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  • Fasturn
    replied
    Dan- One of the statements on a patent form is [ what was the prior art ] I found a club head that's similar to yours. Not sure you would be granted on a slite change in the joggle. I do have one and they are costly !! I would go with trade secret route and peruse it on your own. They can take 4 years to get confirmation. I wish you luck.
    Last edited by Fasturn; 05-10-2021, 11:29 PM.

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  • J Tiers
    replied
    To be fair, most small companies will stop infringing and you will be OK. They may decide, during your negotiations, that they should license the patent. If your fee is reasonable, that will work. They do not want to pay lawyers any more than you do.

    It is larger companies with lawyers available who will run over you in many cases.

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  • wmgeorge
    replied
    Jerry is right. You can spend thousands of dollars to get a Patent, then when someone infringes on it unless you have the $50-100 k to defend it your SOL. Oh you can hire a attorney to write them a nasty letter and tell them to Cease and desist but unless you have the funds.... see SOL above. That is why using a Copyright (if you can) is the smarter thing to do.
    Last edited by wmgeorge; 05-09-2021, 03:24 PM.

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  • J Tiers
    replied
    [QUOTE=Mcgyver;n1941953]

    .........
    Many will tell you getting a patent is not worth it based on the logic you won't be able to defend to it. They don't know what they are taking about, at least if the idea is worth it, as the value of a patent isn't to let you become Global Putter Inc, its to lead to a licensing or sale deal if you get enough market share to get noticed by a big player. Without a patent they'll just copy it. With a patent, its adds huge value to them as they are large enough to defend it giving them a monopoly for years left on the patent.
    .............[QUOTE]

    That strategy works sometimes. As you say, it depends on the idea.

    However, your statement that the defense argument folks "don't know what they are talking about" is a curious statement. If it is meant as a "strategy" comment, i.e. that selling the patent is better than using, then OK, sort-of.

    I worked for a roughly hundred million dollar company (sales volume). We had the best patent firm in the area doing our patent work. Their advice was that a patent was good, but could be expensive, and that a copyright actually was better and far easier and cheaper to defend.

    The comment relative to patent expense went two ways. An example is best here: Once, we wanted to use one of two patents (by others) that actually conflicted/overlapped. Both applied to our case, due to the overlap. Our choice was to license, or to infringe, because the patents were actually both technically invalid and "anticipated", yet they were both valid US patents. We did not want to pay two sets of royalty payments. One of the patent holders was an established company, the other an individual inventor. We could have bought the patent from the inventor for what was an almost reasonable amount (he overvalued it to double, approximately, and would not budge).

    The lawyer advised that if we did not want to pay two, that we should only license from the established company... the idea was that the company might try to defend (they were smaller than us by a fair bit) which would cost usmoney, he estimated that we would need 2 million to throw out the patent, and said that our court district was known for never throwing out a patent unless there was pretty much a textbook with all the same drawings, sp invalidating had a 5% chance max. The advice was to ignore the small inventor, because there was no way that he was going to try to defend the patent, he was known to simply not have the money. The comment was that it "would take $50k to 100K on the part of the inventor to get in the game".

    The license amount was not too much, it actually was a bit cheaper than buying the other patent outright at the asking price, and considerably cheaper than attacking the patents.

    The reason that selling is only "sort-of", is the same as the above. In the absence of the established company, we could have (per the lawyer) simply infringed happily, with the knowledge that the inventor could not defend it, and that lack of defense would invalidate it after a certain time (which I do not recall). The other suggestion was that after a bit we could probably buy it cheaply.

    So your chances of selling vs just getting "run over" by an infringer may not be as good as thought. And even if you do end up selling, the purchaser is likely to be one of two companies.... either the one who is infringing, who will buy it cheap, with the threat that they can always just ignore you, or a patent troll firm, who will want it to use to sue others. The trolls also pay only a little, because they use the threat of walking away and leaving you with nothing except being in the hole for the cost of the patent.

    It's a rough world out there in the patent law arena. The idea of selling your patent was OK back 25 years. More companies had actual ethics back then. These days, it is "How do we do this the cheapest way?", and that is usually to run over anyone who is small enough to simply overwhelm with costs.

    Your ONLY advantage is that you can sell to one of their competitors, and then the infringer could be in the soup. And that if the idea goes into the public domain, then all their competitors can use it also.

    That may or may not work, depending on the patent. The time taken for the patent to go public domain is probably enough for the infringers to become established, and competitors would be behind far enough that they are no issue. And the patent may or may not be good enough to interest a competitor, depending on how integral it is to whatever product is involved.

    The other strategy is to simply "invent in order to sell to the trolls". Figure on selling for maybe 2-3x the patent cost to a troll firm assuming someone does infringe.
    Last edited by J Tiers; 05-08-2021, 01:56 PM.

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  • wmgeorge
    replied
    Originally posted by elf View Post

    I think you need a patent lawyer Publishing on an Internet forum may or may not be enough to block someone else from patenting it Tell that to Thingiverse They patented many items people posted there.
    Proof on Thingverse that is speculation!!

