Discussion: View Thread

  • 1.  IP Deals for our students

    Posted 10-20-2011 02:59
    Can anyone share (on the list to via email to me personally) what kind of deals or arrangements they;ve been able to put together to help get their students legal help for pursuing IP (esp. patents). Also, where there are costs involved, what is being charged for what type of work?

    Thanks,
    Jerry

    --
    Jerome A. Katz
    Coleman Foundation Professor of Entrepreneurship
    John Cook School of Business, Saint Louis University
    3674 Lindell Blvd., St. Louis MO 63108 USA
    314-977-3864w; -1484f; 314-275-8721h
    katzja@slu.edu, http://eweb.slu.edu
    ************************************** This message is from ENTREP which is sponsored by the Entrepreneurship Division of the Academy of Management. Please do not post messages with attached files. Commercial messages or spammed messages are not allowed on the list. The use of auto-responder "out-of-office" messages may also lead to your removal from the list. You can manage your subscription options, including joining or leaving the list here: http://aomlists.pace.edu/scripts/wa.exe?SUBED1=entrep&A=1 If you have questions or need help, please contact Dr. John Bunch jbunch@benedictine.edu. Ventures HO!


  • 2.  IP Deals for our students

    Posted 10-21-2011 14:12
    I am an Associate Professor and an Entrepreneurship Center Director. In this email I will spell out for you my experience with U.S. Patents and Trademarks. I think it is worth noting that I did not know many of these things a month or two ago. I recently cracked, and decided that I know too much about entrepreneurship to have been out of the game myself for years. So I have started learning by doing.  I know that students will benefit from my experience.  I also thought of embarking on some DIY IP protection as a kind of self-imposed continuing education requirement.  Lawyers do this, why don't we? In short, it has been an eye-opener that will likely be lucrative for me, and cost-saving and informative for my students. I recommend that you all do the same.  At the bottom of this email you will see that I am now pondering making some official IP protection a requirement in one of my classes...

    PROVISIONAL

    Although I teach in Canada, I am advocating the U.S.PTO's Provisional Patent Application which costs only $125, can be done by yourself, and then gives you a year to follow it up with a proper patent application. My justification for using the U.S. process is the size of market, and the entree to both a U.S. and a PCT (International) patent later.  The Provisional affords two things; 1) it sets the date that you first thought of something (in case you eventually do go fwd with a proper application) and 2) it allows you to legally say 'patent pending' while you are shopping the concept around to potential stakeholders.  This is helpful in avoiding NDA-related standoffs when cold calling established firms to start licensing talks or solicit manufacturing estimates. It does not, however, imply that what you have submitted will eventually pass a proper patent examination.  The USPTO's review of a Provisional is not that thorough...so you have to warn students that a Provisional is just a first step. Next comes a professional patent search and that is followed by a real application.  You do not have to write a Provisional yourself, by the way. I am paying an atty. $950 to do one that was not so straightforward for me to be confident with it.  Recently I also did one for $125 all by myself, and did all the drawings on Windows Paint, which is a total 1987 Apple II style flashback that comes free on most PCs.  I thought my output was primitive, but an experienced friend said their simplicity was perfect. A Provisional is generally filed by mail (not online).

     
    SEARCH
     
    My experience with professional patent searches is that they cost about $700, are usually farmed out by attys to specialized paralegals, and that they always find things that a regular person can't.  When I have tried to haggle on price I learned that this is inflexible, because it is subcontracted out. They are needed as part of a proper U.S. patent application (to establish relationship to prior art), but not needed for the Provisional. Nevertheless, I do ask students who are brainstorming something that seems to be potentially patentable (e.g. a new cooking gadget) to do a search on the USPTO to familiarize themselves with the language/system. Also note that a patent search yields personal contact data that is enough to get one started making the call to license someone else's patent in a given space. I have done that with a student in the past. We saw the inventor's name on the search return, googled that, found a craigslist ad, called the guy and started talking about taking his dormant IP forward with our energy and smarts...  
     
