New product

[tggzzz]

I am looking for a person to pretty much guide me as to what to buy and how to assemble a prototype.

There are many many guides to that available; more deal with the technical aspects, some deal with the business and commercial aspects.

You are facing the classic problem: time vs money. In this case it is either your time learning how to do things, or your money paying for the expertise of someone that already knows how to do it.

From a business perspective, you should also add in "market windows" and "lost opportunity costs", e.g. if you are X months "late" to the market for whatever reason, you will have "missed" the peak profit.

[tggzzz]

but it is very hard to sue anyone for patent issues.

That's both wrong and irrelevant.

Wrong: it is very easy to sue for patent issues. It is expensive to both win and defend such a lawsuit.

Irrelevant: just the appearance of a lawsuit, whether or not it is justified, can and does have a severe impact on a small business. At the very least it loses time and money that a small business does not have. At worst it destroys the small business.

Of course, having a patent is not a magic talisman that wards off such a lawsuit.

IMNSHO there are two easy reasons to justify patents. For small companies it can (rightly or wrongly) help investors have confidence before they invest. For large companies, a big patent portfolio is a convenient thing to "swap" with another big company along the lines of "if you don't sue me I won't sue you and we can both get on with making money". In the latter case what's in the patents isn't very important.

[ade]

If I copied your idea and re-engineered it myself, how can you prove I copied your idea willingly, not invented the same idea after you if I refuse to admit?

Well that is a whole separate discussion in a legal forum/blog, and the answer differs by jurisdiction.  But basically, absolute proof is not required.  A typical standard in law is that you "know or should have known" that you are infringing on a patent.   This "should have known" part allows circumstantial evidence to be presented.

If I make a popular product, and you simply copy it, then I may argue in court that: a) my product is well known in the market and it should be obvious to anyone making a clone that they would be violating one or more of my patents; b) therefore you knew "or should have known" about my patents.

Also, in practice patent disputes don't go directly to litigation.

E.g., I see you are infringing on my patent and serve you with legal notice of my patent and demand that you to stop and/or to pay me royalties.   You say "who the f* cares" and ignore my demand.   I can now go to court with evidence of willful infringement.  You cannot claim that you didn't know about my patent.

If you sell your clone to the US market, then I might ask a US court for triple damages due to the willful nature of the infringement.  In Canada I might also ask for enhanced penalties.  In other parts of the world, it might not matter because some jurisdictions don't have extra damages for willful infringement.  Yet in other jurisdictions, willful infringement is not just a civil matter but can also bring out serious criminal charges.

Again the point of my post is not to say that small inventors should get a patent -- but that they should not simply ignore or infringe on other people's patents.

[janoc]

To OP:

Take what your lawyer tells you concerning patents with a huge grain of salt. Of course any lawyer will tell you that you must patent and you need to try to patent everything you do or you will be ripped off, yada yada. What they don't tell you are two things:

- Of course they want you to patent - lawyers get paid for filling the applications, for filing the lawsuits and for defending them, they have a vested interest! It is bit like a life insurance broker telling you that insurance is extremely important.

- Even if you obtain the patent (which is by no means a sure thing), a patent does not really give you any protection by itself. It is only a government-issued certificate that says you have invented something first and thus can claim some rights (which differ from country to country). However, unless you want to actually go to a court and sue the infringer (which could be overseas!), you will not gain anything from actually having the patent.

The same thing applies if you only want to use the patent defensively - aka if someone sues me for violation of their patent, I will countersue for violation of mine.  Assuming they are actually infringing your patent (most patent trolls don't because they aren't producing anything - they make their profits by shaking down others with lawsuits), you still have to be determined to go to court and actually sue.

So when it comes to actually protecting your idea, the patents are most likely not what you want to do as the first thing.  You would have to inevitably disclose your idea before you are even able to sell it. Then all that is needed is for someone to read your patent application and start  producing the gizmo instead of you. If you are a startup, good luck suing them, even if you have a patent already - you aren't producing and selling anything yet, so you are unlikely to have money to do so ...

Patents can be also used as a bargaining chip in business dealings, but that is another subject.

