Kenneth Avila, Esq. - Patents, Trademarks, and Business Law
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Beware of Invention Promotion Scams!

10/28/2017

4 Comments

 
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Do you want to save yourself $10,000?  That is about how much you will be paying those "invention assistance companies" you see on TV.  Be very careful when dealing with them and the promises they make.  I have read a number of agreements offered by these companies to inventors and all of them have many terms that are not in favor of the inventor.  Yet every year many inventors will hand over thousands of their hard earned money to these "invention assistance companies" and get very little as a result.  So what should you be looking for when you approach one of these companies?  I would say body armor, but seriously here are some pointers:

  1. Offers of a free review of your invention.  What did you mother tell you about free things in life?  Listen to your mother.  "Free" is their hook to bring you in contact with their professional sales person who will then do what professional sales people do - make a nice commission off of you.
  2. Market evaluation report.  The first thing their professional sales person will do is tell you that a market evaluation report needs to be performed.  Very likely that report will indicate that the market potential for your invention is great.  Of course their market evaluation report will say that because it is a lead in for the big dollar items that come next.  The purpose of the report is to get you excited enough to take the plunge.
  3. "Poor Man's Patent".  Some of these companies will tell you to protect your idea by writing it down, putting it into an envelope, mailing the envelope to yourself, and then not opening it.  You will gain no legal protection by this process and your idea remains open to copycats who see it.
  4. Agreements.  Once they have excited you with their market evaluation report they will offer you marketing services with brochures, TV ads, and phone banks.  But they will need to get you to sign an agreement first.  The agreement is key because the agreement will protect the invention assistance company from being sued by you!  Always have an attorney review the agreement and explain the risks you are taking by signing the agreement.

Because of the number of inventors being taken by invention assistance companies the US government has written 35 USC 297 to protect inventors.  35 USC 297 is nice but it is best to talk with an attorney first before signing the agreement.  

35 USC 297 allows you to ask the invention promoter the following:
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  1. The total number of inventions evaluated by the invention promoter for commercial potential in the past five years, the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations.
  2. The total number of customers who have contracted with the invention promoter in the past five years, excluding those who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter.
  3. The total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by the invention promoter.
  4. The total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by the invention promoter.
  5. The names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.

Finally an attorney has certain ethical duties owed to their inventors.  An invention promotion company owes no such ethical duties.  An attorney who breaches their ethical duties to a client may lose their license to practice law in their state and to represent inventors before the patent office.  Those licenses are very hard to get and represents years of hard work in school.

4 Comments

Hiring an independent contractor?  You may not be the owner of any intellectual property created by the independent contractor.

8/27/2017

1 Comment

 
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Basically a business may hire two types of individuals.  These two types of individuals are employees and independent contractors.  If you hire an employee here in California, the law favors the employer being the owner of any intellectual property created by the employee, even intellectual property created by the employee while "off the clock" as long as it is related to the work the employee is performing for their employer.  However if an employee signs an intellectual property agreement with their employer then the intellectual property agreement will prevail.  If you are an engineer or computer programmer, in most cases, when hired you were asked to sign an agreement whereby you agree to release to your employer all intellectual property that was created during the period of your employment.  Refusing the sign the agreement will likely not grant you any intellectual property rights as by law you are required to turn over your intellectual property to your employer.  However, if you sign an intellectual property agreement that states you may keep any intellectual property you develop during the period of your employment then the agreement will prevail against the law and you will retain your rights to IP that you create.  This situation is, for the most part, reversed when it comes to independent contractors.  Unless the independent contractors signs an agreement to turn over any intellectual property that is created in the course of working for the company the independent contractors retains all rights to the created intellectual property.  There are exceptions to these general rules and you should talk with an attorney to get an answer for your specific case but what sets an independent contractor apart from an employee?  

The Internal Revenue Service (IRS) states that "The general rule is that an individual is an independent contractor if the payer has the right to control or direct only the result of the work and not what will be done and how it will be done."  Here the word "payer" is the company that is paying the individual doing the work.  The IRS also provides the following details:

  1. Behavioral: Does the company control or have the right to control what the worker does and how the worker does his or her job?
  2. Financial: Are the business aspects of the worker’s job controlled by the payer? (these include things like how worker is paid, whether expenses are reimbursed, who provides tools/supplies, etc.)
  3. Type of Relationship: Are there written contracts or employee type benefits (i.e. pension plan, insurance, vacation pay, etc.)? Will the relationship continue and is the work performed a key aspect of the business?
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You may get more information from the IRS about independent contractors by clicking here.

If you have hired someone that fits the IRS rules for an independent contractor then very likely that individual is an independent contractor and they will generally own any intellectual property that they create unless they sign an agreement giving you rights to their intellectual property.  So be careful and when in doubt have your new person sign an intellectual property agreement to transfer those rights to you.  If you need help contact me and I can draft that agreement for you.​

If you have hired someone that fits the IRS rules for an independent contractor then very likely that individual is an independent contractor and they will generally own any intellectual property that they create unless they sign an agreement giving you rights to their intellectual property.  So be careful and when in doubt have your new person sign an intellectual property agreement to transfer those rights to you.  If you need help contact me and I can draft that agreement for you.
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Video:  An Introduction to Edith Clarke, Engineer Extraordinaire

2/11/2016

1 Comment

 
Let me introduce you to Edith Clarke.  Born in a family of eight children in 1883 she was the first woman to graduate from MIT's Electrical  Engineering department, first woman to be employed as an Electrical Engineer at General Electric, and the first woman to give a technical presentation at a conference sponsored by the IEEE.  Her field of expertise was the transmission of electrical power over cables and has to her name a patent for a calculator to help in the design of power lines.  See her patent by clicking here or click the USPTO video below to see her story.
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Video:  PBS 'Inventors' Series - Ralph Baer, the First Video Gamer

2/10/2016

0 Comments

 
'Inventors' is a series of portrait videos chronicling the work of contemporary inventors from all walks of life.  In this video Ralph Baer, the father of video games, talks about those early days of video game history and why now, at 90 years old, he's still inventing.  To see his patent click here.
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  • Home
  • Meet the Lawyer
  • Practice Areas
    • Business Law
    • Intellectual Property Law >
      • Patent FAQ and Fees
      • Trademark FAQ and Fees
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  • Resources
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    • IP Twitter Feeds
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