    PATENT APPLICATION (U.S. and Int'l)
     
    Hard to estimate the cost of a real U.S. patent application, because the attorneys' hours invested depend on the complexity of the concept and the crowded or uncrowded nature of the space. My uncle recently filed a Provisional for oil gusher capping that begat 14 separate Patent applications that would have cost $5k each through his atty.  I have found an atty here in Victoria, BC who will do a U.S. Patent application for me for $2500 (and he takes credit cards).  His estimate for a simple PCT would be $4,500. Doing that PCT application is a decision that must be made within a year of your initial application (or you lose that choice). The $4,500 is mostly for filing fees (not lawyer's thinking time). This buys you 30 months to then elect specific countries wherein you will ultimately want to prosecute your patent. I hear things get very expensive at this point...so I would tell students to attempt to sell/license out an international patent in the first 30 months...
     
    TRADEMARKS
     
    Trademarks are easy to DIY. Filing online, they are $275 in the US for one class of service ($250 in Canada). Searching the USPTO trademark database is also easy and informative. If you send in a phrase and the examiner thinks of other related ones that could be confusing in the user's mind but are not already taken they just send you an email. The magic here, if there is any, is the selection of a class of service.  You have to pick one. Any easy example here is 'Explorer.' There is a Ford Explorer and a Microsoft Explorer. These firms are not due for a throw down battle. They simply trademarked the same word in totally different classes of service. Think also about Hyundai Excel/Microsoft Excel, Lincoln Navigator/Internet Navigator...but then again some of these products are almost as old as our current students. Choosing the class of service is therefore very important. 
     
    Again, this is the only challenging part of the application.  The search mechanism is a bit enigmatic.  Within one class of service, say websites for example, there are pages and pages of finer descriptions.  In one instance I chose 'online website where users vote for their favorite music' and in another I chose 'social networking website where users donate to a charity.'  I found that the act of reading through all these potential derivations really helped be refine my value proposition. 
     
    There is one other important fork in the road. Personally, I bought some trademarks claiming 'commercial use' and others claiming 'intended use.' To demonstrate commercial use (which is good in the case of a trademark but a deal killer in the case of a patent) I just bought a $9.99 URL from GoDaddy and posted a basic free webpage. In one case I also had a logo created by a graphic design subcontractor on elance.com (for $150 +/-).     
     
    REQUIREMENT?
     
    I already have an exam question that consists of presenting a long and complex patent (5-6 pages of gobbledy gook text) and asking students to describe their business model (how they would propose to make money with this IP) in just one sentence.  No partial credit. Really, it is all about the action verb (manufacture, repair, consult, retail, wholesale, etc.) . Going forward, I am thinking about requiring students who tell me in a business plan presentation that they will get the related trademarks (standard catchall phrase) to suggest the exact class of service and to provide a recent search result that implies the that protection of the word or phrase is probably available.  For students who say they will patent something, I am also thinking of asking them to provide similar documentation as a result of a DIY search. For students who will license someone else's patent (which can be a pivot that is only obvious after doing a patent search) I will ask them to provide that patent and related contact details in the business plan appendix. Furthermore, I am seriously thinking about making the Provisional Patent Application ($125) and the full Trademark Application ($250 or $275) a requirement of one of our courses. Split 4 or 5 ways by a student team,  I think that the cost compares favorably to a textbook, and that the visceral experience is truly valuable (and might be literally valuable as well).   
     
    Geoff Archer, PhD 
     
     
     

    From: Entrepreneurship Division Listserv on behalf of Jerome Katz
    Sent: Wed 10/19/2011 11:58 PM
    To: ENTREP@AOMLISTS.PACE.EDU
    Subject: [ENTREP] IP Deals for our students

    Can anyone share (on the list to via email to me personally) what kind of deals or arrangements they;ve been able to put together to help get their students legal help for pursuing IP (esp. patents). Also, where there are costs involved, what is being charged for what type of work?

