BizMorph

Secrets that they will never tell you about getting a patent

Why applying for  a patent is like being a defendant in a court case

Introduction

In this talk I’m going to cover materials that are not often dealt with in discussions of what it takes to get a patent.  Applying for a patent and all the work that entails is the first step in a long process.  What I’m going go focus on is what happens 1.5 or more years AFTER your patent application is filed,  a process called  Patent Prosecution.  It is in Patent Prosecution you find out how good a job you and your attorney did in preparing the application and also encounter the luck of the draw as you find out the prejudices and peculiarities of the person who decides if you will get that patent,  The Patent Examiner. 

To get a patent you have to survive a trial

I liken the patent prosecution to a trial.  While you are not in a courtroom, all the players are there.  You are the defendant, your attorney is the defense and the examiner fills the roles  prosecutor , judge and jury.  Because the examiner is so important it is a good idea to find out as much about them as possible and to establish a good relationship with him or her

Why apply for a patent?

Applying for a patent is confusing, time consuming and expensive. Why should you do it?

Before you involve yourself in this process you should know why you are doing it.  A patent can be a very valuable asset of your business or it may be totally worthless.  Some are fond of quoting statistics that show that only 5% of patents are commercialized, but as you will see that is an oversimplification of the situation.  Many patents are applied for with no intent to commercialize them at all. 

Are there any other alternatives?

• o    Public  Disclosure- A patent is not your only option.  . If you disclose your invention publicly, no one can patent it.  Of course you then forgo the monopoly a  patent would give you
• o  Trade Secrets-If you keep the invention as a trade secret, you can save on patent costs, but you have to actively protect your invention from disclosure.
• o    Copyright-   Sometimes a copyright can substitute for a patent as in some cases involving computer software.  Public Disclosure
• o    Provisional Patents -And  a provisional patent can buy you 1 year  to raise the funds for a non-provisional application

Patentability  and  Freedom to use

When you consider a patent you should have two main concerns.  Patentability (can I get a patent on this invention) and Freedom to Use (does someone else already have a patent on this invention).

Preparing your Case

Since you are preparing for a trial you  and your  attorney should prepare your case as carefully as if you were going to court for any other purpose.  Your attorney will of course prepare the case which in this situation means draft a patent application.  But the application the attorney will draft will be built  almost entirely from what you tell him or her.   The attorney is an expert on the law and may have some knowledge of the technology on which your  invention is based.  But YOU ARE THE EXPERT ON YOUR INVENTION.  It is up to you to tell the attorney in  your words or better in a carefully prepared invention report, what your invention is about and most importantly  what its Novel Inventive Features are.

Finding the Novel Inventive Features

The novel inventive features of a patent are what patent claims are written on and what court battles are fought around.  I’ve written a blog article specifically on what they are[1],  but for the purpose of this article we can simply say that they are those elements of your invention that distinguish it from the inve ntions of others , the so called “Prior Art”.

 Identifying the Closest Prior Art

Prior Art is anything that was “known” in the public domain before your invention was made.  It includes  patents, articles, objects for sale, in any language and in any country.  While it is possible that the prior art that invalidates your invention is in an obscure article in Tajikistani,  its unlikely that such an article will be found by a patent examiner.

 Most citations that I have seen in patent office actions in  obtaining 35 patents and in representing inventors for 5 years have been patents,  and usually US patents.  Sometimes a European patent will be cited and rarely one from Japan.  There is a good reason for this.  Most inventors from other countries will also file their patent application in the United States.

Working with  your Attorney

o     Reviewing the claims with your patent attorney or agent

In working with your attorney it is very important that the most significant feature of your invention appear in the claims.  Drafting of patent claims is a high art , the province of attorneys, and is not going to be covered here.  The wording of the claims is up to your patent attorney, the content of the claims is largely up to what you tell him or her about your invention. 

There are many strategies attorneys use  in writing claims.  A good attorney will know most of them.  You should ask your attorney what the strategy will be.  For example, many attorneys write claims very broadly , knowing the patent office will object to the breadth with the intention of falling back to a more defensible position.  Its very important that this core position is what you want defended.  I have seen far too much time , effort and money expended by inventors and attorneys defending claims that were not really central to the clients business strategy

Another classic mistake is having the attorney write claims that do not protect the most novel features of the invention.  Frequently an attorney and inventor who do not know each other well will write claims which simply describe the invention.  Since most inventions are made up of known and unknown components, such a strategy is often rejected by the patent office as an “obvious combination” of known features.  The way to defeat such arguments is to have patents which contain either unknown features, or unknown , non-obvious combinations of features, preferably  both.

Another strategy often used when an invention is similar to the prior art is to define it by its range of operating parameters.  For example a hammer is a well known object which cannot be patented.  However , if  a standard hammer is used under conditions of extreme heat or cold it my not work.  A hammer which will stand up to such conditions can be patented.

è    An Invention must be Novel, Useful and Un-obvious

• What does that Mean?

If something is new it is considered Novel, whether its useful is also a pretty straight forward concept.  But the idea of Obviousness is something quite different.  It is this concept about which most patent arguments including patent examination and court battles over patent infringement are fought.  In patent law one basically compares an invention to what could be created by someone “skilled in the art”.  That is the USPTO does not just compare your invention to someone elses and ask if they are the same.  The test of obviousness  is much tougher than that

• The straw man

The obviousness test is based on the “strawman”  who is someone who not only is skilled in whatever field the invention is about but also has at hand every thing written anywhere in the world by anyone prior to your invention.  That means in principal , your invention could be ruled obvious  due to a publication written in an obscure journal in Uzbekistan. 

