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Re: ASK THE EXPERT - LAWYER

Postby Mike Burke » Sun Nov 29, 2009 7:21 pm

Mike Burke
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Location: Melbourne Australia
This is an interesting topic and as I understand it an area that for most inventors has no shortage of pitfalls. Most like myself have more expertise in areas like design and engineering than in law, and are inclined to be distrustful of the legal profession. I think it would be fair to say that all those lawyer jokes don't help too much. I'll declare my vested interests lie is providing design services for my own and other people's inventions and that I've worked with Derek in the past, but that I want to throw a couple of questions back at the group and see what arises.

How do Patents provide protection across borders? I mean where do the jurisdictions start and end and what protection is it that you're afforded. Is the protection recourse to stop people from importing equivalent products or to stop them manufacturing them only? The implication being that a US patent may protect me from competition from US manufacturers or indeed Chinese importers I'm asking which, but I also wanted to know how I'm protected from a other manufacturers selling into Europe depending upon where they're from. It is the great big question of how many Patents do I really have to take out to protect my IP, and it is straight up and down a cost issue for me.

Secondly it is the question that everyone has but perhaps doesn't articulate clearly about what Derek and I have been doing thus far. What is wrong with using an NDA or similar contract to protect your IP until you find a manufacturer who is willing to take the product on? The IP component of any product not yet in production can be held outside the public domain and restricted to a few individuals under pain of compensation under the terms of whatever contract between you is breached. The fact remains that a well written NDA can be used on multiple occasions with different signatories and generally costs very little to obtain.

As an inventors some will recognise that you may well have to chop and change and perhaps develop multiple products before you meet with success and that even then you're archetypal dream of the pot of gold at the end of some rainbow takes the form of several products, one being insufficient to make a living from. It isn't just a matter of keeping your development costs to a minimum but of targeting your activities to achieve maximum payback on your investments over time. Strategies for how to do that with your design, marketing and legal requirements are all invaluable to successful inventors.

Re: ASK THE EXPERT - LAWYER

Postby apapage » Sun Nov 29, 2009 8:44 pm

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Derek Pater wrote:I find this subject very interesting and also Mindset problem with Inventors caused by the Legal People, these are the issues that slow inventors down and get in the way and turn you into the paranoid Inventor, always worried about I.P issues, sometimes I say Mate take a cold shower for all I know your Invention is worth nothing and that is the truth (proven figures) 95% of the time.


Just like everything else, moderation is the best way to approach patent protection. If you are over aggressive, you will likely spend on more protection than you need. On the other hand, if you ignore it completely you will spend less, but you risk having no protection in place when you need it. I know that lawyers have a bad reputation, but there are a handful that will not try to sell you more than you need. \

Mike Burke wrote:How do Patents provide protection across borders? I mean where do the jurisdictions start and end and what protection is it that you're afforded. Is the protection recourse to stop people from importing equivalent products or to stop them manufacturing them only? The implication being that a US patent may protect me from competition from US manufacturers or indeed Chinese importers I'm asking which, but I also wanted to know how I'm protected from a other manufacturers selling into Europe depending upon where they're from. It is the great big question of how many Patents do I really have to take out to protect my IP, and it is straight up and down a cost issue for me.


As to jurisdictional protection, US patents protect against products being sold, offered for sale, manufactured, or used within the US. For patented processes, products imported into the US that were made with the patented process are also subject to the US patent. You won't get any protection against products sold in Europe unless produced in the US. The general answer is that you should take out patents in the jurisdictions that you intend to have a presence in. Because of the timing for filing foreign patents (30 months from earliest filing date), you should have a sense of where you should be filing.

Mike Burke wrote:Secondly it is the question that everyone has but perhaps doesn't articulate clearly about what Derek and I have been doing thus far. What is wrong with using an NDA or similar contract to protect your IP until you find a manufacturer who is willing to take the product on? The IP component of any product not yet in production can be held outside the public domain and restricted to a few individuals under pain of compensation under the terms of whatever contract between you is breached. The fact remains that a well written NDA can be used on multiple occasions with different signatories and generally costs very little to obtain.


As for the NDA, the biggest problem with going forward only with the NDA is that you risk unauthorized third party disclosure. For example, lets say you speak under an NDA to a manufacturer in Taiwan. That manufacturer tells the engineers about it and one of the engineers then speaks to someone else outside the company that is not bound by the NDA. Clearly there has been a breach of the NDA, but the unauthorized disclosure may be a public disclosure that bars patents in certain jurisdictions. If the invention is in the public domain, then no one will have to license from you. Suing someone in another jurisdiction for the breach is probably going to be out of the question for most inventors. The risk of this happening is small, but the fee for a provisional patent application (110USD) is so small that it doesn't make sense for an inventor not to file their own before talking to manufacturers.

