Private Label Skin Care

[Marcio]

Hello,  my boyfriend makes bath and body products that he sells online and at craft fairs.  He developed a facial serum that is quite popular, and was approached by a spa owner who wants to offer it to his clientele via private label. The formula will be the same except for an additional ingredient or two, and my boyfriend will produce and package it.  I've told my boyfriend he needs to get a patent, and we're researching how to do that, but it is so overwhelming.  In the meantime, should he also have a private label agreement in place?  Should he apply for a trademark for his product name? Anything else to consider?  We don't have the money for a patent attorney so any advice or book/website recommendations would be greatly appreciated.

[Faris]

Hi there, You asked:

1. my boyfriend makes bath and body products that he sells online and at craft fairs.  He developed a facial serum that is quite popular, and was approached by a spa owner who wants to offer it to his clientele via private label. The formula will be the same except for an additional ingredient or two, and my boyfriend will produce and package it.  I've told my boyfriend he needs to get a patent, and we're researching how to do that, but it is so overwhelming.  

a) If a product(serum) has been on sale and/or has been advertised or sold more than one year BEFORE a patent will be applied for, it is deemed “prior art”(existing technology) therefore would not meet the “Novelty” requirement of what is patentable. Another requirement is that is be Useful and it be Nonobvious. Definition: http://www.nolo.com/dictionary/nonobviousness-term.html

However, in the case you’ve described the spa owner wants to add two additional ingredients thereby, “perhaps”, changing your boyfriend’s original serum(invention) to “possibly” cause it to conform of what is patentable if it fails to rise to that criteria now. So, a legal question to ask a patent attorney is whether or not by adding those two new ingredients(since the serum hasn’t been being sold or disclosed with them part of it) would it now meet the Novelty and NonObvious requirement ---therefore potentially be patentable?  Were it, he would be required to add the spa owner onto any applied for patent application as a “co-inventor.” Meaning, they both own equal Rights(unless a written agreement stipulates otherwise) issued under a patent. Hence best to have a working agreement in place BEFORE going much further. Read the follow patentability requirements, #s 1,2,3,4 and described further down the page: http://www.bitlaw.com/patent/requirements.html

Learn about “joint ownership” of patents(one problem with it is to realize is that other inventors that is, “co-inventors” have equal Rights to sell, license or transfer to whomever their percent of any patent that issues. In other words, they could hold the inventor hostage – not agreeing to license or sell the product to Y or Z or not to X country without the other patent holders agreement; though one doesn’t need anyone’s agreement “if” one jointly owner a patent. Hence the importance of having an agreement in place stipulated who owns what and what future financial/legal Rights in the product the other(s) will have: http://www.patent-ideas.com/patent-ownership/patent-ownership-basics.aspx

b) Usually one can find patent attorneys who’ll provide a 30mins free consultation. You call local patent attorneys to see who offers a free consultation. If the attorney says you could apply for a patent now that the serum has additional ingredients he(boyfriend) may have a “co-inventor” in tow as pertains to a patent. Now, as pertains to the business side of the venture that’s a whole different story. Written contracts would address that issue.  Speak to an attorney about this. c) Also, attorneys make the bulk of their monies writing patent and/or trademark applications and submitting them to the patent office. However, your boyfriend is not required to shell out the big bucks right off the bat because the patent office has an application any inventor can write and file for only $125 whose end result is to delay the formal patent writing/filing usually done by an attorney(called a Non Provisional Patent(Utility) Application. He could write and file a so-called “Provisional Application for Patent”. So while he’s visiting with a patent attorney to learn if the spa owner “must” be added as a “co-inventor”, your boyfriend could write and file only a PAP but likely he may need to add, if the attorney says so, the new “co-inventor” when the form asks for the name(es) of the inventor(s). As mentioned, speak to an attorney about that.  BUT, get a written business agreement written up for the current business goals – as separate from the patenting goals. Link: http://www.patent-ideas.com/patent-ownership/patent-ownership-basics.aspx

Your boyfriend might also order a Prior Art patent search for around $300 or less from a company specializing in searching for prior art(existing technology) and who uses a registered and licensed patent attorney to provide a “written” legal opinion on his/her  letterhead as to whether it is more likely patentable than not(as part of the fee). What happens when one uses a search firm as opposed to a patent attorney and, perhaps, one reason these firms are cheaper is because they sell no other services; just searches. “Patent Search International” in Maryland will do one for around $250 including sending you copies of any prior art patents it finds and a “written” legal opinion from a licensed and registered patent attorney. It takes about two or three weeks to get the results unless you let them know you're in a rush. If it turns out to be not patentable then your boyfriend would not waste money after having written and about to file a "Provisional Application for Patent” . It is as simple as writing up the formula or how to make and use the serum, then downloading two forms off the patent office website and mailing them in with his documents and a fee of $125 to the patent office(if his invention write-up is less than 50-pages - if more it costs more). Usually one, two, three or four pages is more the usual. The Provisional documents will not be read and examined, they'll be stamped and given a serial number/filing date.  