    Thanks,
    Jerry

    --
    Jerome A. Katz
    Coleman Foundation Professor of Entrepreneurship
    John Cook School of Business, Saint Louis University
    3674 Lindell Blvd., St. Louis MO 63108 USA
    314-977-3864w; -1484f; 314-275-8721h
    katzja@slu.edu, http://eweb.slu.edu
    ************************************** This message is from ENTREP which is sponsored by the Entrepreneurship Division of the Academy of Management. Please do not post messages with attached files. Commercial messages or spammed messages are not allowed on the list. The use of auto-responder "out-of-office" messages may also lead to your removal from the list. You can manage your subscription options, including joining or leaving the list here: http://aomlists.pace.edu/scripts/wa.exe?SUBED1=entrep&A=1 If you have questions or need help, please contact Dr. John Bunch jbunch@benedictine.edu. Ventures HO!
    ************************************** This message is from ENTREP which is sponsored by the Entrepreneurship Division of the Academy of Management. Please do not post messages with attached files. Commercial messages or spammed messages are not allowed on the list. The use of auto-responder "out-of-office" messages may also lead to your removal from the list. You can manage your subscription options, including joining or leaving the list here: http://aomlists.pace.edu/scripts/wa.exe?SUBED1=entrep&A=1 If you have questions or need help, please contact Dr. John Bunch jbunch@benedictine.edu. Ventures HO!


  • 3.  IP Deals for our students

    Posted 11-06-2011 23:22
    Hi All,

    I am a Lecturer in management at the University of Central Florida with a PhD in engineering background and have filed many patent applications, 12 of them have already been issued.  I have also been providing technical consulting services to high tech companies, which include patent reviews and filings.  I want to second Geoff's feedback and offer few more additional insights:

    1- PROVISIONAL: Definitely the way to go.  Most of my recent filings started with a provisional application and as Geoff mentioned, it costs less than $200 (I use a couple of smaller law firms so as to have them track the process and they only charge $180 for the whole process).  For the provisional, you can do the writeup as well as any drawings yourself.  Nothing needs to be professional.

    The main benefit of the provisional is that it allows new inventors to establish a priority date and pursue commercialization opportunities before hand.  As Geoff mentioned, this provides IP protection and helps with NDA issues while the inventors disclose their ideas to potential investors / partners.

    2- SEARCHES:  You can do the searches yourself if you are technically knowledgeable in the field.  I typically do all of my patent searches.  You can use the USPTO website to do your searches as well as Google Scholar.  Key to successful searches is the use of relevant keywords to your invention.  You need to search both issued patents as well as published patent applications (http://patft.uspto.gov/).  You may also need to search Google scholar for published work (papers / white papers) to make sure that the invention is not already in public domain.  While few of the firms I consult with use search firms, in most cases I ask the inventors to do the initial searches as they would be the best in finding relevant work.

    3- PATENT APPLICATIONS:  As Geoff mentioned, the fees vary.  While I did most of the writeup, including the claims, it still costs close to $5,000 for lawyers fees to review the patent, make edits, and file it.  If the patent lawyers does the whole work (i.e. does the writeup from your simple descriptions or discussions) it can cost close to $10,000.

    It's crucial to find a patent lawyer with relevant technical experience as that accelerates the process and ensures a good writeup.  For my first 6 patents, I had an excellent and competent patent lawyer that did a great job where all of the applications were approved and all the claims allowed with no changes (one single USPTO office action of full allowance).

    As for international patents, its a length and costly process.  The PCT does give you up to 18 months to decide if you want to proceed with international patent applications.  If you decide to do so, then you would need to file in each country where you seek protection.  Numbers start piling up.  IN one case, filing in a dozen countries brought the cost close to $100k.  Unless you have a very unique invention, this may not be worth it.

    Hope that helps.

    Nasser
    -----------------------------------------
    Nasser Kutkut, Ph.D.
    +1-608-213-7503


    On Fri, Oct 21, 2011 at 2:12 PM, Geoff Archer <Geoff.Archer@royalroads.ca> wrote:
    I am an Associate Professor and an Entrepreneurship Center Director. In this email I will spell out for you my experience with U.S. Patents and Trademarks. I think it is worth noting that I did not know many of these things a month or two ago. I recently cracked, and decided that I know too much about entrepreneurship to have been out of the game myself for years. So I have started learning by doing.  I know that students will benefit from my experience.  I also thought of embarking on some DIY IP protection as a kind of self-imposed continuing education requirement.  Lawyers do this, why don't we? In short, it has been an eye-opener that will likely be lucrative for me, and cost-saving and informative for my students. I recommend that you all do the same.  At the bottom of this email you will see that I am now pondering making some official IP protection a requirement in one of my classes...

