Hackathons and Intellectual Property (IP)

Hackathons offer a quick and efficient way to program new application but let me offer few words of IP-related caution. 

First, since most participants approach these events with collaboration in mind (a good thing) it seems likely that some joint-invention might occur.  In which case, you (as the owner of an original idea) might come out of the hackathon with a joint inventor.  That condition allows your coinventor to independently use any jointly created idea.  Where the line between joint and original lies can be hard to identify.  Moreover, the results can be catastrophic should the two of have a falling out.

Additionally, whether discussing a potentially patentable idea crosses the line and becomes a public disclosure can be unclear.  The lack of a written non-disclosure agreement (NDA) and the sheer number of participants who might learn of the idea raise issues too.  The consequences here include triggering the beginning of the one-year grace period for filing a U.S. patent application.  Rights to file many foreign patent applications vanish immediately.  Plus, someone might innocently (or not) “derive” their own patent application from your disclosure. 

Accordingly, this author suggests not bringing your potentially patentable ideas to a hackathon until you at least have a provisional application on file.  You should also document your idea in writing with the signatures of at least two witnesses to corroborate that your (emphasis in the original) invention occurred prior to the hackathon (i.e., prepare an “Inventor’s Notebook").  Obtaining NDAs from those you want to collaborate with and limiting their numbers would also be good ideas.  Of course, every situation will be unique and running your plans by a competent IP Attorney would go a long way to protecting you from these and other adverse consequences.

We at the Villhard Patent Group would be happy to discuss your upcoming (and past) hackathon activities with you.  You can find more information at www.villhardpatents.com.  You can contact us at contact@villhardpatents.com or 512-897-0399.  We look forward to hearing from you.

Numeric Criteria For Selecting Patent Attorneys

Patenting an idea often leads to uncertainty for those who have never applied for a patent.  Accordingly, many Entrepreneurs do not know what questions to use in selecting from among their candidate Patent Attorneys.  This article presents a trial (and non exclusive) list of such questions.  We welcome a conversation about them. 

First, how many non-spam un-answered emails that call for a response is the Attorney sitting on?  Anything over a residual amount is probably too much absent extenuating circumstances.

Secondly, how many unread non-spam emails is the Attorney sitting on?  Any number over a day or two’s backlog is probably too many.  IMHO, an unread email could reveal a crisis that, at a minimum, merits triage.

Thirdly, how many applications has the firm accidentally abandoned?  This answer probably ought to be near zero (as a percentage).  There are exceptions of course but more questions might be warranted.

Next, as a percentage of revenue, what fraction of the Attorney’s bills where challenged as being over-billed?  Naturally, billing disagreements will arise.  So a good follow up question might be what percentage of clients have challenged their bills?  Any percentage above the low-single digit range could bear further questioning.

Moreover, how much does the Attorney charge for routine reporting letters (those not requiring analysis of the situation)? Particularly in a flat-fee billing environment, being charged for these letters might be surprising.

Lastly, what is the ratio of Senior to Junior Attorneys?  Of course, firm structures vary widely.  But, where the ratio exceeds about 1:3 or about 1:4 the extent of supervision of the Junior Attorneys might bear further questioning.

In closing, answers to these questions will vary across a spectrum.  Moreover, these numeric criteria do not tell the whole story.  Many qualitative considerations come into play as we discussed at this article.  

We at the Villhard Patent Group would be happy to discuss your IP (Intellectual Property) issues with you.  For more information about us, please see www.villhardpatents.com.  You can contact us at contact@villhardpatents.com or call us at (512) 897-0399. 

An Open Letter To Congress: Re-Instate One-Year, On-Sale, Grace Period

Dear Member of Congress:

The purpose of this letter is to ask you to re-instate the one-year grace period for filing patent applications following an offer for sale of a product/service incorporating an otherwise patentable idea.

The transition of the U.S. to a first-to-file nation grabbed most of the headlines when the America Invents Act (AIA) came into full force on March 16, 2013.  However, a lesser-known provision might have far larger consequences than first-to-file. Most legal commentators seem to agree that the AIA eliminated the one-year grace period following an offer for sale. 

Those of us who speak before entrepreneur groups have watched as audience members become dismayed when they hear of the grace-period’s elimination.  After all, these entrepreneurs cannot wait to sell their innovative products.  Their investors want to see the associated revenue and, no doubt, the entrepreneurs’ families are hungry for the money too.

Moreover, our society desperately needs the jobs that these innovators create.  Four years into this anemic recovery, these entrepreneurs are leading the way.  Many got hit with layoffs during the Great Recession.  Yet, they dusted themselves off, came up with great ideas, and moved purposefully to market – employing themselves and others along the way.  They played by the rules and now this particular rule stands against them.

Many, in their zeal, did not know of the elimination of the grace period.  And, now, they have companies that have little or no chance of obtaining meaningful intellectual property protection.  This situation, of course, means that they can be ripped off and their companies will fail taking those jobs and their dreams with it.  

Accordingly, we are asking you to re-instate the grace period for on sale activities, make it retroactive to March 15, 2013, and do it now.

Thank You.