While that is the letter of the  law, in practice the USPTO almost always tests your invention against other patents usually US patents but sometimes foreign ones particularly European.   However, if someone else, such as a competitor happens to be involved, its possible that obscure foreign journal article might surface.  I once had a situation where I had to get such an article translated from the  Swedish   In our patent search business we let the client determine the worldwide scope of our search.  If we are asked to search Uzbek journals we will (for a big extra fee).

è   Finding the Un-obvious features of your invention

Your role as inventor, in interaction with your attorney and others who might help you such as AlaCarte, is to identify  those features of your invention which you know are most likely to be un-obvious. 

The easiest way to find those features is in two steps.

1.     First List all the features of the patent- Those that are known (such as those already part of other inventions)  and those that are unknown.  List them in one column on the left side of a piece of paper or  a spreadsheet.

2.     On the columns to the right side of each feature, note if you have ever seen it anywhere else in products or in the literature.  Thus if your invention is a Widget,  and while you have seen many widgets every widget you have ever seen or heard of was green , your list might  look like the table below

Feature	Known	Unknown
o    Color of Widget	o    Green	o    Yellow

In the example above your patent claim might be for a Yellow widget.

è    Are all the claims supported in the body?

If you ever feel like testing your attorney’s knowledge ask him or her  how they would deal with a “No-Antecedent Basis”  rejection by the patent office.  This  rejection is far more common than it ought to be.  What it means, translated from legalese, is that a patent claim is not supported in the body of the patent (at least the examiner couldn’t find the supporting information).

 Often this is an attorney error, but its one you can help to avoid.  When your attorney gives you the draft application to review before filing, check each claim carefully to see if there is something in the body that relates to it.  Often an attorney will throw in a bunch of extra claims for strategic reasons and then not check to see if they are supported in the body.  This mistake costs you money in the prosecution phase when the claim must be reworded or deleted as the body  of a patent cannot be changed in prosecution (except by spending even more money filing what is called a Continuation in Part or CIP).

The Patent Process

Getting a patent is not an overnight activity.  From application to issuance usually takes at least  3 years and often longer.  The process can be extended if you file a provisional application first (add 1 year) and by the time spent in  each of the  patent stages.  Office Actions take place any time after the application is published which works out to about 2 years as shown below.

Process Step	Duration (yrs)	Elapsed Time (yrs)
Search	0.25	0.25
Draft and file Application	.33	0.58
Wait for Publication (1.5yrs+)	1.5	2.08
Office Actions (Prosecution)	.5	2.58
5) Grant and Payment	.1	3.0
6)Afterward Defense/Offense/Maintenance	17	20

Patent Searches

è    Why Search

           What happens if you don’t do a  search?

People who decide not to search for prior art are taking a big risk.  There behavior reminds me of the Fram Oil Filter add where the mechanic says " you can pay me now, or pay me later".  If you don't search the patent application that is written on your invention may be easily dismissed by the first office action that occurs when the examiner finds prior art that conflicts with your invention.  If you had known about that art in advance your attorney could have adjusted your claims to go around it. (See The Patent Mine Field) article in this Blog.

  Not only will you be spending money on unnecessary legal fees but it may not be possible to rescue your application.  This is true because while patent claims can be adjusted in a prosecution, the body of a patent may not.  This was exactly the situation when I was called in on a case where a search had not been made.  The patent claims did not contain the inventors most important and defensible ideas and it was not possible to add them in prosecution so the whole patent application had to be re-written.  Essentially the inventor had to pay twice for his patent application.

·            Doing your own searches

Many inventors seek to save money by doing their own searches.  But, unless they are very familiar with how patents work, those searches may not do them much good.  Inventors are usually looking for something that looks or works just like their invention. 

 However, that is not the way the patent system works.  Patents are based on claims addressed to Novel Inventive features.  And features from several different patents can be combined in an "Obvious Combination" argument by the examiner.  Often inventors are stunned by the patents an examiner chooses to cite against them for this very reason.  The note that the "prior art"  doesn't look or work at all like their invention. Unfortunately  that is no defense.  If the combination of "Obvious"  elements from other patents can be shown to contain the Novel Inventive Features described in the patent claims, their application will be thrown out.

  At AlaCarte we think like and search like the USPTO and for that reason we are more likely to find the kind of prior art the examiner will cite (that doesn't mean however, we will always find it.  Examiners are all unique human beings with their own way of thinking and no one can predict exactly what they will do.

è   Where to Search

·    Patent Classes

We search patents at AlaCarte using patent classes. Thats the way the USPTO does it.  You can access the USPTO class system from their website using this link -US PTO Classification System.

Most people find the system quite complex and difficult to use.  It takes a long time for a novice to get use to it.  One way to start is to take a look at a patent of interest such as one of your own and look for the field where the Primary US class is listed.  Then go to the classification system  using the above link and see what it tells you about that class.  Sometimes you will be very surprised as to how the patent office classifies  your invention. Note that the USPTO often looks at and classifies a patent in more than one class.  

To  further complicate the situation the world patent office uses a completely different system.  You can also find the primary world patent class listed on most US Patents.  A thorough discussion of patent classes and how to use them is beyond the scope of this article.

è    Types of Searches

·    Fully Electronic

If you search the web you will find some patent searches offered at very low cost.  Often these searches are done completely with software.   While all searchers use some electronic searching in their work, a fully electronic search that actually produces useful results requires a level of artificial intelligence that I at least have not seen anywhere.  If you order a fully electronic search you will either get a very long list of patents to go through yourself or a shorter list which may be missing very important elements.  You probably can do as well with Google Patents, Free Patents Online or many of the other free services as by signing up for one of these searches.