    PROVISIONAL

    Although I teach in Canada, I am advocating the U.S.PTO's Provisional Patent Application which costs only $125, can be done by yourself, and then gives you a year to follow it up with a proper patent application. My justification for using the U.S. process is the size of market, and the entree to both a U.S. and a PCT (International) patent later.  The Provisional affords two things; 1) it sets the date that you first thought of something (in case you eventually do go fwd with a proper application) and 2) it allows you to legally say 'patent pending' while you are shopping the concept around to potential stakeholders.  This is helpful in avoiding NDA-related standoffs when cold calling established firms to start licensing talks or solicit manufacturing estimates. It does not, however, imply that what you have submitted will eventually pass a proper patent examination.  The USPTO's review of a Provisional is not that thorough...so you have to warn students that a Provisional is just a first step. Next comes a professional patent search and that is followed by a real application.  You do not have to write a Provisional yourself, by the way. I am paying an atty. $950 to do one that was not so straightforward for me to be confident with it.  Recently I also did one for $125 all by myself, and did all the drawings on Windows Paint, which is a total 1987 Apple II style flashback that comes free on most PCs.  I thought my output was primitive, but an experienced friend said their simplicity was perfect. A Provisional is generally filed by mail (not online).

     
    SEARCH
     
    My experience with professional patent searches is that they cost about $700, are usually farmed out by attys to specialized paralegals, and that they always find things that a regular person can't.  When I have tried to haggle on price I learned that this is inflexible, because it is subcontracted out. They are needed as part of a proper U.S. patent application (to establish relationship to prior art), but not needed for the Provisional. Nevertheless, I do ask students who are brainstorming something that seems to be potentially patentable (e.g. a new cooking gadget) to do a search on the USPTO to familiarize themselves with the language/system. Also note that a patent search yields personal contact data that is enough to get one started making the call to license someone else's patent in a given space. I have done that with a student in the past. We saw the inventor's name on the search return, googled that, found a craigslist ad, called the guy and started talking about taking his dormant IP forward with our energy and smarts...  
     
    PATENT APPLICATION (U.S. and Int'l)
     
    Hard to estimate the cost of a real U.S. patent application, because the attorneys' hours invested depend on the complexity of the concept and the crowded or uncrowded nature of the space. My uncle recently filed a Provisional for oil gusher capping that begat 14 separate Patent applications that would have cost $5k each through his atty.  I have found an atty here in Victoria, BC who will do a U.S. Patent application for me for $2500 (and he takes credit cards).  His estimate for a simple PCT would be $4,500. Doing that PCT application is a decision that must be made within a year of your initial application (or you lose that choice). The $4,500 is mostly for filing fees (not lawyer's thinking time). This buys you 30 months to then elect specific countries wherein you will ultimately want to prosecute your patent. I hear things get very expensive at this point...so I would tell students to attempt to sell/license out an international patent in the first 30 months...
     
    TRADEMARKS
     
    Trademarks are easy to DIY. Filing online, they are $275 in the US for one class of service ($250 in Canada). Searching the USPTO trademark database is also easy and informative. If you send in a phrase and the examiner thinks of other related ones that could be confusing in the user's mind but are not already taken they just send you an email. The magic here, if there is any, is the selection of a class of service.  You have to pick one. Any easy example here is 'Explorer.' There is a Ford Explorer and a Microsoft Explorer. These firms are not due for a throw down battle. They simply trademarked the same word in totally different classes of service. Think also about Hyundai Excel/Microsoft Excel, Lincoln Navigator/Internet Navigator...but then again some of these products are almost as old as our current students. Choosing the class of service is therefore very important. 
     
