Originally Posted 4/16/06
I am speaking of Mark Martinez, the man with the sand bag scooping apparatus. Frankly, I think his invention is one of the best of the final 12 BUT I wouldn’t invest a dime in it.
Why? Simply, it isn’t protected. Sure, Mr. Martinez has a patent but his patent will not prevent any serious competitor from essentially copying his invention without fear that they would lose an infringement suit.
You see, Mr Martinez’s patent is a DESIGN PATENT. Design patent protect only the aesthetic aspects of an otherwise functional article. And here is the important part: when the functionality of a device merges with its aesthetics, the design patent drawn to the aesthetics is INVALID. This is precisely the case here!
So if a client came to me and asked me if he could make Mr. Martinez’s invention legally without infringing the Martinez patent, I would tell him to change the look a little but not in a fashion that hinders the products functionality and he should be home free.
It is really a shame, because whether or not Mr. Martinez wins American Inventor, he would have had a significant amount of investor interest and more importantly investment following the show IF he had a good quality utility patent. Instead with no real patent protection, no serious investor will give him a dime.
Who is to blame? I wonder if his patent attorney told him about the negative aspects of design patents. Perhaps, he did, but the design patent route was chosen because of its low cost relative to a utility patent.
Please understand the following comments are not directed at Mr. Martinez’s attorney: I don’t know anything about him, and would not presume to draw any negative conclusions about this particular attorney.
No matter Mr. Martinez’s attorney’s actions, many patent attorneys improperly sell design patents as a cheap alternative to utility patents. Historically many of these patent attorneys have been associated with Invention Promotion Companies. They are more concerned with keeping the invention promotion companies happy rather than advising the client/inventor what was in the best interests of the client.
Frankly, if you ask me, attorneys and agents that don’t act in the best interests of their clients by fully informing them of the limited scope of protection should be disbarred.
In the next installment, I will comment on the patent protection held by another finalist. Here is a hint: he has a utility patent but the claim protection is so narrow that designing around the device would be a piece of cake. In fact, I suspect the redesign that results from spending the 50k may not even read upon his own patent.
