Category Archive:patent rights

ByCarolyn Keane

Why Outsourcing Your Invention’s Reviews Increases Efficiency

Image credit: Mila Supinskaya Glashchenko/Shutterstock

Determining whether your invention will be successful or not is an integral part of being an entrepreneur. Here are three reasons inventors are outsourcing the review process to increase efficiency.

When entrepreneurs and companies invent new products or technologies, they are understandably reticent to share their ideas with outsiders. After all, the business landscape is cut throat. They do not want to risk giving away their competitive edge. Still, most entrepreneurs are aware they need some feedback to ensure that their ideas are viable. They may form an internal review team to analyze their prototypes and conduct a market analysis.

While this choice may seem logical, internal invention reviews can be a waste of time and money. External reviews are a smarter choice. For instance, consider independent taste testers, who food companies outsource sensory testing of their products to in order to capture a broad and objective range of preferences. Beware of in-house reviewers, who are often incapable of delivering the objective analysis and insights you need to make sure your product does not fail.

Internal vs. external reviews

We will come back to the point about internal reviews inherently being nonobjective. There are additional reasons to outsource the invention review process. For starters, internal reviews can require significant time and money. Since the team members tasked with the review are employees, they may have to balance this assignment with their other responsibilities.

Generally speaking, internal reviews can take up to 30 hours at minimum, although they can take up to 30 days at larger companies. If you are paying employees over $75,000 per year (and, in the case of an attorney, far more) and you assign several people to the task, you are looking at thousands of hours and potentially hundreds of thousands of dollars to conduct your internal reviews, when they could be working on developing the top ideas and technologies instead. Be aware of where you’re spening money, as very little of your review expenses should be on the front end.

In addition, internal reviewers are not necessarily trained to conduct these types of analyses. A quality product study includes thorough research into your market, competitors and patent prospects. Someone who is not trained to vet ideas for commercial potential will not be able to generate the level of insights and recommendations you need to screen a technology. By comparison, external teams specialize in product analyses.

Privacy can be a concern when inviting outsiders to review your ideas. However, a non-disclosure agreement or confidentiality clause can prohibit external reviewers from revealing any sensitive and proprietary information. There are both legal and business incentives to adhere to these guidelines as the reviewers want to build a reputable business and are not in the business of stealing ideas for themselves. If the right safeguards are in place, you can trust that the review process will not expose your business’s important competitive information.

Here are three ways in which an outside review is more advantageous than an internal report.

Speed

Unlike your team members, review agencies focus solely on compiling invention reports. They can turn around an analysis much faster than your internal staff, and it will include a SWOT analysis, competitive research and intellectual property (IP) research – all the information you need to decide whether to move forward.

Cost

While some consultants charge high rates, many third-party vendors offer fast and affordable services. Instead of paying salaried employees to produce a lackluster review, you can secure a top-quality analysis at a fraction of the cost, freeing up your employees to concentrate on the development of your best ideas and IP assets.

Objectivity

I promised we would come back to this and saved it for last because I cannot stress it enough. When it comes to evaluating your commercial prospects, objectivity is everything. You need input from professionals who have no stake in the product’s performance. A third-party team is solely concerned with getting you informed answers and giving them to you with no pretense. Their jobs and egos do not depend on your product’s success. Those are the people you want reviewing your invention because then you will have solid feedback and perhaps fresh insight into whether your idea can be successful.

The worst thing you can do for your company is go to market blindly or with misinformation. Sourcing high-quality evaluations from professional invention reviewers will provide you with the necessary knowledge to help your company succeed. Whatever the reports contain, it will give you the knowledge to make informed decisions and develop ideas the world really needs and wants.

Why Outsourcing Your Invention’s Reviews Increases Efficiency

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ByCarolyn Keane

Pro-Patent Bills Are In Congress. Why That Matters

The patent troll narrative has dominated our cultural consciousness ever since a clever Intel lawyer coined the term in the early 2000s. Even if you know nothing about patents, you’re probably familiar with the concept. Companies with no intention of producing anything buy up overly broad patents to extort other businesses with. Do you remember when the podcast This American Life devoted not one but two episodes to the subject? I do.

It was so persuasive that legislation — the Leahy-Smith America Invents Act (AIA)— was passed in 2011 to address it. Congressman Thomas Massie (R-KY), an award-winning inventor and successful entrepreneur, began his term the year after Congress passed the AIA.

