Furniture Project IP

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Rachel Northey

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Apr 3, 2013, 12:42:24 PM4/3/13
to Justin Eichel, FYDP
Hi Justin, 

You had spoken to my group at the FYDP Symposium about patenting our idea. We have now had some time to discuss what we are interested in doing with the project and have met with the commercialization office on campus to start exploring our options. It turns out that because we are not planning on continuing studies at UW they are not really available to help us through the whole process. 

What we are thinking of doing at this point is filing a provisional patent and seeing if we can find a company that would be licensing our design from us. We also have to start a patent search to see if what we have already exists, it also may be possible that since we have been focusing on wood construction and furniture that we can't get any sort of patent because there is so much in the market already. 

You had mentioned that your patent agent (William? I'm not sure I have the name right) may be able to help us and give us some advice on what our options are. Can you provide me with a way to get in touch with him so we can try to pursue this avenue as well? 

Thank you, 
Rachel

--
Rachel Northey
4B Systems Design Engineering
University of Waterloo

Justin Eichel

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Apr 3, 2013, 1:19:29 PM4/3/13
to Wilfred So, FYDP, Rachel Northey
Hi Wilfred,
 
I am in contact with a fourth year systems design group that is interested in the possibility of filing a provisional patent. They were initially approached by the University of Waterloo to have their project patented, however, since they are not planning on continuing their studies with the university, that option is closed to them.
 
I was hoping that you could point them in the right direction as to what steps to take next. I have included their email to me below.
 
Thanks,
 
Justin

SO, WILFRED

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Apr 3, 2013, 1:31:08 PM4/3/13
to Justin Eichel, FYDP, Rachel Northey

Thanks Justin for the email.

 

Hi Rachel:

 

Good meeting you.

 

A few questions:

1.       Have you publicly disclosed your idea? If so, when was the first public disclosure?  If there has been a public disclosure, you have up until one year from the first public disclosure to file your patent applications in US and Canada.  If there has been no public disclosure, continue to keep it a secret until you get your patent pending status.  A public disclosure will prevent you from getting a patent in most countries around the world.

2.       If there has been no public disclosure yet, when do you plan to first disclose the idea?

3.       Do you have drawings/photos/diagrams of your project?  If so, please send them my way.

 

Let’s schedule a phone call this week and I can walk you through the patent application process and discuss your options. Hope to hear from you soon.

 

Take care,

Wilfred

 

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

____________

 

Blake, Cassels & Graydon LLP | Toronto
Tel: 416-863-2400  Fax: 416-863-2653
blakes.com | Twitter

 

Blake, Cassels & Graydon LLP | Barristers & Solicitors | Patent & Trade-mark Agents
This email communication is CONFIDENTIAL AND LEGALLY PRIVILEGED. If you are not the intended recipient, please notify me at the telephone number shown above or by return email and delete this communication and any copy immediately. Thank you.

 

L'information paraissant dans ce message électronique est CONFIDENTIELLE. Si ce message vous est parvenu par erreur, veuillez immédiatement m’en aviser par téléphone ou par courriel et en détruire toute copie. Merci.

 


SO, WILFRED

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Apr 5, 2013, 10:23:25 AM4/5/13
to Rachel Northey, mrs-fu...@googlegroups.com

Hi Rachel,

 

Please give me a call today if you can.  My number is 416-863-2425.  I like the reconfigurable advantage of the furniture system.  Since there has been a public disclosure, we should aim to file your patent application asap, and certainly within one year of March 12th.

 

Thanks,

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: denom...@gmail.com [mailto:denom...@gmail.com] On Behalf Of Rachel Northey
Sent: Friday, April 05, 2013 10:13 AM
To: mrs-fu...@googlegroups.com; SO, WILFRED
Subject: Re: Furniture Project IP

 

Hi Wilfred, 

 

Thanks for your help. We did have to disclose at our design symposium on March 15th and at the March Break Open house on March 12th. I think those are the only 2 events that were actually public disclosure. My understanding is that discussions and presentations in the classroom setting are not public disclosure. 

 

I have attached pictures of the product assembled, I also have CAD drawings if that would be useful for you. The three items pictured were all build using the same pieces, there are body pieces, legs/braces, and dowels to connect them. 

