US Patent Process

[tryan]

So I've been kicking an idea around for a couple months ... patent seach shows a couple non-provisional patents have been awarded which are related. But they are way too complicated and in need of operability improvements (IMHO). So I am cold calling patent lawyers to see if this worth pursuing.

Any "war stories" out there related to patents? Sucess and/or failures are always interesting.

 

[FUEGO]

Not a patent expert yet, but I'm sitting for the Patent Bar Exam in 2 weeks.

You can usually pay an attorney for the preliminary work of researching and giving an opinion on patentability.

Other "prior art" could make your current invention non-patentable. Prior art can include anything published anywhere at any time (not just prior patents). A 20 year old hand sketched doodle in a Zimbabwean middle school library would count as prior art.

If you have a good idea that could be sold or licensed or exploited yourself, then it may be worth pursuing.

I think we have a couple "real" patent attorneys on here that may be able to help further answering general questions.

 

[M Paquette]

Not a patent expert yet, but I'm sitting for the Patent Bar Exam in 2 weeks.

Hey, congratulations in advance, and good luck on that. When I noticed your sig disclaiming both legal and engineering advice, the first thing that popped into mind was 'patent attorney in training.'

I'm just a retired engineer, but I've worked with a number of patent attorneys over the years. They've been some of the most intelligent and helpful folks I've ever worked with.

 

[FUEGO]

Hey, congratulations in advance, and good luck on that. When I noticed your sig disclaiming both legal and engineering advice, the first thing that popped into mind was 'patent attorney in training.'

Thanks, I'm going to need it. Nothing intuitive in the patent laws unfortunately, so I have a lot of studying to do.

But yes, it appears to be a very lucrative career field for those able to snag the engineer/attorney licenses. Maybe help me put a little fuel on the FIRE.

 

[Westernskies]

Any "war stories" out there related to patents? Sucess and/or failures are always interesting.

Does spending over a million dollars in patent liitigation (defending ours and disputing theirs) count as a war story? PM me with any specific questions you may have; I'm not a lawyer, but have recent experience as plaintiff and defendant in several industrial patent suits.

 

[plex]

Ditto FUEGO's disclaimer.

Most likely, you can patent it. Do not go into detail about what it is. It could have a pretty narrow scope of coverage however, depending on the prior art.

The real question though, is why do you want to patent it? (the process is fairly expensive, even if you have a lot of experience successfully writing patents, and so may be able to cut out the lawyering costs, though I wouldn't recommend it).

Edit: I have been told as well that the litigation involved is really expensive, one lawyer said just the discovery phase can cost $1M. Of course, most suits settle before reaching this phase usually.

 

[W2R]

I have heard enough horror stories from other engineers that (for the one really valuable thing that I invented) I did not patent it and instead sold the whole thing to the buyer, including six working models that I built on my kitchen table, an interface, and schematics so that that organization could build them or have them built at will.

With the profit, I bought a brand new 1988 Aggie maroon Dodge Daytona in cash (back in 1988). That was fine with me. My invention is obsolete by now anyway, due to technological advances.

The horror stories that I heard were mainly that with one small change in the schematics, such as a different value for one resistor in a complicated device, a patent infringement might not be considered as such. Don't know if that is actually the case, but there sure are a lot of credible engineers out there who claim it is so.

 

[tryan]

Yeah, my worst nightmare is teaming with a "cheerleader" (attorney) who racks up all kinds of fees fighting objections on an idea that never should have been presented.

Or worst, getting the patent and end up fighting with the two others who happen to reference the pieces in thier patents.

But two already exist, this certianly opens the door for a third ... lots of wiggle room. Easy to see why nobody took either of the two to market. Wwway too much going on. A greatly simplified version could be mass-marketed IMO.

In the meantime, 6 phone calls to patent attorneys; 0 replies. Must be the long holiday weekend!

 

[Ed_The_Gypsy]

But yes, it appears to be a very lucrative career field for those able to snag the engineer/attorney licenses. Maybe help me put a little fuel on the FIRE.

As I remember, the essential step is becoming a Patent Agent. You do not have to be an attorney first. In fact, an attorney must become a Patent Agent in order to practice.

I looked into this a while back. I was told that the US Patent Office likes chemical engineers best. Too old now. Too lazy, too.

 

[ERD50]

If I were you, I'd strongly consider W2R's story - is there a way to make a buck off this w/o actually getting the patent yourself? Yes, you give up the chance of adding billions to your FIRE portfolio, but you avoid the risk of losing a bunch too.

I'd be inclined to try to settle for a lesser, low-risk amount. Let someone else fight the patent battle.