He perceived the legislation would be damaging, he told me in a phone interview earlier this month, and he was right. It has been. (Read some of the reasons why I believe independent inventors are in danger.)

As an undergraduate at MIT, Massie invented a haptic computer interface in 1993— enabling users to “feel” virtual objects. His thesis advisor encouraged him to reach out to the technology transfer office on campus. With the university’s help, he obtained patent protection. Without it, he is certain he wouldn’t have been able to raise the funds he needed to commercialize the initial prototype.

It took three to four years and $9 million dollars to create a version for consumers.

Thirty patents stem from his initial invention and improvements. Now owned by 3D Systems, his technology is still in use today.

On June 28th of this year, he introduced the Restoring American Leadership in Innovation Act of 2018 into the House of Representatives (H.R. 6264). It is co-sponsored by Congresswoman Marcy Kaptur (D-OH) and Congressman Dana Rohrabacher (R-CA). Its goal is to roll back some of the “worst parts” of the AIA, Massie said.

Others have been sounding the alarm about the adverse effects of the AIA for some time now. They include the Innovation Alliance — a group of research and development-based technology companies from a range of industries, including Qualcomm­; patent experts writing on IPWatchdog.com and for the Center for the Protection of Intellectual Property; innovation policy advocates at Inventor’s Project; and activists from US Inventor, a not-for-profit.

To Massie, the relationship between strong patent rights and the incentive to innovate could not be clearer.

“Ideas never get developed if no one can recoup investment from them,” he explained. If ideas were made free and anyone could develop them, he thinks there would be less development of ideas — not more.

Notably, H.R. 6264 abolishes the Patent Trial and Appeal Board (PTAB), the body established by the AIA to review new kinds of patent challenges.

One very successful inventor I know has been tied up in the PTAB system ever since an infringer challenged his utility patent. It’s been years now. Before the AIA, he earned sizable royalties from a licensing agreement for 10 years uneventfully. Originally issued 13 claims, after battling seemingly endless rounds of appeals, he’s down to one. Meanwhile, while his patent remains under re-examination, infringers have flooded the market and sales of his invention have been cut in half.

Massie’s bill explicitly restores patents as a property right, which would reverse a recent Supreme Court decision. As he put it, “Who is going to build a building on a piece of property when someone could say two years later, ‘We reviewed your deed, and you don’t own this property.’”

In its attempt to police malevolent actors and rid the system of overly broad patents, did Congress tip the scales too far against independent inventors and small business owners? Maybe.

“It’s an economic decision, whether to steal or license. Which is cheaper?” Massie explained. There’s even a phrase for it: Efficient infringement. In 2015, Joe Nocera described it as follows in his New York Times op-ed “The Patent Troll Smokescreen.

That’s the relatively new practice of using a technology that infringes on someone’s patent, while ignoring the patent holder entirely. And when the patent holder discovers the infringement and seeks recompense, the infringer responds by challenging the patent’s validity.

Not everyone agrees, of course. For some, the patent troll issue reigns supreme. There really are far too many bad patents, that perspective contends — which is why processes like inter partes review (IPR) are necessary and good. Filing an IPR is cheaper than going to court.

Andrea Evans, an IP attorney who spent five years examining patents and trademarks at the USPTO, sees that as a potential benefit. She recently celebrated her firm’s 11th anniversary.

“I do think the Patent Trial and Appeal Board is necessary, because I like the idea of having a resource for people who cannot afford to go to federal court. It’s a faster process and less expensive,” Evans noted, adding that it must be policed properly.

Evans hosted the first day of a conference of inventor group leaders from across the country put on by Inventors Groups of America, an organization I co-founded last summer. It took place at the United States Patent and Trademark Office with the help of the United Inventors Association. We were all cheered when Andrei Iancu, the new director of the USPTO, stopped by unannounced to deliver a supportive message.

To read the rest of the article click here:

Pro-Patent Bills Are In Congress. Why That Matters

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ByCarolyn Keane

A Counterfeiting Operation Ripped Off 2 Inventors. Then They Fought Back, and Won.

When a company copied their invention, Natasha and Fred Ruckel began investigating — and got an inside look into how products are ripped off.

