Apollo 50: The role of intellectual property in space commerce

The U.S. Patent and Trademark Office (USPTO) will be hosting an event to commemorate the 50th anniversary of the moon landing on July 23, 2019, from 2 pm to 4:30 pm (ET) at the USPTO headquarters, in Alexandria, VA. The event will also focus on space innovation, technology transfer from the Apollo missions, and an overview of the current administration’s policy on space exploration and space commerce.

Information regarding the event can be found here. Those interested in registering for the event, can do so here. There will be a live Facebook event here.

Trends For Women Inventors

The United States Patent and Trademark Office (USPTO) released a report on the trends and characteristics of U.S. women inventors named on U.S. patents granted from 1976 through 2016. The report delivers several important findings, including:

  • The share of patents that include at least one woman as an inventor increased from about 7 percent in the 1980s to 21 percent by 2016.
  • Even with this increase in patent counts, women inventors made up only 12 percent of all inventors on patents granted in 2016.
  • Gains in female participation in science and engineering occupations and entrepreneurship are not leading to broad increases in female inventors earning a patent.
  • Technology-intensive states, as well as those where women comprise a large percentage of the state’s overall workforce, show higher rates of women inventors.
  • Women inventors are increasingly concentrated in specific technologies, suggesting that women are specializing in areas where female predecessors have traditionally patented rather than entering into male-dominated fields.
  • Women are increasingly likely to patent on large, gender-mixed inventor teams, and are less likely than men to be an individual inventor on a granted patent.

“Women inventors have made and continue to make key contributions,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Laura Peter. “We look forward to working with industry, academia, and other government agencies to identify ways to increase the number of women inventors in all sectors of our economy.”

The full report can be found online at www.uspto.gov/learning-and-resources/ip-policy/economic-research/progress-potential.

Failure To Establish Clear IP Ownership-What Every Startup Needs To Know Part 4

By Debby Winters

Failure to establish IP ownership rights can be a deal breaker in many business transactions. Due diligence analysis generally seeks to verify not only the startup’s ownership rights to each piece of IP but also to determine if there are any restrictions on its use. Typically IP ownership issues can be averted if addressed early, sometimes even before the incorporation of the startup.

Here are a few of the places where ownership should be established:

  1. Current Employment for the Founders
  2. Employees of the Startup
  3. Independent Contractors
  4. Startup Founders

In this blog, we will discuss the first topic and take up the other topics in subsequent blog posts.

Founders of many startups continue to work for their current employer while they establish the new company. The employer may have required that the Founder/employee sign a confidentiality or invention assignment agreement in which the employee agreed to assign all new ideas and inventions related to the employer’s business to the employer. This is particularly problematic if the startup product or service is closely related to the employer’s business as the employer may try to claim rights to the startup’s IP.

Thus, it is important that founders carefully review their current employment agreements and fully understand employment obligations, including IP assignment clauses and non-compete language. Employees should also consider discussing personal projects/inventions with their employer upfront to avoid ownership issues later down the road. Generally, employer resources or company time should not be used to develop projects for the startup company without the pre-approval of an employer and without the employer’s agreement not to claim ownership rights.

In the next blog, we will look at establishing ownership of IP with employees of the startup.

Commemorating Five Years of the America Invents Act

On Wednesday, September 21, members of Congress and key congressional staff, USPTO leadership, and stakeholders from industry and the inventor community came together again to commemorate the 5th anniversary of the AIA on Capitol Hill.  What follows is a guest blog by Dana Robert Colarulli, Director of the Office of Governmental Affairs that appeared on the Director’s Forum Blog on the USPTO website. Enjoy!

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“We’ve come a long way in five years. The Leahy-Smith America Invents Act (AIA), signed in 2011 by President Obama, modernized the U.S. patent system and, as a result, helped strengthen America’s competitiveness in the global economy. Together with our stakeholders, the USPTO sought to implement the act consistent with the intent of Congress to increase certainty in our nation’s intellectual property (IP) landscape and enable the brightest ideas and most ambitious endeavors in the world to come to light.

I was there in 2011 and the years leading up to the President signing the AIA and have watched the agency embrace and implement the numerous provisions in the act. On Wednesday, September 21, members of Congress and key congressional staff, USPTO leadership, and stakeholders from industry and the inventor community came together again to commemorate the 5th anniversary of the AIA on Capitol Hill.

The event featured remarks from USPTO’s Director Lee, Representative Lamar Smith and Senator Patrick Leahy on the history of the AIA, the need for change, and the AIA’s impact on the IP system – even as we continue to evaluate these sweeping changes and look for ways to further improve our system. A panel discussion at the event focused on the impact the act has had on businesses and inventors of all sizes and what may be next in the way of improvements to the patent system.

The AIA implemented a number of significant changes to update and improve the U.S. patent system.  Upon signing the bill in 2011, the President described what the bill hoped to accomplish this way:

“It’s a bill that will put a dent in the huge stack of patent applications waiting for review. It will help startups and small business owners turn their ideas into products three times faster than they can today.  And it will improve patent quality and help give entrepreneurs the protection and the confidence they need to attract investment, to grow their businesses, and to hire more workers.”