@blueskull - You have obviously not heard about e.g. Apple aggressively suing others for their patents. Or one of the thousands of patent trolls. People and companies unfortunately do care about their patents

[RalfSchooneveld]

Thanks for you guys' opinion and input. Everything you guys have mentioned is what I was kinda thinking myself. In my opinion, patents and stuff, are kinda obsolete. Of course I cannot really say that until we all get basic income, because everybody needs to make money.

At the end of the day, I just want to make a quality product that will last and be a good invest ment for filmmakers (that is mainly the people that I am targeting, because I myself am a filmmaker). On the one side, I don't care if people clone it, because I will always try to upgrade it to keep giving better products. But yeah, nobody wants to find out someone close to them, or who they know, stole your idea and is able to produce it because they maybe have better technical skills or something like that.
I still have no idea how I would deal with that, if it would happen.

[janoc]

I think that trying to out-innovate the competition is a good strategy. Keeping stuff secret works only until you release the product. If it is something that people want it is inevitable that someone will buy it, take it apart and start making cheaper clones.  Trying to chase them with patents and lawsuits is a very expensive whack-a-mole game that doesn't work anyway. Good luck suing someone in China. Even if you somehow manage to do so or stop their product from entering your market through customs, the company will just disappear and the product appears again under a different name from a different manufacturer a week later. And you can start over again ... Better spend the time, money and effort improving your product instead.

The CEO of Sparkfun had a good article on this when he tried to explain why they aren't trying to block competitors from copying their products. http://www.wired.com/2013/01/sparkfun-10-years/ Of course, that may or may not be applicable to your case.

Make better product, give people the extra value in support, updates, whatever that will make them come to you even if it is more expensive than buying a Chinese clone. That's pretty much the only way to win in this race.

[Corporate666]

Also, don't make any patent application too specific in detail... be as 'vague as possible' that the patent body will accept (ask your lawyer).  Too much detail, and someone else can 'use three screws instead of four' - and your protection becomes very fragile.

That's incorrect about making small changes.  There is a thing called "doctrine of equivalents", such that if something is different than the claim a patent, but functionally equivalent, it can still be infringing even if it doesn't violate any claim.  But it is definitely true that you want to be as vague as possible (certainly in the application, and then negotiate with the examiner on what IP they will actually grant you).

Also look into a 'provisional patent' which gives you  lot of protection for very little money during the first 12 months while you're getting your problems and filing in order.

This is incorrect and a very dangerous approach.  Your provisional application must be at least as "fleshed out" as your actual patent application.  If you do not specifically disclose even a tiny detail, you cannot claim the provisional filing date in the normal application.  You absolutely cannot get a provisional on the idea and then flesh it out after the fact.  It's usually a bad approach because if you get a provisional and then start to develop the product, it's almost guaranteed that you will make some changes or adjust some things - but you would be unable to claim them on the actual patent unless they were very specifically disclosed in the PPA.

Keep in mind the above is for the USA - but it generally works the same in most of the rest of the world.

[Corporate666]

Once a design is published, it cannot be patented.  If you want a patent, get it first (or at least the application lodged) and then you can publish.  ** Check with a patent attorney for details before taking any action.

In theory the above is true.  In practice, it's untrue.

The patent office (at least in the USA) does not check the public domain for prior art.  Their search is limited to what exists in the body of patents already granted.  So if someone publishes a device and someone else patents it, the patent will probably issue... and then it is most definitely not a trivial matter for the person who published the device first to get the patent invalidated.  It would take a long time and a large sum of money to do so - and even if the patent was overturned, profits earned by the patent holder during until the patent was rendered invalid would likely be untouchable.

[Corporate666]

There is another school of thought on the subject - and that is along the lines of "Damn the torpedoes, full speed ahead!"

The idea is that you don't fret too much about protection of the intellectual property and just get your widget out in the marketplace to make a strong presence and establish yourself as the source of the widget.  Others may copy the design - but you will be the name associated with the product and also be known as having 'the original widget'.  Registering a trademark would be highly recommended (and that recommendation would apply no matter what).