·     Manual

In the days before computers, patent searching consisted of pouring  through drawers of patents in your local library or in the patent office in Washington.  This method was tedious and time consuming but had the advantage that a human being, particularly one "skilled in the art"  can recognize the importance of  a patent claim that no computer currently can.  Hardly anyone searches this way anymore.  Because they are so labor intensive, such searches can be very expensive.

·     Hybrid

Most searchers including AlaCarte use a hybrid combination of  manual and electronic techniques.  You can find a complete description of how AlaCarte searches on our website  (AlaCarte Searches).  The simplest way to describe how we search is that we select a large group of patents which  fit a profile,  reduce this group by wholly electronic sorting and then use two steps of human sorting:  A quick relevance scan and a finally a detailed read of the most significant patents.  We feel this system offers the best combination of  Quality and price.

The Patent  Application

Once a patent search is completed the next step is often to have a patent application drafted by an attorney or agent.  We strongly recommend that the inventor prepare an invention report first before contacting the attorney so as to save costly attorney  time in interviews.  Sometimes a attorney will ask the inventor to prepare an invention report.  At my former job in a Fortune 500 company, it was a requirement that the inventor prepare such a report before contacting the company attorney.  The sections of a typical patent are listed below.  They are also the sections of an Invention Report.  If you want help preparing an invention report checkout this link (Invention Reports). 

I'm only covering this section briefly because I want to focus on what happens AFTER your patent application is filed and is ready for examination.  That examination will start with and focus almost entirely on the Claims.  Its not that the other section of the patent application are unimportant,  but they play mostly a supporting role in patent prosecutions.

• Abstract
  
• Background: Prior Art
  
• Description of the Invention
  
• Figures
  
• Claims

Office Actions (Prosecution)

After about 18 months your patent application will be published on the USPTO website.  Shortly thereafter your attorney will receive the first "Office Action"  from the USPTO.  Make sure your attorney knows to inform you as soon as an office action arrives  as the clock then starts running and you have a limited time to respond or your patent application will be automatically abandoned. I have 35 patents and I have never had one that didn't have at least one office action.  An initial rejection is pro-forma for the patent office.  

The office  action will be written in legalese and may be entirely unintelligible to you.  Your attorney should explain it to you.  Leaving out boilerplate the office action will be a list of rejections of one or more of your claims on various grounds such as [ Claims 1-4 are rejected as being taught by US 1,234,567 by Smith and Jones (inventors).  Claim 5 is rejected as having "No Antecedent Basis".  Claims 9-14 are rejected as being too vague etc.etc., Claims 15-19 are reject as being taught by Rogers   (US 9,876,543) in light of Smith and Jones)

The first thing to find out is:  Are all my claims rejected or only some of them?  This will be very important in considering your strategy as to what to do next.  The next thing to find out is what patents (or other prior art) are being cited against you.  In the above example its two patents by Smith and Jones, and Rogers. 

 You should get copies of each of those patents.  Then look carefully at the sections the examiner cites against you.  Your attorney should offer an option on the rejections but you are the expert on the technology , not the attorney.  Often examiners are miles off in what they cite, but sometimes they find something  that is right on the money.  Tell your attorney the most significant differnces you see between what the examiner cites and what your invention is.  Remember here its the claims that count.  Even if your widget looks completely different from the cited art,  if the feature the examiner cites is the same in the claims of  both the art and your application thats what counts.

Parts of an Invention

Every invention combines known and unknown features.  The prior art consists of everything known before your invention.  It includes materials that are patented where the patents are in force and materials in the public domain because they were never patented or the patents on them  have expired. You can get a patent that is an improvement of someone else's  invention, but if that patent is still in force you may have to pay royalties to the inventor who owns it.

   Prior Art

•    In Public Domain
•    Property of others

Novel Inventive Features

We have spoken about Novel Inventive Features before in this article and elsewhere on this blog.  Its in the patent prosecution that NIF's are really significant.  The features that the inventor and attorney propose in the patent claims are judged by the examiner against the obviousness standard.  The examiner will try to prove by citing the prior art that the NIFs were known or could have been easily deduced by the strawman (skilled in the art).  Here the role of the examiner as both prosecutor and judge causes problems.

  

The Opposing Witnesses

As in a trial there are witnesses for both sides.  The opposing witnesses are those inventors who have created the prior art that is being cited against you.  They are represented in proxy by the examiner who will use their work against your invention in several different ways:

Obvious Combinations

One tactic that often surprises inventors is the "Obvious Combination" argument where the examiner takes claims from two or more other patents and makes the arguement that they form an "obvious combination"  which adds up to your patent.  There is a classic legal precident in this space involving a road building machine which dispensed tar and gravel and also rolled those substances into pavement  doing the work formerly done by 3 machines with one.  This  patent was ruled invalid with the argument that the invention was simply the combination of three known techniques in a common platform with nothing new about them.  Obvious combination arguements can be defeated in two ways

1. By showing that one of the elements in the combination is not known in the art
2. By showing that the combination is not obvious because it results in an unexpected result.

