•   almost 8 years ago

Questions regarding submission rights?

1. Does submission implies public disclosure which qualifies the solution as public domain and prevents me from ever applying a patent?

2. My solution requires a process patent which is costly to engage an attorney to file a proper application so I have not filed for a patent yet. Given it is a process patent, does this mean FTC can give the solution to anyone in the world without me getting any compensation even if I have obtained a patent for it afterward?

3. What if someone files a patent on my idea from looking it up in the submission gallery? I cannot put patent pending on my proposal unless the application is already accepted by.

  • 11 comments

  •   •   almost 8 years ago

    Read the FAQ, also I didn't pay attention so I almost posted my solution inside the image. Attach a document to your submission, that's private, a picture will show up in the submission gallery. BTW, you have 7 days left to submit, I submitted mine about 4 days ago, still pending review is rather odd given the fact I haven't seen many new ones show up in the gallery.

  •   •   almost 8 years ago

    Thanks, this avoids the public domain issue. However, the FAQ said the participant retains all IP but challenge rules also stated FTC has the nonexclusive right to use the solution worldwide royalty free. It is very unclear if this gives FTC the right to mandate a process solution without compensating the inventor. I am not a lawyer but I guess process patent is a very vague area. I am a proponent for loose patent and copyright protection so if my idea is too general to not deserve patent protection then it's still good.

    I think the review is only for gallery. Any submission before 1/17 will be accepted.

  • Manager   •   almost 8 years ago

    Hi David,

    Thanks for writing. First, only parts of the submission are displayed publicly in the Submission Gallery - the name, description, image(s), video URL (if provided - it's optional) and website URL (also optional). The Proposal uploaded on the "Enter a Submission" tab is not displayed publicly in the Submission Gallery.

    The Robocall Challenge is seeking a technological solution, and the FTC will not use any of the technological inventions submitted except to publicize the challenge and its winners. The agency may, nonetheless, consider any non-technological proposals, such as policy initiatives, in connection with its efforts to fight illegal robocalls.

    Please feel free to write us directly at support@challengepost.com if you have additional questions. Thank you.

    Best,
    Marny

  •   •   almost 8 years ago

    Hi Marny--

    That's good to hear. If that's the case, though, why is this clause in the Rules:

    "By entering the Submission to this Competition, Contestant grants to the Sponsor and the Administrator, and any third parties acting on behalf of the Sponsor and/or the Administrator, a non-exclusive, irrevocable, royalty-free and worldwide license to use the Submission, any information and content submitted by the Contestant, and any portion thereof, and to display the Solution name, text description, video, and images (but not the Proposal), on the Competition Website, during the Competition and for 36 months after its conclusion. Sponsor and the Administrator, and any third parties acting on their behalf, will also have the right to publicize Contestant’s name and, as applicable, the names of Contestant’s team members, Small Organization, or Large Organization that participated in the Submission (the “Contestant Names”) on the Competition Website, and in any media whatsoever, for advertising and publicity purposes relating to the Competition, during the Competition and for three (3) years thereafter. "

    I'm not a lawyer, but it looks like this means that ChallengePost, the FTC, and anyone else acting on their behalf
    has "irrevocable, royalty-free and worldwide license" to do with it what they will. Can you clarify this a bit?

    thanks,
    Randy

  •   •   almost 8 years ago

    I am not a lawyer but I do work on patents as an expert witness.

    The definition of 'publication' in patent law is very broad. It means any form of distribution to another party that is not covered by an explicit duty of confidentiality. That normally means your employer, other employees, the lawyers etc.

    Entering the idea in any competition would seem like a public disclosure to me.

    If I was an adverse party in a dispute I would probably argue that entering the idea constituted offering it as a product for sale since there is a prize of $50,000 here.

    As I said, I am not a lawyer but I would be completely surprised if any lawyer told you to go ahead and do it.

    What you could do is submit a provisional patent application. I have done that myself and it is not that hard. If you really have a novel idea then the $50K prize would be irrelevant. But the chances are much higher that you don't.

  •   •   almost 8 years ago

    Thanks, Phillip. That was very informative.

    So since the actual proposal is not accessible except for the challenge manager and judges, and that the challenge stated that the contestant retain the rights, this should not constitute as public disclosure until 4/15. Also, given that the public unveiling is by FTC, this should qualified as first art in patent defense, no? If the US government and this judging panel's opinion are not weighted enough then nothing is.

    I am still a little bother the lack of clarity in the rules that exclude specific mention of technical solution in royalty free usage. I am not a lawyer but I am assuming the usage FTC intended is for the actual materials submitted for the contest and NOT the intellectual properties contained within the submission.

    Whew, that's a lot of legal mind trip and my head is already spinning...

  •   •   almost 8 years ago

    I think as a bonus, FTC should offer automatic and fast track patent review for the winner. This does not cost taxpayers any money and it's something the winner will do anyway. That they did not also contributed to my initial skepticism that the FTC intended to buy any winning IP for just $50k.

  •   •   almost 8 years ago

    If you want patent protection it would seem to be a really bad idea to submit it in the competition without getting a provisional application in first. I have done that in the past and it took me about four hours to get through the USPTO process.

    The definition of 'publication' in patent terms is very broad.

  •   •   almost 8 years ago

    Thanks, Phillip. After spent some time learning more about provisional patent, I am not sure for anyone to spend the time and $125 to file a provisional patent application now makes any sense. I think the US government property interest clause is a very tricky area in this case. With all due respect to Marny, who has been very helpful in this forum, but her opinion is not official FTC statement. We are all here because we are interested in solving the robocall problem so if FTC wants to play hardball on the property interest clause based on the $50k prize money I don't think a provisional patent application, or even a full patent will help. Certainly that will not prevent me from submitting my idea.

    It seems like the best course of action is to wait until 3/31 to see if you are the winner and then hire a proper patent lawyer. The FTC is bound by the rules to not make public the winner until 4/15, which is kind of NDA, so that gives the winner some time to get an official position from FTC regarding IP in the winning proposal and file a proper patent application if allowed.

    Of course, this will all be so simple if FTC just offered fast track patent approval for the winner if the idea qualified because there is no way ANY clerk in the patent office will be more qualified than this judging panel and the FTC in deciding the patent worthiness of the winning proposal. This just makes so much sense and is win-win for everyone involved. Cost no taxpayer money, saves the winner very expensive and pointless patent lawyer fees, immediate IP clarification and transparency so everyone can get cracking to fix the robocall problem. Now we got conflicting statements in the official rules itself and with the property interest clause in patent law. The last thing we want is the winner locking in a legal fight with the FTC and regardless what happens after, everyone losses....

  •   •   almost 8 years ago

    The more I thought about it and the more this makes sense. It will be great publicity for challenge.gov if the winner is presented with not just the $50k prize money but also the latest US patent (assuming the winning proposal is patent worthy). Think about all the press this is going to get. $50k is not good copy when we have $300mln lotteries but the issuance of latest US patent as part of the prize right after the Appl-Samsung patent war, that sells eyeballs!

  • Manager   •   almost 8 years ago

    Hi all,

    The FTC will not license any technological solutions entered in the challenge to third parties. The FTC is working with one third party in connection with this challenge, ChallengePost. ChallengePost will have the right, on behalf of the FTC, to post public components of the submission (not the technical proposal) on the challenge website, access submissions to assist with evaluation, and help publicize contestant names in connection with the challenge.

    Best,
    Marny

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