The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
LEGAL REPRESENTATION vs.
What The Law Firm DoesLegal Representation. The Law Firm of Louis Ventre, Jr. provides legal representation on intellectual property matters, including providing advice and legal representation of your interests in negotiations for licensing of inventions. Attorney Louis Ventre, Jr. can also prepare a licensing solicitation letter, and non-disclosure / non-circumvention agreements for your use. However, Attorney Louis Ventre, Jr. does not offer opinions on marketability of an invention, evaluate its market potential, or promote an invention's adoption by any particular industry.
Self HelpYour Invention Marketing. Having an invention and a patent leads one to consider how to take that invention to the market place. In order to license your invention to a company already in the field of your invention, you must first find these companies. Some of the best ways to find companies to send your letter seeking interest in an invention are to search for them on the Internet, in catalogs at the library, and in magazines. Once you find them, visit their web site and find out all you can about them and their activities that may reflect on the benefit of your invention to them.
The Indirect Approach. Sometimes the best
approach is indirect, asking a manufacturer if they would prototype your
invention for payment, and then if it looks good after it is made, seeking
their interest in manufacturing. If you will be starting your own business, you should do some research on the usual steps. ChooseWhat (www.choosewhat.com) has one such business checklist.
The Small Business Administration (SBA) provides training, counseling and information on planning, starting, marketing, obtaining venture capital and financing a small business. You can also find Local SBA Resources and a List of Small Business Development Centers (SBDC).Reality Check. It is usually a good idea to have an impartial third party with expertise in the field look at your invention. You may have to pay them and you should ask that they first sign a non-disclosure agreement. Typically, this might be a university professor working in the field, whom you might identify using an Internet Search. Some services will evaluate inventions for a small fee. For example, the "Innovation Institute," run by two Universities, is an inventor assistance service that promises to provide "an honest and objective third-party analysis of the risks and potential of their ideas."
Some Risks If you have a valuable invention, notifying others that you have a patent application pending may cause them to try to intervene in the patenting process to prevent the patent from issuing. Also, public disclosure of your invention narrows options for filing for patents internationally. One method to address this is to ask them to sign a non-disclosure / non-circumvention agreement. This type of agreement requires the recipient of the detailed information on your invention to keep it to themselves and if they decide to use it, not to do so without your involvement. However, this type of agreement is very often refused by industry.
Seeking Investors. If you want to solicit investors to your company so that you can develop your invention, you can find a list of investors to contact on the National Venture Capital Association web page. Business Fund web site provides a list of business funding sources.
What should you expect to pay for investment in your invention? One source suggests that you should expect to provide an annual return to an investor based on risk: (1) Angel Investor: 60-70%; (2) Venture Capitalist: 30-35%; (3) Private Equity 20+%; and (4) Public Company: 12-20%.
Invention Marketing and Promotion FirmsHiring Invention Marketing. Invention promotion companies abound, but can be costly and frustrating option for many inventors. Some may promise to take most of their fees in a percentage of royalties made on the invention. The point to remember is that it is rare for any such firm to take all its fees out of royalties. A Federal Trade Commission publication states, "Indeed, many inventors pay thousands of dollars to firms that promise to evaluate, develop, patent, and market inventions. Unfortunately, many of these firms do little or nothing for their fee."
Be Cautious. Caution is the watchword. It is quite common to hear about a promotion company's excitement and the great potential of your invention before your make your payment. However, it is also common to hear an inventor complaint, "They took my money and didn't provide any valuable service in return." After payment of a substantial fee, inventors are sometimes provided "feasibility reports" or documentation that may be of little practical use in actually marketing a specific invention. Many times the performance is a mixed bag of results, but still leaving a dissatisfied inventor at the end of the process. See "Spotting Sweet-Sounding Promises of Fraudulent Invention Promotion Firms," from the Federal Trade Commission.
What the FTC Says. The Director of the Federal Trade Commission's Bureau of Consumer Protection, at a July 1997 press conference announcing Project Mousetrap said, "Yet the fraudulent firms in this industry conclude, after a 'professional' evaluation, that virtually every new idea or product crossing their desks is patentable and has 'tremendous market potential.' They promise enthusiastic inventors that they can provide professional assistance in getting a patent and securing licensing and manufacturing agreements with manufacturers. Time after time, however, these firms lie to consumers about the sincerity of their belief in an idea and its marketability."
The Design Patent Switch. The FTC says,
"Unscrupulous invention promotion firms often apply for patents that
provide such limited legal protection that it is easy for competitors to
find a way to design around the patent." There are two
different types of patents covering different things and each type offers
different protection. Don't be fooled by a firm suggesting a less
patent instead of a utility
patent. A utility patent grants exclusive rights relating to the
utility or usefulness of an invention. On the other hand a design
patent grants such rights only with respect to the way an invention looks,
that is its ornamental design, and not for its utility or
usefulness. See "What
is Patentable?" on the Frequently Asked Question page of this web
Legal OptionsSuit as a Final Option. A lawsuit may be your final option. If the invention promoter makes a fraudulent representation, a material omission of fact, or violates his or her duty to disclose, an injured customer can bring a civil action under 35 U.S.C ß297(b)(1)(A) to recover actual damages, reasonable costs, and attorney's fees. Inventors who are harmed by a failure to make the federally required disclosures, described above in the "Ask Questions" paragraph, by the invention promoter can sue to recover statutory damages of up to $5,000 or actual damages. Pursuant to the "Inventors Rights Act of 1999," the court can triple the damages if it finds the violations are intentional or willful.
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© 2004 Louis Ventre, Jr.
This file last modified 09/08/11.