by aadibi

Behind the Scenes at the Patent Office: What Do Patent Examiners Do?

Every inventor wonders what happens once they file their invention and send it to the patent office. To most, the world of the patent examiner is a closed box (which can be pretty scary as they often hold the keys to the success or failure of a project), but they have an important job: protecting innovation in our society.

The job is quite straightforward. Additionally, patent examiners process a large amount of information on any given day. Let’s peel back the curtain and illuminate exactly what they do and why they’re so important.

What does a patent examiner do?

Determining patentability

On the most basic level, a patent examiner’s job is to review, accept, and reject patent applications. When a patent examiner receives a new patent application, their first task is to closely and carefully read the patent application with the purpose of understanding the invention specified as completely as possible.

The patent examiner must determine whether or not the patent application adequately describes the “metes and bounds,” or parameters of the invention it claims. Furthermore, the patent examiner must determine the scope of the patent application claims. Finally, once the patent examiner has determined the metes and bounds of the invention claimed in the patent application, as well as the scope of the application’s claims, they must research existing technology pertinent to the claimed invention. Now, the patent examiner can make a determination as to whether or not the invention claimed by the patent application in question is indeed patentable.

So in a sense, a patent examiner’s job is to safeguard innovation in society while also determining the degree to which an inventor can exploit that invention.

A patent examiner seeks to answer the following questions in evaluating a patent application:

• What subject area is most relevant to the applicant’s invention?
• What existing invention or inventions has the applicant identified in their application?
• What problem or problems has the applicant identified with existing technology related to their invention?
• How does the applicant plan to solve problems endemic to existing technology in their field with their invention?
• How does the applicant plan to implement their solutions to those problems?
• Do the applicant’s patent claims incorporate their proposed solutions?

Responding to a patent application

After a patent examiner has reviewed a patent application and determined whether the invention it claims is patentable, their next job is to respond to the patent applicant. The patent examiner must write an Office Action, which provides an analysis of any and all issues in the patent application which have a bearing on the patentability of the claimed invention. The patent examiner must issue either a Notice of Allowance or a Notice of Abandonment, according to the results of their review. They must also respond in full to the patent application’s reply to their determination.

You can get more insights into a patent examiner’s basic responsibilities from this USPTO presentation.

Becoming a patent examiner

Qualifications and specialties of patent engineers

Every patent examiner has a particular field or category of patent applications that they work with. This means that in order to be a competent patent examiner, the examiner in question must have sufficient experience in a technical field to have obtained a high level of understanding of the innovations in that field. Otherwise, how would the examiner fully understand and contextualize the technologies claimed in patent applications, and thus, be able to evaluate their patentability?

In general, patent examiners have a degree in a scientific or engineering field, particularly in one of the fields described below:

• Engineering: Chemical, electrical, mechanical, general, civil, metallurgical, biomedical, agricultural, industrial, aeronautical, ceramic, petroleum, nuclear, or engineering physics.
• Life sciences: Biology, microbiology, botany, horticulture, or pharmacology
• Physical sciences: Chemistry or physics.

The USPTO especially prefers patent examiner candidates with a background in electrical engineering, mechanical engineering, and chemical engineering. For more information on patent engineer qualifications, see this website published by the USPTO.

Training to be a patent examiner

As of 2006, all newly hired patent examiners in the U.S. are required to complete a university-style training held by the USPTO’s Patent Training Academy. The duration of the training program is eight months, during which time fledgling patent examiners learn the fundamentals of patent law, practice, and examination procedure. The course of study at the Patent Training Academy includes both lectures and classroom assignments. While attending the Patent Training Academy, new patent examiners will begin looking at real patent applications under careful supervision.

What makes a successful patent examiner?

Beyond the qualifications and training discussed previously, a good patent examiner needs to have strong analytical skills, as well as the ability to communicate clearly and effectively. In an interview with Inc.com, Jordan Golomb, a former patent examiner, says the following when asked what’s required of patent examiners:

“In addition to having to know a lot about patent law, you have to know how to search. A lot of my training time was spent on searching for prior art, on learning how to look all over the world. There are a lot of places to look. You also have to be really quick at understanding new technologies. You aren’t given much time. And to round all of that out, you should be at least a decent writer.”

You can read the rest of Inc.com’s interview with Jordan Golomb here!

Further reading on patent examiners:

•  New Scientist interviews a patent examiner working with the European Patent Office (EPO).
• The Washington Post takes a look at the strenuous workloads of patent examiners working for the USPTO.
• An article about a patent examiner who falsified, and was paid for 730 work hours.

by aadibi

Blocking Patents Explained

What is a Blocking Patent?

