Colorado Patent Attorney Mark Trenner answers questions about “Patent Protection as Investment and Insurance.”

Watch Entire Interview at Once Here: Patents as Investment and Insurance Video

Interviewer: You covered licensing, selling, and using a patent or patent application for collateral. Is there any other asset value of a patent?

Patent Attorney: As the article points out, a business that educates their employees about patents, and rewards employees for submitting their ideas as part of a patenting program, can actually help stimulate innovation and product development.

Interviewer: The article also discusses patent protection as insurance. Please explain.

Patent Attorney: I’m not sure the term “insurance” is accurate, but the article makes an important point often overlooked by small businesses until it is too late. Often, small businesses view the process of pursuing patent to be a waste of valuable resources – both time and money. That is, until the company finds itself accused of infringing someone else’s patent.

Interviewer: What do you mean?

Patent Attorney: Well let’s say you’re a small business making handbags. You go about the business of making new handbags every season and selling those handbags. Why spend money to pursue a patent application for a handbag when it may be out of style in a year or two?

For Part 3, please follow this link: Patent Asset and Insurance Q & A – Part 3 of 4

Denver Patent Attorney Mark Trenner answers questions about “Patent Protection as Investment and Insurance.”

Watch Entire Interview at Once Here: Patents as Investment and Insurance Video

Introduction: We are here in Colorado to interview Denver-area patent attorney Mark Trenner. Mark has been practicing as a

patent attorney for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: Corporate Counsel published an article this month titled “Patent Protection as Investment and Insurance.” What do patents have to do with investments and insurance?

Patent Attorney: There doesn’t seem to be any relation at first glance, but the article is on-point. As the author explains, intellectual property (that is, patents, trademarks, copyrights, and even trade secrets) are a key asset for several reasons.

Interviewer: What are some of the reasons businesses may want to consider patents to be an asset?

Patent Attorney: Patents, and even patent applications, can be licensed, sold, or even used for collateral. I often compare the asset value of patents to a building. The owner of the building can lease space within the building for rent money, just like the owner of a patent can license the right to make, use, or sell an invention for royalties. The owner of the building can also sell the building outright, in exchange for a sum of money, similar to a patent owner selling the patent to another business who wants the exclusive right to make, use or sell the invention. And of course, the building owner borrow against the building, putting the building up for collateral to secure the loan. Likewise, a patent owner may be able to secure a loan or other funding by using a patent or patent application as collateral.

For Part 2, please follow this link: Patent Asset and Insurance Q & A – Part 2 of 4

Brought to you by Denver Patent Lawyer Mark Trenner.

A “utility” patent covers any “new and useful process, machine, manufacture or composition of matter, or any new and useful improvements thereof.”  This has been interpreted in U.S. courts to include inventions that include computer programs (software), as well as “methods of doing business,” even though these are each contentious in international relationships.
To attain patent protection in foreign countries, a patent application must be filed in each individual country, in accordance with the terms their national laws.  International regulations help to streamline this costly process by allowing applicants to consolidate examinations and modifications in a single process, prior to adhering to the application process in each individual country.
Patent applications can be difficult to accurately draft and regularly result in administrative arguments with the examiner handling your patent.  This process can take years to complete, with no guarantee in the end that a patent will ever be issued from a particular application. It is advised that you obtain counsel for a qualified patent attorney to assist you with the patent process.  Especially if you believe your invention could be of great value and worth protecting.  Regardless if you seek counsel or not, this process can be very expensive and time consuming, so having some help in your corner can help relieve some of your burden

As you can see the answer to the question “what is a patent?” is very complicated as there are many types of patents.  You would be hard pressed to find just one correct response to the question.  If you are trying to decide whether or not to apply for a patent, please do your research, and don’t be ashamed to seek advice from a professional.  This could save you valuable time in the long run.

Denver Patent Attorney Mark Trenner on KHOW

Mark Trenner is on KHOW again this week:

Tuesday, October 30th from 10:00 to 12:00

On AM 630 in Denver, CO

Can a patent attorney guarantee that I receive a patent for my invention?

Callers often ask patent attorney Mark Trenner if he can guarantee his work. Can patent attorney Mark Trenner guarantee that he can get the Patent Office to guarantee that a patent will issue for their invention. And if the Patent Office won’t issue a patent for their invention, can the inventor get a refund?

