary) market, and the existence or creation of entry barriers (e.g., intellectual property). Typically, it takes a measure of all four elements for a start-up or other small or mid-sized business to get on the radar screen of an angel investor or venture capitalist (much more, one of the Fortune 500 companies).

Without passing judgment on them, and as with any M&A activity, I would be willing to bet that not much of the target’s (Motorola) management team will be around in the new Google in one year. For their part, Google claims that Motorola cell phones and other mobile products will remain on the market. Of course, whether you believe that a software company will plunge deep into the hardware market is another matter. That leaves only Motorola’s IP on the table for the apparent reason for the deal.

Thus the Motorola deal shows, with its focus on Motorola’s patents, that an IP portfolio (in its own right) can make or break a deal. The news of the Motorola deal should therefore prompt entrepreneurs throughout Austin (and those throughout Texas and elsewhere) to assess their IP portfolios.

If you would like experienced help with your IP assessment and subsequent IP strategizing, we at the Villhard Patent Group would enjoy helping you. For more information about intellectual property in general, and patents in particular, please contact us at (512) 897-0399 or visit www.villhardpatents.com.

3 Bizarre Things About Patent Applications

Sometimes a business owner, eager to see the company’s first patent application, opens the draft -- and barfs. Never have they paid for such gobblygook.

Many things about patents might strike the entrepreneur as odd. This article is too short to go into all of the reasons for this situation. But, let’s start with why patent drawings tend to look cartoonish. First, patents rarely require detailed engineering drawings. Instead, patent attorneys try to graphically break down the ideas to help others understand the inventions. Many drafters also drop unnecessary detail that might obscure the inventions. Additionally, the Patent Office imposes their traditional and odd stylistic requirements. WYSIWYG!

Secondly, the writing style in many applications strikes many as stilted and mealy-mouthed. In the written description, the drafter tries to balance two contradictory requirements: being specific and avoiding specificity. Ironically, depending on the words chosen, specificity can limit an application’s scope. But, being vague can invalidate an application for failure to adequately describe the invention. Patent attorneys therefore spend their days agonizing over what to put in, what to leave out, and how to phrase what’s left.

For being bizarre, though, patent claims take the cake. For starters, a would-be-infringer will almost certainly use every word of the claims against the patent owner. Thus, many drafters place a premium on brevity. On the other hand, the claims must describe the invention well enough to alert would-be-infringers of the scope of the claims. That requirement necessitates words and, often, many of them.

Additionally, patent attorneys also try to comply with over 200 years of case law that seems openly hostile to drafters. Perhaps that is why the Supreme Court once said, patent applications are “the most difficult legal instruments to draw.”

We at the Villhard Patent Group caution entrepreneurs that patent applications hold many traps for the unwary. We would be happy to discuss how to protect your ideas. For more information about us visit www.villhardpatents.com or call (512) 897-0399.

Things Entrepreneurs Should Look For in a Patent Attorney

Shopping for a patent attorney may seem pretty simple.  You simply find one with expertise in your technical area.  Right?  However, focusing on the technical qualifications of a candidate alone might not be adequate.

Sure.  Your patent attorney needs to know your technology.  But regardless of who you select, you will still likely be the technical expert for your application.  No one will know your concept better than you. 

Therefore consider some other factors.  Does the candidate you are considering understand your business model?  Does the candidate have a feel for how you will be using your intellectual property; where it fits into your business activities; and the alternatives (including the current state of the art) to your idea?  Moreover, does the candidate understand who your competitors are; who they might be in the future; and how your idea might give you an advantage over them?  Similar questions can be asked about the candidate’s knowledge of your customer base.

Also, has the candidate worked with clients of your size?  Understanding the needs of Fortune 100 companies is one thing.  However, using a patent attorney who grinds out one patent application after another –the model followed by most Fortune 100-based patent attorneys -- might result in a cookie-cutter application that shirks interesting aspects of your idea.  Instead, entrepreneurs might be well advised to look for a patent attorney who regularly deals with other entrepreneurs and understands that your patent application might be your crown IP jewel and deserving of individualized treatment.