For example in  the paving machine invention, if the machine did something different because the three machines were used together such as made stronger pavement, laid pavement faster or cheaper or whatever and that difference could not be argued to be "obvious"  to the strawman skilled in the art, then the obvious combination could be broken

.
Unpleasant Surprises

   The luck of the draw-- Your examiner

Examiner’s motivation

If an examiner gets it into his/her head that your idea is obvious, its hard to dislodge that with any argument.  Its here that the skill of your attorney is most important.  You need lots of ammunition and skill in assessing the psychology of the situation.  For example, one technique I have seen used successfully by some attorneys is what is called the "Rabbit Garden".  In that technique the attorney deliberately creates some weak claims for the examiner to disallow so that he will leave the strong claims behind.  Cleaver attorneys all have their own methods and some are familiar with the examiners.  This is the attorneys province but you should be kept informed of and approve of strategies that are used to make sure they align with your own.  Claims that are well crafted in the first place and take into account known prior art make it less likely that an examiner will make an obviousness argument using that art against you.

 Rabbits out of the Hat-- Second attacks

Sometimes, Unfortunately an examiner decides to play hardball with an inventor.  I've seen this happen a few times to some unfortunates.  In this situation after the inventors attorney successfully defeats the examiners argument that the prior art he cited in the last office action does not block the inventors claims, the examiner then reaches into his grab bag and pulls out a "surprise witness"  a completely different patent that he never cited before. 

 Its hard to defend against such attacks particularly if the patent cited is highly irrelevant.  In cases like this you might want to talk to your attorney to see if another examiner can be assigned to your case.  I haven't seen this done successfully but its worth a try.  This scenario is more likely  to happen if you haven't done a prior art search or the one that was done was poor quality leaving lots of relevant prior art around that you and your attorney have never seen.  If you have seen most of the relevant prior art before its much more likely that you will be able to prepare a good defense to it. 

Three Strikes

In patent prosecution you and your attorney get three tries to convince the examiner to accept at least some of your claims.  Each time an office action is filed you get three tries to get the examiner to accept it.  You have 1-6 months to reply ( see this link to Brown and Michaels for details).  Its important that you do reply in time because if you do not your application will be marked Abandoned and you will loose all the time and money you spent on it.

First Rejection

In the first rejection the examiner shows at least some of the cards in his/her hand.  You will learn for the first time which of the claims have been accepted,  which rejected and one what grounds. You will also learn which prior art patents are cited against your invention.  Here you get to make your first strategic decision.  If some of the claims are accepted and some rejected ask yourself how important the rejected claims are.  You can stop the prosecution right here and accept the claims the examiner allows and get your patent without paying any more attorney fees (you will still have to pay patent office fees). 

 If however, all the claims are rejected or the most important ones, you have no choice but to fight.  You can challenge the examiners arguments,  or reword your claims to clarify the differences  between what the examiner says and what you think is the truth.  You can provide arguments as to why a combination is not obvious by citing synergies that may not have been mentioned.  One thing to be careful of here is that while claims can be amended in prosecution the patent body may not be.  So any new or amended claims must be supportable by something in the body or you will risk the dreaded "no antecedent basis"  rejection.

Second Office Action

The second office action tells you how successful you and your attorney have been in responding to the examiners rejections.  Sometimes the examiner will go along with our new arguments and claim revisions and sometimes not.  If at least some of your claims are now accepted you may want to revisit the question about whether the claims that are allowed are now enough for you to take your patent and run.  If your claims are still rejected you need to know why.  Did the examiner simply refuse to be convinced by your flashy new arguments or did he Pull a Rabbit out of his hat (see previous section)

Final Rejection

If you have not yet convinced the examiner to accept at least some of your claims or if you are fighting to get more approved  than have been allowed so far you may get the to the third and final office action.  If your claims are not accepted by now you will get a FINAL REJECTION.  

At this point you are done (sort of).  You do have the right of Appeal.  From what I'm told this is VERY expensive and seldom used unless the patent and the claims you are trying to get accepted are potentially very valuable.  To go to appeal you need deep pockets and lots of time.  If you want to carry on-- consult a good attorney and GOOD LUCK.

 Afterward

You might think that after your patent is granted that you would be done with the patent office for a while but you would be wrong.  

Maintenance Fees

You still have to pay the government fees for "maintenance"  on a regular basis starting with your "issuance fee"  and continuing for the life of the patent.  If you have several patents and particularly foreign patents those fees can add up quickly.  This is one reason that many patents are abandoned after just a few years.  Its amazing how much free IP there is out there due to these fees.  Of course if your invention is making lots of money and you have competitors who would love to grab a piece of your market you will be happy to pay the fees. 

Interference and Defense

Again if your invention is valuable you may also have to defend it against infringers.  Just because you have a patent doesn't mean that others are prevented from copying your invention.  It just means that you can get the courts to stop them from making it (If you find out about them).

There are firms whose entire business is seeking out these infringers and threating them with lawsuits to cease and desist.  Sometimes you can force the infringers to stop or collect royalties from them due you but in other cases the infringers have an army of attorneys on staff and find it less expensive to fight you in court forever than to pay you anything. The right approach here often depends on economics and is beyond the scope of this monograph.

Another unpleasant surprise that may await you is that someone may sue to have your patent declared invalid asserting it infringes their patent.  They may be owners of one of the patents the examiner cited against you who don't agree with his/her decision, but more often they are owners of one of those patents overlooked by both you and the examiner.  Persons "skilled in the art"  have a better idea of the technology in their field than most examiners.  This by the way is another reason to do a good patent search in the first place.