Whether this is even an option for you will be a function of exactly what the product is, the demand that it will attract and a few other parameters.  As such, I'm not suggesting you travel this path - I only offer it as an alternative to consider.

Well, to be honest, that is what I am doing now. I am looking for a person to pretty much guide me as to what to buy and how to assemble a prototype. Personally I would love it for Dave, or some other down to earth guy, to mentor me on this. But I have no idea if I could get to him, or that he would be interested in it.

Something to keep in mind - you can't patent an idea.  You can only patent an actual device - the implementation of an idea.  So if you do not yet have a prototype, you have nothing you can patent.  It makes sense, usually, to hold off until you have developed a working product before thinking of a patent, because there will be things you will change along the way - and you won't know what those things are until you build the product. 

[Corporate666]

but it is very hard to sue anyone for patent issues.

That's both wrong and irrelevant.

Wrong: it is very easy to sue for patent issues. It is expensive to both win and defend such a lawsuit.

Irrelevant: just the appearance of a lawsuit, whether or not it is justified, can and does have a severe impact on a small business. At the very least it loses time and money that a small business does not have. At worst it destroys the small business.

Of course, having a patent is not a magic talisman that wards off such a lawsuit.

IMNSHO there are two easy reasons to justify patents. For small companies it can (rightly or wrongly) help investors have confidence before they invest. For large companies, a big patent portfolio is a convenient thing to "swap" with another big company along the lines of "if you don't sue me I won't sue you and we can both get on with making money". In the latter case what's in the patents isn't very important.

I think patents work at all levels.

If a small business owner spends $10-20k on a patent, then someone infringes on his patent... many infringers will be scared off by the threat of a lawsuit.  Let's face it - if any of us here started to make some product and then get a letter from a law firm stating that it is in violation of patent #123, we would go and look at the patent and we would see that it does indeed infringe.  Most of us would stop selling the device, or we would try to work out a licensing deal.  If you say "LOL screw you!", you are now willfully infringing and that opens you up to a whole lot more liability.  It can even make you personally liable, which means the patent holder could get a judgement and come after your home, your car, your personal bank accounts.  So a patent can often keep the little guys in check.

Medium guys usually have a lot more to lose - and a patent tends to be cheaper to license than to fight in court, unless the patent holder is being unreasonable or the company paid for a patent lawyer to provide an opinion.  An opinion relates to the previous paragraph - it's not willful infringement if a competent patent lawyer writes an opinion that your product does not infringe.

Also, the majority of patent suits are won not by the patent holders, but by the infringer.  That's because often times, the patent was invalid from the get go.  There is a company in the USA called Radiantz and they have a patent on using surface mount LED's on a flex PCB.  I am not joking - that is one of the claims.  It would never hold up in court, but it would take someone with the money to challenge the patent to fight them on it.  So patents have value to medium companies too.

As for large businesses, the win or loss of patents can amount to millions in revenues or costs, so they are worth it there too.

There are a lot of stories of "someone made a tiny little change and got around my patent", or "they infringed anyway and they dragged it our in court until the patent holder went broke".  In most of these cases, we are hearing one side of the story.  In many of those cases, the patent was probably invalid or shoddily written or too broad.  Most of them are, in fact.  But this creates a myth that patents are worthless and only offer value to huge companies, which IMO is an incorrect generalization.

The big problem with patents is that it doesn't stop some prick in China from knocking you off who doesn't give a shit about honor or integrity or about patent.  And the Chinese gov't is complicit in protecting said pricks.  And with sites like Alibaba and Aliexpress, consumers can pretty easily buy direct from China - and it becomes too expensive to actually stop that type of infringement. 

[obiwanjacobi]

Idea's are like a$$holes, everybody's got one.

It's all about execution. Get a competent design / manufacturing partner and expect to get only 10% (or less).
Or wait a couple of years while you learn the skills yourself.

Or just throw it out there (open source) and see what comes of it and forget about patents...

[2c]

[ChristopherN]

Another thing to consider is the market you want to reach.