    I have been through the process have you? Both J.Tiers and I have done it and we speak from experience. The other book I recommend is "Will it Sell" a book that leads you through the process of some simple market research. I would take Georges advice, Incorporate and form a limited liability corp, that I know nothing about, but Incorporating is not a big deal.

    https://www.amazon.com/Determine-Inv...0476551&sr=8-2
    Last edited by wmgeorge; 05-08-2021, 09:39 AM.

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  • Mcgyver
    replied
    Originally posted by Dan Dubeau View Post
    I'm not really sure what the repercussions would be. Getting sued for millions is highly unlikely, but even sued for thousands is more that I'd want to deal with. I doubt it would even come to that, maybe just a cease and desist?
    That is the usual course of events. Talk to a lawyer of course, but if you've infringed your liability is generally the financial loss (damages) the holder has incurred...if its millions it means you've sold a lot of putters. However if sued you will have to defend which is expensive and many unsavory firms use the courts system to bully rather than for justice. You can incorporate for 300 or 400 with a credit card (but it carries an admin burden). Assign the patent to the corp (its only asset) and make away until sued then fold. Again, seek competent advice before acting.

    Many will tell you getting a patent is not worth it based on the logic you won't be able to defend to it. They don't know what they are taking about, at least if the idea is worth it, as the value of a patent isn't to let you become Global Putter Inc, its to lead to a licensing or sale deal if you get enough market share to get noticed by a big player. Without a patent they'll just copy it. With a patent, its adds huge value to them as they are large enough to defend it giving them a monopoly for years left on the patent.

    A cost almost nothing approach is a provisional patent. File it and get to market and see if its going anywhere.

    If you do proceed, you need a patent lawyer or agent (somewhat cheaper) and if sued a patent litigator. They are specialized fields.

    The small inventor took a huge blow with the passing of Leahy Smith in 2012. It kind of converted a patent from a property right to a license through greatly enhanced post granting review. Its really expensive to defend in a review (500,000 one figure I heard) so mean nasty corps abuse the patent system, and invoke a post grant review just to get you on the ropes. Thanks Government, and way to insure big corps (big data lobbied for this and greatly benefits) steam rollers the little guy
    Last edited by Mcgyver; 05-08-2021, 07:27 AM.

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  • dian
    replied
    so do you need permission from kobe if you use scifer?

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  • danlb
    replied
    When it comes to doing searches, the key is often that you have to figure out how others described their inventions. Yours, for instance, may be "a process to apply subtractive machining to the production of mallets used in lawn based sports."

    I've had success by looking for similar patents and then looking at the patents that THEY mention. If a putter is often referred to as a "short range golf club", then search for that term. Apply that technique to any term that you see coming up on patents about putters.

    If I remember properly, you are only concerned with two classes of patents. Those that have expired mean that you are free to use their ideas. There are companies that have people searching every day for patents that recently expired so that they can produce and market the idea. Those patents that have not expired are the tricky ones. You have to ensure that your idea does not impinge, but you can make improvements that make yours patentable again.

    Dan

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  • elf
    replied
    Originally posted by J Tiers View Post

    When you do talk to a patent lawyer, you will probably find out that disclosing to anyone without an NDA in place is technically sufficient, but that the chance of it being an issue is not large for one or two people..

    However, "selling, or offering for sale" a product with the feature that you want to patent is enough to mess up patentability. A good description on an internet forum is very much a disclosure that is sufficient to ruin the patentability. You have "told the world" how to do it. That is definitely disclosure, as your attorney will no doubt tell you.
    Tell that to Thingiverse They patented many items people posted there.

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  • J Tiers
    replied
    Originally posted by elf View Post

    I think you need a patent lawyer Publishing on an Internet forum may or may not be enough to block someone else from patenting it.
    When you do talk to a patent lawyer, you will probably find out that disclosing to anyone without an NDA in place is technically sufficient, but that the chance of it being an issue is not large for one or two people..

    However, "selling, or offering for sale" a product with the feature that you want to patent is enough to mess up patentability. A good description on an internet forum is very much a disclosure that is sufficient to ruin the patentability. You have "told the world" how to do it. That is definitely disclosure, as your attorney will no doubt tell you.

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  • elf
    replied
    Originally posted by wmgeorge View Post
    Hello... YES you can go to the patent office yourself and do online searches, and document what you find. If you publish it here, it can not be patented.
    I think you need a patent lawyer Publishing on an Internet forum may or may not be enough to block someone else from patenting it.

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  • Dan Dubeau
    replied
    Thanks for the advice and stories Rich. I definitely don't think this is a million dollar idea, I've been paying attention to the custom milled putter market for almost a year now, and I realistically might be able to generate a couple thousand in sales a year eventually. Would take a while to build a base and marketing for sure. Not looking to get rich off it, just generate a small side income doing small batch production in my garage in my available time. I'm not claiming my idea does anything except look different and utilize a unique manufacturing method I've never seen in a putter before. I just want to make them and not run afoul of anyone else's patent claims, and if there are none then maybe pursue it, but maybe publishing it would satisfy my requirements also. Something to think about.....