Trolls and Anti-Trolls

Trolls

There are some less than scrupulous individuals who take advantage of the patent system to essentially extort money form unsuspecting inventors.  These "Patent Trolls"  file or purchase patents with no intention of ever commercializing them.  Instead they sit quietly waiting for someone else to commercialize something similar to their invention (hopefully a company with deep pockets) and then  they pop out of hiding with a letter from an attorney threating suit, hoping to get the inventor to pay royalties for the use of their invention which is often only peripherally related to the invention you patented.  A troll can also try to get your patent ruled invalid.  The best protections from Trolls are a good search in the first place and a good attorney who knows how to defend you from their attacks.

Anti Trolls

Some large companies, having had quite enough of the trolls have banded together to buy rights to patents that might someday pose a problem for them.  One of our clients at ITTr is an Anti-Troll pool.  These companies buy the rights to pools of patents from their inventors  with the only stipulation that the inventors may not sue members of the pool.  Inventors are free to commercialize their inventions  , they just may not stop a pool member from practicing it

Assertion and Offense

There are other ways to use your patent.  You can look for companies that are using it without permission.  This is the Troll strategy  except that unlike the trolls you may be using it to defend an invention you are practicing.  Not all competitors may be visible to you especially if they are using your invention in a field where you are not.  Often inventions have uses unsuspected by their inventors.  This licensing for non-core uses is one of the things our ITTr sister company is involved in.  While ITTr doesn't seek out infringers for clients, there are companies that do.  Ask us and we can recommend some.

Resources

There are many resources available to inventors.  Your should start with the US Patent Office          website .  But as well as their many services you can get easier to use searching tools and features  at Free Patents Online  and Google patents  .  If you are on LinkedIn you can join one of the many groups involved with patents such as the Patent and Intellectual Property group.  For Blogs dealing with patent law checkout "Everything Under the Sun Made by Man"  which is Russ Krajec's excellent blog.  You can find a link to it in the blog list in this article.  

 

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[1] Novel Inventive Features

Answers to 10 Common Patent Questions - Audio Version

This audio file Download FreeAnswerstoPatentQuestionscontains the same information that is posted as text on the AlaCarte Patents website.  Its about 10 minutes long.  If after hearing it, you would like  the transcript complete with all the hyperlinks plus the Free patent startup kit, just log on to the AlaCarte site click on the big blue button and fill in your name and we will send you to the text copy with a link to the Patent Startup Kit.

Dick Blazey

Free Answers to Your Patent Questions

In my business I often work with new inventors who are very unfamiliar with the patent process and  often ask the same questions.  Also the patent world is becoming more complex every day even to those of us who work there on a daily basis.

  To help guide new inventors through what I am starting to think of as"  The Patent Jungle", 

 I have begun a free service on my website AlaCarte Patent Services.  Anyone who goes to the website, clicks the link and puts in their email address is connected with a FAQ of commonly asked questions.  In addition to the FAQ there is a window for readers to send me their own questions.  

Besides that, the website also offers FREE an inventors startup kit which describes the patent process and gives the reader useful resources to draw upon.  Please try it out and tell me what you think.

Why do you want a patent?

First of all , ask your self this question. There is no question that the patent process is long daunting to many and expensive. While there are many good reasons for applying for a patent and there are also many myths and untruths. There are also times when you should not apply for a patent but do something else such as disclose it or keep it secret.

 Reasons for Applying for a Patent

•  Protecting your invention from unfair competition

 You spent a lot of time and money developing your idea. If its a good idea and you eventually commercialize it yourself you will attract competitors. If those competitiors can simply copy what you did without putting in the same time or money they will have a substantial competitve advantage.

 They can make a "me too" knockoff of your invention ,cut the price and drive you out of business. against them. Of course there are people and places that ignore patents (China being one wll known site), but then a patent can prevent goods made in one of these patent free safe havens from being imported into your marketplace.       

• Satisfying your Investors.

If you are forming a business to sell your invention you may be getting capital from outside investors. Often those investors what your business to establish saleable assetsto increase its value. A patent is such an asset. If your business is succesful the patentwill appreciate substantially in value and can be sold with the business if it is spun off.

• Keeping someone else from patenting your idea and shutting you down                            

  
This reason is something inventors rarely think about , but it happens often enough.If you don't patent your idea, and go to market with it, someone else may patent the idea.If they can show they invented it before your invention was in the market they can get apatent and threaten to shut you down unless you pay them royalties. This is the strategy employed by so called "Patent Trolls" . The trolls get patent they have no intent ofcommercializing and wait for someone else to do so. Then they pounce and demandmoney. You don't have to patent your idea to defend against trolls, you can also"Disclose" it. 

Reasons for Not applying for a patent
  

•    Your idea isn't patentable

If you do a good patent search you may find out your idea has already been patented by someone else- In that case you cannot patent your idea and you may owe the other inventor a royalty if you try to market your invention and they find out about. Often you may find your invention was patented years ago and the patent has already expired or the invention was disclosed by its inventor or offered for sale without a patent. Such an idea is "in the public domain". You can make the item without running afoul of someone's patent , but so can everyone else. In this case its smart to look to improvements you are making over the prior art and file patent applications on them.

• You have no intention of marketing or selling your invention-

Sometimes people want to offer their inventions to the community. This is a common strategy in the software business where the "Open Standards" movement encourages it. Important software systems like Linux fall into this category. In that case, however, while you should not patent your invention you should disclose it publicly so that no one else may patent it and deprive the community of its use.

• Your invention can be protected by keeping it as a Trade Secret

Coca Cola has protected their formula for over 100 years and no one has ever been able to figure it our. If you have an invention that is not subject to reverse engineering you can follow Coke's example. However, such instances are rare. Also you must actively guard your trade secret or you will loose the rights to it. For example you need to execute agreements with your employees and vendors to keep the key information secret.

