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HOW WE WORK TO MEET THE OBJECTIVES OF CLIENTS WHO WANT TO ADD INVENTIONS, PATENTS, AND NEW PRODUCTS,

OR WHO MAY WANT TO OWN PATENTS THAT THEY CAN LICENSE OUT TO GAIN ROYALTY INCOME

The inventors associated with the International Technology Group (ITG) consist of professional inventors and consultants who have advanced degrees from MIT, and with many issued patents. Some have have had line experience and responsibilities with Fortune 500 companies and as a result are sensitive to the bottom line and the need for practical solutions. They also have access to other resources and associates as needed, including other innventors and groups of professional inventors if suitable.

Their inventions are made to meet real market needs. The preferred mode of operation is to have a prospective client approach with a request for an invention to meet a real need.

The hardest part of successful inventing is not the inventing but the marketing of the invention. We prefer to make sure that the marketing is done first. This occurs when a responsible person or organization approaches us for the invention.

Intellectual Property Providers may also become aware of a need that is not already satisfied, and frequently will spontaneously devise one or more inventions without first having a client. The hardest part of inventing - licensing or selling the invention then starts.

STEP 1  Request

A client approaches us with a request for an invention. Sometimes the other resources of the client were unable to meet the need. Sometimes there are blocking patents of competitors, and the client wants to own a better invention and patent. We frequently can bypass prior patents, and we help prepare patent applications with claims that are bulletproof.

If it is judged that there is a significant need for the invention, and if we feel that: (a) a strong patent can be obtained, and (b) if the client has the resources to make and/or sublicense the invention, we will undertake to devise the invention at our own risk and expense. At this point, the client has no obligations or cost. However, we own the invention until other arrangements are made.

As part of the invention, we will make a patent search at the U.S. Patent Office using Internet access to establish that there are no prior patents that could block our claims.

Step 2  Solution and Option

Usually we will prepare a Disclosure Document describing our invention and will then file it with the U.S. Patent and Trademark Office. This helps establish the date of the invention and our priority.

The client may license or purchase the invention after we confirm that the invention has been devised.

The client can obtain details of the invention by signing a non-disclosure agreement (NDA) or confidential disclosure agreement and agrees to pay for an option to license and/or purchase the invention. We will prepare a written document describing the invention to be submitted to the client. Included will be a letter agreement describing the suggested terms of the option including the purchase price of the invention and any subsequent related patent. In case the client wants to license the invention, we can offer an exclusive world wide license, or a lower cost license for manufacturing or sale or both. The license can be for certain applications of interest to the client.

The signing of the NDA is for the benefit of the client and the inventors, and preserves the ability to file for foreign patents. Confidential disclosure is needed because after the first public disclosure or use of the invention, a U.S. Patent Application must be filed within one year of non-confidential disclosure. In addition, the rights to foreign patents for many other countries are immediately lost upon non-confidential disclosure, unless a U.S. Patent Application was filed prior to the first non-confidential disclosure.

In order to avoid casual interest on the part of the client, we will require a payment for the option and the associated descriptive document. The initial option will be for two months for a payment of $2,000, and we may agree to extend the option for a payment of $1,000 per month. These fees will be credited as an non-returnable advance on any purchase or license agreement between the client and ITG.

During this option period we will not offer the invention to others so that the client can evaluate the potential of the invention and, if desired the client’s lawyer can determine if the invention can be patented. The client can have a preliminary patent search made, although we usually make our own search while devising the invention.

Step 3  Patenting

After the client exercises the option to license or purchase the invention and associated intellectual property (such as trade secrets, know-how, trademarks, copyrights), an agreement is drawn up including a license/purchase signing fee, a royalty agreement, and minimum royalties needed to maintain the license/purchase. The license/purchase can be for rights for manufacturing, marketing, and/or use. It can be for certain applications, and can be by territory or worldwide. If minimum royalties are not paid, the rights revert to ITG.

When the client wants to proceed with the filing a Patent Application, we will provide the necessary detailed teaching for a patent application. We will work with the patent attorney selected by the client, or we can suggest a patent attorney. The client pays for the cost of the attorney, and the patent office filing fees. We also get paid for our time in extending the initial Document prepared to describe the invention(s), because at that point it was not intended for use in filing a formal Patent Application. It was intended to provide a description of the invention, and to permit a patent search to be made and to help in the decision about exercising the option to license or purchase the rights to the invention.

In the Patent Application, the preferred embodiment is described and will be extended during the actual preparation of the detailed teaching. Alternate embodiments will be included in this next document in order to describe and protect some less desirable versions against patenting by others.