 

Rachel

 

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Mihika Kashyap

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Apr 8, 2013, 8:45:15 PM4/8/13
to mrs-fu...@googlegroups.com
Rachel, were you able to call him?

Mihika


On 2013-04-05, at 10:23 AM, "SO, WILFRED" <WILFR...@blakes.com> wrote:

Hi Rachel,
 
Please give me a call today if you can.  My number is 416-863-2425.  I like the reconfigurable advantage of the furniture system.  Since there has been a public disclosure, we should aim to file your patent application asap, and certainly within one year of March 12th.
 
Thanks,
 
Wilfred P. So
Patent Agent
From: denom...@gmail.com [mailto:denominated@gmail.com] On Behalf Of Rachel Northey

<image001.gif>

 

Blake, Cassels & Graydon LLP | Toronto
Tel: 416-863-2400  Fax: 416-863-2653
blakes.com | Twitter

 

Blake, Cassels & Graydon LLP | Barristers & Solicitors | Patent & Trade-mark Agents
This email communication is CONFIDENTIAL AND LEGALLY PRIVILEGED. If you are not the intended recipient, please notify me at the telephone number shown above or by return email and delete this communication and any copy immediately. Thank you.

 

L'information paraissant dans ce message électronique est CONFIDENTIELLE. Si ce message vous est parvenu par erreur, veuillez immédiatement m’en aviser par téléphone ou par courriel et en détruire toute copie. Merci.

 

 
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Rachel Northey
4B Systems Design Engineering
University of Waterloo

Rachel Northey

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Apr 9, 2013, 10:19:30 AM4/9/13
to mrs-fu...@googlegroups.com
I didn't call him, I missed this email, I can call him today. 

Rachel Northey

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Apr 9, 2013, 11:07:15 AM4/9/13
to mrs-fu...@googlegroups.com
Alright, made the phone call here are the details;

He is recommending that we file a US provisional patent by 1 year from the first time we talked about this project in class, that gives us a couple of months to pull something together. the cost for this is $6000. We could put it on some sort of payment plan but we would need $1000 up front. To do this we need some drawings and a write up of what it is. He thinks there are 3 ways to protect it, as a kit of pieces, as a final assembled design, and as a method of assembly. The method is probably not a useful thing to try to patent. 
This gives us 1 year to set up a business plan and start finding people who would license it. Starting in the US. 
If by the 1 year since our very first disclosure (approx. November  we think there is also a market in Canada then we should file here too, that's another $1200. 
1 year after we file for a provisional if we still are interested in pursuing this or have found a market we can update the application and file for a full patent. This would cost about $2500 just to file. 

SO, WILFRED

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Apr 9, 2013, 11:24:07 AM4/9/13
to Rachel Northey, mrs-fu...@googlegroups.com

Hi Rachel,

 

Glad we could talk.  I gave a patent talk to the SYDE 4th year class last year (Prof. Maud Gorbet’s class).  The slides are attached and provide tips for performing your own patent search and patenting the furniture system. 

 

As discussed, the cost would be $6,000 before tax, to prepare and file a U.S. provisional patent application.  The cost estimate assumes that you would be providing the drawings.  A U.S. provisional provides a patent pending status for one year.  During this one-year period, you can market and gauge the interest of the furniture system. 

 

If you wish to continue with the patent process, before the one-year expiry date, you will need to file a formal U.S. patent application.  For your future reference, the minimum estimated cost for filing a formal U.S. patent application is $2,500. 

 

To get started on the U.S. provisional application, we require a retainer of $1,000.  Feel free to contact me if you have further questions, and good luck on the final set of exams! J

 

Take care,

Wilfred

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: SO, WILFRED
Sent: Friday, April 05, 2013 10:23 AM
To: 'Rachel Northey'; mrs-fu...@googlegroups.com
Subject: RE: Furniture Project IP

 

Hi Rachel,

 

Please give me a call today if you can.  My number is 416-863-2425.  I like the reconfigurable advantage of the furniture system.  Since there has been a public disclosure, we should aim to file your patent application asap, and certainly within one year of March 12th.