• Your idea is protectable by Copyright or Trademark, or Design Patent

Not all ideas are patentable. You can't patent a novel a movie and much software code. However all of these items are protectable by Copyright. Copyrights are easier and less expensive to get than patents and they last longer. So if you are the creator of the next "Mickey Mouse" do as Disney does and copyright it. Simiarly a catch phrase can be turned into a Trademark. A popular restaurant in our town was shut down by trademark attorneys for calling itself "Oscar's" and having the familiar Acadamy Award statue as its symbol. If you are a famous individual like Michael Jordan, you Trademark the "Air

Jordan" brand you don't patent it or copyright it.

 Alternatives to Patents

• Research Disclosures

Many people are familiar with Copyrights and Trademarks, but far fewer are familiar with  Research Disclosures. If you have invented something and don't want to patent it, but still want to use it (without paying someone else for the privilege). You may file a research disclosure. The law says you simply have to disclose your invention publicly such as in a journal article or conference paper. There are however, companies who make a business of publicly disclosing inventions. One such company is ip.com. If you disclose through them or similar companies your idea is firmly established as in the Public domain

• Trademark, Copyright or Design Patent

If you have written a book, made a movie or created a cartoon character like Mickey Mouse, the appropriate protection for your invention is a copyright or trademark. Also if your invention is an object whose appearance you want to protect, like a piece of jewelry, you will best be protected by a Design patent. A design patent just protects the appearance of something, it doesn't protect anything else. So if you , for example , invent a table with an unusual leg design, you can patent that design but someone else can use the same structural approach with legs that look slightly different and go around your design patent.

You may not be able to patent "Widgets" but you can patent the best

This is a true story.  As they say, the names have been changed to protect the innocent.  One day a client was referred to me who had filed a patent that had not been searched.  The patent application was about to be examined by the patent office.  I was contacted by a firm who wanted the patent evaluated .

When I reviewed the prior art patents in the same class as the invention (a step which would have been performed in a proper patent search),  I quickly found a classic error.  The application had been written as if the inventor had invented  the very first "widget". This often happens  when an inventor who has never seen anything like his invention files a patent application without looking into what has been invented before (the prior art). 

[See my earlier post about 10 common mistakes inventors make].  

The  inventor was already selling his widget and it was selling well because it was better than the other widgets in the marketplace. The reason it was better was because at had a unique feature the other widgets did not.

  But, the patent application that had been written did not describe this unique feature of the inventors widget, it was written to claim all the invention of  widget's.  If the application had been examined by the patent office  at that point the application would have been rejected in its entirety. 

 What actually happened was different. When  error was discovered the patent application was rewritten by a new patent attorney (at significant additional cost to the inventor).  The new attorney did his best but because the invention was already in use, he was not able to make the strongest claims to the truly unique features of this invention.

So the inventor may have saved money by not doing a patent search but he lost far more than he saved  in having a weaker patent than he might have obtained , and spending additional money for rewriting the application.  In the words of the proverb "A stitch in time saves nine".

Ten Common Mistakes Inventors Make

Inventors make the same mistakes over and over again.  That's why so many of them are discouraged and disheartend by a patent system that is intended to protect their inventions.  Since being forwarned is being forearmed,  if you understand these 10 common mistakes you have a far better chance of succeeding in patenting and commercializing your invention. 

 For more help check out the patent services available on Ala Carte Patent Services  or if you want to sell or buy a patent,  Intellectual Technology Trifecta

1) Confusing a product concept with an invention.

 In a famous episode of Seinfeld, Kramer "invents" a perfume that "Smells like the Beach".  In fact Kramer didn't "invent" anything.  He made the common mistake of deciding that since he had uncovered a product need he had made an invention.  In order for Kramer to actually have invented the perfume, he would have either need to consult a perfume chemist or identify by himself chemical compounds that when used as a perfume would make the wearer "smell like she just came from the beach".

 

2) If I haven't seen it  in the marketplace , it doesn't exist.

A TV show on patents showed  a woman who claimed to have "invented"  rolling suitcases.  At that time such suitcases were unknown in the marketplace.  However the patent attorney who was invited to review her invention for the TV show was able to find hundreds of patents on suitcases with rollers.  There are many , many reasons why ideas which may or may not be patented are not commercialized.  One reason to do a patent search is to find those inventions before you spend a lot of money trying to patent or commercialize someone elses invention. By preparing an invention report  you may also realize how your invention does the job better than those already patented or what you need to make you invention unique and thereby patentable.

 

3) Disclosing  your Idea before you patent it.

 

In the same Seinfeld episode Kramer makes another classic mistake when he tells an executive at Calvin Klein about his idea.  He does so without obtaining the necessary acknowledgment from Calvin Klein that they have received confidential information from him (called a Non Disclosure Agreement or NDA).  Without an NDA Calvin Klein would be free to use Kramers invention and claim he gave it to them.  In fact the whole show scenario is unrealistic. 

Most large companies have only a single person or department who is allowed to talk to inventors like Kramer.  That department, usually called something like the Idea Submission Office , never connects to anyone else in the company.  The reason they don't is to protect the company from lawsuits made when, as happened in the Seinfeld episode, the company later decides to market a similar product (i.e. a cologne that "smells like the beach") .  Unintended disclosure can also include publications or presentations at conferences made before a patent application is filed (mistakes academics often make). Inventors often need to hone their inventions by discussing them with others even if the others are family or friends a NDA is highly recommended.