A blocking patent is a patent that prevents a third party from the practice or commercial exploitation of a modified version of the the device or process underlying the patented invention. When a patent stops another product or service (even if patented)  from actually being produced because its execution would ultimately need to infringe upon it, it can then be referred to as a blocking patent. In practice companies employ blocking patents in a variety of strategically intentional ways. 

A Hypothetical Example of a Blocking Patent Would Be:

Suppose that a person, Sally, holds a patent for her invention of a bluetooth speaker, the Kube. Another person, James, creates an updated version of Sally’s Kube, with several added features and improvements not present in the original Kube—let’s call James’ invention the Ultra3. However, James cannot manufacture his Ultra3 without infringing Sally’s patent. In this case, the patent Sally holds for the Kube is a blocking patent. James’ best move would then be to try to cross-license with Sally.

Now let’s say a third party, William, recognizes a few years down the line that in order to work with new battery technology which would provide better battery life and louder playback for customers both the Kube & Ultra3  would need a new set of internal technology. If William creates that and patents it, Sally and James would ultimately have to cross-license with him in order to keep the Kube & Ultra3  viable on the market. James’ patent on improved battery technology would essentially then block the necessary innovation for the original inventions to stay viable on the market.

Examples of Blocking patents in the Real World

In January of 2017, a U.S. District Court ordered an injunction on sales of pharmaceutical companies Regeneron and Sanofi’s cholesterol medication, Praluent. This injunction on Praluent sales was the result of an ongoing patent dispute between Regeneron and Sanofi, and Amgen, the makers of a similar cholesterol medication called Repatha. Prior to the injunction, a lower court had already found Regeneron and Sanofi to be infringing on two patents held by Amgen. The patents in question cover a particular class of cholesterol-lowering medications called PCSK9 inhibitors; a class which includes Regeneron and Sanofi’s drug, Praluent. As the court upheld the validity of Amgen’s patents, they found Regeneron and Sanofi’s production and sale of Praluent to infringe on Amgen’s patents.

In the case just described, the pharmaceutical company Amgen’s patents for the drug Repatha act as blocking patents. Because Amgen owns patents for the entire class of cholesterol-lowering drugs known as PCSK9 inhibitors, competing pharmaceutical companies cannot manufacture and sell their own PCSK9 inhibitors. Even if the exact formulation of a competing company’s PCSK9 inhibitor medication, such as Praluent, differs from the formulations of any drug manufactured by Amgen, the competing company’s practice of their new PCSK9 inhibitor drug will infringe on Amgen’s patents. This is because Amgen’s patents cover the underlying mechanism and processes by which PCSK9 inhibitors work to lower cholesterol, not just the particular formulation of any PCSK9 inhibitor drug invented by Amgen, such as Repatha. For more information on the patent dispute between Regeneron/Sanofi and Amgen regarding their PCSK9 inhibitor medications follow the links.

Further Reading on blocking patents:

• “Blocking patents: What they are and what they do” by Dominique Guellec, Catalina Martinez, and Pluvia Zuniga in 2008. According to the authors, “When the exclusionary power provided by patents is aimed at keeping competitors off a particular market or technology field rather than at protecting an invention, patents become a strategic blocking tool for offensive or defensive purposes.” In other words, the purpose of a blocking patent is not simply to protect the patent owner’s invention against copycats, but to prevent competitors from putting rival products on the market that might redirect revenue away from the original patent holder. (similar to William’s battery technology in our bluetooth speaker example)
  In the paper, the authors examine the characteristics and impact of blocking patents. The authors find that patent applications which are cited as, “compromising the patentability of other applications, and that have never been cited as contributing to the state of the art, ”have a stronger impact on the likelihood of refusal or withdrawal than others”. The above is essentially their definition of a blocking patent. In addition, the authors find that patent applications which are subsequently withdrawn by their applicant are statistically the most effective in preventing other parties’ applications for patents of similar products. In the words of the authors, such patents have the greatest “killing power.”The sort of patent application just described—one which inhibits the success of other patent applications before being withdrawn by the applicant—is what the authors call a defensive patent application. Defensive patent applications, “endow their owner with no exclusive right per se (as no patent is granted) but keep competitors away from the relevant technological field, hence presumably from the corresponding market.” Unlike defensive blocking patent applications, offensive patenting only occurs when a blocking patent application is actually granted. The authors write that, ”Offensive patenting is conceived to threaten, attack and weaken others. It can be used to prevent competitors from using a technology or to restrain their freedom to operate by filing patents at the margin of their areas of activity, for example surrounding high value patents with a screen of minor patents.” Defensive patent applications, on the other hand, largely function to keep the market open for the patent applicant in question to maneuver without being blocked by the patent applications of others.

