BizMorph

Painless Patenting?

Note: This monograph is strictly my opinion and should not be relied upon as legal advice.  If you have legal questions consult a qualified patent attorney or patent agent.

Getting your first patent shouldn’t have to be painful. Often inventors approach the process with the same enthusiasm that they have for root canal. After all the process is legalistic, complex, involved and completely contrary to the communications methods that most inventors , who are often scientists and engineers, have been taught in school.

A patent is a legal document , and the highly structured rules around creating one come from the world of Law. Yet the subject matter of the patent is technology, a creation of the world of Science. The shotgun marriage of these two worldviews frequently produces anxiety for both the inventor and the patent attorney or agent.

I have 33 patents and it took me a very long time and training by a number of patent attorneys before I felt that I really understood the process. I finally began to understand what was going on when Ideveloped a courtroom  metaphor. I imagined that my patent on trial. The prosecutor’s goal was to prove that the result all my hard work and cleaver intuition was unworthy of a patent. My job was to provide technical support to the patent attorney who was acting as my defense counsel.

When a scientist or engineer writes a technical paper, the  goal is to be as clear as possible. This means the objective is to  make the subject matter as understandable as possible and to leave out irrelevancies  such as  the blind alleys they wandered up and the wrong trees that they barked at. But  in proving something is patentable , it is exactly those irrelevancies  that are key to the case for the defense.

The patent law says that an invention must be 1) Novel, 2) Useful and 3) Unobvious. The first two of these caveats are usually easy to prove. It’s the third one where all the court battles are fought. The law says that the invention must not be obvious to “one skilled in the art”. This means  the patent office assumes the existence of a” straw man” who has at his or her disposal all the information available anywhere in the world prior to the time you made your invention. This vast body of information is called “The Prior Art”. The prosecutor can assume that this straw man has digested all of this material and given his skill level, if he can produce your invention, then it is not patentable.

That is why it is so important to document your work carefully, since all of those wrong paths you took  are barriers to the argument that the invention is obvious..

With this introduction , we can begin to see what steps are needed for getting that patent painlessly. The more you skip or gloss over these steps the more difficult and painful the patent process will be.

Phase Zero: Documentation

First, Document your invention. This should be done properly  in a lab notebook with sewn in pages which is signed on each page by you and also witnessed on that page  by someone who is not also an inventor. Even in this age of computer record keeping it is the paper record that proves the invention. There are some on line patent notebook services, but I am unaware of how the courts regard them.

Next describe your invention. This is usually done in what  is often   called an Invention Report. It’s a technical description of the work, much like a technical report or journal article. The difference is that you should also mention all those mistakes which could trip up the straw man . I have some examples of good invention reports in my trade literature available through my website www.BMLLC.net [write and ask for the Invention Report information]. You will also have to supply engineering drawings for all figures used in your report. These will be redrawn later by a skilled patent drafter in the style required by the patent office.

Phase I: The Patent Search

When you have written the report and documented your invention you are ready to meet with the attorney or patent agent. The purpose of the first meeting is to come up with a strategy for searching the Prior Art. At BML we use a six step search method which starts with the inventor and searchers agreeing on the search profile to be used. That profile includes the technical information but also what “Art” is to be searched. After all anything anywhere in the world can be considered “Prior Art”. Do you really want to search the Chinese , Mongolian and Swedish literature? However if you want to file your patent in Europe or  Japan , a search of their literature is advised.

Reading the Search

The searcher should return to you those patents that are closest to your invention and therefore most likely to be deemed  a barrier to it (by making it obvious). You should read through them carefully, starting with the abstract to determine their relevance and then reading the claims carefully particularly claim 1.  Patent claims are written in what is called the “upside down Christmas tree model”. The primary claims , beginning with claim 1, should be broader than any of the claims that follow.  Thus, if the prior art isn’t a problem with primary claims its unlikely to be so with the supporting claims.

Phase II: The  Patent Application

This is where the attorney or agent earns his or her keep. Its up to the attorney/agent to turn your Invention Report into a patent application. Most usually begin by crafting the claims very carefully and reviewing them with the client. The “Specification” which is the body of the patent is then written to support the claims. The detailed construction of the Specification is beyond the scope of this article and may be discussed later.  Here you pay your first fees to the patent office which now consist of  three separate fees:  a filing fee, a search fee and an examination fee. The amount you pay for each fee  will depend on what kind of patent you are applying for and whether you are a “large” or “small” entity. A complete schedule of patent fees is found on the USPTO web site at http://www.uspto.gov/go/fees/fee2005mar15.htm

Phase III: The Patent Prosecution

The third phase of the patenting process occurs after the patent is filed when the patent is examined by the patent office and is often called the “Prosecution”. Today the patent is usually published about 1-1.5 years after it’s filed.  The results of the examination usually follow fairly quickly in a series of what are called “Office Actions”. Here the patent office rejects claims or parts of claims as being taught by the Prior Art, which is cited in the office action. 

