Don't File for That Patent Yet (Entrepreneur.com)

Instead of a utility patent, a provisional patent or a trademark could be a better first step.

By Tamara Monosoff   |   February 08, 2010

Two great tools for inventors that won't break your bank account: provisional patent applications and trademarks.
Successfully licensing an invention or taking a product to market requires research and the ability to talk to people about your invention. It is impossible for a manufacturer or retail buyer to commit to a product without seeing it.
For good reason, many inventors are reluctant to share their invention with people they don't know. Further, once an invention is shared publicly, international patent rights can be lost, and the one-year timeline within which a U.S. patent application must be filed generally has begun to tick. For this reason, many inventors rush out and file a full-blown, utility patent application. That addresses the uncertainties and also enables inventors to alert people that their invention is "patent pending."
However, this approach has several downsides. First, utility patents and even patent applications can cost many thousands of dollars. In the end, an inventor may find that the expense outweighs the benefit. Second, in the early stages, most invention designs are still evolving. Filing a patent too early could mean that it doesn't actually reflect the most evolved designs and drawings. Third--and most important, in my opinion--this investment has been made before an inventor has conducted real market research to validate marketability of the product.
Two solutions that many inventors--myself included--use are to file provisional patent applications and trademark applications for the invention and product name or logo.
These applications provide the best of both worlds. At a fraction of the cost of a utility patent application, a provisional patent application is not actually a patent. It never will convert to a patent or become public, unless further action is taken. A provisional patent application is a like a place holder. In essence, you are laying claim to the filing date of the provisional patent application if and when you elect to file for a full utility patent up to one year from the time you file your provisional patent application. So if you choose to file a provisional patent application on March 1, 2010, and you then choose to file a utility patent application eleven months later on February 1, 2011, the priority date for your utility patent application would be considered to be March 1, 2010, for all material substantively disclosed and enabled in your provisional application.
What does this mean?
From the date you file your provisional patent application, you have the legal right to write "patent pending" on your prototype and show it to whomever you wish. In the process, you will not lose your international patent rights and can still elect to file your utility patent application. But it gives you one year to develop your product and gain market information before you actually must make the final decision on whether to file utility and/or international patent applications.
So, how do you do this?
While technically you can write and file this application yourself, I recommend that you do it  with some guidance and, at the least, a review by a registered patent attorney or agent.
There are three things to be careful about when writing a provisional patent application, according to intellectual property attorney Stuart West, founding partner of West & Associates:

1. Ensure that the application meets the written description and enablement requirements of 35 U.S.C. 112, by adequately describing not only the components of your invention and their connections, but also the operation of the invention.
2. Avoid using limiting or restrictive language in your written description, such as "must," "necessary," "essential" or other similar phrases.
3. Be accurate but broad with your descriptions. For example, if a nail is holding together two pieces of wood, an accurate but broader description of the nail would be a "fastener,"  or you may simply state that one piece of wood is coupled with the second piece of wood.

The second best--and still underutilized--legal tool for inventors, in my opinion, is the federal and various state trademark registration systems. Here's why:
Every product has a name, or it should. Once you begin using the name with prospective licensees and customers, the invention actually becomes synonymous with the name. I have seen this happen over and over. And there are only so many names an item could take that meet the criteria of being both catchy and able to be registered.
So give as much thought to names for your product as possible, and include questions about the name in your market research. Once you settle on your preferred name, trademark the name. Then when you speak with prospective licensees, use the name. (Note: I did not say you should tell them you are hooked on the name). But if they become accustomed to your product's name, they will see your trademark as another valuable asset you are bringing to the table. Plus it may further limit potential encroachment from likely competitors or knockoff products.

West says there are two things to understand about trademark use:

1. The underpinnings of trademark law are founded on the principle of first in use, first in right. Filing of a trademark application typically constitutes use, but so does simply using the trademark. In fact, in some states you must use the trademark publicly before filing a trademark application, and in the federal trademark system, a trademark must be used in interstate commerce before it can register. Therefore, use your trademark.
2. Once you've settled on and adopted your trademark you should identify it as a trademark by using either TM or ® as appropriate. Check your local state laws regarding the use of TM.

