Invention Protection from Preying Vultures

Protecting Your InventionAll of us at one time or another have probably thought about creating a product or inventing a process to solve a problem. The United States Patent Office receives more than six hundred thousand applications for invention protection each year.

Equally as great is the desire to police and protect existing patents.  Llitigation costs on the resolution of a patent challenge will often run into the millions.

Let’s find out what we should know about patent applications and protection to keep preying vultures at bay.

WHAT YOU’LL LEARN FROM GREGORY AHRENS, INTELLECTUAL PROPERTY ATTORNEY AT WOOD, HERRON & EVANS LLP

WHAT SHOULD AN INVENTOR DO BEFORE APPLYING FOR A PATENT?  (1:22 in)

In Greg’s words – Documenting their invention and the process they’ve gone through to come up with the invention and secondly some preliminary research to determine what other patents or prior inventions already exist.

Insight – The status of what currently exists plays a major role in determining the viability and scope of a patent. The first inventor to file, not when it was invented is key.

HOW LONG DOES THE PATENT APPLICATION PROCESS TAKE? (3:18 in)

In Greg’s words – It can take from several weeks to a couple of months.

Insight – The timeline depends upon the complexity of the description and drawings as well as the investigation into other patents or applications similar to the one that is to be filed.

ARE THERE LIMITATIONS TO A PATENT’S INVENTION PROTECTION? (3:58 in)

In Greg’s words – The term of the patent is 20 years from the original filing date of the patent application. The patent may have broader or narrower scope depending upon what other patents and products pre-existed at the time the invention was created.  

Insight – Don’t assume a patent protects you from all competition.

HOW DO YOU DETERMINE WHETHER A PATENT IS BEING VIOLATED? (4:54 in)

In Greg’s words – Do an infringement analysis. Evaluate whether the product that may infringe   has all of the required elements.

Insight – Pursuing an infringement case will probably be futile if the product in question doesn’t possess all of the required elements of the patent holder for invention protection.

HOW DO YOU DECIDE WHETHER TO TAKE LEGAL ACTION AGAINST AN INFRINGING ENTITY? (6:07 in)

In Greg’s words – It’s a business decision. How important is it to the company to police the marketplace.

Insight – Determine the value of the patent to the business versus the cost of litigation or the cost of getting an injunction to stop use.

WHAT CAN YOU DO TO PROTECT YOUR PATENT SHORT OF PURSUING LITIGATION? (8:26 in)

In Greg’s words – Companies can send a cease and desist letter. There’s one potential drawback. The recipient who has now been accused of infringement, they can then go to court and file a suit where they seek the court’s judgment that they didn’t infringe. An alternative, they can also establish a licensing program.

Insights– The goal is to prompt a dialogue between the parties in dispute. Weigh the probability of a reverse infringement lawsuit. As an alternative, consider creating a licensing program to collect royalties from others seeking to profit from your invention.

WHAT STEPS SHOULD A COMPANY TAKE IF THEY WERE ACCUSED OF INFRINGING UPON SOMEONE ELSE’S PATENT? (13:28 in)

In Greg’s words – One thing that should not be done is ignoring the notification. Determine if you have a defense. Engage in dialogue and try to seek resolution early.

Insights – Have your patent attorney do some research to assess whether you are an infringer or not. Based on the strength of your case, you may choose to go to court seeking a declaration against the charge. Or you could propose to become a licensee of the patent being contested.

Using Business Attorney Keeps Wolves Out of My Hen House

Business AttorneyAlthough small businesses face legal dilemmas or issues periodically, the majority of them are reluctant to contact an attorney. Maybe cost is a perceived problem or they’re unsure as to whether using an attorney is necessary. But as a business attorney reminds us today, it’s often lack of preparation for unanticipated issues that get a business into legal trouble.

WHAT YOU’LL LEARN FROM WILLIAM MITCHELL, BUSINESS ATTORNEY, CERTIFIED MEDIATOR

WHAT ARE SOME COMMON WAYS BUSINESSES GET THEMSELVES INTO TROUBLE?  (2:45 in)

In Bill’s words –   Failure to incorporate. Failure to have contracts in place. A handshake deal is not always the best approach.

Tip – Have documents in place for the formation of the business, how the business will run, work contracts, real estate, and what responsibilities each owner will have if there is more than one business owner.

ARE THEIR LIMITATIONS WITH USING ONLINE FORMS? (4:29 in)

In Bill’s words – You need to understand that documentation is only part of the equation.

Tip – Consider issues that may come up related to hiring practices, marital status, previous business relationships, bank loans, required operating records, etc.

HOW IMPORTANT IS IT FOR A COMPANY WITH EMPLOYEES TO HAVE WORK AND BEHAVIOR POLICIES? (7:30 in)

In Bill’s words – It’s critical that an employer have a well written employee handbook. The person that employs 7 to 15 people may need this more than a large company because the large company is sending out email reminders and annual updates. For small business, the employee handbook may be the only communication they receive.  

Tip – Make sure you review your handbook annually or bi-annually. Have a signature page to acknowledge that the employee has received it. Changes in government regulations, use of employer provided equipment like cellphones, and the use of social media demand it.

WHAT ARE COMMON MISTAKES WITH HOW BUSINESSES HIRE EMPLOYEES? (11:40 in)

In Bill’s words – Not establishing clear expectations for work, pay, vacations, personal time, use of company equipment. You have to be careful when you’re asking an employee to not do something that may be a constitutionally protected right.

Tip – Consider whether a non-compete agreement with an employee is appropriate.

HOW CAN A COMPANY AVOID LITIGATION WITH A DISGRUNTLED EMPLOYEE (15:12 in)

In Bill’s words – Having things in writing. One of the things that sometimes puts employers in hot water is not paying their employees when they terminate their employment. 

Tip – Have two people from the employer’s side involved in separation conversations.

WHAT’S THE RECOURSE FOR TROUBLE IN COLLECTING PAYMENT FOR SERVICES? (16:17 in)

In Bill’s words – After 60, 90, 120 days a simple letter from an attorney reminding them of what is owed may provide the right amount of motivation. 

Tip – Small claims court is available up to $3,000. Ask yourself how much of your resources do you want to spend to collect payment if going to court appears to be the only option.

IF I’M LOOKING FOR A BUSINESS ATTORNEY, WHAT DO I WANT TO FIND OUT? (18:31 in)

Tip – Inquire about how the attorney works and charges. Can the work you need done be completed on a flat fee basis? Decide on who you feel you’re comfortable with and can trust.