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[Jeff Rowberg]

Hey everyone,

I am trying to figure out what the best approach is in a case that probably doesn't show up on these forums very often. You all seem like you would definitely be the ones to ask for info though. I'm located in the US, if it has any bearing on my situation.

I have recently (in the last month) been working on building something which I believe is at least a new combination of old ideas. I am unaware of any existing devices quite like my design, and I have searched very extensively. I've even read some patents on similar terms, and while there are a few similar things, all of them are significantly different in at least one key area. So, I am not worried about infringing any published patents at this point.

I have been working on a prototype since I thought of it (Sep. 25, just over a month ago), and I already have something that works more or less like I wanted, though it is still in need of many improvements. Here's the unique part: I've been basically keeping an invention journal online on a public project website (http://www.keyglove.net). The hardware is based on an open platform (Arduino/AVR), the controller and testing source code is available for free under the MIT license, and all of the prototype-so-far build instructions and parts list/sources are detailed on the site. This is very much a public idea at this point--over 3,000 unique visitors to the site in the last few weeks, most of them as a result of the idea being featured on a number of US and foreign tech blogs.

Based on some research, I know it is impossible for me to obtain a foreign patent at this point due to the public disclosure of such detailed info. More importantly (to me anyway), I have it from a reputable patent attorney that it is illegal (35 USC 102(f)) for someone else to take my publicized, non-patented idea and patent it, thereby preventing me from continuing to build or market it.

Here is what I'm wondering. I know I have a grace period during which to file for a patent (provisional or otherwise) which lasts until approximately next September. I'm not enamored with the idea of getting--or especially enforcing--a patent on this thing. However, I am very interested in finishing the design and then finding a company/group to manufacture and sell it. I am confident with the current interest and rapidly expanding mobile computing market sector that it has a lot of promise. It might not be a billion-dollar idea or anything, but it is certainly useful to some. What is the best approach here?

1. Should I apply for a US patent, provisional or otherwise? I understand that it takes a lot of money and, more importantly, a very long time (at least in computer industry terms) to complete the process. Is there an advantage to doing this now?

2. Regardless of the patent, should I try to trademark the term "Keyglove" since I would be quite happy to use that as the name of the product?

3. Will it be difficult to get it manufactured and sold without a patent? I know sometimes this process involves design licenses and things of that nature.

4. If the DIY build/material instructions are public knowledge (which I appreciate and hope to maintain), what can I do to keep a manufacturing company from saying "Hey, cool idea" and then just building it without any payments/royalties/whatever to me?

The Arduino platform is a prime example of the same kind of situation. They design, manufacture, and sell a series of prototyping boards for electronics enthusiasts, and obviously have a good business. All of their circuitry and designs are public knowledge, and as a result there are a few different clone boards out there. And yet, their product is still profitable and sought-after for a few reasons.

Basically, what steps should I take legally to streamline the process of manufacturing and selling this once the prototype is complete, since it's basically a public project?

Thanks,

    Jeff

[JimIvey]

For the trademark issues, you should consult the Trademark Forum.  I don't believe you've hurt yourself in any way with respect to trademark rights, but you should ask people who know more than I.

As for patent issues, forget about provisional applications.  You can search these forums for the thoughts of must of us vis-a-vis provisional applications.  I'm quite vocal in my opinion that very few understand them and use them properly.  Without knowing enough to make an informed opinion on the matter, my bet is that you should have a high-quality, real (non-provisional) application on file before the 9/25/2011 deadline.  And, make sure your conception and work toward reducing your innovation to practice (building a functioning prototype) are well-documented as you're going to want to avoid prior art between now and your significantly later filing date.

And don't think you'll save money by hiring someone to write it up on 9/23/2011.  I tend to be much cheaper if I have a lot of down time (not working) to think about an application -- I don't bill for dreaming or thinking in the shower.  On the other hand, I have a hard time concentrating in the late hours and under stress and I'm less inclined to stop the clock under those conditions.

As for what people in industry might think of your project and its IP (or lack thereof) is impossible to say.  Businesses decisions are made by human individuals -- thoroughly unpredictable.  Smart people who might invest in or buy into your innovation will want to know to what degree your idea is protectable.  Some of those people less familiar with patents might insist that you have a pending application.  And, some of those are savvy enough to not accept a provisional application.

I hope that helps.

Regards.

