| Patent numbers are issued sequentially, beginning with | | | | Producers of intellectual content properties (movie |
| the number one. Patent number one was issued to | | | | studios, record labels, book publishers) are very |
| Samuel Hopkins on July 31, 1790. It took 75 years for | | | | hesitant to accept unsolicited proposals for review. |
| the United States Patent and Trademark Office | | | | “The Da Vinci Code” saga is the reason. |
| (USPTO) to issue patent number 1,000,000. Patent | | | | Legal action is rife in the area of intellectual property. |
| number 7,000,000 was issued February 14, 2006. It | | | | We all remember things that we saw, heard or |
| took only seven years for the USPTO to move from | | | | experienced from the distant, but dim past. |
| issuance of patent number 6,000,000 to 7,000,000. | | | | Regurgitating a variation of that experience may find |
| What does this mean? Simply, there is more | | | | its way to the written page. Voila, was this material |
| creativity now that at any time in history. The old | | | | plagiarized? |
| saw that “there is nothing new” is | | | | Mattel and Hasbro will not review ANY outside toy |
| completely wrong. There has never been so many | | | | submissions. Is it not coincidental that there has not |
| people and entities creating novel, unique products, | | | | been a breakthrough toy introduction in years from |
| technology and services, and so driven to | | | | Hasbro or Mattel? This is one of the unfortunate |
| commercialize these inventions. More patents and | | | | byproducts of a litigious society, the limits placed on |
| entrepreneurs attempting to market their products is | | | | needed innovations. Protect your intellectual property |
| indicative that there is more competition for | | | | with a Copyright. |
| successful placement. | | | | I recommend to my clients, before spending a dime |
| It is essential that entrepreneurs protect their | | | | on a patent attorney, that they perform a cursory |
| inventions. This is a form of insurance. To attempt to | | | | search at the USPTO.Gov web-site by providing all |
| market an invention without covering the work with | | | | obvious key words applicable to their invention. If a |
| the shield of patent, trademark, copyright or trade | | | | number of patented products come up, and they are |
| secret protection indicates a frivolous approach that | | | | spot-on their idea, the item might not be a candidate |
| will not succeed. Investors, licensees, and investors | | | | for a filing. If the field seems open and clean, then I |
| demand the protection that these intellectual | | | | advise hiring the patent attorney to conduct a |
| property products afford. Even if the entrepreneur is | | | | professional, thorough search. The in-depth search will |
| going to self-market the invention, protection is | | | | confirm the potential for successfully obtaining patent |
| essential in order to fend off competition. | | | | protection. |
| A pharmacist in Atlanta, at the beginning of the 20th | | | | Patents are the preferred style of protection for |
| century, created a formula for syrup that he sold at | | | | most inventors and entrepreneurs. Patents (utility) |
| the soda fountain in his pharmacy. John Pemberton | | | | are very powerful agents of defense against |
| mixed the syrup with soda water and sold drinks of | | | | predators, thieves and knock off artists. Not to be a |
| the concoction as a wellness beverage to cure aches | | | | boor, but, again, utilize the services of a patent |
| and pains. Mr. Pemberton had created Coca-Cola. He | | | | attorney. I am always amazed and amused at how |
| never anticipated that Coke would become an | | | | many people think they can successfully write, |
| international comfort product, the soft drink. The | | | | provide highly specific 3-D CAD art, file, handle |
| smartest thing John Pemberton ever did, besides | | | | USPTO objections and move the patent through the |
| inventing Coca-Cola, was to handle the secret | | | | labyrinth of a Federal Government bureaucracy. Go |
| formula for the syrup as a Trade Secret. To this day, | | | | Figure! They waste time and money, and usually |
| the Coca-Cola Bottling Company zealously protects | | | | negate any opportunity to have a re-filed patent |
| the ingredients and chemistry involved in producing | | | | successfully obtain a patent number. |
| the base syrup that is the essence of classic | | | | The Provisional Patent filing is basically a letter that is |
| Coca-Cola. | | | | placed on file with the USPTO. The Provisional filing |
| Big Boy Restaurants protects the recipe for the | | | | advises the USPTO of the description of the product |