 

4) Offering your invention for sale before you patent it.

In the United States, once you have "offered for sale" an item that contains your invention, you have one year to file a patent application on it.  Thus inventors often find to their dismay , that the product they are selling is being copied by a competitor and they can't do anything about it because its too late to file a patent application.  In fact there is no grace period in Europe so as soon as you have sold something containing your invention, you have lost the right to patent it in Europe.

 

5) Deciding to save money by not ordering a patent search 

           since the patent office will do one anyway.

This is penny wise and  pound foolish.  Anyone familiar with the patent process can tell you  the patent prosecution phase, which is where the examiner essentially puts the inventor on the witness stand and demands that he prove the invention is valid, can be very time consuming and costly.  Not searching a patent is like going into court without any preparation for the case.  A well prepared patent application is made with a strong knowledge of what the examiner is likely to cite against that patent. 

A good attorney can write the patent claims to take that "prior art" into account  Some unscrupulous attorneys will encourage inventors to avoid searches knowing they can make lots more money when the prosecution drags out.  In one case I'm familiar with a complete rewrite of the patent was necessary when the prosecution uncovered information that could have easily been found in a search. Inventors can perform thier own patent searches but guidance by experts in learning thprocess can pay off.  While the inventor is the one who best understands the invention , the patent classification  system is vast and determining the proper class for your invention requires experience.  Once an invention has been classified, all patents wihin that class are easily retrieved.  It often becomes obvious that  patent titles crafted by inventors are not a good description of what the invention is really about.

 

6) Forgetting the rest of the world.

The United States is only one country in which you need to obtain a patent.  If you want to sell your product in Europe, Japan or elsewhere you must obtain patents in those countries as well.  One client I know, lost a major market because the biggest market for his invention was in Europe and he chose to patent his idea only in the United States.

7) Relying on  Trade Secrets you can't keep secret.

Coca Cola has been very successful in protecting their product without patenting it. But that is rare.  If anyone can find out what you are making and you don't patent it they can copy your invention with impunity.  What is far worse they can patent it themselves and potentially stop you from making your own product. If someone can take your product apart and deduce your invention , you shouldn't be keeping it as a trade secret. You should make this decision before you make it possible for others to see your invention. The 

practice of discovery from product analysis is referred to as “reverse engineering” and a common practice in some third world countries.  If companies in those countries  market their version of your invention in the

US

, you can either recoup royalties from them or restrain them from continuing marketing  

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 [RYT1]This may be the best feature of owning a US patent because third world manufacturers want to sell within the US.

8) Once I've made the invention and it works, I'm done.

Inventors often think that once they have invented that better mousetrap, the world will beat a path to their door. Actually, making the invention is only the first step.  The next and biggest part of the job is commercializing the invention.  Even if an inventor sells the rights to the invention to someone (which usually  requires that it be patented) , that other organization will be responsible for commercialization which takes the largest share of money, time and risk. That is why most inventors find to their dismay that their wonderful idea is rejected by most of the companies they show it to. 

 Commercialization involves all the marketing, manufacturing and financial steps that are needed to satisfy answer the three questions which must be answered positively and conclusively if the invention is to succeed : Will it Work?  Will it Sell?  Will it make Money?

These are questions that should be answered by inventor in order to either sell the product to a customer organization or if he intends to commercialize it himself, to sell the product to potention investors in his business*  

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 [RYT1]How an invention moves from the concept stage to the commercialization is a big unknown in most people's expeience.

9) Ignoring Patent Office Fees

Inventors never stop paying the patent office.  Once the filing fees are paid there are issuance fees and patent maintenance fees. Click Here for Fee Information  After an inventor has spent a great deal of money on legal services to get his invention filed and examined, he then has to deal with an endless array of patent office fees.  The longer a patent is held the bigger the fees get.  That is why many patents are abandoned after only a few years of their nominal 20 year  life have elapsed.  Companies or individuals with large patent portfolios often find they have very large regular payments due to keep them in effect.  Particularly if they have foreign patents as well as US ones

10) Trusting the wrong people -- "Inventors Wanted".

The world is full of people who want to take an Inventors money without offering much if anything in return.  The famous "inventions wanted"  adds prey on inventors who are ignorant of how hard it is and what is really required to commercialize an invention.  These  unscrupuluous companies pretend they will help an inventor file a patent and file a provisional application that will expire to uselessness in a year without any intention of filiing a permanent application.  

 They will offer to "present your invention to industry"   means they will mail flyers to a list of companies that will go directly into the circular file.  There are legitimate companies that offer patent brokerage and help with filing patents (ours is one)  but they don't make phony promises and they aren't inexpensive.

A provisional patent  application can be filed  for a minimum fee .  A provisional establishes a legal starting date so  that an inventor’s invention can be more freely disclosed to others (with NDAs) for planning and commercialization.   A provisional application must be followed up by a full  patent application within one year or will run out.  This time period can also be useful in building a working prototype of the invention, to  optimize its features and create  selling points for attracting potential customers or investors 

There are legitimate companies that offer patent brokerage services and help with filing patents but they don't make phony promises and they will charge reasonable commissions  for real results .

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For help with your invention contact us.  At  Ala Carte Patent Services  when you order a patent search or invention report from AlaCare you are never kept in the dark.  We tell you what we will do, how we will do it and what each step will cost.  We even let you follow the progess of your job on line.

The Patent Minefield

One of my clients supplied this metaphor.  He suggested that a patent search is like exploring for gold in a minefield.   