Along those lines, I've had a couple ideas for little widgets that might be marketable to a hobby group. It just would not seem worth it to patent them (small market, small profit potential), but they might be marketable. I've thought about just trademarking a name (I think that is pretty easy), do enough searching to try to make sure that I'm not violating another patent, and then give it a shot. If someone copies me, and beats me in the market - no big loss, I would not have invested that much anyway. I think the market is small enough, that not too many would even try to compete, if I was able to price it right. Since it is a hobby, I'd probably include plans for DIY people - make it if you want, buy it from me if you are not a DIY person.

That might not apply to your situation, just throwing it out there.

BTW - I really don't understand patents. I worked with a lot of people who held patents, some considered very important to our mega-corp, but I just didn't 'get it'. These were bright, talented, creative, hard-working engineers, but some of these 'VIP' patents just seemed like the obvious thing to do if you were assigned to design that circuit/device - stuff that seemed to be right out of my textbooks. But, it did have value to protect the design, and that seemed to over-ride the technical creativity aspect of it. A mystery to me.

-ERD50

 

[deserat]

My brief exposure to patents was my colleague who did get one and tried to (and is still trying) to have a start-up company based on the patent.....lots of time and money. We'll see what happens. It can be a long process and as several before have said can become obsolete quickly and become interesting for historical value only.

Where I've seen the most patents are in large companies.....other companies just try to keep things secret and/or trademark them. Gotta keep the secret, though.

 

[NW-Bound]

...some of these 'VIP' patents just seemed like the obvious thing to do if you were assigned to design that circuit/device - stuff that seemed to be right out of my textbooks...

I am of the same opinion. There are Web sites that one can search for and peruse patents for a certain application. I have seen plenty of patents that I cannot understand how they could be granted, meaning they were obvious application or derivation of earlier devices.

I am a joint patent holder. One of the start-ups I joined had our concoction patented for protection against competition and also because it looked good to investors. As it turned out, there was another patent filed on something similar, and much litigation ensued. The other guy never built anything; the way I understand it, you can even patent an "invention" that only exists as diagrams in a Vu-graph, and its working explained by hand waving. A prototype does not have to be submitted.

In our case, if I were the US Patent Office, I would have thrown out both our and their patents, saying that neither were really worthy. Everyone goes home. Nobody infringes on anybody. But, as it was explained to me, the US Patent never retracts its patent grants, as it means admitting that it did not know what it was doing. So, the two sides slugged it out in court.

In my own personal work with megacorps, I have had some accomplishments that I am proud of. These were treated as "trade secrets" and no patents were ever filed. The ones I was truly proud of were mostly algorithms implemented as embedded code. In talking with several colleagues in the same field but with different megacorps, they said the same practice was in place at their workplace. Although software is protected by copyright, I don't know how algorithms can be protected. So, absolutely no publication.

As an employee of a megacorp, any patent would be assigned to the employer anyway, and the reward to the inventor is just a small bonus, typically $1K. However, it looks good on the resume. For an analytical or algorithmic work, the employer usually will not let it get published. The more practical and of higher economic value, the more it is kept a secret. Hence, it is rare to see practical and immediately useful papers published in prestigious technical journals.

I have worked with some highly sophisticated systems, and in talking to the maker, wanted to know a bit more details on how they work, just out of curiosity. Tough luck! The hardware is pretty simple, but the required mathematical algorithm boggles the mind. They wouldn't say a word. Of course the guys who work on these could never publish nor claim credit for it even. If they move to another company and do the same kind of work, it would be a recipe for a legal disaster. Most of these guys are "employees for life" anyway. Their expertise is so focused, and the field so specialized that where could they go but to a competitor?

 

[MovingtotheCove]

Intellectual Property (patents, trademarks, and copyrights) can be very useful and very profitable and also are very confusing. I'm not an attorney but have been involved for many years in all aspects of IP and have been involved in over 20 patents that have been issued or are currently pending. No clear cut road. No straight path. You may search and search and think you are ok but then a brick wall can appear. Also you need to ask why you are seeking a patent? Is it to "protect" the idea from competition when you produce the product or service or is it to license the idea to others? Patent portfolios, to become marketable (yes...their is a market to sell IP only besides licensing it) need breath and depth and most likely in market active or about to be active infringement. Let the mega corps fight the battle if you can...a small guy will get crushed trying to defend a patent against a mega corp's army of attorneys, motions, delays, etc. In the end the most success I've had with patents is to use them as a marketing tool and deterent to competition and to eventually license and/or sell them to larger entities. Again, the path can be a real roll-a-coaster ride and have unseen traps at any point. Not for the faint at heart who run low on cash to keep the prosecution of the patent filings and related office actions, examinations, and compromises funded. FYI...you can self file a "provisional" patent for about $100 which gives you 12 months to decide on moving forward with a "regular" filing but it locks in your date you submitted to USPTO firmly. Good luck!

