According to the U.S Patent and Trademark Office, a small entity can be a for-profit company with 500 or fewer employees, a nonprofit organization or an independent inventor. A small entity pays reduced fees (50% discount) to the Patent Office for many of their filing fees. It used to be that you had to file a special form declaring that you were a small entity in order to pay the reduced fees. Now, the Patent Office will accept any written reference that you are a small entity and several of the forms that you will be using to communicate with the Patent Office have a check box that will identify you as a small entity, and are considered written references. (example 1, example 2)
What are multiple dependent patent claims, also called multiply dependent patent claims? Claims are the parts of a patent that define the invention, and are what are legally enforceable. Dependent claims according to the USPTO, "refer back to and further limit another claim or claims in the same [patent] application." A dependent claim is a claim that refers to another claim. A multiply dependent claim is any dependent claim which refers to more than one other claim. An example of the wording used for a multiple dependent claim in a patent application would be "Claim 5. A gadget according to claims 3 or 4, further comprising..." You can learn more about claims by reading "Tips on Writing Patent Claims" and "MPEP 608.01(i) Claims"
Pat wrote me asking, "In my invention, can I use part of a product that is already on the market? There is maybe a similar product out there I'm sure but used in a different application. Please point me in the right direction."
Pat, your question raises several possibilities. You cannot patent something that has already been patented and it is your responsibilty to do a search for prior art and/or a patent search to find that out. Read How Do I Conduct a Patent Search for Prior Art? If you have to use someone else's invention as part of your invention, you would have to license their patent, "a contractual agreement giving written permission to another party the right to use an invention." Read my basic article "Turning an Invention Idea Into Money" to learn more and talk to an intellectual property lawyer. Your reference to "part of" and "different application" makes your answer more complicated, possible a patentable improvement to a prior invention, however, beyond my scope to say.
A reader wrote to me recently concerned that she had not heard from her patent attorney for two months, and was waiting to hear the patent attorney's progress with making a prototype and contacting a toy manufacturer. She asked if her patent attorney not returning her phone calls was a normal part of the invention process. Well, some of the most successful inventors that I know always advise that an inventor never hire a do-it-all for you company or individual. How can someone do a decent patent search for you to determine novelty, if they also want to sell you their services for filing a patent application? How can they do an honest patent assessment, if an unfavorable assessment should make you reconsider going forward with an idea? Can someone be an expert in law, marketing, licensing, and prototyping? Before investing your money with anybody (including those who advertise on this site) read and take to heart the following: How To Avoid an Invention Company Scam, Invention Company Promotion Firms and Avoiding Scams, and check the following caution list maintained by InventorEd, Inc.
Dawn wrote to me needing a prototype and contacts (any prototypers out there feel free to leave a comment). Dawn I have a section on prototypes that includes tips on making one yourself and the same information can prepare you for working with a professional; make sure you sign a confidentiality agreement before hiring anyone. The best place to network is at a local inventors club (check your telephone directory or local universities if you don't find a local listing). I also have a section on professional services. Big Tip of the Day: Dawn, it's a smart move to diversify and hire different individuals for each specific need related to inventing. P.S. Glad you're a fan of Scott Allen, our fabulous About Entrepreneurs guide.
Reuters posted an interesting article on the top items included in an employment contract. Third on list was Ownership of Inventions for employees who might invent. It went something like this," the employee agrees that anything he or she invents at work, or during a set period of time after termination, becomes the employer's invention, not the employee's own invention." Additionally, employees usually agree to assign their inventions to the employer, cooperate with the employer in getting inventions patented, and keep information about the invention confidential like any other trade secret. In return, sometimes the employer agrees to share with employee-inventors a percentage of the royalties paid for inventions.
What should you as an inventor watch out for before signing an employment contract?
Okay if they are hiring you to invent it is reasonable to expect your contract to give the intellectual property rights to your boss. However, do not let a contract claim too much, for example: the rights to any previous unpatented invention of yours that you did not tell your potential employer about in writing. Watch out as well for anything that claims the right to your invention post employment - beyond a reasonable six months or less - fired today, patenting tomorrow, okay you didn't make that invention overnight. Consider using a lawyer to look over your contract.
Jeff wrote me with the following question: I have a catchy name for a product that already exists, but as far as I can tell no one is using this name. If I trademark the name, can I sell the trademark to a company, similar to a web domain?
Jeff, the over simple answer is yes you can try to sell your trademark. However, it's not like cybersquatting. Trademarks are sold as part of the sale of a business. You can't trademark register a name unless you are using it in commerce (or bona fide intent to use) and not just the commerce (business) of selling the name. BTW There are now laws on the books that can deter the business of cybersquatting.
Trademark creation services do exist - people that make up a great name or logo for a business and then that business owner registers the trademark - for example this one that I found randomly. Don't know if that would work for a one off.
Famous Trademark Sales
The name Coca-Cola is a combination of the names of two ingredients, the coca leaf (from South America) and the kola nut (from Africa). Between 1887 and 1888, the name and formula were sold three times.
Image Courtesy Coca Cola Company
Dr Curtis Carlson, president and CEO of Stanford Research Institute (SRI) International, believes that innovation is a skill that can be taught and learned. Inventors at SRI, a non-profit research company, have been behind the invention of the computer mouse, HDTV, Internet domain tags (for example .com and .gov) and advanced robotic surgery. Curtis Carlson led the SRI team that created the US HDTV standard and co-wrote Innovation: The Five Disciplines for Creating What Customers Want.
Recent SRI Innovations
EPAM - Electroactive Polymer Artificial Muscle - is a unique smart material technology developed in SRI International's labs. The thin, flexible material, called artificial muscle because it behaves much like a human muscle, expands when exposed to an electric current and contracts when the electricity is removed, thereby converting electrical potential energy into mechanical motion. It offers significant advantages over typical electromagnetic-based technologies because it is much lighter, smaller, quieter and cheaper, and offers more controllable and flexible configurations. Photo: "Flex" the robot uses EPAM to move.
SRI has developed a prototype buoy-mounted, ocean wave-powered generator. The generator utilizes patented electroactive polymer artificial muscle EPAM technology, and offers a renewable method to continually power ocean buoys. Future efforts will address the design, development, and deployment of wave-powered generators capable of generating power for large-scale clean energy production. Photo: Ocean Wave-Powered Generator
All photos courtesy of SRI
Selecting the right patent attorney is a crucial step in the invention process. Your patent will only be as good as the patent attorney drafting it.