[Jeff Rowberg]

Thanks for the quick response. I would definitely prefer not to wait until the last minute, and in fact would rather do any necessary steps as early as possible. And, since the end goal is a non-provisional application anyway, starting there makes sense to me. Three follow-up questions:

1. Would timestamped blog posts (presumably then cached by search engines, viewed by others, etc.) suffice for keeping the development process "well-documented," as you mentioned? I don't know if you've looked at the website at all, but there is quite a bit of detail there, including multiple attempts at different features that didn't work out and were subsequently discarded.

2. If I pursue a patent, should I stop posting detailed development info online for practical or legal reasons?

3. All other things being equal, do you believe that I'll be notably better off in the long run as far as available options go if I do pursue a US-only patent, as opposed to simply proceeding as I have been with posting updates online and no patent protection?

Thanks again for your input.

    Jeff

[Isaac]

2. If I pursue a patent, should I stop posting detailed development info online for practical or legal reasons?

I'd be more concerned that your postings might create the impression that others may freely copy your work.  That could affect your ability to enforce a patent.  There are likely steps you can take to avoid this problem while still posting your details.

[Jeff Rowberg]

There are likely steps you can take to avoid this problem while still posting your details.

Thanks for the heads-up. Any suggestions on what those steps might be?

As for the controller code, that should probably remain fully open since (1) I am making use of some other people's similarly licensed code and (2) inviting people to do their own software modifications to customize hardware logically leads to more hardware sales.

I have only specifically placed the software under the MIT license, and haven't said anything about the hardware. I do have a "Build Your Own" page for DIY types, which would be nice to keep up there for just those people. I imagine (erroneously?) that the DIY people will as a rule be vastly outnumbered by the people who would prefer to buy a complete manufactured device.

[Isaac]

I have only specifically placed the software under the MIT license, and haven't said anything about the hardware. I do have a "Build Your Own" page for DIY types, which would be nice to keep up there for just those people.

I think putting up a DIY page does say something about the hardware.  The implication is that there are no restrictions on making and using the hardware.  Presumably at least some portion of the software is of no use without the hardware. If you intend to apply for a patent that could be enforced someday, you'll need to clean that up somehow.  Perhaps you could grant some kind of non-commercial use license to DIYers covering the hardware.  You would want to mention that you are applying for a patent.

Of course restricting DIY activity not be in keeping with the spirit of the software license.  Many free software advocates are turned off by patents.

[OMG IP]

"technically" someone cannot take your idea and claim it as their own.  Do you think that would stop MegaCorp from doing so?  Are you prepared to go to court to prove it?

If you think your idea is worth an investment, get a patent.  Jim is right - do not seek a provisional.  If a provisional is done correctly/properly, it will resemble a non-provisional, and you're not saving anything.

[Isaac]

"technically" someone cannot take your idea and claim it as their own.  Do you think that would stop MegaCorp from doing so?  Are you prepared to go to court to prove it?

Going to court would serve no purpose if the idea is not protected by patent.  Being first to invent does not give you any right to prevent others from copying your invention once it becomes public.  At best being first may allow you to invalidate someone else's patent.

If you think your idea is worth an investment, get a patent.  Jim is right - do not seek a provisional.  If a provisional is done correctly/properly, it will resemble a non-provisional, and you're not saving anything.

This a bit of an overstatement.  The content of the provisional must support the claims fully under 35 USC 112 in exactly the same way/extent as does the detailed description of a non-provisional application, but a provisional need not resemble a non-provisional in form.   The problem often made with provisionals is skimping on the content, but provisionals are never examined for formalities even when used as priority documents.
     

[Jeff Rowberg]

Thanks for all of your input. This discussion is both interesting and helpful. Another follow-up question:

Is it possible and likely that I could stop posting any hardware details on the site (software would remain free due to existing licensing), make some more hardware-based improvements to the glove, and come up with a very specific design that would be completely patentable, both in the US and internationally?

I'm still in the prototyping phase and trying out all kinds of different specific approaches, materials, and electronic components. Obviously I wouldn't be able to get a patent with a claim like "A device which sends keystrokes to the computer based on touch combinations," since it would be far too broad considering the already public info, but could I get something narrower that would still qualify as non-public?

And, if the answer to that is yes, then another question:

After I apply for the patent, would I be able to resume posting updated details publicly, since the application was already filed?

    Jeff

[JimIvey]

As for the controller code, that should probably remain fully open since (1) I am making use of some other people's similarly licensed code ... .

Be aware that many open source licenses contain some sort of "poison pill" for patents.  There are many variants of open source licenses and these patent killers (or at least patent haters) are relatively new.  So, you'll have to look at the specific terms of the license.