 

[NW-Bound]

Or worst, getting the patent and end up fighting with the two others who happen to reference the pieces in thier patents.

But two already exist, this certianly opens the door for a third ... lots of wiggle room. Easy to see why nobody took either of the two to market. Wwway too much going on. A greatly simplified version could be mass-marketed IMO.

I have been told that there are individuals who file for dozens of patents. They know the process and it does not cost them that much. Remember that an "inventor" is not required to demonstrate a working prototype. These "inventors" also never have a plan to market it. Duh! There's nothing to market.

So, what is the gain? They wait for someone to bring to the market something similar, then sue. If that player is small and his business does not do that well, they might not bother. Of course, if that alleged infringer is a big corp with its own staff of lawyers, it becomes a more interesting game.

I hate these patent BS's, but do not know what the alternative is.

 

[FUEGO]

So, what is the gain? They wait for someone to bring to the market something similar, then sue. If that player is small and his business does not do that well, they might not bother. Of course, if that alleged infringer is a big corp with its own staff of lawyers, it becomes a more interesting game.

I hate these patent BS's, but do not know what the alternative is.

I remember during law school my patent law prof joking about someone getting a patent on the business method of patenting a whole bunch of stuff then lying in wait for a successful venture to bring a questionably infringing device or application to market, then suing for infringement of their patent. Not sure if he was joking, but it could be real.

 

[FUEGO]

As I remember, the essential step is becoming a Patent Agent. You do not have to be an attorney first. In fact, an attorney must become a Patent Agent in order to practice.

I looked into this a while back. I was told that the US Patent Office likes chemical engineers best. Too old now. Too lazy, too.

Correct, one can prosecute patents without a law license simply by taking the PTO exam. That makes you a patent agent. But if you do anything else like licensing, appealing beyond the Board of Patent Appeals and Interferences, etc, you need a law license. I have the law license, just need the PTO "patent bar" license at this point.

 

[FUEGO]

Yeah, my worst nightmare is teaming with a "cheerleader" (attorney) who racks up all kinds of fees fighting objections on an idea that never should have been presented.

...

In the meantime, 6 phone calls to patent attorneys; 0 replies. Must be the long holiday weekend!

You would be a juicy tender morsel to an unscrupulous patent attorney. Deep pockets, able to pay a continuing stream of legal fees. Mmmm...

A lot of the "big" top notch patent firms won't touch individual inventors' patents. Not enough money and getting paid can be hard. Prosecuting it in the best way may cost too much for a person with limited means. You might be different if you walked in and said "I can put $10,000 down as a retainer and there's plenty more where that came from".

But most of these guys at the top notch firms are dealing with the IBM's, Cisco's, GSK's, Pfizers, Fortune 500 tech, bio, computer firms. That is their bread and butter.

You can undoubtedly find some adequately qualified second string smaller firms that might take on individual work, but most would need a sizable retainer up front. Otherwise I expect they are so desperate for work that they may not be that great at what they do (it isn't that hard to get a law license and USPTO license after all).

But obtaining patent rights to an invention and successfully licensing or self-promoting your invention and making a profit on it is quite another thing.

 

[plex]

Not to scare you or anything, FUEGO, but the patent bar is actually much harder to pass than any state bar, its passage rate is usually in the 55-60% range, instead of 75-85% as with state bars (I found the patent bar really easy though with the preparation I did). There are also less than 30,000 active patent attorneys, so it is a pretty specialized field (less than 2% of JD's become patent attorneys).

 

[MovingtotheCove]

To have good patents and well contructed claims you do not need to only look to large first tier firms or need the perfect pedigree. I've had great success with a botique firm that is only into IP and certainly would not "rank" on any radar of being a biggie but they have done fantastic work for me, at much better pricing than the big firms. Also they allow and encourage large degrees of collaboration so that input from the source is valued and not criticized...it has really been used. A key partnership type of mentality needs to emerge or the marriage is wrong and the firm will take your money.

 

[Ed_The_Gypsy]

In our case, if I were the US Patent Office, I would have thrown out both our and their patents, saying that neither were really worthy. Everyone goes home. Nobody infringes on anybody. But, as it was explained to me, the US Patent never retracts its patent grants, as it means admitting that it did not know what it was doing. So, the two sides slugged it out in court.

In a law class at university, I learned that 9 out of 10 times, a patent doesn't stand up to a challenge. A former employer relies heavily on two that won't hold water due to prior art. They have lawyers.

I have come up with several patentable ideas. I know because someone else already patented them. I am getting better, though. They keep getting newer.

 

[Martha]

You would be a juicy tender morsel to an unscrupulous patent attorney. Deep pockets, able to pay a continuing stream of legal fees. Mmmm...