On Valentine’s Day in 2015, Natasha Ruckel and her husband, Fred, were sitting in their living room in Gilboa, N.Y. Natasha was improvising on the piano, and Fred was listening while messing around with the couple’s cat, Yoda. Fred noticed a ripple in the living room rug, forming a half circle on one side. Again and again he tossed toys into the ripple and a delighted Yoda darted in and out. Natasha looked up from her playing. “That’s when we came up with the idea for the Ripple Rug,” she says.

The Ruckels, who had spent around 25 years earning their living in marketing and advertising for brands from PepsiCo to ESPN to Hasbro, were already in the midst of creating their first venture: an app that provided a way for amateur photographers to monetize online images. But they both agreed that the Ripple Rug was a better bet.

A couple of days later, Fred went to Home Depot and bought some cheap pieces of carpet, and they got to work on a prototype. When they had that, they launched a Kickstartercampaign in May 2015, pricing the American-made product at $39.95, to test the market. Within 30 days, they received $15,000 in backing. They had the products made in Georgia for $15 each, and filled the orders.

The Ruckels were weighing their next step when, that fall, the opportunity of a lifetime hit. QVC, in conjunction with the Today show, hosted an ongoing competition called the “Next Big Thing” for entrepreneurs with new retail products. Participants presented their offerings on the TV program, and the winning products received an order from QVC.

Following an arduous vetting process — including proof of a multi­million-dollar insurance policy, a guarantee of having 1,500 items available for sale and sample videos of the Ruckels in pitch mode — Ripple Rug made the cut. “We drove into New York City, and at every exit, we practiced the pitch,” Fred remembers. “We were there by 5 a.m. and hardly slept the night before.”

They sold a few hundred units immediately. QVC bought 1,500 more and Ripple Rug became a top seller. “It was pretty damned amazing,” says Fred. “We were profitable out of the gate, which is virtually unheard of. It felt like a great moment.”

It was, and it wasn’t. Over the next 14 months, the Ruckels learned that coming up with a truly original innovation attracts not only devoted customers but also the kind of highly organized, deep-­pocketed bootleggers who rip off products and systematically grind their inventors into the ground — both financially and emotionally. “It creates so much discord that you are willing to give up the dream of entrepreneurship and go back to your day job,” says Fred.

In the thick of battle, however, the Ruckels learned critical lessons: the importance of copyrighting assets before launching; the reality that people will steal everything from your marketing pitch to your product to your advertising photos; the need to continually patrol for ripoffs and take action. They also got a darkly fascinating glimpse of how ruthless, well-funded, deeply sophisticated bootlegging operations work — and how, with tenacity, vigilance, a good lawyer and the right strategy, they can be beaten.

To read how they won, here is the rest of the article:

Counterfeiting Operation Ripped off 2 Inventors. Then They Fought Back and Won

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ByCarolyn Keane

New Licensing Model Offers Free Patent Licenses to Startups and Small Businesses

Earlier today, iPEL, Inc., launched its new website and a brand-new model of patent monetization, which offers free and paid licensing options to operating companies.  iPEL has also defined a set of business practices that a Non-Practicing Entity can follow in order to call itself an Ethical NPETM.

iPEL was formed with $100 Million in initial capital, in May of 2017, by Brian Yates, a well-known patent monetizer, and Rasheed McWilliams, a respected patent trial attorney.  For the last year, iPEL has been actively building its worldwide patent portfolio, which currently includes more than 1,000 distinct patent families.

iPEL announced its Initial License Offering, available only through the end of 2018, which provides all companies an opportunity to secure a license to iPEL’s entire worldwide patent portfolio, through one of two licensing programs: (1) free licenses for small businesses and startups, and (2) paid licenses for larger businesses.

Both categories of licenses should be a welcomed change for operating companies, who historically learned of patents owned by one of Mr. Yates’ companies by being sued. Indeed, the dozens of NPEs that Mr. Yates has owned were often amongst the most active patent plaintiffs in the US and were responsible for more than 1,000 patent infringement lawsuits, against a majority of the companies on the Fortune 1000.

