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90 | <strong>Patent</strong> 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, <strong>It</strong>em 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
ChaPter 4 | Will Your INVENTION SELL? | 91 a couple of weeks you still can’t make up your mind, it’s probably best to proceed to the next step (the determination of patentability, including a search). If this determination discloses that your invention is already known or otherwise unpatentable, that’s the end of the road. But if it shows that you have a patentable invention, you should probably attempt to patent and market it rather than let a potentially valuable and profitable idea die without being given its day in the sun. H. Summary You should carefully evaluate the salability of your invention before filing a patent application, because a patent alone will not make you rich or famous—the invention must also become a success in the marketplace. Test marketing is a valuable activity, but it will destroy your foreign rights if done before filing in the U.S. Also any U.S. application must be filed within one year after the invention is publicly used, put on the market, or shown publicly. Although it can’t predict success with certainty, a commercial evaluation will be very valuable in deciding whether to proceed, and later when you deal with the PTO. I recommend a study of all of the commercial factors (cost, size, weight, etc.) for their positive or negative aspects and to discover any fatal considerations. Also consult with experts and consumers, but take precautions against invention theft by using the Nondisclosure Agreement and other safeguards. Building a prototype is invaluable for obtaining commercial and technical information, but if you use a model maker, you must also take precautions by using the Consultant’s Agreement. l
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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C H A P T E R 7 What Should I Do Ne
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Nondisclosure Agreement 1. Parties.
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whether or not any royalty payment
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INDex | 577 Biotechnology patents e
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About the Author David Pressman is
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