In most states, trademark rights can be asserted regionally for free, simply by applying the ™ to a product (done by typing the letters "t" and "m" between two parentheses. The writing program automatically shrinks and raises it to have the ™ appearance.)
Second, a trademark can be registered with the U.S. Patent and Trademark office and overseas. This is a faster process, taking only 10 to 14 months. Once it is registered as a U.S. federally registered trademark, use the ® (also typed by inserting the "r" between parentheses).
I have always said that intellectual property, patents, trademarks and copyrights are just tools in your inventing tool box. Using the right tool can be extremely valuable. The nicest thing about a provisional patent application is that it can buy you time to figure out which other tools may be necessary. Likewise, trademarks are a valuable tool inventors overlook.
Tamara Monosoff is the founder and CEO of mominvented.com, where entrepreneurs get information and inspiration to turn their ideas into successful businesses. Tamara is the author of The Mom Inventors Handbook, Secrets of Millionaire Moms and co-author of  The One Page Business Plan for Women in Business.

Corporate Backing for Research? Get Over It (NYT)

By JOHN TIERNEY

I find myself in the unfamiliar position of defending Al Gore and his fellow Nobel laureate, Rajendra K. Pachauri.
When they won the prize in 2007, they were hailed for their selfless efforts to protect the planet from the ravages of greedy fossil fuel industries. Since then, though, their selflessness has been questioned. Journalists started by looking at the money going to companies and nonprofit groups associated with Mr. Gore, and now they have turned their attention to Dr. Pauchauri, the chairman of the United Nations Intergovernmental Panel on Climate Change.
The I.P.C.C., which is supposed to be the gold standard of peer-reviewed climate science, in 2007 warned of a “very high” likelihood that global warming would cause the Himalayan glaciers to disappear by 2035. When the Indian government subsequently published a paper concluding there was no solid evidence of Himalayan glaciers shrinking because of global warming, Dr. Pachauri initially dismissed it as “voodoo science” beneath the I.P.C.C.’s standards.
But then it came out that the I.P.C.C.’s projection was based not on the latest peer-reviewed evidence, but on speculative comments made a decade ago in a magazine interview by Syed Hasnain, a glaciologist who now works in an Indian research group led by Dr. Pachauri.
Last week, the I.P.C.C apologized for the mistake, which was embarrassing enough for Dr. Pachauri. But he also had to contend with accusations of conflict of interest. The Telegraph of London reported that he had a “worldwide portfolio of business interests,” which included relationships with carbon-trading companies and his research group, the Energy and Resources Institute.
Dr. Pachauri responded with a defense of his ethics, saying that he had not profited personally and that he had directed all revenues to his nonprofit institute. He denounced his critics’ tactics: “You can’t attack the science, so attack the chair of the I.P.C.C.”
I can’t defend that entire sentiment, because you obviously can attack some of the science in the I.P.C.C. report, not to mention other dire warnings in Dr. Pachauri’s speeches.
But I do agree with his basic insight: Conflict-of-interest accusations have become the simplest strategy for avoiding a substantive debate. The growing obsession with following the money too often leads to nothing but cheap ad hominem attacks.
Sure, money matters to everyone; the more fears that Dr. Pachauri and Mr. Gore stoke about climate change, the more money is liable to flow to them and the companies and institutions they are affiliated with. Given all the accusations they have made about the financial motives of climate change “deniers,” there is a certain justice in having their own finances investigated.
But I don’t doubt that Mr. Gore and Dr. Pachauri would be preaching against fossil fuels even if there were no money in it for them, just as I don’t doubt that skeptics would be opposing them for no pay. Why are journalists and ethics boards so quick to assume that money, particularly corporate money, is the first factor to look at when evaluating someone’s work?
One reason is laziness. It is simpler to note a corporate connection than to analyze all the other factors that can bias researchers’ work: their background and ideology, their yearnings for publicity and prestige and power, the politics of their profession, the agendas of the public agencies and foundations and grant committees that finance so much scientific work.
Another reason is a snobbery akin to the old British aristocracy’s disdain for people “in trade.” Many scientists, journal editors and journalists see themselves as a sort of priestly class untainted by commerce, even when they work at institutions that regularly collect money from corporations in the form of research grants and advertising.
We trust our judgments to be uncorrupted by lucre — and we would be appalled if, say, a national commission to study the publishing industry were composed only of people who had never made any money in the business. (How dare those amateurs tell us how to run our profession!) But we insist that others avoid even “the appearance of impropriety.”
This snobbery was codified by The Journal of the American Medical Association in 2005, when it essentially required chaperones for any researchers receiving corporate money. Citing “concerns about misleading reporting of industry-sponsored research,” the journal refused to publish such work unless there was at least one author with no ties to the industry who would formally vouch for the data.
That policy was called “manifestly unfair” by BMJ (formerly The British Medical Journal), which criticized JAMA for creating a “hierarchy of purity among authors.” The hierarchy looked especially dubious after a team of academic researchers (not financed by industry) analyzed dozens of large-scale clinical trials in previous decades and reported that industry-sponsored ones met significantly higher standards than the nonindustry ones.
The new fetish for disclosing “conflicts” has led some of the best medical researchers to shun drug company money altogether — not because they think it leads to bad research, but because they are tired of that fact being highlighted every time they are identified in a news story, as if that were the most important thing to know about their work.
There are, of course, notorious cases of corporate money buying predetermined conclusions, like the reports once put out by the Tobacco Institute to rebut concerns about smoking and cancer. But there has also been dubious work promoted by government agencies and foundations eager to generate publicity and advance their own agendas.
It’s naïve to caricature scientific disputes as battles between “industry” and the “public interest,” as if bureaucrats and activists didn’t have their own selfish interests (and wealthy, powerful allies like trial lawyers). Too often, corporate conflict-of-interest accusations have been used as smear tactics to silence scientists who ended up being correct. (Go to nytimes.com/tierneylab for examples.)
Instead of stigmatizing certain kinds of research grants, perhaps we should consider the bigger picture. If scientists listed all their public and private donors on their Web pages, journalists could simply link to that page and let readers decide which ones are potentially corrupting. Instead of following rigid rules to report “conflicts,” journalists could use their judgment and report only the ones that seem relevant.
Sometimes you can’t understand a debate or a controversy without knowing who is paying whom. But in general, I’m with Dr. Pachauri: follow the science, not the money.

