Enablement: Suggestions on Provisional Patent Application Content

Patent Attorneys do not usually participate in the drafting of a provisional application.  Their (and/or their firm’s) role is limited to preparing certain forms associated with the filing, handling the mechanics of the filing, and setting up a reminder system so that the conversion of the application (due one year from the provisional filing) is not overlooked.  For these services, the lawyer’s fees typically run $1000 (or more).  There is also a Patent Office fee of either  $65, $130, or $260 (as of this writing) due depending on circumstances. 

While the services listed above might seem trivial, the Patent Office filing system is the epitome of a user-unfriendly website and can have even an experienced filer pulling their hair out with frustration.  If the filer hits one of the many potential roadblocks and has to file a hard copy provisional, the Patent Office currently assesses an additional $400 (or $200) fee.  Thus, speaking frankly (and acknowledging that the following statement is somewhat self-serving), it might be well worth the money to have a Patent Lawyer handle the filing. 

So, what should entrepreneurs include in their provisional applications?  One key is to “enable” someone of ordinary skill in the art (i.e. technology) to make, use, operate, etc. the invention.  Thus, the content will vary with the invention.  If it’s a product, engineering drawings are helpful if available.  If it’s an electronic device, schematics are helpful.  And if it’s software related then block diagrams, flowcharts, etc. can be worth a thousand words.  On that note, a textual description of what the invention is, what it does, etc. can add valuable information.  And, pictures (if appropriate) are also worth a thousand words.  

While this article IS NOT LEGAL ADVISE and is in no way a suggestion that a lay person write their own non-provisional application, the author hopes that it has given you some pointers on what to include in your provisional application.

If you do feel a need for legal advice regarding your invention, we at the Villhard Patent Group would welcome a discussion of your situation.  You can obtain more information about us at www.villhardpatents.com or you can call us at 512-897-0399.  We look forward to hearing from you.

Top 10 Intellectual Property (IP) Mistakes Made by Entrepreneurs

By popular demand, we are posting a “Top 10” list of IP related mistakes made by entrepreneur/inventors.  Without further adieu, here it is:

10. Under appreciating the potential patentability of their idea(s) particularly in the e-commerce fields.

9. Using open source software in their (otherwise proprietary) software thereby potentially exposing that software to free use under the open source “copyleft” agreement.

8. Performing alpha and/or beta tests without using an NDA (non disclosure agreement) with the testers thereby making a public disclosure of the tested software.  Such public disclosures can trigger a 1-year grace period for the filing of a patent application (in the U.S.).  In many other countries, the disclosed idea immediately enters the public domain.

7. Naming people who work for other companies as inventors (when they are not) thereby allowing those companies potential access to the underlying IP.

6. Naming a person as an inventor who only helped implement an idea without contributing to its conception (the hallmark of inventorship).

5. Failing to have proper IP clauses in their third-party contracts thereby creating an opening for these parties to use the IP.

4. Launching a product/service without performing a trademark search first thereby risking trademark infringement and/or risking an expensive re-branding of the launched product.

3. Failing to have a well-written NDA in place before publically disclosing a potentially patentable idea.

2. Writing their own patent applications thereby (almost always) introducing numerous fatal flaws into these “pro se” patent applications.

1. Making an offer for sale of a product/service incorporating a potentially patentable idea without first filing a patent application.  This action can place that idea in the public domain in the U.S. immediately.

Of course, reasonable minds can differ as to the ordering of this list.  And, indeed, there are likely some mistakes not listed here. 

But, we at the Villhard Patent Group would welcome a discussion of these issues and how they might apply to your situation.  For more information about us, see www.villhardpatents or call us at 512-897-0399.  We look forward to speaking with you.

Redskins Trademark Cancelation: An Offensive Foul By the Trademark Office

The Trademark Office committed a personal foul by canceling the Redskins’ trademark registration.

Registrations are personal property due all of the constitutional safeguards enjoyed by any other property.  For instance, the government cannot “take” property without compensating the owner.  Yet, that is exactly what occurred here. 

If Pro Footballs’ appeal fails, rebranding this franchise will cost untold millions of dollars.  Worse yet, if there is any merit to the cancellation, is that everyone will be free to use “Redskins” to refer to their football teams, to place it on clothing, to place it on sporting goods, etc.  Indeed, without federal protection, the cancellation will likely cause the use of the term to explode (notwithstanding the presumptively still valid state-based trademark rights). 

Ostensibly, the Trademark Office canceled the registration because the term disparages Native Americans.  Interestingly, the Trademark Office received not a single complaint (but for the lawsuit leading to the cancelation) against this famous trademark. 

That using a term to refer to a football team would disparage anyone seems a bit odd.  Every team name that comes to mind seems chosen to borrow the prestige, respect, and/or adoration of the selected mascot.  For instance, “Texans” borrows from the loyalty paid to the state of Texas.  And “Astros” borrows the respect due America’s astronauts. 

Over the years the Redskins have won great success with five NFL Championships victories (two pre-merger, and three Super Bowls).  They also captured 13 NFL divisional titles and six NFL conference championships.  It seems that this use of Redskins, if anything, enhances the reputation of Native Americans. 

That the government would harm a business at the behest of apparent mob mentality (a.k.a. political correctness) should give business owners who could be attacked next cause for concern.   

We at the Villhard Patent Group would enjoy the opportunity to speak with you about your potential trademarks and other intellectual property issues.  You can find more information about us at www.villhardpatents.com or you can contact us at 512-897-0399.