With iPEL, it seems clear Mr. Yates is intent on pursuing a very different monetization model. “It’s pretty funny,” said Mr. Yates. “Several people thought I retired or left the patent monetization business, because during the last year, I have not created dozens of new NPEs or filed hundreds of new patent lawsuits.  But, I just turned 43 years old, and I have no desire to retire anytime soon.  I love what I do and am incredibly proud of what we are doing with iPEL.  And, even though it has been fun keeping the details of iPEL a secret, it’s going to be a lot more fun watching iPEL impact the entire innovation ecosystem.”

Although Mr. Yates and Mr. McWilliams would not share the full scope of what iPEL has planned, it is clear that they want to change the NPE narrative.  Providing a defined list of best practices and clearly defined pre-litigation licensing options are definitely new talking points for NPEs.

Even the most vigilant anti-NPEs, however, will have a hard time criticizing iPEL’s offer to grant small businesses and startups a completely free, no strings license to its entire patent portfolio.

iPEL’s free license is available to any company whose gross annual revenues do not exceed $5 Million USD (or the equivalent in any other national currency) and is for a one-year term.  Although the license is renewable, it is not available to affiliates or subsidiaries of larger entities that do not meet the revenue restrictions.

“We know that small businesses and startups are the most likely to engage in paradigm-shifting innovation” said Mr. Yates, CEO of iPEL. “Those companies are not afraid to take risk, to ask big questions, or to dream. Unfortunately, in almost all instances, those same companies cannot afford to buy all of the patent licenses they need in order to implement their new technologies. iPEL wants to help these companies succeed, by giving them a large portfolio of patented technologies, upon which they can freely build.”

“There is no reason patent licensing cannot and should not be a celebrated exchange of innovation and technology between those with rights and those who need to leverage those rights in order to produce and distribute products,” said Mr. McWilliams, President of iPEL. “Patent and technology licensing has been a part of the fabric of American culture since the earliest days of our history as a nation.”

“Regrettably, patent licensing has become a maligned practice over the last decade in the United States,” said Mr. Yates. “This has allowed the many benefits of patent licensing to lay unrealized, and for innovation to stagnate. My hope is that by giving free, non-exclusive rights to iPEL’s valuable patent portfolio, startups and small businesses will create more jobs and create exciting new technologies.”

Of course, there is a self-serving piece to what iPEL is doing as well. If startups and small businesses do successfully build on the patents in iPEL’s portfolio, then they will at some point becoming paying licensees. “Sure, it just makes good business sense really,” said Mr. McWilliams. “These small companies don’t have the ability to pay for patent licenses, and a patent infringement lawsuit could cripple them before they even get started. We’d love for them to build on our valuable technologies without worry, and once they can afford it, purchase an ongoing license. It is a win-win for everyone.”

At the end of the day, iPEL hopes this new, startup-friendly model becomes an industry standard. “Despite the false narrative that has been spread by many willful infringers, NPEs are a vital part of innovation and the global economy.  And, at iPEL, we are holding ourselves to the highest professional standards, by giving all companies an opportunity to secure licenses on reasonable, pre-litigation terms.  And, small businesses and startups should never be afraid of an NPE jeopardizing their company.  For those reasons, we challenge the rest of the industry to follow our lead,” Mr. Yates said. “It is time for NPEs to stop allowing infringers to define us as a bunch of heartless monsters. Everyone should abide by the Ethical NPETM practices and support small businesses and startups. It’s simply the right thing to do.”

More information about iPEL’s Ethical NPETM criteria, its worldwide patent portfolio, and its free and paid licensing programs, is available at www.ipel.com.

New Licensing Model Offers Free Patent Licenses to Startups and Small Businesses

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ByCarolyn Keane

Bunch O Balloons Inventor Wins Infringement Case

Josh Malone, the inventor of Bunch O Balloons, won a $12.3 million judgement against Telebrands’ recently. Josh’s patents were challenged at the Patent Trial and Appeal Board (PTAB) and were found to be invalid. However, the Eastern District of Texas found that the patents were valid and also found Telebrands’ and others had willfully infringed the patents owned by Tinnus Enterprises and Zuru that cover the toy, Bunch O Balloons. Zulu and Tinnus are now looking forward to enhanced damages since the jury found willful infringement by Telebrands’.

Another patent used to protect the invention of Malone was challenged by Telebrands’, but the PTAB did not grant the petition for hearing since the same issues and the same prior art had been reviewed by the examiner in the application for patent. This may show that the tide is starting to turn in favor of the inventor in further reviews of patents in this on-going battle.

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