How to encourage big ideas (MIT News)

Photo - Graphic: Christine Daniloff

 

A new study suggests certain types of funding — which provide more freedom and focus less on near-term results — lead to more innovative and influential research.

 

Peter Dizikes, MIT News Office

December 9, 2009

Scientists are much more likely to produce innovative research when using long-term grants that allow them exceptional freedom in the lab, according to a new study co-written by MIT economists.

The work shows that biologists whose funding encourages them to take risks and tolerates initial research failures wind up producing about twice as many highly influential papers as some peers whose funding is dependent upon meeting closely defined, short-term research targets.

“If you want people to branch out in new directions, then it’s important to provide for their long-term horizons, to give them time to experiment and potentially fail,” says Pierre Azoulay, an associate professor at the MIT Sloan School of Management, and an author of the study. “The researcher has to believe that short-term failure will not be punished.”

The results are contained in a working paper released this fall, “Incentives and Creativity: Evidence from the Academic Life Sciences,” by Azoulay, Gustavo Manso, an assistant professor at Sloan, and Joshua Graff Zivin, an associate professor of economics at the University of California, San Diego.

The researchers believe their evidence shows it is possible to manage lab work in a way that increases the chances that scientists will produce breakthrough findings, not just incremental advances within an established paradigm. “You can generate innovation, but the details matter,” says Azoulay. “What you want to provide incentives for is future performance, not performance today.”

The study appears as science funding has recently risen in the United States, in part through the stimulus bill Congress passed in 2009, which provided about $20 billion for research. Not counting stimulus money, President Barack Obama still included a slight increase in federal support for science as part of his proposed 2010 budget, which asks for about $148 billion for research and development. In April, Obama suggested that scientific funding should equal 3 percent of America’s economic production. Azoulay says he and his colleagues would like to instigate a discussion about not only how much money should be spent on research, but how those funds should be managed.

