Patent It Yourself - PDF Archive

90 | Patent it YOURSELF
2. If You Use a Model Maker, Use
a Consultant’s Agreement
If you can’t build and test it yourself, many model makers,
engineers, technicians, and teachers are available who
will be delighted to do the job for you for a fee, or for a
percentage of the action. Also there may be a workshop
in your area which will supply you with tools, space, and
assistance for a fee. For example, the San Francisco area
hosts “Techshop,” a 15,000-square-foot membership-based
workshop that provides members with access to tools and
equipment, instruction, and a support community (www.
techshop.ws). If you do use a model maker or consultant,
you should take precautions to protect the confidentiality
and proprietary status of your invention. There’s no
substitute for checking out your consultant carefully by
asking for references (assuming you don’t already know the
consultant by reputation or referral).
In addition, have your consultant sign a copy of the
Consultant’s Work Agreement (Form 4-3 in Appendix 7).
Note that this Agreement includes fill-in blanks to describe
the names and addresses of the inventor and consultant,
the name of the project or invention (such as “New
Sweater-Drying Form”), detailed description of the work
to be done (such as “build a wire-frame, plastic-covered,
sweater-drying collapsible form in accordance with plans
in attached Exhibit A—finished form to operate smoothly
and collapse to 14" x 23" x 2" (or less) size”), and manner of
payment (usually ⅓ at start, ⅓ upon construction, and ⅓
on acceptance by you, the Contractor), and which state’s
law should govern (pick the state where you reside if the
Consultant is out-of-state).
Note that I’ve provided (see paragraph 7) that any changes
in the work to be performed or payment to be made shall
be in writing. I’ve done this because I’ve been involved in
many disputes where the consultant does additional or
more difficult work and wants more money, but the parties’
memories differ as to what changes were agreed to, if any.
The Agreement also requires the Consultant to perform
in a timely manner or you can void the Agreement and
pay only 50%, or have the Consultant pay an agreed-upon
penalty for every day he or she is delinquent. Finally, the
Agreement contains a self-explanatory provision, Item 12,
regarding the Consultant’s prior inventions.
3. What If the Consultant Invents?
Since many consultants are quite clever, they often come
up with patentable improvements, ramifications, or even
better versions of the basic invention that they’re hired to
build, test, or develop. This naturally brings up the issue of
who will own and be able to use the consultant’s inventions.
Having been involved in many disputes in this area, I know
that an ounce of prevention—that is, a prior stipulation as
to who will own any inventions the Consultant makes—can
prevent many misunderstandings, arguments, and even
lawsuits later on.
With this end in mind, I’ve written the agreement to
require the Consultant to disclose all innovations made
to you, to sign any patent applications which you choose
to file on the Consultant’s inventions, and also to assign
such inventions to you. Note also that the inventions that
belong to you (the Contractor) are those that arise out of the
Consultant’s work under the agreement, even if conceived
on the Consultant’s own time. This is a customary clause in
employment agreements (see Chapter 16) and is provided
so that the Consultant won’t be able to claim that a valuable
invention made under the agreement isn’t yours because it
was made on the Consultant’s time. Generally the Consultant
will be a sole inventor (who should be the only one named in
the patent application if the Consultant’s invention can exist
independently of yours), and a joint inventor with you if the
invention is closely related to or improves on yours. (More
on inventorship in Chapter 10, Section E2.) This is because
all of the true inventor(s) must be named as inventor(s) in all
patent applications no matter who owns the application. I
provide an assignment form and a Joint Owners’ Agreement
in Appendix 7. (See Chapter 16.)
G. The Next Step
Once you’ve commercially evaluated your invention—that
is, garnered all your input and filled out your evaluation
and summary sheets with the positive and negative
factors—you’re in a better position to decide whether or
not to go ahead. If you decide to, your next step is to decide
whether the invention will qualify for a patent under the
patent laws. To do this, you should first learn the basic four
legal requirements for getting a patent. (See Chapter 5.)
Then, if it meets the first two of these requirements, make
a formal patent search (see Chapter 6) to determine if it’s
sufficiently novel to satisfy the other two requirements.
When you make this search, you’ll also obtain valuable
commercial information about prior developments in
the area of your invention. E.g., if you’ve invented a new
electric fork and your search shows 30 patents on electric
forks and you’ve never seen any of these in the market, you
should seriously question the commercial feasibility of this
concept, even if it’s patentable.
If, on the other hand, your commercial evaluation leaves
you uncertain, though you feel there’s good potential, wait a
while before proceeding. The passage of time may give you a
new perspective that can make your decision easier. If after