| tartar sauce that goes on their sandwiches, and that | | | | you are attempting to develop. The letter has a |
| many customers buy by the bottle and take home. | | | | one-year life cycle and must be extended with a |
| McDonalds doggedly protects the process their | | | | formal patent filing (Utility or Design) or the product is |
| restaurants utilize to cut, cook and season their | | | | vacated forever. |
| French-fries. William Wrigley was just as manic in | | | | We utilize the Provisional Patent as a fully legal way |
| keeping secret his technique for delivering powerfully | | | | to state that a product in early stage development is |
| flavored, long lasting, chewing gum. | | | | Patent Pending. This filing is also very inexpensive |
| Trade Secrets typically are not able to secure patent | | | | relative to a design or utility patent. A Provisional |
| protections. The novelty of the Trade Secret is in | | | | Patent filing also enables the entrepreneur to have a |
| the blending, chemistry or chronology utilized to | | | | one year time window to test and gauge market |
| deliver the finished product. If you have such a recipe | | | | response to the invention. If reaction is positive, then |
| you will want to keep this knowledge very near, as it | | | | it reinforces the necessity of continuing to devote |
| can become very dear. If the public knew the | | | | assets to further development of the opportunity. |
| formula for Coca-Cola, quite possibly there would be | | | | The Design Patent simply covers art features noted |
| a lot of consumers keen to blend their own drink at | | | | in the application. This is the weakest form of patent |
| home. Coke would not like that! | | | | protection. A competitor only needs to change a |
| If your product has the potential and necessity to | | | | design element, cosmetic feature or add an artisan |
| become a Trade Secret you will want to follow | | | | variant to overcome a Design Patent. However, for |
| several very basic steps. First, write down every | | | | products that have real commercial potential, but |
| event related to the development of the formula. | | | | cannot overcome prior, existing product art to obtain |
| Keep a logbook with the data, dates and details of | | | | a Utility Patent, the Design Patent offers one |
| your work. As you finalize your development work | | | | potentially important benefit: the option to keep a |
| memorialize all of the steps essential to delivering the | | | | product suspended in ongoing Patent Pending status. |
| finished product you wish to keep secret in a recipe | | | | We have done this on a number of occasions. A |
| or summary document. Then store in a very secure | | | | simple amendment to the initial filing means that a |
| place (a safety deposit box, or safe) all of the work | | | | bureaucrat at the USPTO must find the file, pick it |
| product and the recipe or formula. | | | | up, insert the amended filing detail and re-log the filing. |
| The Trade Secret gains incredible asset value when | | | | As a result the filing goes to the back of the line and |
| your product becomes a market success. Selling a | | | | we gain months more Patent Pending protection. |
| business built around a fully protected Trade Secret | | | | Why go through all of this? When a product is in |
| exponentially increases the value of the company. | | | | Patent pending mode it has ultimate protection. When |
| Coca-Cola, Betty Crocker, Duncan Hines, Oil of Olay, | | | | a patent number is issued the clock starts ticking on |
| Schlitz, Dom Perignon, Ben and Jerry’s and Estee | | | | the effective life of protection and details of the |
| Lauder’s Youth Dew are only a few examples of | | | | novelty of the patented product become public |
| famous brands built around a Trade Secret. | | | | knowledge. Your product is obviated. It can be |
| A Trademark is important in developing brand | | | | amazingly simple for the less than scrupulous knock |
| awareness for a product. Use a Patent Attorney | | | | off artist to engineer around your inventions unique |
| when approaching the highly specialized area of | | | | features and benefits. |
| seeking Trademark protection. I have never seen an | | | | By keeping a product in Patent pending limbo we |
| entrepreneur successfully navigate the very complex | | | | keep the features shrouded from any public |
| workings of the USPTO. I HAVE seen many | | | | awareness. This often leads to a first to market |
| attempts to handle the process, all resulting in | | | | advantage and competition is only aware that there |
| complete failure. | | | | is a Patent pending. The added time that the product |