Having satisfied these concerns, entrepreneurs can then move on to the more mundane considerations.  How many years of patent related experience does the candidate have?  What sorts of recommendations does the candidate have?  Can the candidate communicate?  Does a match exist between your personality and the candidate’s personality? 

We at the Villhard Patent Group would like to have the opportunity to discuss your intellectual property prospects with you.  Please contact us at (512) 897-0399 or visit www.villhardpatents.com for more information about us.  

I-FORD: IP Found on the Road Dead

“What we’re doing is obvious.  What's patentable about it?”  This question marks the end of the IP road for many entrepreneurs. As a result, many entrepreneurs walk away from protecting otherwise patent eligible web apps, B2B programs, financial service packages, etc. 

The related IP rights eventually lapse, leaving the ideas in the public domain.  Competitors are then free to pick up the abandoned IP, breathe new life into it, and use it for their own benefit. 

Under current law (see the Bilski U.S. Supreme Court case), though, all of the above types of business-related systems (and others) might have received patent protection.  Whether or not the ideas seemed obvious to their originators misses the mark.  Indeed, almost all ideas appear obvious (in a non-legal sense) -- with 20-20 hindsight.  It is worth recalling that, without the benefit of that hindsight, the legal tests for patentability include:

 Is an idea patent eligible?

 Is it useful?

Is it new?

Is it non-obvious?

Can its conceiver(s) adequately describe how to make, use, and operate a system based on it?

Usually, the idea is patent eligible, useful, and can be adequately described.  Newness often relates to whether the patent application includes meaningful “claims.”  Therefore, the test usually boils down to whether an idea is non-obviousness. 

In a patentability sense, “obviousness” is a legal term of art having little to do with how that term is used in every day conversations.  Indeed, the concept of obviousness happens to be so complex that most Patent Attorneys spend the bulk of their time arguing about it.  Unfortunately, many entrepreneurs jump to a conclusion about the obviousness of their ideas.  They then leave their ideas for their competitors to find on the roadside not dead but quite well and ready to go to work.  

The Villhard Patent Group encourages entrepreneurs who have business services related systems under development to consult with a Patent Attorney before concluding that their ideas are “obvious” or otherwise unpatentable.  Please contact us at www.villhardpatents.com or (512) 897-0399.

Intellectual Property Games

In the 70s and 80s Pong, Centipede, and Pac-Man held those of us admittedly old enough to remember them awestruck.  I remember sneaking into a lake-front bar and force feeding these primitive games money.  As a kid I could not imagine the advanced graphics, 3D game spaces, world-wide interactivity and other technology (i.e., intellectual property) now programmed into even simple games. 

Imagine having been in a position back then to protect ownership of the game engines, related APIs, components, and other engine features that enable today’s performance levels.  Unsurprisingly, the Patent Office database currently lists 721 published patent applications using the phrase “game engine.”  They also list 101 applications using “game engine” in the claims.  Clearly, someone is patenting game engines (e.g., the engine developers). 

But game developers can also get into the game.  More particularly, as game developers conceive of new game functionality (e.g., the advance from Pong’s 2-D game space to today’s 3-D game spaces) the programs underlying that new functionality might be patentable.  Moreover if, as a result of the new functionality, the engine or engine API must be modified those modifications might also be patentable for the game developer.  Of course, these sorts of modifications would need to meet patentability requirements (i.e. be new, non-obvious, etc).

In addition, the game developer would have to be able to describe how to program and operate the modified engine.  Even if the developer needs help programming that modification, though, the game developer might at least be a co-inventor of the idea.  In either case, the game developer (and/or his company) would be well advised to consult a patent attorney before disclosing it to others.  That way they can obtain an informed opinion of the technology’s potential patentability and ownership before making the first move with outside parties.