A product for filmmakers seems to target a very small market with a few thousand unit per year (correct me if I'm wrong). My guess would be that most of your sales will be generated by mouth to mouth marketing and a few key users that promote the product. It's way less likely that a clone will appeal to your potential customers once your brand is know in your industry.

We are selling things and consulting to small industrial markets, it's mostly like that for us.

If you plan on building a consumer product that will be sold in large quantities thats a different story. You want to patent the hell out of that for the reasons stated in other posts.

A thing to remember is that there a different ways of protecting a product. A patent is used to protect the technical product itself. There are other forms of protection in different states around the world. For example, there is something called a Gebrauchsmuster here in Germany. Thats like a small patent that has to describe the product itself. You can get that by yourself and it's something like 40€ to register.

Another thing to consider are design patents (or Geschmacksmuster in Germany). Design patents can protect the look of your product. This is what some of the larger Apple vs. Samsung cases were based on in Europe. You can get the design patent yourself and it's something like 60€ here in Germany. There is a treaty that protects design patents in the EU, but you may need to file that in each nation. Design patents are very useful for things like import bans and bans on trade fairs.

Christopher

[ChristopherN]

Just to clarify on design patents in Europe:
https://register.dpma.de/DPMAregister/gsm/register?DNR=M9506485-0001

It's very common to protect technical things by design patent. The link shows an Hirose PCB to cable connector. This design patent prevents other from selling connectors with the same pin arrangement as the copy would look like the original.

This makes it very easy to defend and enforce design patents. Basically everyone who is working in customs can just place the picture and the product in question side by side.

A design patent can be very useful if you have specific interfaces or a certain way that connectors are arranged. You can block other from selling drop-in replacements which can be very useful. Another thing to protect could be your user interface or elements thereof.

[tggzzz]

but it is very hard to sue anyone for patent issues.

That's both wrong and irrelevant.

Wrong: it is very easy to sue for patent issues. It is expensive to both win and defend such a lawsuit.

Irrelevant: just the appearance of a lawsuit, whether or not it is justified, can and does have a severe impact on a small business. At the very least it loses time and money that a small business does not have. At worst it destroys the small business.

Of course, having a patent is not a magic talisman that wards off such a lawsuit.

IMNSHO there are two easy reasons to justify patents. For small companies it can (rightly or wrongly) help investors have confidence before they invest. For large companies, a big patent portfolio is a convenient thing to "swap" with another big company along the lines of "if you don't sue me I won't sue you and we can both get on with making money". In the latter case what's in the patents isn't very important.

I think patents work at all levels.

<snipped> examples of patents working </snipped>

The big problem with patents is that it doesn't stop some prick in China from knocking you off who doesn't give a shit about honor or integrity or about patent.  And the Chinese gov't is complicit in protecting said pricks.  And with sites like Alibaba and Aliexpress, consumers can pretty easily buy direct from China - and it becomes too expensive to actually stop that type of infringement.

Which brings us back to my points.

In addition you missed the other way patents fail, even in the USA: big manufacturers simply carry on regardless or offer derisory terms to an individual holding a patent. See Armstrong and his FM patent.

[tggzzz]

Another thing to consider are design patents (or Geschmacksmuster in Germany). Design patents can protect the look of your product. This is what some of the larger Apple vs. Samsung cases were based on in Europe. You can get the design patent yourself and it's something like 60€ here in Germany. There is a treaty that protects design patents in the EU, but you may need to file that in each nation. Design patents are very useful for things like import bans and bans on trade fairs.

Yes.

(They might be called something else in other countries.)

[ade]

Chinese government does not recognize foreign patents, and a foreigner, if without a Chinese agent or subsidiary, can not register Chinese patents or copyright

That's true for virtually every country.  A US patent is not recognized in Canada.  A Canadian patent isn't recognized in Germany.  A German patent isn't recognized in Japan, etc.  Cross-border filings are routinely done via agents.

There are schemes like the EPC and PCT which makes it more streamlined for a patent application to be filed in several countries (including China), but the resulting patents are still national based.  Also China like most countries is a signatory to all the major patent agreements (Paris, WIPO, TRIPS, etc.).