    Again, this is the only challenging part of the application.  The search mechanism is a bit enigmatic.  Within one class of service, say websites for example, there are pages and pages of finer descriptions.  In one instance I chose 'online website where users vote for their favorite music' and in another I chose 'social networking website where users donate to a charity.'  I found that the act of reading through all these potential derivations really helped be refine my value proposition. 
     
    There is one other important fork in the road. Personally, I bought some trademarks claiming 'commercial use' and others claiming 'intended use.' To demonstrate commercial use (which is good in the case of a trademark but a deal killer in the case of a patent) I just bought a $9.99 URL from GoDaddy and posted a basic free webpage. In one case I also had a logo created by a graphic design subcontractor on elance.com (for $150 +/-).     
     
    REQUIREMENT?
     
    I already have an exam question that consists of presenting a long and complex patent (5-6 pages of gobbledy gook text) and asking students to describe their business model (how they would propose to make money with this IP) in just one sentence.  No partial credit. Really, it is all about the action verb (manufacture, repair, consult, retail, wholesale, etc.) . Going forward, I am thinking about requiring students who tell me in a business plan presentation that they will get the related trademarks (standard catchall phrase) to suggest the exact class of service and to provide a recent search result that implies the that protection of the word or phrase is probably available.  For students who say they will patent something, I am also thinking of asking them to provide similar documentation as a result of a DIY search. For students who will license someone else's patent (which can be a pivot that is only obvious after doing a patent search) I will ask them to provide that patent and related contact details in the business plan appendix. Furthermore, I am seriously thinking about making the Provisional Patent Application ($125) and the full Trademark Application ($250 or $275) a requirement of one of our courses. Split 4 or 5 ways by a student team,  I think that the cost compares favorably to a textbook, and that the visceral experience is truly valuable (and might be literally valuable as well).   
     
    Geoff Archer, PhD 
     
     
     

    From: Entrepreneurship Division Listserv on behalf of Jerome Katz
    Sent: Wed 10/19/2011 11:58 PM
    To: ENTREP@AOMLISTS.PACE.EDU
    Subject: [ENTREP] IP Deals for our students

    Can anyone share (on the list to via email to me personally) what kind of deals or arrangements they;ve been able to put together to help get their students legal help for pursuing IP (esp. patents). Also, where there are costs involved, what is being charged for what type of work?

    Thanks,
    Jerry

    --
    Jerome A. Katz
    Coleman Foundation Professor of Entrepreneurship
    John Cook School of Business, Saint Louis University
    3674 Lindell Blvd., St. Louis MO 63108 USA
    314-977-3864w; -1484f; 314-275-8721h
    katzja@slu.edu, http://eweb.slu.edu
    ************************************** This message is from ENTREP which is sponsored by the Entrepreneurship Division of the Academy of Management. Please do not post messages with attached files. Commercial messages or spammed messages are not allowed on the list. The use of auto-responder "out-of-office" messages may also lead to your removal from the list. You can manage your subscription options, including joining or leaving the list here: http://aomlists.pace.edu/scripts/wa.exe?SUBED1=entrep&A=1 If you have questions or need help, please contact Dr. John Bunch jbunch@benedictine.edu. Ventures HO!
    ************************************** This message is from ENTREP which is sponsored by the Entrepreneurship Division of the Academy of Management. Please do not post messages with attached files. Commercial messages or spammed messages are not allowed on the list. The use of auto-responder "out-of-office" messages may also lead to your removal from the list. You can manage your subscription options, including joining or leaving the list here: http://aomlists.pace.edu/scripts/wa.exe?SUBED1=entrep&A=1 If you have questions or need help, please contact Dr. John Bunch jbunch@benedictine.edu. Ventures HO!

    ************************************** This message is from ENTREP which is sponsored by the Entrepreneurship Division of the Academy of Management. Please do not post messages with attached files. Commercial messages or spammed messages are not allowed on the list. The use of auto-responder "out-of-office" messages may also lead to your removal from the list. You can manage your subscription options, including joining or leaving the list here: http://aomlists.pace.edu/scripts/wa.exe?SUBED1=entrep&A=1 If you have questions or need help, please contact Dr. John Bunch jbunch@benedictine.edu. Ventures HO!