We at the Villhard Patent Group ask you to reproduce this letter and send it to your Representatives and Senators and to the President.  You can identify your Representative and Senators and obtain their mailing addresses here: http://www.govtrack.us/congress/members.  The President, of course, can be reached at 1600 Pennsylvania Ave, Washington, D.C.  20500.

Also, while we discourage spam as a rule, we’re willing to run the risk this time and would appreciate it if you could forward a link to this article to your fellow entrepreneurs. 

We at the Villhard Patent Group would be happy to discuss your intellectual property issues with you.  You can find more information about us at www.villhardpatents.com and you can contact us at (512) 897-0399 or at contact@villhardpatents.com.  We look forward to hearing from you.

Start a Business or Bust

A significant fraction of inventors fail themselves long before they seek advice regarding protecting their ideas.  More specifically, these inventors show up with no business plan and, often, no plan to start a business.  Instead, they believe that someone else will launch their idea for them.  Real life does not work that way.

For one thing, no one has as much confidence in your idea as you do.  These others were not present at its conception and did not participate in that necessity-to-invention transformation that gripped you.  Nor can they see all of the possibilities for it that you can.  Moreover, from their perspective they are being asked to take all of the risk, but share the reward. 

Instead of that approach, these inventors should graduate from mere inventor to Entrepreneur (caps intentional).  When you show up with prototypes and a business plan, others will take you more seriously.  Also, if you are actually out in your market, generating revenue, and honing your marketing plan you might find that you don’t need nearly as much help as you initially feared. 

That is not to say that your path will be easy or that you won’t need to make a significant investment.  But, there is no substitute for success.  And even a bit of success on your own will help convince others to assume some of the (now reduced) risk in return for a share of the potential rewards.

Of course you will want to have an Intellectual Property plan in place before you begin your marketing and sales activities.  The reason (as this blog as bemoaned repeatedly) is that the America Invents Act probably eliminated the one-year grace period for filing a patent application following an offer for sale of a product/service incorporating an invention.

We at the Villhard Patent Group would be happy to discuss your intellectual property plan with you.  For more information about us, see www.villhardpatents.com or contact us at contact@villhardpatents.com or 512-897-0399.

Buyer Beware: Form Preparation Companies and So-Called Patent “Applications”

An entrepreneur recently approached me with a patent application that was "prepared" by an online form-preparation company.  It was all that we could do to rescue the invention from that "application."  One thing is nearly certain with that application, the claims in any patent issuing from it will be worth only a fraction of the potential the idea holds.  

Please know that “caveat emptor” (buyer beware) applies to the preparation of a patent application.  For a mere $2500 this client bought the privilege of filling out a form and having the form company “mechanically’ file it.  To find out what he bought I recently perused some typical form company websites.  I found was that for several thousand dollars an entrepreneur can get an Attorney "consultation," several pages of "professional" drawings, several pages of specification, a fixed (and low) number of claims, and a fixed number of drafts.  

In comparison, a competent Patent Attorney will not only consult with you, they will pour their talent into your application.  They will also prepare the number of drawings that it takes to illustrate your idea: not stop at some arbitrary number.  Similarly, they will draft the specification until it adequately discloses the idea, not stopping at some arbitrary number.  Finally, they will prepare a full set of claims (20 total) allowed by the Patent Office standard filing fees unless you are willing to pay the Patent Office for more.

So again, caveat emptor.  

We at the Villhard Patent Group would be glad to discuss your situation with you.  For more information about us, see www.villhardpatents.com or contact us at contact@villhardpatents.com or (512) 897-0399.

Surprise, Surprise More IP Bills For You

A new client complained to me that their previous IP (Intellectual Property) Attorney surprised them with legal expenses incurred well after the filing of their patent and trademark applications.  So we thought a few words were in order about what follow-on legal fees you can expect in the course of pursuing IP protection.

First, the initial fees that you encounter upon filing an application usually cover just the preparation and filing of the application.  In the case of trademark applications, these might be the only expenses you incur if the application registers without incident.  However, if it s rejected, you can expect that the Attorney will require more fees to prepare a response to the rejection.  In some cases, a rejection might also necessitate additional Trademark Office fees.  In addition, if your application was an “intent to use” (ITU) application, you can expect to pay a governmental fee in order to file a “statement of use” and therefore obtain registration.  Once registered, you will also need to renew your registration several years after registration and will incur fees in doing so.  

Patent applications typically have quite a few more follow-on fees.  More particularly, the likelihood and number of rejections and is higher for patent applications.  The government also charges fees if your application is allowed and maintenance fees every four years thereafter.  Your IP Attorney will need to expend time handling these situations for you and will expect to be paid accordingly.

In closing, the fees listed here are just a sampling of those that you can expect post-filing.  But, keep in mind that most technology-based companies possess IP assets that need protection and that usually warrants a corresponding investment.

We at the Villhard Patent Group strive to educate our clients and prospective clients and hope that this article was useful to you.  In the meantime, we would be happy to discuss your IP situation with you.  For more information about us see www.villhardpatents.com or contact us at contact@villhardpatents.com or (512) 897-0399.