An inventor can only patent that art which has not already been patented or disclosed by someone else.   If the inventor files a patent application without a proper prior art search he risks "stepping on a mine",  that is his patent application may be denied by the patent office examiners because it was "taught by the prior art",  that other patent that he was unaware of.   Worse, even if the patent is granted, due to ignorance of prior art, someone may come out of the woodwork , sometimes years later and sue the inventor for infringing their patent.

 

There are actually individuals and companies (called Patent Trolls by some) who actively employ a strategy of filing patents they never intend to commercialize but hope eventually to use in a lawsuit against someone else.

At BML our job is to search that minefield and put flags on the locations of the mines.   That way the inventor can adjust his patent application to cover the most   "gold bearing" territory as possible without stepping on one of those prior art patents. 

We start by determining the territory that is covered by the clients invention by preparing a "Search Profile"  --This tells us where to look in the online patent databases for prior art which is close to the clients invention.   Sometimes we find a patent directly atop the invention.  Then we can issue a "High Flash"  email warning to the inventor to beware.  The inventor can then adjust his patent or drop it all together.  Depending on where we are in the job he can receive a store credit or save 75% of the search cost.

There is an increasing trend today to save money by not doing a patent search, arguing that the patent office will do it anyway.  That is an very  risky strategy as the inventor may spend a substantial amount of money on a patent application and on "office actions"  with the patent office before giving up or extremely restricting his patent due to prior art he would have known about if he had ordered a search to be done.

Re-Inventing The Wheel

I often have to explain to clients how the patent claim system works. I’ve found this illustration useful and I hope that you will too.

Suppose you had invented a bicycle wheel like the one shown here.

However you had never seen another wheel and therefore in your claims you described the wheel concept itself as your invention, hoping to own all kinds of wheels.

However, in a prior art search like we perform at BML, one of the first patents we uncovered was a wheel like this one.

Okay—you cant own the wheel, but this wheel has no spokes, rim or tires. Perhaps we can change our claims to a spoked wheel with a tire.

 

Unfortunately, the next patent turned up by the search is a spoked wheel like the one below. However this wheel has no tire. It has a metal rim.

Now we are down to looking for a wheel that has a tire on it.  Like the next piece of prior art we found


.

 

This patent looks really close. But it has a hard rubber tire. So in the end we are left  with a patent on a baloon tire.  This is what a patent search does.  It helps you refine the claims to  cover only what you have invented that  is novel. 

If you were to submit your patent application with the broader claims you would have suffered successive rejections by the patent office.  Each rejection costing you in time and money to respond to "office actions".

That is the value of a good  patent search.  It saves you time and money by making sure your patent is  something that  meets the patent ability crieria and can be defended  in an office action.

 

 

 

 

Exploiting Opportunities

Every business has opportunities it doesn’t exploit. Sometimes they are just ideas that pass quickly through someone’s head and other times they are complex concepts which have been thoroughly studied and then for some reason or another end up on the shelf gathering dust. 

It’s not hard to see why this happens. Most of the time in business, we are consumed with the everyday issues of finding and satisfying customers. At BML we call those activities “The Business Comfort Zone” or Quadrant One. 

The trouble with Quadrant One is that you can’t continue operating there forever. Someday something will happen and your Quadrant One business will start to disappear. Sometimes its in a crises and sometime it happens slowly. But it Will happen eventually. It happened to me despite the fact that I knew better. 

When your quadrant one business goes away suddenly you are forced into one or more of the other three quadrants, either selling existing products to new customers (Quadrant II) , selling new products to existing customers (Quadrant III)  or the most risky alternative, new products to new customers (Quadrant IV) . When you operate in those quadrants you have a myriad of new issues to deal with. You cant fall back on your standard processes that worked so well in Quadrant One. You HAVE to do some things differently. 

At BML we help you assemble  a process to evaluate the opportunities in those other 3 quadrants before you are forced to activate them in a crisis situation. We help you do what small businesses seldom do because they cant extract enough time from Quadrant One , we help you compare opportunities, and compare them at the same time against the same standards. 

First we help you find them and define the opportunities, taking them off the dusty shelves and into an active database. They we help you to compare them on the same basis. What is the potential revenue from a given concept? How much time and money is it likely to take to study and implement that concept? Which concepts should be done first and which should be done later? 

We help you choose among them and put together action plans to exploit those opportunities that you pick. 

There are two benefits that come from using this method. 

1. The revenues and profits that come from new opportunities successfully exploited.
2. The savings from not exploiting opportunities thathave a low probability of success or are too costly for the enterprise to sustain.

 

The first of these two benefits is pretty obvious. The second isn’t. But consider for a moment the cost to a business of jumping into the wrong opportunity in a crisis situation. Such a misstep may put company out of business. 

We teach that a company needs  a portfolio of evaluated and ranked  opportunities on the shelf to draw from, either  to feed slowly into the business  or to grab for if quick action is required. We don’t only help you plan them out, we can also provide some of the services needed to evaluate your opportunities, either from our own resources or from our many alliance partners.

 

To learn more send us an email to sales@businessmetamorphosis.com or call (585) 520-3539 and tell Dick you read this article.

The Business Life Cycle in a Flat World

The following is a talk I gave at the inaugural breakast  of the Independent Entrepreneurs Council , co sponsored by Empire State Science and Technology.  It discusses the transformation going on in the  Western New York  economy from one based on a few large manufacturing firms to a myriad of smaller firms in  service, agriculture, medicine etc.

Download IECOct10.ppt