Month: August 2010

Four Sources for Possible Patent Licensees or Assignees

Frequently inventors consider licensing or sale of their patent application or issued patent as the means for monetizing their intellectual property. One challenging step is to determine who might be interested in licensing or purchasing the patent rights. Determining potential licensees or assignees is a key step in developing the business plan.

1. Search Engines

This is probably no surprise, but the search strategy needs to differ from the typical internet search. The goal is to locate websites of companies that have licensed patents, news releases announcing licensing of patents, industry analyses of patent transfers, and the like. Be prepared to view more than just the first page of results.

  • Vary your search terms – You can start with a narrow search based on the features of the patent. For a fishing lure, the first search might be “patent license floating plastic fishing lure bass”. You can then alter the search to include different features and/or broaden the terms of your search to locate different results. Based on the above search, the next searches might be “patent pending clear plastic fishing lure” or “patented top fishing lures”.
  • Vary your search sources – Remember that a lot of the discussion of patent licensing and intellectual property sales is not on the general web. The discussion of companies’ licensing and technology transfers may be part of an article in a business journal. Instead of searching just the “web” option of the search engine, search other segments such as “news”, “finance”, or “directories”.
  • Vary your search engine – Even though Google is the preferred search engine for general use, other search engines can aid your search for licensees and assignees. There are industry specific search engines, thus you may look for an automotive electronics focused search engine if the patent application is in that industry (if it makes you feel better, you can search Google for the other search engines). Also there are search engines which group or “cluster” results. Thus a search with terms similar to the above fishing lure on a clustering search engine such as Yippy may present results categorized by “Business”, “Suppliers, Manufacturers”, or other relevant groups.

2. Trade shows

Trade shows are where a lot of suppliers and purchasers come together to buy, sell, introduce, and negotiate new technologies. Vendors, purchasers, sponsors, and suppliers listed on the trade show website may also be interested in acquiring rights to other technologies in the trade.

3. Thomasnet

ThomasNet is a comprehensive listing of more than 600,000 manufacturers, distributors, and services providers in more than 67,000 categories ranging from automotive equipment to chemical coatings. Some business in the relevant industries may actively acquire new technology.

4. United States Patent & Trademark Office

The United States Patent & Trademark Office (USPTO) website lists owners of patents and patent applications. One can search the patents records or search the patent assignments to look for owners of patent rights in the selected technologies. Owners of patent rights in the fields related to the patent may be interested in acquiring rights in related technologies from third parties.

Of course locating prospective licensees or assignees is only an early step in patent licensing or assignment. The inventor should still further research and qualify the company before proceeding. And the inventor should understand the value of a license or assignment of the invention the other party.

Two Advantages of Monitoring Use of Your Trademarks


Geek Squad Standard VW Beetle
Geek Squad Standard VW Beetle

You’ve probably read about the recent dispute between Best Buy, owner of the “Geek Squad” trademarks, and Father Luke Strand of Holy Family Catholic Church, (former?) owner of a VW Beetle adorned with a “God Squad” logo. One of the ways that Best Buy uses the Geek Squad trademark is in a logo form on VW Beetles. Best Buy became aware of Father Strand’s use and contacted him and requested that he stop using his logo, alleging trademark violations.

Father Strand's "God Squad" Vehicle
Father Strand's "God Squad" Vehicle

After usage or registration of a trademark, startups and small businesses tend to focus solely on building the goodwill associated with the trademark. After all, that is the main point of the trademark, right? Unfortunately, with the rights come some responsibilities. One of those responsibilities should include monitoring the use of the trademark. Monitoring is primarily to detect infringement and detect improper usage of the mark. For emerging businesses, two key advantages of monitoring a trademark’s use include:

1. Decreased potential for infringement, lawsuit, and damages

Early notice of another party’s use of a mark in a confusingly similar manner gives both parties more viable solutions to the problem. The potential for adversity is less, as the potential infringing party has less of a time, money, and emotional investment in use of the mark. For example, tech maven Gina Trapani was in the early stages of working on an application formerly named “Think Tank” when another company alerted her to their prior use. The other company cordially approached her and the “Think Tank” application became the “Think Up” application. According to Gina Trapani (This Week In Google Podcast at 70:15), the situation was amicably resolved. The situation was resolved before two “Think Tank” apps were released to the market, end users were confused, and  marketing budgets were spent. Because the second “Think Tank app” had not been released, infringement may not have occurred. And if there was infringement, the damages were minimized.

2. The scope and validity of the trademark is maintained

A trademark can be invalidated by becoming “generic.” A popular example is when the “Aspirin” trademark became generic. Consumers used “Aspirin” to refer to any analgesic and the mark lost its function as a source indicator, thus it was eventually invalidated. In the Geek Squad situation, Best Buy currently has a certain scope of protection in the “Geek Squad” mark. Because Best Buy has spent time and money using the mark, a typical consumer can easily recognize the logo. Father Strand apparently is/was using a similar mark, thus slightly chipping away at Best Buy’s scope of protection. Suppose over the course of several years several other parties start using a similar logo with “Greek Squad,” “Great Squad,” “Geek Pod,” and “Geek God,” text. All of those uses further erode Best Buy’s scope of protection. Then if Best Buy decides to assert infringement claims against later parties, United States trademark law limits the scope of protection of the “Geek Squad” mark. For that reason, it is in Best Buy’s interest to act early. Similarly, monitoring the usage of a mark can alert a trademark holder of improper usage so it can act to prevent the undesired results.

The ways in a trademark may be monitored vary from the free and simple to more costly and thorough. Simple low cost approaches to monitor a might be services such Google Alerts, which monitor the publicly available internet. A more costly, thorough approach can include additional sources such as  trademark filings, domain name registrations, industry periodicals, and other sources. This may be done manually or via the services of a trademark attorney or trademark monitoring company.