The drawings in the Initial Document are only sketches because a draftsman can redraw then in the formal manner required by the U.S. Patent office. Informal drawings can be submitted with the patent application and the cost of formal drawings can be delayed until after the patent examiners requests that they be submitted in the formal form. This is usually done as part of the first office action and request by the patent examiner, and usually occurs after one or two years after submission of the formal Patent Application.

We will work with the client’s lawyer to prepare and review the formal Patent Application. An important part of our contribution is the examination of the claims in order to identify possible ways to bypass the claims. We have experience in breaking patents by attacking and bypassing the claims. A technical approach involving technical modifications is sometimes very effective in bypassing a patent.

After the Patent Examiner responds with reasons for rejections, (which is usually the case for patent applications with strong claims) we will work with the client’s attorney to answer rejections.

The client will pay for the cost of the patent attorney, the filing fees, and for our time in helping prepare the strong patent application.

The requirements for a valid invention are that it be: (a) novel, (b) non-obvious, and also (c) useful. A frequent reason for rejection by the Patent Office is the claim that it is obvious. Another potential problem is the doctrine of equivalence (equivalent in certain ways to a previous patent). We have experience in helping answering the problem of obvious and equivalency.

If the invention rights are licensed or sold, then we may retain rights for other uses not needed by the client. Sale of the invention and intellectual property involves payment, plus royalties, and minimum royalties.

STEP 4  Prototype

Frequently the client will want a working prototype of the invention to be made. Upon request, we will agree to consult for the client to supervise, guide, and problem solve in the preparation of the prototype. We will work with the staff of the client, or we will arrange to have one of our associate laboratories prepare the prototype. The client pays for the costs of the work in preparing the prototype, and for our consulting time.

Notes

A good precaution in protecting the invention prior to filing an application is to send a Disclosure Document to the U.S. Patent Office along with a check for $10.00, under the Disclosure Document Program.

This document should contain a description of the invention and will be held by the patent office for two years and can be cited in a subsequent Patent Application and can be used to prove the date of the invention. There may be prior notebook entries that, if properly witnessed, can prove earlier dates of the invention (if they contain satisfactory descriptions of the final invention). (Sending a description of the invention to yourself in a postmarked, sealed envelope is not recommended.)

Even after steps are taken to document the date of the invention, the invention should not be disclosed in non-confidence, otherwise the one-year clock for a formal Patent Application starts, and foreign patent opportunities are immediately lost.

Note that diligence must be proven if requested, otherwise the rights to patent may be lost. Diligence can include reduction to practice, or making tests, prototypes, and/or improvements. Written, dated proof is recommended.

Filing a Provisional Patent Application, (PPA) or a Regular Patent Application (RPA) is considered as reduction to practice.

Note that currently, in the U.S. the patent goes to the First To Invent, while in other countries the patent goes to the First To File.

A Provisional Patent Application may be filed with the U.S. Patent Office in a much simpler form than a formal Patent Application. The filing cost for a small entity is only about $85.00. This simple application permits the claim “Patent Pending” and is good for only one year if it is to be used in a subsequent patent application for this invention. In order to be valid, the application teaching must provide enough information so that someone skilled in the art may be able to make the invention without undue experimentation. This means that there must be full disclosure.

In the provisional application, much material needed in the actual application is not needed, and this reduces the effort. Postponed to the actual Patent Application can be material such as the background, abstract and the claims. In general a formal patent attorney should write the claims because the wording is very important and must comply with the requirements of the Patent Office. Strong claims represent the major protective value of the patent.

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Information

Providing Inventions And New Products
Invention devised "By Request", for serious companies and investors, at no cost or obligations.

Ten Reasons Why Companies Need New Products
In order to survive, prosper, and grow, Intellectual Properties (IP), particularly Patents, are becoming vital to many companies. Other companies with their own Intellectual Property can be a danger to your company.

See a List of Some of Our Inventions
This is a list of some inventions that are still available for licensing or purchase. Also included are some inventions that we have been thrown into the public domain so that no one else can patent them. They are examples of what has been lost because they are ahead of their time, or because there was no interest shown in licensing them.

Who We Are
Learn about our experience, background, and accomplishments. We are independent experienced inventors with many patents. We have advanced degrees, and with capability in many fields. Learn more about us.

How We work To Help You
Learn how we work using teams of inventors to meet your needs for new products.

Home   |   Contact Us   |   For Inventors   |   For Companies
Who We Are   |   How We Work   |   New View of the Universe   |   More Solutions