Re: ASK THE EXPERT - LAWYER

Postby Mike Burke » Sun Nov 29, 2009 10:38 pm

Mike Burke
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Thanks apapage,

The information that you provided about jurisdiction was more or less as I expected, and your thoughts about NDA's are probably quite valid. I know that you can word NDA's to make reference to companies being responsible for third party leaks, but whether that is legally enforceable is as difficult to answer as whether it is provable. The fact of the matter remains that most people exercise discretion in whom they deal with in laying down the basis for trust between them. If and when you are able to do so effectively you have the advantage of being able to work with the manufacturers on patent costs and required jurisdictions. It is that aspect of being able to work smarter rather than harder that I think we're most keen to exploit.

Best Regards

Mike Burke

http://www.jamb.com.au/

Re: ASK THE EXPERT - LAWYER

Postby Derek Pater » Mon Nov 30, 2009 12:51 am

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As for the NDA, the biggest problem with going forward only with the NDA is that you risk unauthorized third party disclosure. For example, lets say you speak under an NDA to a manufacturer in Taiwan. That manufacturer tells the engineers about it and one of the engineers then speaks to someone else outside the company that is not bound by the NDA. Clearly there has been a breach of the NDA, but the unauthorized disclosure may be a public disclosure that bars patents in certain jurisdictions. If the invention is in the public domain, then no one will have to license from you. Suing someone in another jurisdiction for the breach is probably going to be out of the question for most inventors. The risk of this happening is small, but the fee for a provisional patent application (110USD) is so small that it doesn't make sense for an inventor not to file their own before talking to manufacturers.


Hi Apapage,
I always find your post's very informative and balanced.

Reading my own post below its like we are from two different planets!

I have been trying to explain my methods and with help from other Forum members like Adam, I am think I am getting there, I know from your perspective my methods could look very risky, I am using the internet as my tool for Licensing and also my trip to Taiwan Mid this year has made a huge difference and having 4 License agreements agreed to before I stepped a foot in Taiwan was also an achievement for me all done with my Computer and many E-Mails.

I do know that getting my goal of 10 License agreements in total before Xmas 2009.

is becoming very real and the reason being is Relationships and Friendships showing trust and honesty, I have got to a Point that (NDA’s are not relevant with the companies I deal with) and Patent’s do not come into play until I have strong interest from a Manufacture, then we look at tooling and Patents Marketing, Distributors of course, because also methods of manufacture could me to be patented also!

I am trying to give Inventors perspective here!, also another Note important only one of my clients has had their Invention stolen, that was 40 years ago and this was a large U.S Manufacture!

The 3 stages
Fast 1-6 weeks
Average 12-30 weeks
Sleeper 26-150 weeks
These two below clients below are sleepers Inventions, big projects that take time to get the deals done, from half a year to 2 years max.
No.8. Karl's Move Ya Bastard Taiwan Manufacture has the prototype
http://www.abc.net.au/tv/newinventors/txt/s1854237.htm

The prototype is with a Taiwan Manufacture in their Taipei head office, with the owner of this 5 trading companies combined, 3 factories in China and 2 in Taiwan, I prefer to have the Licenses signed in Taiwan even if the product is made in China.

All in Good Faith I have given the manufacture 1 year to decide if they will License it from me for my client. Currently the manufacture is doing all costing and showing U.S and Europe distributors looking to get orders before Licensing from me, this makes sense for a development project of this size.

This is the second sleeper which is about the wake up!

No.4. Paul's Quadra Bench System, Being Considered by a Taiwan Manufacture Invention sent by Ship to Taiwan March 2009
http://www.abc.net.au/tv/newinventors/txt/s1770899.htm

This prototype has returned from Taiwan for redesign by Mike Burke http://www.jamb.com.au

Then with the new manufactures drawings the manufacture will consider this product for production under a royalties agreement!

There are a lot of strategies like the commitment to part of the shipping to prototypes for review this applies to prototype that need to go by ship transport.

I am giving other Inventors real situations that I deal with, not make believe and idle chatter; I can also see the differences in business in the U.S and Europe.

It’s obvious that Asia is the place to go and the methods of the west are counterproductive and over legalistic, self defeating in a real sense from my perspective. (What have you done to me Adam I am finding my big words now)

Lets trim off all the fat and get to the real issues!

http://www.inventionsecrets.net
:D :D

Re: ASK THE EXPERT - LAWYER

Postby abacus » Mon Nov 30, 2009 4:10 am

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I think Derek's experience with the Taiwanese manufacturers/businesses has been very fortuitous,and because of the trust factor,a huge and paralysing[for most inventors]factor has been taken out of the equation.
Also,the Taiwanese seem to appreciate,and act on,the need for new products/product ideas,and are amenable to approaches.
A strength of Derek's approach is that he and his associates are offering fully designed up product ideas.That's an extremely powerful selling/commercialising factor.
Why shouldn't an inventor sit down with a designer and articulate their invention to a near commercial prototype,bearing costs and benfits in mind,with room for tweaking.
For Western markets,a ppa could then be written around the result.I think[correct me if I'm wrong]if the ppa is packed with relevant information,then a commercially crystalised non-pa,utility patent,can then be written out of that.

Derek is saying[I sound like a psycophant] to tool up and get out there,stop acting like a fretting,precious,thumb-sucking,unloved child.