There are, however, many problems with Chinese patent enforcement.  It is a system, like many court systems in China, that is rife with loopholes and corruption.

[ade]

This is incorrect and a very dangerous approach.  Your provisional application must be at least as "fleshed out" as your actual patent application.  If you do not specifically disclose even a tiny detail, you cannot claim the provisional filing date in the normal application.  You absolutely cannot get a provisional on the idea and then flesh it out after the fact.

Many innovations will have multiple components and may result in several patent claims.   What sometimes happens is part of the invention become "settled" while other parts of the invention still needs to be "fleshed out" in additional design work.

In this case, it may be beneficial to file a provisional application for the "settled" part, then continue to flush out the rest of the design.  Further provisional applications may be made for other parts of the invention as they become "settled", or if changes are made to previously "settled" parts.   When the invention is finally finished (assuming within a 12 month period), a non-provisional patent can be filed referencing all the earlier applications.

This approach gives you the benefit of getting an earlier priority date for parts of the invention.  The alternative is to defer filing until all aspects of the innovation has been finalized (but lose the earlier priority date), or to file several non-provisional applications along the way (expensive).

[Howardlong]

Rather than talk hypothetically about this, here is my real life opinion on patents. I have had some success with products that I have funded, designed, developed and market myself. I deliberately did not patent them. Why? "Have you got a patent?" is pretty much the first question people ask me after they find out I'm an "inventor".

Firstly, the markets I develop products for are fairly niche and of limited value as a whole, say $1m to $3m each, although I do not know that when I first develop any product, I'm a pesimist in this regard and my assumption on market size have been consistently < 10% of actual.

Secondly, when developing a product as a one man band, do you really want to spend significant effort (ie your time) and funds on a patent when you could be innovating?

Thirdly, if you think you can get a global patent for $10k you are mistaken. Multiply that by ten.

Fourthly, what exactly are you going to do if/when someone from China copies your product? Would you have the time and funds to defend and enforce that? I doubt it, and a cease and desist letter is hardly going to stop them.

Finally, rather than lining the pockets of lawyers, assuming you can use the technology in your product, spend some time on other forms of IP protection. At the end of the day in a reasonably niche market, it's not hard to make it too expensive to attempt a direct rip off.

Sure, I've since had look-alikes (not direct copies except in one case about ten years ago) encroach into my market but, there is also a significant non-tangible value to being there first, almost a brand value if you like.

If you genuinely and realistically think that you have a $5m+ market value then maybe attempting a patent has value, but please consider what I stated earlier: if spending money and time at this stage on hypotheticals like patents is going to risk not having any product at all, then don't bother. A real product with no patent is worth much more than a patent with no product at all (unless you're a patent troll).

[ade]

Rather than talk hypothetically about this, here is my real life opinion on patents. I have had some success with products that I have funded, designed, developed and market myself. I deliberately did not patent them. Why?

As a counter-example, I was the technical lead on a startup where we developed a prototype, filed a patent, then raised US$54 million while perfecting the product.  Was the patent worth it?  Yes, in this case, since we were courting VCs for investment.

One size doesn't fit all.

[Brumby]

Thirdly, if you think you can get a global patent for $10k you are mistaken. Multiply that by ten.

More correctly, you would be getting a number of patents that cover the world - but there are a couple of issues.  The first is actually covering every jurisdiction on the globe.  Virtually impossible.  The second is that $100k would probably only cover you for major market nations.  If you want to cast your net as wide as possible, the real number will be much more.  This may not be a major issue if there is no real market for your product in a number of smaller countries.

[janoc]

Don't forget that the patent fees are not one-off. If you want to keep your patent, you need to pay maintenance fee every year too - for every country where you have applied for it.

[janoc]

As a counter-example, I was the technical lead on a startup where we developed a prototype, filed a patent, then raised US$54 million while perfecting the product.  Was the patent worth it?  Yes, in this case, since we were courting VCs for investment.

One size doesn't fit all.