 

Thanks,

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: denom...@gmail.com [mailto:denom...@gmail.com] On Behalf Of Rachel Northey


Sent: Friday, April 05, 2013 10:13 AM
To: mrs-fu...@googlegroups.com; SO, WILFRED

Subject: Re: Furniture Project IP

 

Hi Wilfred, 

 

Thanks for your help. We did have to disclose at our design symposium on March 15th and at the March Break Open house on March 12th. I think those are the only 2 events that were actually public disclosure. My understanding is that discussions and presentations in the classroom setting are not public disclosure. 

 

I have attached pictures of the product assembled, I also have CAD drawings if that would be useful for you. The three items pictured were all build using the same pieces, there are body pieces, legs/braces, and dowels to connect them. 

 

Rachel

On Wed, Apr 3, 2013 at 1:31 PM, SO, WILFRED <WILFR...@blakes.com> wrote:

Description: Description: Description: cid:image001.gif@01CE3514.60868610

 

Blake, Cassels & Graydon LLP | Toronto
Tel: 416-863-2400  Fax: 416-863-2653
blakes.com | Twitter

 

Blake, Cassels & Graydon LLP | Barristers & Solicitors | Patent & Trade-mark Agents
This email communication is CONFIDENTIAL AND LEGALLY PRIVILEGED. If you are not the intended recipient, please notify me at the telephone number shown above or by return email and delete this communication and any copy immediately. Thank you.

 

L'information paraissant dans ce message électronique est CONFIDENTIELLE. Si ce message vous est parvenu par erreur, veuillez immédiatement m’en aviser par téléphone ou par courriel et en détruire toute copie. Merci.

 

 

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Rachel Northey

SYDE_2012_presentation.pdf
SYDE_2012_presentation_part_2.pdf

SO, WILFRED

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Apr 16, 2013, 1:10:43 PM4/16/13
to Rachel Northey, mrs-fu...@googlegroups.com

Hi Rachel,

 

Hope studying is going well.  Just following up with the below email.  Feel free to email or call if you have any questions.

 

Take care,

Wilfred

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: SO, WILFRED
Sent: Tuesday, April 09, 2013 11:24 AM
To: 'Rachel Northey'; 'mrs-fu...@googlegroups.com'
Subject: RE: Furniture Project IP

 

Hi Rachel,

 

Glad we could talk.  I gave a patent talk to the SYDE 4th year class last year (Prof. Maud Gorbet’s class).  The slides are attached and provide tips for performing your own patent search and patenting the furniture system. 

 

As discussed, the cost would be $6,000 before tax, to prepare and file a U.S. provisional patent application.  The cost estimate assumes that you would be providing the drawings.  A U.S. provisional provides a patent pending status for one year.  During this one-year period, you can market and gauge the interest of the furniture system. 

 

If you wish to continue with the patent process, before the one-year expiry date, you will need to file a formal U.S. patent application.  For your future reference, the minimum estimated cost for filing a formal U.S. patent application is $2,500. 

 

To get started on the U.S. provisional application, we require a retainer of $1,000.  Feel free to contact me if you have further questions, and good luck on the final set of exams! J

 

Take care,

Wilfred

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: SO, WILFRED

Sent: Friday, April 05, 2013 10:23 AM
To: 'Rachel Northey'; mrs-fu...@googlegroups.com
Subject: RE: Furniture Project IP

 

Hi Rachel,

 

Please give me a call today if you can.  My number is 416-863-2425.  I like the reconfigurable advantage of the furniture system.  Since there has been a public disclosure, we should aim to file your patent application asap, and certainly within one year of March 12th.

 

Thanks,

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: denom...@gmail.com [mailto:denom...@gmail.com] On Behalf Of Rachel Northey


Sent: Friday, April 05, 2013 10:13 AM
To: mrs-fu...@googlegroups.com; SO, WILFRED

Subject: Re: Furniture Project IP

 

Hi Wilfred, 

 

Thanks for your help. We did have to disclose at our design symposium on March 15th and at the March Break Open house on March 12th. I think those are the only 2 events that were actually public disclosure. My understanding is that discussions and presentations in the classroom setting are not public disclosure. 