I think also what Derek is saying is dont get hung up on one idea[that's a big statement,and I think a fairly typical situation and a major stumbling block],get it out there,and get others out there as well.

Re: ASK THE EXPERT - LAWYER

Postby engr_scotty » Mon Nov 30, 2009 5:40 am

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apapage wrote:Hi Scotty and welcome.

You can start marketing your invention as soon as your patent is filed unless you have some reason to wait. This would also be a good time to review the claims of your patent application to see if there are any changes, e.g., add claims, that you would like to make. If you wait till the first office action, it will slow prosecution and it may require additional fees.



Thanks apapage ... I guess one of the reasons I'm delaying to get the prototype to a level that I feel is appropriate to do a show and tell....Concept works, but lots of wires, lots of rough edges...

Also, I am a little concerned that if the patent doesn't cover all I want, the idea may be "exposed" to other approaches to implementing it. Maybe it's naivety, but shouldn't I wait till there is some kind of OK from the PTO to proceed with telling future licensees about my gadget?

Re: ASK THE EXPERT - LAWYER

Postby apapage » Mon Nov 30, 2009 6:53 am

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Derek Pater wrote:I always find your post's very informative and balanced.


Thank you Derek. I try to provide unbiased information so that the readers of this forum can make reasonably informed decisions.

Regarding your approach, I think it is great that you connected with trustworthy Taiwanese manufacturers, but as we know the east is not the west. I have been representing inventors for nearly 10 years and I have seen more theft that I care to admit, but this is probably because inventors come to attorneys after things have gone bad. I have even had my inventions "misappropriated". I also agree with your "shotgun" approach to marketing inventions especially when inventing is more than a mere hobby.

Re: ASK THE EXPERT - LAWYER

Postby Derek Pater » Mon Nov 30, 2009 4:35 pm

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Derek Pater wrote:
I always find your post's very informative and balanced.
Thank you Derek. I try to provide unbiased information so that the readers of this forum can make reasonably informed decisions.
Regarding your approach, I think it is great that you connected with trustworthy Taiwanese manufacturers, but as we know the east is not the west. I have been representing inventors for nearly 10 years and I have seen more theft that I care to admit, but this is probably because inventors come to attorneys after things have gone bad. I have even had my inventions "misappropriated". I also agree with your "shotgun" approach to marketing inventions especially when inventing is more than a mere hobby.A Papageorgiou
http://www.patentlawforinventors.com

Hi Apapage,
This is very disappointing to hear that invention theft is quite high in the West, because really if Inventors are only asking for say 3-5% royalties, I would call that a very good deal for the Manufactures in the West, the term I like to use “fair and Reasonable”.

I need to talk about the Inventor’s in this Forum with the 1 Invention only, because sorry I have not given you any real comments up until now.
The whole reason I feel it is very important for Inventors to understand the options of why Taiwan could be very good for you, and more so on a shoe string budget for your new Invention.

By doing a deal with a Trading Company that turns over 3 Million plus per year they have to money to firstly back you and also bare most of the cost’s
These Small to Mid size Manufactures also have their own Marketing and distribution channels, this is the big one they can OEM Manufacture to a branded Companies requirements, plus this gives to solo inventor the protection of a company that has the money to back your I.P rights.

I have experienced some major aggression from some of the largest U.S Based tool Companies for the Roofing Protractor and I tell you all it left me was with a very bitter taste in my mouth from dealing with them personally.

The large Companies hated not being able to dictate their terms to me and the Taiwan Manufacture, the other thing is this way you have more options using private brands and small distributors who can place your product under their branding next to these big bullies.

My Inventor friend in the U.S has this great hammer design in the market place that he licensed to a large U.S Company.
The I.P Protection has worked for him that was 9 U.S Patents.

He was paid $80,000- USD in the one off upfront payment, the costs of those 9 Patents are more than the royalties, so he is going backwards, gone back on the tools as a Carpenter/Builder to keep the Invention Hammer ship from Sinking.

Also be careful not to overdo it on your Patents, if you go that way.

As Roger Brown has proven it can be done for $10- a License agreement with the 2D Sell Sheet, this does not apply to all Inventions, but I am sure this method can go a lot further than most Inventors would care to believe.

My Plan is to see how far I can push this method with the 2D sell sheet and how big the project could end up being.

Just like everything else, moderation is the best way to approach patent protection. If you are over aggressive, you will likely spend on more protection than you need. On the other hand, if you ignore it completely you will spend less, but you risk having no protection in place when you need it. I know that lawyers have a bad reputation, but there are a handful that will not try to sell you more than you need. \


Very good comments in the above quote!

http://www.inventionsecrets.net
:D :D

Re: ASK THE EXPERT - LAWYER

Postby engr_scotty » Wed Dec 02, 2009 5:45 am

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Derek Pater wrote:As Roger Brown has proven it can be done for $10- a License agreement with the 2D Sell Sheet, this does not apply to all Inventions, but I am sure this method can go a lot further than most Inventors would care to believe.

:D


Hi Derek. Can you point me in the direction of your 2D Sell Sheet? Sounds like a good way to go even if you have a patent in the works...

Thanks!
Scotty
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