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Mar 30

A number of you have asked how to subscribe to The Inventor Lady.  While I’m no web maven, my web guy, Peter Bell, has advised that it’s actually very simple.

First, you need a default RSS Feed Reader.  For most of you, that’ll be whatever web browser you customarily use (i.e., Internet Explorer, Mozilla Firefox, Opera, Safari, etc.).  Your web browser will have an option that enables you to subscribe to RSS feeds.  Make sure that plugin is enabled.  Each web browser is different, but all of them have that capability built in.

As long as the RSS Feed Reader plugin is enabled in your web browser, you’ll be able to subscribe to The Inventor Lady simply by clicking the “RSS Feed” link under the heading “Subscribe” on the right side of the first page of my website (http://www.inventorlady.com/).  Doing so will bring up your browser on the subscription page for the website.   Once there, just click on the  “Subscribe to this feed” link near the top of the resulting page.  Voila!   Your web browser will then bring updates to you on your RSS Feed-enabled web browser function.

If any of you would prefer to receive updates via e-mail, instead of through your RSS Feed-enabled web browser plug-in, let me know and Peter will put you on my subscriber list for periodic updates.

Good luck and happy blog viewing.

Regards,

Rita

Mar 22

I had a client call me last week for the sole purpose of venting.  It seems that she had received an office action from the USPTO and was upset over how much it was going to cost her to have her attorney answer the office action.   Her telephone call caused me to reflect and resulted ultimately in my feeling that I needed to blog about this particular issue.

First, it’s important to always bear in mind a simple truth: inventing is expensive.  There is no way around it.  If you are going to pursue your invention, it is going to cost money.  The exact amount of money varies from case-to-case depending on the complexity of your invention.

Second, it’s important to keep things in perspective: obtaining a patent for the invention isn’t the most costly part of the process.  However, it does seem to be the one that draws the most ire.  It will cause you less stress if you keep in mind that these fees are paid over a period of years not all at the same time. 

To give you a better sense of how involved the process actually is, here’s a list of the most obvious costs in the patenting process:

  1. The first step is to have a professional search done.
  2. Second, you need a review of the search by an intellectual property attorney before you meet with an engineer or make final adjustments to your design.
  3. Third, have an intellectual property attorney draft an application for a utility or design patent.
  4. Fourth, when you’re ready to file, there are filing fees that have to be paid to the USPTO.  This is in addition to your attorney’s fees.
  5. After you’ve waited anywhere from 14 to 36 months, you should receive your first office action.  You will be charged for the attorney’s time to draft a response to this first office action.
  6. Additionally, if you’re not diligent and you fail to file your response before the appointed deadline, you’ll have to pay a penalty to get your patent out of “abandonment”.  This is what it is called when you don’t respond in time.
  7. Next, if there are no further office actions (generally not the case) and you get this far, there is a “Notice of Allowance”.  This means that the USPTO will issue your patent if you pay them the next fee which is around $800.
  8. Once your patent issues, however, you’re still not done:  there are maintenance fees that you have to pay periodically during the life of your patent.  All of the fees are listed on the USPTO website and your attorney can give you a list so that you know what to expect.

Don’t be caught off guard.  Always ask “what is this going to cost”.  Educate yourself on the patenting process.  There are plenty of resources out there.  We try to make sure every inventor knows what to expect, but you have to pay attention.

Mar 8

I recently had a call from a patent attorney who wanted me to introduce him to my clients so that he could offer to buy their intellectual property from them. He has, what is called, an “Intellectual Property Holding Company” or “IPHC”.

IPHC’s come in essentially three different flavors.  The first category consists of those whose purpose is essentially malevolent; they buy up IP, lie patiently in the grass and wait until a major company introduces an arguably infringing product, and then they pounce on that company with a lawsuit, demanding extraordinary damages.  The purpose of the lawsuit is not to pursue the actual litigation; rather, the purpose is to use the litigation to force a settlement in which the IPHC extorts a lucrative contract for licensing the patented technology to the infringer.  These types of predatory IPHC’s are commonly referred to as “patent trolls”.

The next category are tax-advantaged off-shore subsidiaries of major industrial corporations with significant amounts of IP.  These types of IPHC’s are set up principally as a tax dodge.  As a category, they consist of off-shore holding companies in tax-friendly jurisdictions that are set up exclusively to hold the parent corporation’s IP and therefore secure for the parent, favorable tax treatment when the earnings are repatriated to the U.S.

The last category consists of groups of individual inventors who decide to band together to better position themselves to ultimately monetize their IP.

I always approach IPHC’s, particularly the patent trolls, with a measure of caution.  And, while I do not know the type of business model being pursued by the company represented by my attorney caller, my antenna were up.  Nevertheless, I do believe that there are circumstances when selling one’s IP to an IPHC might be a good option for an inventor.  And, there are even some situations when I might actually recommend an IPHC to a client.

As a general rule, however, it’s my opinion that you have other options that will prove more lucrative for you and should be considered first. You will get a much better offer if you do the work that is required to get a good licensing agreement from a company that will manufacture and sell your product.  It’s hard work, it takes time and money, but the pay-off is much more satisfying.  Therefore, in most situations, selling your intellectual property to an IPHC should be considered only as an option of last resort. 

Remember: always be careful and get help.  When it comes to selling, licensing and otherwise monetizing your intellectual property, it’s complicated and the price of a qualified, professional advisor is miniscule compared to the amount of money you might end up leaving on the table.