Measuring creativity

Azoulay, Manso, and Graff Zivin arrived at their conclusions after comparing researchers using two distinct types of funding: support from the investigator program of the Howard Hughes Medical Institute (HHMI), the large non-profit biomedical research organization in Maryland, and the R01 grants of the National Institutes of Health (NIH), the federal government’s life-science center in Maryland. The HHMI support lasts five years and is often renewed; the program “urges its researchers to take risks … even if it means uncertainty or the chance of failure.” The HHMI also provides a two-year buffer of support after funding is terminated. The NIH grants last three to five years, have more specific aims, and cease immediately if not renewed.

The researchers identified 73 life scientists given HHMI support in three years — 1993, 1994, and 1995 — and tracked their work through 2006. Because these scientists were quite well-regarded before getting HHMI funding, the study compared them to groups of similarly accomplished scientists receiving NIH grants: one group of 393 scientists who had received early-career prizes, and another group of 92 scientists receiving the NIH’s MERIT funding, awarded to highly promising projects.

Among other things, Azoulay, Manso, and Graff Zivin analyzed how often these scientists published articles that were among the top 5 percent or top 1 percent of the most cited papers in their fields. They also studied “creativity” in lab research by seeing how often the scientists began using new keywords to describe the subjects of their articles.

Their findings show that compared to the early-career prize winners with NIH grants, the HHMI-funded scientists produced twice as many papers in the top 5 percent in terms of citations, and three times as many in the top 1 percent. Compared to the NIH-funded scientists with MERIT grants, the HHMI group produced about the same quantity of papers in the top 5 percent by citation, but 50 percent more papers in the top 1 percent.

The study also found that the HHMI investigators had about 10 percent more variety in the keywords they introduced into their own work than the early-career prizewinners from the NIH, and were cited in a greater range of journals. Additionally, the HHMI-backed scientists mentored more early-career prize-winning scientists themselves (1.13 per person) compared to the NIH-funded group (0.24 per person).

Avice Meehan, vice president for comunications and public affairs at HHMI, says the study reflects the fact that over the last two decades, “HHMI has identified highly creative scientists and given them the freedom to pursue critical medical research, even if it takes them years, and means a change of research direction.”

The view from the NIH

The researchers acknowledge that measures such as keywords are imperfect indicators of creativity, but think such tools are a reasonable way of identifying originality in the lab. “There are as many definitions of creativity as there are people studying creativity,” acknowledges Azoulay. “But ultimately creativity is measured in especially good outcomes.” 

Azoulay, Manso, and Graff Zivin also emphasize that their work is not an institutional critique of the NIH. “The conclusion of our paper is not that the NIH should transform itself into a version of the HHMI,” Azoulay adds.  Their larger point simply concerns the effects of different types of grants. If major discoveries are not unanticipated events, but influenced by the underlying funding, policy-makers could consider that point when allocating research dollars.

Moreover, the civic value of science often comes not only from an initial breakthrough, but later incremental refinements of it. In those cases, shorter-term, narrower research provides significant social benefits. “It’s an outstanding question what the actual mix of exploration and exploitation we need is,” Azoulay notes.

Don Ralbovsky, an NIH spokesperson, said a staff member in the NIH’s Office of Extramural Research had looked at the paper and described it as “interesting,” but would refrain from further comment until the paper appears in final published form.

In recent years, the NIH has developed multiple types of funding beyond the traditional R01 grants. The Pioneer Award, founded in 2004, is a grant for “highly innovative new research approaches,” to be given to seven scientists in 2010. The New Innovator Award is for 33 early-career investigators in 2010, emphasizing “innovation and potential impact.” And in 2008, the NIH established Transformative Research projects Awards, making $25 million available for “bold and creative investigator–initiated research.” All of these grants last five years, instead of three for the standard R01 grants.

Azoulay agrees that the existence of a variety of types of grants can help science as a whole. “A division of labor might benefit of the entire research ecosystem,” he says. The HHMI’s Meehan concurs: “It’s important for the nation to have a comprehensive research portfolio that encompasses many approaches and mechanisms.” (This research was funded in part by the Kauffman Foundation and the Science of Science Policy Program of the National Science Foundation.)

One long-term goal of Azoulay’s work is “to bring randomized trials to science policy.” By comparing two groups over time, this study attempts to replicate the lab-trial method, albeit with historical data, and shed more empirical light on a subject often discussed anecdotally.

“This is the first word on the topic, not the last,” concludes Azoulay.