No. Mark Trenner’s Colorado-based patent law firm does NOT offer any guarantees or warrantees that the Patent Office will issue a patent for an inventor’s invention. In fact, as an attorney registered with the Colorado state bar, Mark Trenner and his patent law firm is prohibited by attorney regulation from offering any client, any guarantee or warrantee as to outcome or result of a particular matter.

The reason Colorado attorneys (and perhaps patent attorneys in other states) are unable to offer any guarantees or warrantees is that the outcome or result depends on a wide variety of factors. Most of these circumstances are out of the control of the patent attorney. For example, the Patent Office may refuse to issue a patent for an invention if the Examiner finds prior art that anticipates the invention or renders the invention obvious. Or the Inventor may decide not to pursue an invention any further once a patent application has been filed with the Patent Office.

Nor does Trenner Law Firm offer any refunds for work that has already been completed. Refunds for work that has already been performed may be considered a guarantee or warrantee, which as noted above is prohibited by the attorney regulations.

Where can I find a patent attorney for free?

Callers often ask Denver patent attorney Mark Trenner where they can find a patent attorney for free. Typically what the caller means is if the patent attorney is willing to take the case on a contingency basis, just like the auto-accident attorneys.

Auto-accident attorneys often take new cases on a contingency fee basis for three reasons. First, the clients oftentimes have little or no money to hire an attorney. Second, there is a good chance that the insurance company will settle and the attorney will collect a portion of the settlement amount without having even had to go to court. And third, even if the insurance company does not settle and the attorney has to take the case to court, in the event that the attorney wins the case for their client, the verdict will likely be such a large sum (think hundreds of thousands of dollars, or even millions of dollars), that the attorney will make a handsome profit.

Unfortunately, this model does not apply well to patent law. That is, while many inventors think that their idea is the next big thing – a million dollar idea – there are so many variables at play that it may take years to make even a modest profit, and in some cases the inventor even gives up or doesn’t pursue the invention, and so the invention never makes any money.

You can, however, find a patent attorney that works on a flat fee basis. Denver patent law firm Trenner Law Firm, LLC handles most patent matters on a flat fee basis so that clients of Trenner Law Firm are always aware of the total costs for a project up front, before they authorize any work to begin. Contact Colorado Patent Attorney Mark Trenner at [email protected] for more information.

Can I get a refund if my patent doesn’t go through?

Callers often ask Colorado patent attorney Mark Trenner if the inventor is entitled to a refund if their patent doesn’t go through (that is, if the Patent Office refuses to issue a patent for their invention).

No. Mark Trenner’s Colorado-based patent law firm does NOT offer any refunds for work that has already been performed. Attorneys registered with the Colorado state bar are prohibited by attorney regulation from offering guarantees or warrantees as to outcome or result of a particular matter. This includes patent attorneys registered in the state of Colorado. Offering a refund may be considered a guarantee or warrantee, which as noted above is prohibited by the attorney regulations.

The reason is simple. Whether a Patent Office issues a patent for an invention depends on many factors. Most of these circumstances are out of the control of the patent attorney. For example, the Patent Office may refuse to issue a patent for an invention if the Examiner finds prior art that anticipates the invention or renders the invention obvious. Or the Inventor may decide not to pursue an invention any further once a patent application has been filed with the Patent Office.

Nor does the US Patent Office issue refunds for fees paid if the Patent Office refuses to issue a patent. The filing fee includes fees for processing the patent application, publication fees, and examination fees. The Patent Office has to collect these fees regardless of whether the Examiner ultimately decides to grant a patent for the invention.

Of course, there are ways to make better informed decisions whether to file a patent application for an invention. For example, an inventor can discuss their invention with a patent attorney to determine if the invention meets the minimum requirements for filing a patent application.

The inventor can also order a background search (also referred to as a “prior art search” because it is a search of inventions that have already been made public). While not a guarantee or warrantee of patentability, the prior art search gives the inventor a better idea of what types of related inventions are already out there, that the inventor may not have been aware of. If the prior art search turns up a prior patent application or issued patent that is identical to the invention (or so close as to render the invention obvious), then the inventor may decide not to even apply for a patent for their invention.

Patent Attorney: Denver’s Mark Trenner Answers…

Can I use a product already on the market as part of my own invention?