    I'm sure working with that group would provide some interesting stories over the years. I've only ever worked with one inventor, and he was an interesting and brilliant Man, albeit a bit eccentric. I guess that comes with the territory. I reverse engineered and ran a batch of his product after the previous shop wouldn't release his models, and drawings to him. He was in the process of bringing manufacturing in house so that would never happen again.

    I wouldn't mind pursuing some of that work in the future, but on the other hand I don't seem to be running out of hundred dollar ideas of my own stuff to make anytime soon.

    Originally posted by wmgeorge View Post

    If you reveal it or publish it, it may not be patented. So much BS by folks who think they know, the book someone referenced here about Patent it Yourself I think the name is, get it and read. Go to the US Patent Office and look for prior art. I spent months off and on before filing my Provisional Patents.

    One source https://www.amazon.com/Patent-Yourse...dp_ob_title_bk
    I just ordered it, and will give it a read when it gets in.

    I also have been searching the Canadian patent site more today after posting this thread and rekindling the project, and have found 2 similar patents filed by Callaway I hadn't found earlier. I say similar as they both have a similar end result, but we get there via different methods. Not sure if my way is different enough or not. I think it is, but the patent office might not think so.

    I've literally searched through 100's of patents so far over the last few months on and off and found nothing, and then find those 2 in the first 5 minutes.

    They were both filed in may of 2001, so....patents expire in 20 years correct?

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  • Bob La Londe
    replied
    Poor man's copyright is not really a thing. Steve Lehto did a nice job of talking about it in this video. Of course take it with a grain of salt since he's a lemon law specialist.

    Thought about that too Matt, but for the time being I'd rather hold off just in case. Reminds me of the old tales of songwriters mailing themselves lyrics of their songs just to have the postmark dates for proof.
    Does a 'Poor Man's Copyright' Work? LL Ep. 5.296 - YouTube

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  • Rich Carlstedt
    replied
    Dan, this is nothing personal, just my experiences in review, and please do not think I am demeaning your idea, as I know nothing about golf or its market

    I use to have a sideline business making patent models 30 years ago...I am not a patent Attorney nor give legal advice. i would talk to inventors and help them with and by fabricating their "patent model"
    What is strange Dan , is my first manufactured product was a golf club invented by my Uncle .. and it failed ,,,but that is another story !

    In dealing with Inventors , the first things I learned is that they as a group feel they have an original idea and will make millions.
    The truth is you are embarking on a well traveled road and there are sharks out there in the ditches . Before your search--- The very first thing to consider is the market for your product. What will it cost to make, what will it cost to advertise/distribute it and what will someone pay to buy it. the end is the expected profit ! The expected profit determines how far to go in the patent search and whether the work is worth it !
    Most inventors do not do this !
    We all remember the most famous patent when a guy (in Minnesota) invented a ratchet that Sears put in their wrenches and violated his patent and he got millions ( as I recall ) , well that is a one in a million shot in my opinion. Anyway back to the task at hand.
    Doing the market research will tell you how far to go . If you think it's a "million dollar idea" , then be prepared to get financial backers --
    a whole nuther world ! unless you have $$$
    The comment about forming a S corporation is a great idea if you worry about being sued.. just make sure the patent has that corporations name on it with you as the inventor. .. If you have a small market , then do not over think the issue ..

    FYI in all the ideas I made models for and worked with inventors , I did not do my work for money, but signed agreements where I got a portion ( 1-2%)
    of eventual sales . Only one was for money upfront at the insistence of the inventor , and guess what ?
    He made many $ and was the most successful of all my contacts and he sold his 25 cent cost product for 10 dollars and was successful.
    The greatest invention cost me ( 10-20) thousands of dollars of work to build but i thought it was a true winner knowing the industry.
    The Inventor spent thousands doing patents and it blew the soxes off the competition......BUT he could not produce it without spending 1.5 million on Laboratory tests and fees to change the "industry" specifications... and he was just an ordinary guy. To this very day, his idea is phenomenal but will not work if he intends it to be used for the industry he designed it for... a real shame to me to this day, but part of the battle in knowing your market.

    Good luck
    Rich

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  • J Tiers
    replied
    Originally posted by Paul Alciatore View Post
    Heck, if you have a limited liability company, you don't even have to have the machines at risk.

    Just have that company RENT them from you. The same for all the other tools and shop space. The company would only own the materials used in the process and some office supplies. Just be real sure to have a rental contract on file and proof of all the payments. I suspect $1 a month or year would be enough.
    There is a "legal specialty" which is "penetrating the corporate wall" and finding ways to hold the corporate officers personally liable.

    Plus, not all "corporations" provide a real shield. And some types of incorporation provide virtually no shield at all, they are really a sort of "legal fiction". I had this explained to me years ago by an actual lawyer who did corporate law. I would be unable to explain it properly now, but it only took him about two short paragraphs to make it clear.

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