Over the years, I’ve received numerous calls from people about how an invention promoter may have taken advantage of them. Invention promoters are also referred to as invention promotion company, invention promotion firm, and invention submission companies.
1) What is the definition of an invention promoter?
Under 35 USC 297, the definition of an invention promoter is one (1) that offers to perform or performs “invention promotion services” and (2) who holds itself out through advertising in any mass media as providing such services. “Invention promotion services” means the procurement or the attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer.
2) What does the FTC and the USPTO have to say about invention promoters?
These companies have become sophisticated in luring inventors into retaining them for their services despite the bad reputation and nominal success of these types of firms. If you do decide to utilize the services of an invention promoter, please consider the following information published by the United States Patent and Trademark Office and the Federal Trade Commission.
You can find out whether anyone has filed a complaint against an invention promoter at the USPTO website. You can also search the FTC website <www.ftc.gov> to determine whether the FTC has investigated or fined an invention promoter.
3) Does the invention promoter have to disclose their track record?
35 USC 297 also requires the invention promoter disclose the following information (i.e., required disclosures) to its customers in writing prior to entering into a contract for invention promotion services:
(1) the total number of inventions evaluated by the invention promoter for commercial potential in the past 5 years, as well as the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations;
(2) the total number of customers who have contracted with the invention promoter in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other nonmarketing services from the invention promoter, or who have defaulted in their payment to the invention promoter;
(3) the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter;
(4) the total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by such invention promoter; and
(5) the names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.
Request this information from the invention promoter and consider their track record before retaining them.
4) What can I do if I am taken advantage by an invention promoter?
35 USC 297 provides for damages or statutory damages and also includes a fee shifting provision (i.e., attorney fees) if a customer has been injured by the invention promoter through a material false or fraudulent statement or representation, or any omission of material fact or by failure to make the required disclosure items mentioned above.
Aggrieved customers may register a complaint against an invention promoter with the United States Patent and Trademark Office.
Aggrieved customers may also file a complaint with the Federal Trade Commission.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.