By all means, if you want to get VC money, then a patent can be worth it. Not for protection/enforcement but as a carrot to dangle in front of the potential investors. VCs love patents, because even if the startup goes belly up, the patent could still be sold.

On the other hand, relying on VC money early on (why would you otherwise rush to patent?) is a good recipe for getting royally screwed in your own startup. But that is another discussion, I am sure you knew what you were doing. As you said, one size doesn't fit all.

[Howardlong]

Rather than talk hypothetically about this, here is my real life opinion on patents. I have had some success with products that I have funded, designed, developed and market myself. I deliberately did not patent them. Why?

As a counter-example, I was the technical lead on a startup where we developed a prototype, filed a patent, then raised US$54 million while perfecting the product.  Was the patent worth it?  Yes, in this case, since we were courting VCs for investment.

One size doesn't fit all.

That is why I stated I fund my projects myself and the size of market.

My recommendation is that if you possibly can avoid needing other people's money, do so, and particularly highly leveraged scenarios where you end up not being in control of your own destiny. I have had surprisingly little problem with unsolicted offers from people wanting to fund my projects but I have always turned them down. The thought of (a) giving away the results of my own blood sweat and tears and (b) giving them some control is not my idea of a fun way to work.

The problem of needing someone elses money is not just about losing control, it's about yet more overhead in terms of time and effort on your part, and a patent is just part of that whole nonsense. That's time you could be using to develop your product.

If you think success is measured by how much outside investment you can attract without producing anything (thinks: uBeam, Batteriser) then good luck to you, but personally that's not my bag. That is what "serial entrpreneurs" do these days I'm told, and that term's already becoming a badge of derision than a badge of honour as a result!

[Corporate666]

Unless you really copied others' idea down to very detail, it is very unlikely to hit all right requirements of a patent, and hence the patent war will last forever. If you copy one's design by all aspects, then it is more than stupid. The art of IP infringement is to make things very hard to prove, and technically you can always find similar expired patents to cover it.

Incorrect.  Patents have claims.  Each claim is individually enforceable.  You do not need to violate all claims or even multiple claims, just a single one is enough.  Claims (should be) written such that that they start vague and get more specific.  Violating any of the "chain" of claims is infringement.

Knock off != patent infringement
Knock off is simply stupid as anyone can sue them, as long as you want to fork out the time and effort.
Re-engineer a patent with similarity to another expired patent and other obfuscating factors is very obscure, and even being discovered, is vary hard to sue.

"Knock off" colloquially means an unlicensed copy.  Saying "that's not infringement" is wrong.  If it violates any claim of a patent, it's infringement.   I don't really know what you're trying to say in the second sentence.  There is no such thing as "hard to sue".  There is no test done by the court on whether you are allowed to sue.  Anyone can sue anyone for anything.  Cases can be dismissed by summary judgement, but that's not going to happen unless it's literally an open and shut case. 

Chinese government does not recognize foreign patents, and a foreigner, if without a Chinese agent or subsidiary, can not register Chinese patents or copyright, so technically, software piracy of any oversea-only producers in China is legitimate.
Also, Chinese government does not actively hunt down patent infringements. They wait until someone sues someone else.

Like I said, the Chinese government is complicit through inaction and de-facto protection of this behavior.  I am not talking about whether making infringing goods is legal in China.  I am talking about whether it's legal to make those good and sell into a foreign market.  There is no ambiguity, it is not legal.  But the Chinese government doesn't do anything to stop it, and it could be easily argued they encourage it and enable it willfully.

[Howardlong]

Thirdly, if you think you can get a global patent for $10k you are mistaken. Multiply that by ten.

More correctly, you would be getting a number of patents that cover the world - but there are a couple of issues.  The first is actually covering every jurisdiction on the globe.  Virtually impossible.  The second is that $100k would probably only cover you for major market nations.  If you want to cast your net as wide as possible, the real number will be much more.  This may not be a major issue if there is no real market for your product in a number of smaller countries.

That was pretty much the point I was trying to make: I did spend quite some time a few years ago on it both studying it myself and engaging IP lawyers, who I'm happy to say pretty much agreed with my decision bearing in mind the market size and costs involved.