Inventors often call Denver-area patent attorney Mark Trenner and ask whether they can use a product already on the market as part of their own invention. There is nothing to prevent you from using an already existing product in your own invention, unless of course someone else has a patent for that product.

The vast majority of products on the market today are in the public domain. That is, these products are not protected by any patent rights, and once purchased, can be used for any legal purpose by the purchaser. This includes enhancing the product and making it better – and even patenting those improvements for yourself.

Even if a product on the market is protected by another patent, you may can still apply for a patent for any improvements to that product. The patent on the underlying product simply prevents you from making, using, or selling that product without permission (usually in the form of a payment under a license to the patent owner) of the patent holder. But the patent does not prevent you from applying for your own patent for the improvement. You’ll simply need to negotiate with the patent holder for the underlying product before you make, use, or sell your product if it is covered by another patent.

Denver Patent News: U.S. Patent Office to open hubs in Silicon Valley, Dallas, Denver

The additional offices were authorized under an overhaul of the patent system signed into law last year.

Looking to file a patent in Colorado? You won’t have to work with Washington DC.

Silicon Valley, Dallas and Denver have all been selected as the new locations for regional patent offices as part of an effort to cut down on a backlog of applications awaiting review at the U.S. Patent and Trademark Office.

The agency has declared a “critical need for electrical engineers,” is trying to hire more examiners to cut into the 640,000 applications awaiting a first review. They are opening a satellite office July 13 in Detroit.

The patent office seeks to take advantage of a pool of engineers who understand technology and can work closer to where inventors work by expanding beyond its campus outside Washington, D.C., “Silicon Valley was a logical location to us, but it was by no means a foregone conclusion it would be in California or in Silicon Valley,” said Carl Guardino. Carl is the president of the Silicon Valley Leadership Group, which lobbied for more than three years to get a patent office there.

With more than 10,000 issued in 2010 according to agency data, Silicon Valley is the top recipient of patents.

An overhaul of the patent system signed into law last year authorized additional offices. Approximatel 600 applications were submitted, and the selections were based on geographic diversity, economic impact, the local workforce and proximity to companies that are submitting applications.

According to David Kappos, the director of the Patent and Trademark Office: “The single most important step we can take to support an economy built to last is to bring new inventions to market as quickly as possible,”.

Kappos said the regional offices would become hubs with “a tangible impact on each city’s innovation economy,” and that the office could bring in law firms, entrepreneurs and investors as a sort of ecosystem to interact with the agency.

The four offices might also develop their own expertise to reflect their local economies — Detroit for automotive, paints and metallurgy; Dallas for energy; Denver for aerospace; and Silicon Valley for electronics and biotechnology.

According to Kappos, Denver also was selected in part because it has a large number of veterans with advanced degrees, which is in line with President Obama’s policy to hire more veterans.

Despite tough competition from Portland; Seattle; Salt Lake City; and Albuquerque, N.M., Denver was awarded the location because of its educated workforce, relatively low cost of living and research in bioscience, aerospace and renewable energy.

Colorado Patent Attorney Q & A Radio Interview: Part 4

Okay, what’s first?

The US Patent Laws requires that your invention be unique or “novel”. If you haven’t figured it out already, you can’t patent someone else’s idea or an idea that is already on the market – it isn’t any invention.

And Second?

The US Patent Laws also requires that your invention not be obvious (or that your invention is non-obvious).

What does non-obvious mean?

Your invention might be obvious if someone having ordinary skill in the relevant art would think of your idea when considering the state of the art as a whole.

In other words, if your invention is to make a software application (that is already available for desktop computers) available on a mobile phone, it is likely that your idea is going to be considered obvious. All you’re contributing to the so-called “invention” is rewriting an existing computer process for a mobile phone platform.

But if my idea is obvious, then why haven’t I seen it in the marketplace already?

Your invention may be novel (nobody else has it), but might still be obvious. The Examiners at the US Patent Office are allowed to cite multiple references (sometimes they cite to 3 or 4 or even more) and say that the combination teaches every aspect of your invention.

How can I tell if my invention is obvious?

It is often difficult to determine if your invention is obvious. What one person might consider obvious, another person might consider to be non-obvious. A lot of time and money can be spent arguing with the Patent Examiners whether an invention is obvious or not. A patent attorney can talk to you about the merits of your invention.

Call 720-221-3708 for a FREE Phone Consultation, or start now with an online client application.