No-Cost Inventions From Inventing-Solutions.com: on-demand technology invention and patent consulting

No-Cost Inventions

Dr. Aisenberg and other inventors with whom he chooses to work in individual projects are professional inventors and consultants with many issued patents and commercially successful products.

Dr. Aisenberg's No-Cost 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. Success is more likely when sufficient market investigation is done before the bulk of the technical work, and is the responsibility of potential partners approaching Dr. Aisenberg.

Dr. Aisenberg 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 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. Dr. Aisenberg frequently can bypass prior patents, and can help prepare patent applications with claims that are nearly bulletproof.

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

As part of the invention, Dr. Aisenberg 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 Dr. Aisenberg will prepare a Disclosure Document describing the 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 invention has been devised.

The client can obtain details of the invention by signing a non-disclosure agreement (NDA) or confidential disclosure agreement and agreeing to pay for an option to license and/or purchase the invention. Dr. Aisenberg 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, Dr. Aisenberg 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 inventor, 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, Dr. Aisenberg will typically require a payment for the option and the associated descriptive document. While specific situations vary, often the initial option will be for two months for a payment of $2,000, and may be extended for a payment of $1,000 per month. These fees will be credited as an non-returnable advance on any purchase or license agreement.

During this option period Dr. Aisenberg 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 Dr. Aisenberg usually makes his 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 Dr. Aisenberg.

When the client wants to proceed with the filing a Patent Application, he will be provided the necessary detailed teaching for a patent application. Dr. Aisenberg 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. Dr. Aisenberg also may also require payment for time required 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 extendeded 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.

Dr. Aisenberg will work with the client’s lawyer to prepare and review the formal Patent Application. An important part of his contribution is the examination of the claims in order to identify possible ways to bypass the claims. Dr. Aisenberg has 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) Dr. Aisenberg 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 Dr. Aisenberg's 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). Dr. Aisenberg has experience in helping answering the problems of obviousness and equivalency.

If the invention rights are licensed or sold, then Dr. Aisenberg 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, Dr. Aisenberg will agree to consult for the client to supervise, guide, and problem solve in the preparation of the prototype. He will work with the staff of the client, or we will arrange to have a laboratort prepare the prototype. The client pays for the costs of the work in preparing the prototype, and for consulting time.