What should we do to avoid patent litigation?

I am a patent attorney generally on the patent owner's side. Signing such a clause should make you nervous. You don't want to be responsible for the major company's infringement. The major company is likely getting more benefit out of using your software than your company is making by selling licenses. The previous gentleman's answer is incorrect. Anyone can be sued for patent infringement if they make, sell, or *use* the claimed invention. It depends on the claims in the asserted patent. Based on experience, it's much more likely that the larger entity would be sued for infringement. A patent infringement case could cost anywhere between $350k-$5M+ USD. http://www.cnet.com/news/how-much-is-that-patent-lawsuit-going-to-cost-you/ In order to properly answer your question, I would need to know why you feel it's "very unlikely" that someone would sue the major company for using your software. If the major company won't back down on this provision, the best thing you can do is determine if you need IP (defense) insurance. If a patent attorney determines that it is necessary, raise the price of your license and get IP insurance.

First of all, what you have is a provisional patent **application**. For now, the provisional patent application is not publicly available. This can be a big advantage to you. You can use this time to improve your invention and file additional provisional applications. If you don't plan on making/practicing the invention yourself, you should make sure to try to think of everything possible regarding how that invention can be improved. This would (hopefully) come naturally to a practicing inventor. When you file your non-provisional application, your disclosure will be made public ("published") 18 months from the filing of the non-provisional. While your applications are not publicly available, I suggest waiting until you file your non-provisional application(s) to talk to others. Quite often, provisional applications do not have the detail or the scope that the non-provisional will have -- due to the time spent on getting drawings accurate and making sure everything is included in your non-provisional applications. It is best to have a complete application before talking to practicing companies. Sophisticated companies will take advantage of information not disclosed in your provisional application to file their own patent applications. If your applications are not publicly available (or even they are published), you should sign confidentiality agreements (non-disclosure agreements) with anyone you talk to about licensing or buying your invention. Keeping track of who you talked to with confidentiality agreements can be the basis for "notice" of the invention by an infringer -- when they eventually steal your invention. You can sell your idea anytime, but a provisional application is worth a lot less than a non-provisional application which is worth less than an allowed application or issued patent. Provisional applications are generally not as complete as they could be -- and require additional time and finesse to complete the non-provisional application. In terms of appearances, if you are not willing to put in the money to file the non-provisional application, the invention is likely not worth that much money. Companies as well as non-practicing entities may look at provisional applications, but not for long, and will not give you the kind of money that you may get from selling a fully examined patent. Of course, it depends on how good your invention is.

This is a tricky question as you are entering a gray area if you are using material from Book Z to inspire your own book. Derivatives works are highly litigated and there is case law that you could turn to to help you make this decision but based on your example its going to be a fine line. You would have to be able to distinguish the products as two very separate works. Since the original book Z is inspiring your new book this may be hard to do. It might actually be easier to talk with the original author about your future plans and develop an agreement between the two of you where he waives any claims he might have here in exchange for recognition in your book. Just an idea--FYI- this is NOT LEGAL ADVICE. You should consult with an attorney in more detail here.

Hi! The quick answer is that simple invention ideas are great as they are the fastest and least expensive to develop, yet can still be highly profitable. I run a consumer product firm which has developed hundreds of inventions for home-based inventors or small product firms - Essentially we take it from Idea to Store Shelves. The best advice I can give is to ONLY do what is absolutely required to sell product... There are lots of great services out there that are beneficial; however, if you're on a limited budget, stick to only what is necessary to make a sale, which is: 1. Industrial Design / Engineering, 2. A manufactured sample and a manufacturer who can produce product, and 3. A provisional patent. Essentially what you need is a real, physical, and fully functioning unit of your product, the prices to manufacture that product and a manufacturer who is ready to produce units, and intellectual property protection so that your idea is not stolen. Once you have these 3 items, you can start to present your product to wholesalers, retails, distributors, etc. If someone likes it and the price is reasonable, they can place an order, and your business and dream product starts to grow. From there, there is a whole world of possibilities, but the most important thing for now is to develop your product from 'idea' into 'real'. Whatever you do, do not get caught up in the idea of 'licencing' your idea. An idea is almost impossible to licence unless it is CURRENTLY being manufactured AND being SOLD through stores. If someone or a company says that they will help licence your product idea for royalties, etc., then they should be willing to do that for FREE, no charge, no fees. Many people attempt to charge fees to licence a product idea; however, if you aren't currently selling in stores, it will almost be impossible to get any form of monetary payment, so they usually are just trying to get your fees for their 'marketing' services, which are almost useless for an undeveloped product, and they know this. If you would like more information on some of the details of product development, we have a free Invention Guide on our website, check it out here: http://www.makoinvent.com/free-invention-kit/ Cheers, Kevin Mako President, Mako Invent www.makoinvent.com www.facebook.com/makoinvent www.twitter.com/makoinvent

The answer is yes, but it always depends. Let me begin by saying that the more knowhow, etc. involved, the easier it is to sell something without any patent protection. Otherwise, you are trying to sell something without protection and you get no protection until the patent issues, which may take years. The acquirer may just run with it (I would) without licensing knowing there is no cost until your patent issues. Then, when you file, they will see your claims and try to modify their product around your claims. It is slightly vicious in nature. That said, I may not act much different if you file first, unless I can buy your patent or the license costs are very inexpensive. Secondly, many countries have absolute novelty and you will not be able to protect your invention there ever, even if a licensee arises and wants to enter those markets. This too, is a serious limitation for licensing. My conclusion would be that you are underfunded to address your IP and that I can get away with murder. Filing the application is your way of telling people that you are serious. That said, it is not necessary and I have a lot of clients that file later or never file.