Often the objections are around legal issues, which need to be resolved by the attorney or agent. However, if the patent office rejects on the basis of obviousness from the prior art, the inventor has two choices.  Either drop or rewrite the offending claim; or challenge the examiner’s interpretation of the prior art. To rewrite the claims or challenge the examiner requires close co-operation between the inventor and the attorney/agent. In my experience you usually have 3 tries to convince the examiner. After the 3^rd try you get a final rejection. It is still possible to appeal after this point but it can get very costly very fast to do so, so it had better be worth it to fight on.

Phase IV: Grant  of Patent

If  your patent application survives prosecution it , or the revised version  of it will be granted. You will receive a notice from the patent office and you will have to pay an Issue Fee which is also found on the schedule referenced above under Phase II.. This is not the end of paying fees to the patent office, which also requires you to pay “Maintenance Fees” on you patent which get larger with time. Again ,see the fee schedule for details.

The Worth of a Patent

Ross Krajec on his blog Anything on the Earth made by Man gives a link to an an excellent overview  of what determines  The Value of a Patent .  There is are also some serious academic research on this topic by  academics such as Ted Hagelin at Syracuse law school (1).  And in the journal, Intellectual Asset Managment there is an article for those with an econometric mind set that  I like, comparing a patent to a Call Option (2) , and valuing it according to the Black-Scholls method.

1) Ted Haglein " A new method to value Intellectual Property" AIPLA Quarterly Journal
    (30 AIPLA Q.J. 353)
2)  Nir Kossovsky, " Is the Average Patent Worthless?" Intellectual Asset Management, Aug/Sept 2004 pp 7-10

Why Get a Patent?

Why Get a Patent?

Note:  This article is only my opinion and should not be relied upon for legal decisions.  For legal issues, consult a reliable patent attorney or agent

I have collected 33 patents in my many years in R&D. All were paid for by my Fortune 500 company. When I left to go into private practice I was surprised to find how many inventors in small companies appeared to know very little about patents. Patents were viewed at best as mysterious and at worst as a troublesome, expensive, legal annoyance.

My later research tended to confirm my first impressions when I discovered that in my home town, which has the highest number of per capita patents in the country, 90% of those patents were assigned to large companies.

Patents protect your rights. They are the only proof that you have that you own a particular product or service and can prevent others from making it without paying you a royalty. If you don’t patent your invention, not only can your competitor make it but what is far worse, they may patent it themselves and prevent you from making it . If you want to sell your invention or borrow against it, you must have a patent.  If you think that  Patents are too expensive you might want to click on this link.

Patent Myths

There are a great number of myths surrounding patents. Some are based on things that were once true, some based on an incomplete understanding of the facts and some are just plain wrong.

 

Myth 1 -Most Patents are Worthless

I recently came across an article that reported that a very large percentage of patents are never converted into products (I think the number was something like 97%). I have no reason to doubt that statistic, but quoting it as an argument against patenting is missing the point. Many perhaps most of the patents paid for by the large corporations are part of a defensive patent strategy.

These companies have learned that patent “Thickets”, that is groups of similar patents arrayed around a key technology are much harder to defeat in a court battle.

 

In a court case am familiar with the patent counsel of the defendant asserted accurately confidently a 95% probability of defeating each of the plaintiff’s 10 patents. The plaintiff, however, had the last laugh, because as those of you familiar with statistics will know, the probability of defeating 10 patents each of which have a 95% probability of defeat is .95 to the 10^th power or only 60%. In the actual court case 3 of the 10 patents were upheld, which is pretty close to this calculation. The defendant in this case lost $1Billion. This case is a very powerful incentive for the creation of thickets. The cited statistics  on patent value are not surprising when one  realizes how many  patents are only   pickets in the fence guarding a technology.

Myth 2- Patents must be for Nobel Quality Research

This is a frequent misconception of beginners who believe that whatever they have invented doesn’t stand up against the work of great inventors of the past. It also comes from the outdated attitudes of some patent attorneys and those seasoned inventors who had to argue the value of their inventions before them.

 

I can well remember patent attorneys who told me that I had to convince them that I had invented something before they would consider writing my application. Before 1982 it was much more difficult to get a patent. In that year some important cases changed the landscape forever. The discussion of those cases is beyond the scope of this article. I may post references at some point in the future. Anyone who thinks that a patent requires prize winning work should take a look at the patent granted to a child on Swinging Side to Side (US6,368,267) something I think we may all have done in our youth.

Myth 3: Patents are only for Technology

This used to be true. Until recently you could only get a patent on an item of manufacture, a design, and a new type of matter (chemical) or a manufacturing process. At one time you couldn’t patent software or living things. However, all those items are now patentable as are business processes. The most famous is the 1 click ordering method patented by E-Bay. So if you are a retailer with a novel business process, think about patenting it before someone else does.

Myth 4: Why bother, foreign competitors will ignore my patent

There is some truth to this assertion. In certain countries patents are widely ignored. However, goods manufactured in those countries and exported to the United States or Europe are subject to the patent laws. If a foreign competitor rips off your idea and tries to market it here you can have his goods stopped at the border. Protecting your intellectual property within those countries is another matter.