A lot of the "big" top notch patent firms won't touch individual inventors' patents. Not enough money and getting paid can be hard. Prosecuting it in the best way may cost too much for a person with limited means. You might be different if you walked in and said "I can put $10,000 down as a retainer and there's plenty more where that came from".

But most of these guys at the top notch firms are dealing with the IBM's, Cisco's, GSK's, Pfizers, Fortune 500 tech, bio, computer firms. That is their bread and butter.

You can undoubtedly find some adequately qualified second string smaller firms that might take on individual work, but most would need a sizable retainer up front. Otherwise I expect they are so desperate for work that they may not be that great at what they do (it isn't that hard to get a law license and USPTO license after all).

But obtaining patent rights to an invention and successfully licensing or self-promoting your invention and making a profit on it is quite another thing.

I regularly referred individual and small business patent matters to a small boutique firm in Minneapolis. They were good and had a good rep and I would not call them second string. They all had abandoned big law for their own small firm. One thing I really liked about them was their vetting process and they were not inclined to pursue a matter that wasn't worth pursuing. They were not cheap but were affordable for my small business clients with IP.

 

[Nords]

The real question though, is why do you want to patent it? (the process is fairly expensive, even if you have a lot of experience successfully writing patents, and so may be able to cut out the lawyering costs, though I wouldn't recommend it).

My brief exposure to patents was my colleague who did get one and tried to (and is still trying) to have a start-up company based on the patent.....lots of time and money.

If you're thinking of going startup then your IP may (initially) be your only asset. Very few investors want to touch a "trade secret" without some sort of IP to rely on. OTOH if your patent reveals too much then it's straightforward for another company to reverse-engineer your product without technically violating your patent.

One way to screen for IP attorneys in your area is through angel investors. The Angel Capital Association (Angel Capital Association) might help you find one in your area. Cold-call or e-mail one of their members, explain the outline of your idea, and ask what IP attorneys they've used in their due diligence. If your idea is interesting enough then intrigued angels may encourage an IP attorney to contact you.

A huge problem with IP is the time/effort you'll invest in getting it patented. It's extremely time-consuming and expensive to head down one road only to find out that it's blocked with prior art, or to have your patent efforts lurching in one direction when you realize that your business plan needs to go in another direction. Angels are unlikely to invest in unpatented IP unless you have some reputable pit-bull lawyer's assurance that you're likely to get the patent.

Patent litigation is not a business plan, let alone profitable. Licensing might be an opportunity with entrepreneurs or small companies, but large firms will not be impressed, let alone intimidated, by IP.

Another option is your local university's technology-transfer department. They have various names but they essentially look for ways to make money out of their research, especially if they have a business school full of entrepreneurs seeking startup ideas. They might have a lawyer recommendation or one of their business profs might even offer an assessment of your chances.

 

[FUEGO]

I regularly referred individual and small business patent matters to a small boutique firm in Minneapolis. They were good and had a good rep and I would not call them second string. They all had abandoned big law for their own small firm. One thing I really liked about them was their vetting process and they were not inclined to pursue a matter that wasn't worth pursuing. They were not cheap but were affordable for my small business clients with IP.

I should add that I'm not referring to the small boutique patent firms as "second string". Most of the successful small boutique patent firms do really well as a firm, and also do excellent patent work. I'll probably end up at one of these type firms. These boutique firms are as good as or better than the BigLaw firms locally for patent prosecution work, and usually easier to work with with better rates. And their associates don't hate life as much.

By second string I meant the guy hanging out his own shingle that may or may not be good at patent prosecution work. You may get a patent out of the process, but it may not hold up to later scrutiny if challenged in court or through reexamination. Or the claims of the patent may be so narrowly or inartfully drafted as to leave you with little in the way of actual patent protection (ie the patent claims can be easily designed around to avoid infringement). You, the consumer of legal services, wouldn't necessarily know this until your patent failed to hold up when you sue for infringement or threaten to sue for infringement.

Or the second string guy could get a bunch of garbage in the file wrapper such that you could be estopped from claiming infringement on certain claims. Just a few thoughts as I'm reviewing for my exam. Not a practitioner yet, so big grain of salt I guess!

 

[Martha]

I forgot to mention, some universities have business development programs that can help you do your due diligence. My local university would even do the patent searches and help with figuring out what is the best way to market the invention. All for free. It also had a good list of referral resources. Here is a link to the school's center for economic development, which might help you search for other similar programs: University of Minnesota Duluth Center for Economic Development helps businesses and entrepreneurs in NE Minnesota

You might check to see if your university has similar programs.

 

[Martha]

file wrapper

Hey, you are learning the lingo. I can't understand why they just don't call it the "file."

Good luck on the exam.