In addition, note that clear distinction between software and hardware is rare in patents, particularly when trying to cover feasible hardware variations.  Without knowing more details, it might be challenging to distinguish your controller code from the hardware (in terms of what your patent would cover).

Regards.

[JimIvey]

Is it possible and likely that I could stop posting any hardware details on the site (software would remain free due to existing licensing), make some more hardware-based improvements to the glove, and come up with a very specific design that would be completely patentable, both in the US and internationally?

Yes.

After I apply for the patent, would I be able to resume posting updated details publicly, since the application was already made?

Yes.

Well, it depends.  If your application is adequate (complies with 35 USC Section 112, first paragraph whether provisional or real), subsequent publication of details won't affect patentability in the US and abroad.

However, to the extent you hope to rely on trade secret and "first mover" advantage in the marketplace until you get enforceable patents out of patent offices around the world, you'll vitiate that possibility by publishing.  That's entirely a business decision, not a legal one.

Regards.

[Jeff Rowberg]

As for the controller code, that should probably remain fully open since (1) I am making use of some other people's similarly licensed code ... .

Be aware that many open source licenses contain some sort of "poison pill" for patents.  There are many variants of open source licenses and these patent killers (or at least patent haters) are relatively new.  So, you'll have to look at the specific terms of the license.

I am using one library which specifies that it was released into the public domain, and one library which is under GPLv2. This second one could be replaced with simpler, less complete public domain code probably without affecting the glove performance. Other than that, it's all my own code, which is currently under the MIT license. I don't think there are any patent poison pills in that one. You can read it here: http://www.opensource.org/licenses/mit-license.php. It's only a couple paragraphs long and quite easy to understand.

[JimIvey]

I am using one library which specifies that it was released into the public domain, and one library which is under GPLv2. This second one could be replaced with simpler, less complete public domain code probably without affecting the glove performance. Other than that, it's all my own code, which is currently under the MIT license.

If the GPL is actually closer to the LGPL, you can use the libraries (without modification) in proprietary code.  If you modify the library, I think you have to release the library under the same LGPL license, but not the code that uses it.

I'm not sure whether the LGPL requires dynamic linking to maintain the separation.

If you're not obligated to continue to release your controller code under the MIT license, you can maintain a separate version that's proprietary or simply stop releasing your code under the MIT license.

You're right in that there appears to be no patent poison pill in the MIT license, but it's not clear that a patent would affect the license's grant of the rights to use, make, and sell the software.

Regards.

P.S.  Please note that my statement that you can maintain a separate proprietary version of your code is based on your statement that you can make a version without using any open source code at all.  To the extent your code continues to include open source code, you'd have to replace that with code not copied or derived from open source code before you can consider your code (excluding libraries from other sources) proprietary.

[vman11]

I am unaware of any existing devices quite like my design, and I have searched very extensively. I've even read some patents on similar terms, and while there are a few similar things, all of them are significantly different in at least one key area.

Since you have a system here and can possibly claim all kinds of permutations & embodiments, I'm not sure what you believe the key elements / 'areas' are that comprise your invention and therefore whether any information posted herein is truly useful.

But, a few minutes worth of searching yields the following patents seemingly related to the general art (I would suspect many more could be pulled up with any serious effort):

5486112 (See Fig. 1)
5507649
4414537
US20050156895 (Fig 2)
WO/2000/000883
US20040034505
US20080129694


This is not to dissuade you, only to assist you define your IP space better. Also note, getting a patent issued is a different issue altogether from infringement on existing patents.

[OMG IP]

"technically" someone cannot take your idea and claim it as their own.  Do you think that would stop MegaCorp from doing so?  Are you prepared to go to court to prove it?

Going to court would serve no purpose if the idea is not protected by patent.  Being first to invent does not give you any right to prevent others from copying your invention once it becomes public.  At best being first may allow you to invalidate someone else's patent.

If you think your idea is worth an investment, get a patent.  Jim is right - do not seek a provisional.  If a provisional is done correctly/properly, it will resemble a non-provisional, and you're not saving anything.

This a bit of an overstatement.  The content of the provisional must support the claims fully under 35 USC 112 in exactly the same way/extent as does the detailed description of a non-provisional application, but a provisional need not resemble a non-provisional in form.   The problem often made with provisionals is skimping on the content, but provisionals are never examined for formalities even when used as priority documents.
     

Go  to  court to invalidate based on fraudulent invetorship.

It's not an overstatement; it's a philosophy.  Great - you draft a proper provisional application in terms of 112.  Now what?  My guess is you would have it converted to a non-provisional with proper format.  How is that saving $$ exactly?