| The content of a Trademark can include a | | | | obtains, to build and extend sales traction, and begin |
| customized, identifying icon, stylized brand name and | | | | the branding process is exponentially more valuable |
| a branding statement. Nike uses the famous slash | | | | than the legal fees required to keep adding |
| (icon) the Company’s name (recognizable stylized | | | | elementary addenda to the Design filing. You want to |
| font) and “Just Do It!” (branding statement). | | | | be first to market, and have as much time as |
| Include all of the elements that the public will | | | | possible to stand-alone in a market. |
| recognize in your Trademark application. | | | | The Utility Patent is exceedingly valuable, both as a |
| Look around at local, regional, national and | | | | protective shield against competition and as a |
| international companies and brands that you see | | | | business asset. The invention that receives a Utility |
| every day. Pat’s Cheese Steaks in Philadelphia is | | | | Patent number from the USPTO is potentially of |
| a local business that has gained great fame and brand | | | | interest to licensees, partners, investors and venture |
| recognition and protects their brand with a | | | | capital. Most patented products (Utility), however, |
| trademark. It is a destination for visitors to Philly. | | | | never make it to market. We often see inventions |
| Chanel, the French haute couture brand, is | | | | that are novel, and thus patent possible, but not |
| internationally revered and the classic “C” | | | | commercial, or needed, or beneficial. We all know a |
| that adorns every unit of Chanel product is one of | | | | mad scientist or two, with endless designs, inventions |
| the most recognized brand icons in the world. Truly | | | | and patents, none of which are ever going to be a |
| Nolen, the national pest removal service, trademarks | | | | market success. |
| the mouse ears seen on every piece of sales | | | | The Utility Patent protects the novel features and |
| collateral, advertisement and service vehicle the | | | | benefits that the application describes in great detail. |
| Company uses. | | | | The patent attorney will narrate the unique aspects |
| Owning a Trademark confers an obligation to police | | | | of your invention. They will also mention other |
| and protect the assigned mark. The inclusion of ™ | | | | patents near your space but painstakingly note the |
| on every unit of product is essential. Again, consult | | | | differences inherent to your invention. In addition, a |
| an attorney. Trademarks can inadvertently become | | | | great deal of effort will be devoted to creating 3-D |
| vacated and lost. | | | | Computer Assisted Design art that portrays your |
| Copyrights are utilized to protect intellectual property. | | | | product from every possible angle and graphically |
| Movie content, poetry, music, books and plays are | | | | depicts the uniqueness of your product. |
| copyrighted. We have worked with clients on a | | | | Utility Patent filings rarely sail though the USPTO |
| number of video and board games. We always | | | | without being challenged. A competent patent |
| copyright the rules and/or the play features of the | | | | attorney often anticipates the weakness in a filing |
| game. | | | | and has a sheath of retorts ready to address the |
| Recently, Dan Brown, the writer of the wildly | | | | examiners concerns and questions. This re-directs the |
| successful book the “The Da Vinci Code”, | | | | file back into the bureaucracy at USPTO. I tell my |
| was suited for plagiarism by the British authors of a | | | | clients that they can expect up to an 18-month wait |
| book about the search for the Holy Grail. The search | | | | before receiving notice of the USPTO decision. |
| for the Holy Grail is central to the plot of the | | | | However, on several complex filings, I have seen the |
| “The Da Vinci Code”. There are full library | | | | process take up to six years. |
| shelves devoted to the search for the mystical Holy | | | | Believe me, it is worth the work, the wait and the |
| Grail. And yet, during the run-up to the movie release | | | | investment if a successful outcome from the USPTO |
| of “The Da Vinci Code” a legal action | | | | is achieved. A Utility Patent conveys gravitas. The |
| involving this intellectual property was commenced. | | | | invention has stood up to the most stringent scrutiny |
| Brown and his publisher vigorously defended their | | | | and been accorded the most highly desired verdict: |
| rights under their Copyright protection. They won full | | | | this invention has import. |
| vindication from the court. | | | | |