Have your boyfriend read this: http://www.uspto.gov/web/offices/pac/mpep/documents/0600_608_01.htm

If he chooses to write/file a "Provisional Application for Patent" and “if” it’s potentially patentable, he’ll download off the site www.uspto.gov a couple of Forms, fill them out, and enclose them and his write-up in an envelope with a check for $125 along with a stamped, self- addressed envelope(back to himself) listing on one side all documents being mailed. He then take that writeup and filled out patent forms(copy everything), to a US Post Office where he picks up an Express Mail envelope and label, fills the label out and pays a clerk who signs the label then gives your boyfriend a copy of the mailing label. From that point on, the formula or ingredient or product is in “patent pending” for one year. Before the year expires he must visit a patent attorney to have a "Non Provisional Patent(Utility) Application" written and filed(presuming the Search results indicated the invention was more likely patentable than not). At least a Provisional buys him a year to state his product is “patent pending.” http://www.uspto.gov/patents/resources/types/provapp.jsp

Now as to the patent office Forms to download:  

The first form is SB16 – three pages. Only page 1 and 2 are filled out and enclosed(page 3 is reading material): http://www.uspto.gov/forms/sb0016.pdf

The second form is SB17 – It consists of two pages. Fill out page 1. The second page is reading material): http://www.uspto.gov/forms/sb0017.pdf

2. In the meantime, should he also have a private label agreement in place?  

a) Definitely but keep reading. You'll find plenty of examples of Private Label agreements in Google. Be sure to use the search term sample Cosmetic Private Label agreements. 3. Should he apply for a trademark for his product name? Anything else to consider?  

a) Sure if it meets the criteria for what is trademarkable. The patent office web site explains what that is, just go to www.uspto.gov pick the Trademark section and learn about them. There’s also the concept of placing a TM above the last letter of the name to acquire it as a “Common Law” trade mark - that's free. Now, there are plenty of sites on the web who’ll draft written trademark agreements for him - they'll even send them to the patent office(takes about a year for them to issue) for less than $200 plus the Federal filing fee. As long as no one else is prior using that name in the same(cosmetic) invention field he would secure it in all fifty states. If someone has been using it in the cosmetic field prior to his filing, that owner has the Right to continue using it in the states he distributes/sells it in since it came before your boyfriend Federally field for the mark. What keeps marks alive is their usage. Go to the above web site, select the Trade Marks search area to do a free search on the name to see if anyone else owns it --- in the SAME CLASS as his would be in. Read the mark’s entire page and it will state the field. In other words, a hundred people could be using that name as long as none are using it in the costmetic field, it is likely okay(you'd need to consult an attorney). If one is – then you don’t get that name as long as the owner is actively using the name. If you can prove they no longer sell or distribute using that mark it would be DEAD(not ALIVE), so one let's the patent office know and proves it and likely eventually one would be awarded it. On the flip side, unless that name has become a Brand Name recognized as belonging only to one corporation, say --Coca-Cola ® - sparkling beverages --- or whatever they call it, then one could not aquire that name as it is associated only with the bottling company Coca-Cola. In your boyfriend’s case, let’s say that name belonged to a big time cosmetics company, likely he wouldn’t get it. However, he should check with a trademark attorney to be sure(usually a patent attorney who specializes in trade marks). 4. We don't have the money for a patent attorney so any advice or book/website recommendations would be greatly appreciated.

a) As I mentioned, I suspect he has the money to write/file for himself a Provisional Application. He merely writes up and describes his product in detail(that should be easy). He downloads off the patent office web site the above Forms. He makes out a check for $125. He includes a stamped/self-addressed postcard – takes them all down to his local US Post Office and mails to the patent office(address on bottom of SB16). After a postal clerk signs the Express Mail mailing label, the invention is in “patent pending” if only for one year. That buys him a year to make some money yet still plaster the term “patent pending” on advertising, mailing materials, and business correspondence. Before he exits the doors of the Post Office – his invention will be “patent pending” - if only for a year.  

As suggested, talk to a patent attorney about the additional two ingredients being added to see if those make any difference; specifically, to overcome prior art(lack of Novelty) of him having sold them already with his formula thereby potentially causing it to be non patentable. The above is not legal advice merely educational information to aid you to use the resources of the online patent office, a patent attorney, and a professional patent search company. Regards

Penny Ballou