Recent Posts

1

Patent Questions and Advice / Re: Patent for a mobile/website application (App)

« Last post by Brad on March 17, 2021, 02:01:18 PM »

No.  In fact, many successful apps and software programs don't have any patents at all. 

Ideally you should identify the core 2-3 unique processes your software app does and that would be the focus of your patent.  If you had a patent budget of $500,000+ per year which is probably what Tinder has then you can most certainly file a new patent on every little tweak you think of but that is not practical for most of us.


Software Patent Warnings:
You first need to determine why you think you need a patent.  Do you really think you are going to get a broad and strong patent approved in the social media space right now?  That is doubtful.   

If you do get your app approved, do you have the $100,000 it will likely cost to defend your app if it gets challenged?  If your app still makes it through that challenge, do you have the $1 million+ to spend enforcing your software app against companies like Tinder? 

After you add up all the costs and risk for filing a patent, what is your return on investment and how are your going to justify the expense of filing and defending your patent?

I am not trying to scare you away from filing a patent, rather, people should look at it from a cost-benefit perspective and often times the costs are greater than the perceived benefits when it comes to certain types of mobile app type patents.

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Patent Questions and Advice / Re: Improvement of a patent in force

« Last post by Brad on March 17, 2021, 01:55:06 PM »

It is impossible to say without spending a lot of time and money researching their patents and your idea in detail.  Even after spending all that time and money it would still just be a "guess" or estimate on how likely you may be infringing their work.

In general you cannot make or sell a product that is still using a patented process or component even if you think are are improving on it.

*The type of opinion you are looking for is called a "freedom to operate" legal opinion and is not something we provide.  You should really speak with a patent attorney with this type of experience and registered in your area.

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Patent Questions and Advice / Improvement of a patent in force

« Last post by Mariem on March 17, 2021, 09:07:56 AM »

Can I improve an invention that is currently patented (patent in force)?
For example, I am creating a dating mobile/website app, so I base it on certain features that are currently patented by another dating app. However, I add improvements and changes to these protected features.
Is that legal or would it be considered as an infringement of the patent?
Thank you in advance.

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Patent Questions and Advice / Patent for a mobile/website application (App)

« Last post by Mariem on March 17, 2021, 08:34:23 AM »

Does every part of a mobile/website app need to be protected separately by a patent? For example, the app Tinder has several patents.

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Marketing, Licensing, and Selling an Invention / Re: Question about joint patent ownership

« Last post by Brad on February 28, 2021, 06:19:36 PM »

I have seen agreements where universities sometimes say they will pay inventors from another university but usually that is only if there is a federal (US) grant.

Otherwise, it is most common for each university or company to only pay their own inventors.

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Marketing, Licensing, and Selling an Invention / Re: Question about joint patent ownership

« Last post by Roberto on February 27, 2021, 12:35:31 AM »

Thank you for letting me know about the differences between the reward practices of companies and universities. In fact, I was interested in the case of universities but ended up asking as companies since I thought the reward practices were the same.

Even though it is customary for universities and government research labs who own the IP rights to pay the inventors of such IP, I guess this custom is limited to paying only their own employee, right? Therefore, to solve the issue I raised in my previous posts, a contract between both universities would still be necessary, right? That is, if only 'University A' licenses the joint IP to a third company, in the absence of a contract between the universities to share the royalties, the inventor from 'University B' would end up without any reward since there seems to be no law that will force 'University A' to pay the joint inventor from 'University B'. Is my understanding correct? Thank you.

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Marketing, Licensing, and Selling an Invention / Re: Question about joint patent ownership

« Last post by Brad on February 26, 2021, 01:20:58 PM »

Yes I think so.  It is rare for most companies to share income with inventors (although this is standard for universities, government labs, and research based organizations).

If the inventors and companies enter into their own agreements to share income that should be possible. 

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Marketing, Licensing, and Selling an Invention / Re: Question about joint patent ownership

« Last post by Roberto on February 26, 2021, 11:55:33 AM »

Thank you for your reply. So, from the inventor's perspective, the only way they would be guaranteed a reward for their joint invention (assigned to their respective employers) and licensed to a third company would be, I guess having companies A and B sign a contract that stipulates either:
(1) force all joint owners (companies) to share license revenues regardless of which company negotiated the license with the licensee. Then, each company would reward its employee (the inventor) based on its internal rules;
or
(2) force all joint owners (companies) to directly pay the inventors regardless of each company the inventor belongs to.

Is my understanding correct?

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Marketing, Licensing, and Selling an Invention / Re: Question about joint patent ownership

« Last post by Brad on February 22, 2021, 02:26:50 PM »

The only possible thing I can think of is if there is federal funding involved with the creation of the invention then under federal guidelines (Bayh Dole Act) the inventors are supposed to get a portion of income but I am not fully sure if that applies to inventors from company B if only company A is licensing the patent all by themselves.  Further research would have to be done on that.

If there is no grant or federal funding than I am not aware of any rule that says company A must share income with inventors from company B.

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Marketing, Licensing, and Selling an Invention / Question about joint patent ownership

« Last post by Roberto on February 21, 2021, 11:38:02 AM »

Suppose company A and company B jointly own the rights of a patent, and that this patent results from the work collaboration between inventor 1 (from company A) and inventors 2, 3 (from company B). Also suppose that both company A and B have internal rules to pay 30% of the revenues generated by patents to the inventors.

By the US patent laws, it seems that one of the companies, for example company A, could independently license the patent to a third company and not share its profits with company B. And that seems to be considered one of the perils of joint owning a patent.

My question is: if company A licenses the patent to a third company, although it is not required to give any money to company B, is company A required by law to pay the inventors 2 and 3 (so all inventors get 10%)? Or company A could give the 30% of revenue to inventor 1 and pay nothing to inventors 2, 3 since they are employed by company B?

Thank you,
Roberto