The USPTO has delivered on that promise by reducing the patent application backlog by nearly 30 percent from its high in early 2009, speeding up examination including introducing a fast track option with discounts for small entities, and leveraging the increased financial stability and fee setting authority provided by the act to reinvest user fees into increasing quality under Director Lee’s Enhanced Patent Quality Initiative.

And just this week, the USPTO and the Economics & Statistics Administration at the Department of Commerce released an updated report on the impact of IP on the U.S. economy, reiterating in quantifiable terms the importance of a well-functioning IP system.

The increased attention and focus on our IP system in recent years is critical, and our job to look for ways to further improve did not end with the AIA. Again, the President stated in 2001:

“And we have always succeeded because we have been the most dynamic, innovative economy in the world. That has to be encouraged. That has to be continued.”

Inventors and innovators in the U.S. and around the world deserve a system that evolves and improves right along with the pace of technology – an important reminder as we celebrate the 5th anniversary of the AIA.”

Learn more about the impact AIA has had over the last five years in:

The Keurig…Part II

By Debby Winters

It isn’t often that the day after I post a blog that I see two very relevant articles to update my blog from the day before, but that happened today.

I opened my local newspaper and saw an article entitled “Keurig coffee-pod disputes percolate.” My immediate reaction was to the title. I wished I had thought of something that clever for my blog yesterday. I went on-line to find the original Associated Press article entitled “In Battle for Coffee Pod Market, It’s Keurig v. Recyclables” by Ellen Knickmeyer. This article references the same youtube.com video and gives the same statistics that I listed in my blog. Ms. Knickmeyer says Keurig’s response to this environmental controversy is “Keurig says the fight boils down to how to make the best cup of coffee, and the company has pledged to come up with a fully recyclable pod of its own by 2020. The throw-away containers, both by Keurig and its competitors, allow coffee drinkers to get a quick cup without messy grounds.” At least Keurig is trying to make things better. And at least their main concern is making the best cup of coffee.

Well, this is the main concern for inventor Alan Adler as well! At the age of 75 he invented the AeroPress or the Aerobie. His invention is the “$30 single-serving plastic device that looks like a hand pump and, in the opinion of some of the world’s leading coffee snobs, outperforms thousand-dollar espresso machines.” Before his quest for the perfect cup of coffee, he invented and patented “a portable lamp, which had a circuit which converted three-volt battery power into high voltage to power a fluorescent bulb. But it never got into production.” He is also credited for designing and improving toys that he licensed to Wham-O, including a toy much like the slinky. That’s not the only toy he invented that I’m sure you’ve seen. He invented the Skyros that Parker Brothers sold by the millions. It is an “improved” frisbee with an open center.  If you are as much into inventor’s stories as I am, you’ll delight at reading this interview of 76 year old Alan Adler- ” The Invention of the Perfect Cup of Coffee.” There’s a picture of Adler as an extra bonus. I guess the moral of his story is- It is never too late to invent!

 

Vote for Quirkies Inventor/Invention

By: Debby Winters

Quirky.com presents and sells inventions you may not have heard about. These are often from independent inventors.  Since Wednesday February 11 is National Inventors’ Day, Quirky is giving out some awards, called The Quirkies, to honor the wacky, underrated, and truly game-changing inventors. You can vote for your favorite in several categories.  Place your votes now.

 

Intellectual Property for Start-Ups

By Debby Winters

I work with start-up companies at both early and late stage. One of the questions that I frequently get when I mentor these entrepreneurs is whether they should file for intellectual property (IP) protection for their innovation. Even though it may be a drawn-out process, in most cases it is critical in their business plan to protect their IP.

On average, it takes about two to three years to complete a patent application process and obtain a patent in the United States. Engineering patents are likely to take longer, with average wait times clocking in at almost 4 years. But that time could make the difference in getting investors or not, since the most valuable asset a start-up company has may be its intellectual property, rather than its physical assets.

In addition to filing for patent protection, a start-up company should consider obtaining trademark protection for the name of the business and/or names of products or other parts of its services. Many times entrepreneurs will file both word marks and logos, especially if they have invested time in designing a unique logo. The time for trademark registration can vary from one year to several years but most trademarks that get through the process do so in about a year and a half.

Other intellectual property protection can come in the form of copyright protection for designs, software, or other artistic renditions. Design patents are sometimes an alternative to copyrighting. Another alternative to patent protection can come in the form of trade secret protection. Trade Secrets are not filed with the United States Patent and Trademark Office or with the Copyright Office; rather they are kept a “secret.” That offers many advantages and disadvantages, in keeping it a “secret” and keeping the protection. Trade secrets are not filed at all with any agency. The owner of the trade secret takes extra precautions to make sure no one finds out the “how-to” of the innovation under protection. The biggest advantage to trade secret protection is the cost-savings. Since no time is spent preparing a patent and no filing fees are incurred (same with trademark costs), protection of the trade secret is much less costly. However, since there is no governmental agency to file with, once your trade secret is infringed you have less enforcement power behind it. Once a secret is out, it is out. This can be a huge disadvantage. One of the best known trade secrets is the recipe for Coca-Cola. It has been a closely held trade secret for years with only a few who know the formula.

If you think you have an innovation that could use IP protection, seek advice from an attorney that specializes in Intellectual Property.