 

I have attached pictures of the product assembled, I also have CAD drawings if that would be useful for you. The three items pictured were all build using the same pieces, there are body pieces, legs/braces, and dowels to connect them. 

 

Rachel

On Wed, Apr 3, 2013 at 1:31 PM, SO, WILFRED <WILFR...@blakes.com> wrote:

Description: Description: Description: cid:image001.gif@01CE3514.60868610

 

Blake, Cassels & Graydon LLP | Toronto

 

Blake, Cassels & Graydon LLP | Barristers & Solicitors | Patent & Trade-mark Agents
This email communication is CONFIDENTIAL AND LEGALLY PRIVILEGED. If you are not the intended recipient, please notify me at the telephone number shown above or by return email and delete this communication and any copy immediately. Thank you.

 

L'information paraissant dans ce message électronique est CONFIDENTIELLE. Si ce message vous est parvenu par erreur, veuillez immédiatement m’en aviser par téléphone ou par courriel et en détruire toute copie. Merci.

 

 

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Rachel Northey

Rachel Northey

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Apr 20, 2013, 8:49:53 AM4/20/13
to mrs-fu...@googlegroups.com
Ladies, 

Any thoughts on this one? 

Rachel
image001.gif

Suhaila B

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Apr 20, 2013, 4:57:28 PM4/20/13
to mrs-fu...@googlegroups.com
Hmmm I'm feeling that $6000 for a provisional is a bit much?
Also are we planning on getting in touch with US companies or Canadian ones? Does it make sense to get a provisional in canada and try this market first?


On Saturday, April 20, 2013, Rachel Northey wrote:
Ladies, 

Any thoughts on this one? 

Rachel

On Tue, Apr 16, 2013 at 1:10 PM, SO, WILFRED <WILFR...@blakes.com> wrote:

Hi Rachel,

 

Hope studying is going well.  Just following up with the below email.  Feel free to email or call if you have any questions.

 

Take care,

Wilfred

 

Wilfred P. So

Patent Agent

wilfr...@blakes.com

Dir: 416-863-2425

From: SO, WILFRED
Sent: Tuesday, April 09, 2013 11:24 AM


To: 'Rachel Northey'; 'mrs-fu...@googlegroups.com'
Subject: RE: Furniture Project IP

 

Hi Rachel,

 

Glad we could talk.  I gave a patent talk to the SYDE 4th year class last year (Prof. Maud Gorbet’s class).  The slides are attached and provide tips for performing your own patent search and patenting the furniture system. 

 

As discussed, the cost would be $6,000 before tax, to prepare and file a U.S. provisional patent application.  The cost estimate assumes that you would be providing the drawings.  A U.S. provisional provides a patent pending status for one year.  During this one-year period, you can market and gauge the interest of the furniture system. 

 

If you wish to continue with the patent process, before the one-year expiry date, you will need to file a formal U.S. patent application.  For your future reference, the minimum estimated

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Suhaila

Rachel Northey

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Apr 22, 2013, 9:40:22 AM4/22/13
to mrs-fu...@googlegroups.com
My understanding is that there isn't really a Canadian provisional that we can apply for and Wilfred seems to think that starting in the US is the way to go. It does seems a little pricey but he says its a lot cheaper than other projects because it's such a simple design and we have already done a lot of the leg work. 

Rachel

Mihika Kashyap

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Apr 22, 2013, 9:59:22 AM4/22/13
to mrs-fu...@googlegroups.com
What does the provisional patent cover? This is the one where we have up until 1 year to license it right?

I'm also thinking that $6000 is a lot. But I suppose we don't have many other options either. 

Sent from my iPhone

Rachel Northey

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Apr 22, 2013, 10:04:20 AM4/22/13
to mrs-fu...@googlegroups.com
The provisional gives us a filing date for 1 year so that we can try and find people who could be interested, we would probably still have to file for a patent once we find someone who wants to license it. 

What I'm seeing as the option is either we spend the $6000 to get the provisional and see what we can do in the next couple months to figure out if we pursue something in Canada or the US. OR we just let it end here. 

Rachel
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