The author wishes to thank Todd Simmons for his valuable contributions to this article.  For more information about Todd see: http://todd-simmons.com/.

For more information about the patentability and ownership of gaming related intellectual property please see www.villhardpatents.com or contact us at (512) 897-0399.

Free Software

Many in the computer industry believe that software should be free.  This belief often surfaces when talk turns toward protecting newly developed Web apps with patents.  Indeed, a strong under-current exists resisting such software patents.  Yet, U.S. law is clear.  If a web (or other computer) application otherwise meets patentability requirements (e.g., it is new, useful, non-obvious, etc.) the computer application merits patent protection even if it implements a business method.  See In Re Bilski.

Yet the resistance to patenting software persists.  In many ways that attitude is understandable.  Speaking as a former programmer, I never wanted to re-create the wheel.  Let’s face it.  Coding and debugging can be tedious and frustrating.  Why go through all of that effort when someone else developed a suitable application?  For another thing, don’t we want to direct new efforts toward creating new and better services?

Therefore, those who advocate for free software, unfettered by patents, suggest that software developers should be free to give away their creations.  IP (intellectual property) advocates, in contrast, favor letting developers benefit from shedding their blood, sweat, and tears creating new services. 

Fortunately, U.S. patent law allows software companies freedom to choose between these approaches.  Companies that want to give away their technology can.  The existence of myriads of General Public Licenses (GPLs) stands as tribute to their choices.  In contrast, the, thousands of software patent applications stand as tribute to the flip side of that freedom. 

Of course, the rub comes when a free software advocate wants to re-use patented software.  They have to pay royalties or risk an infringement lawsuit.  They do, though, have another option: developing a competitive, non-infringing service.  The latter option represents what the patent system seeks to foster: choice for end-users between competing technologies.  That result benefits us all.

For more information regarding patent applications and Web apps please see www.villhardpatents.com or contact us at (512) 897-0399.

Basic Patenting Process Timeline

Entrepreneurs have repeatedly asked this blogger for a basic timeline of the patenting process.  Because such a short article cannot begin to explore all of the forks in the road (or all of the details) of the patenting process I've been reluctant to try and summarize the timeline.  That being said, and because I could no longer leave your sincere requests un-answered, here is an ABBREVIATED TIMELINE  (with times measured before and after the filing date):

T-12 months: Legal cutoff for including subject matter that was involved in a “public disclosure” in the application.  See The First Three Things Entrepreneurs Need to Know About Patents.

T-3 or 4 months: Deadline to avoid paying most patent attorneys “rush” fees.

T-1 month: Draft application likely to be provided to you assuming you engaged a patent attorney in a timely manner.

T-2 weeks: Your final comments on the draft are usually due.

T0: Filing date.  Begin marking pertinent products with “patent pending.”  WARNING: OFFERS FOR SALE OF AND/OR ATTEMPTS TO COMMERCIALIZE products/services incorporating a potentially patentable idea can INVALIDATE THE APPLICATION under the America Invents Act.

T+12 months: Foreign application filing deadline.

T+18 months: The Patent Office publishes the application, it becomes public knowledge, and loses any trade secret status that you might have otherwise preserved.

T+2 to 3 years: First substantive review by the Patent Office is likely.  “Prosecution” (i.e. argument with the Patent Office) is likely to continue over issues and for a time that are unique to each application. 

Either abandonment or allowance follows prosecution.  It is impossible to predict which will occur or when.

Issuance: The right to exclude others from infringing the claims of your issued patent begins.

3 to 3.5 years from issuance:  The first maintenance fee is due for issued patents.  Maintenance fees are also due at 7 and 11 years from issuance.

T+20 years: The patent expires.  The technology described by the claims enters the public domain.

So much remains to be discussed about the patenting process that I invite you to visit www.villhardpatents.com and/or contact us at 512-897-0399 if you have specifice issues not addressed by the abbreviated timeline presented above.