• A Brief Note on Blocking Patents and Reverse Equivalents: Biotechnology as an Example, by Robert P Merges. This article covers the reverse doctrine of equivalents and the potential limits of blocking patents.
• Exclusion and Exclusive Use in Patent Law by  Adam Mossoff. This article describes recent court decisions and their effect on legal nature of patents as constitutionally protected property with exclusionary rights.
• Used, blocking and sleeping patents: Empirical evidence from a large-scale inventor survey by Salvatore Torrisi, Alfonso Gambardella, Paola Giuri, Dietmar Harhoff, & Karin Hoisl. Information on patents and their strategic uses from a large scale survey of patent holders in US, Europe, and Japan.
• Study of blocking patents and many patents strategy by Japanese big companies by Yoshifumi Okuda and Yoshitoshi Tanaka found that 30% of patents filed by Japanese company were intended to cement first mover advantage in R&D.

by aadibi

So What Exactly is patent infringement?

Patent infringement. Big word, scary concept. But what does it mean?

When you hear about a company being sued for infringement, the important thing to understand is that infringement revolves around the violation of a principle. What principle? Someone reducing the ability of the wronged party to monetize their invention. Patents are all about my ability to profit for my invention by preventing you from doing the same.

According to United States law:

“whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent”

(as defined in 35 U.S. Code § 271)

In plain language,  this means that anyone who produces and/or profits from a patented invention in the U.S. can face litigation for patent infringement. In addition, anyone who imports an item into the U.S. that is manufactured in a way covered by an existing U.S. patent may be subject to litigation for patent infringement.

All this can usually be avoided if the importer makes sufficient material changes to that item or the item subsequently becomes a trivial and/or non-essential part of another item.

Now, another way businesses often encounter trouble is if they actively encourage others to infringe a patent (stealing a line of code to ship a product faster, for example) or by supplying others with or importing parts of a patented invention. (As an aside you must be extremely careful when importing products from foreign countries for this exact reason. You don’t want your products held by customs for patent infringement or over a trademark dispute)

The Types of Patent Infringement:

An instance of patent infringement is usually categorized as follows:

1. Direct infringement: The directly infringing party makes, uses, offers to sell, or sells a patented invention without authorization from the patent owner.
2. Induced infringement: The indirectly infringing party encourages or enables another party to infringe a patent.
3. Contributory infringement: The contributorily infringing party provides a directly infringing party with a part that is used to produce an infringing item, where the contributed part has no significant non-infringing use.
4. Literal infringement: The language of the accusing party’s patent claim corresponds directly, or is identical to the alleged infringer’s item or the processes thereof.

As you can see, someone can be subject to litigation for patent infringement without directly infringing a patent (or by filing a similar patent of their own). For more information on the different kinds of patent infringement, read more on litigation and infringement & types of infringement.

Patent Infringement Litigation

If a patent owner believes someone has infringed upon their patent, they may sue that person in a federal court of law. The patent owner’s lawsuit may demand that the accused party cease and desist their unauthorized use of the patent owner’s invention, as well as claim compensation for the accused party’s unauthorized use of the patent owner’s invention. The damages paid to a patent owner as a result of a successful lawsuit are either in the form of actual damages or reasonable royalty for the infringing use of their patented invention.

Actual damages cover profits that were lost to the patent owner as a direct result of the infringing action, while reasonable royalty is calculated according to factors such as the type of item patented, the time remaining on that item’s patent, other royalty arrangements, and any other relevant issues.

In certain cases, the patent owner will seek to have a preliminary injunction issued against the party accused of patent infringement, in order to bar them from their allegedly infringing activities while the lawsuit is in process. It is standard procedure for the court to issue a permanent injunction against the accused party should they be found culpable in violating a patent. A patent owner that wishes to sue for infringement of their patent must do so within six years of the alleged infringement.

The patent owner’s lawsuit will not succeed if the court finds:

• That the accused party doesn’t need a license to the patent
• That at least one of the patent owner’s patent claims is invalid
• That there are other reasons why the patent owner is not entitled to their demands

The most common defense against allegations of patent infringement is to argue that the accuser’s patent claims are invalid. According to the United States Patent and Trademark Office, “The court may conclude that the patent claim is not valid if it is shown that the claimed invention was disclosed in a prior patent or patents, a book, a magazine, a newspaper, a television show or movie, a web page or other published work before the date of the claimed invention… [or] if it is shown that the claimed invention was offered for sale in this country or was disclosed to the public more than one year before the application for the patent was filed.”

The accused party may also argue that their accuser’s patent is not valid by claiming that the patent falls short of meeting the required criteria of novelty and nonobviousness. The court may also find the patent to be invalid on the grounds that it fails to meet other statutory requirements—for example, if the written description of the patented invention is insufficient or does not describe something that is eligible for patent—or if the patent owner is proved to have provided the United States Patent and Trademark Office with false information in their patent application.

If you believe someone to have directly or indirectly infringed your patent, or if you have been accused of patent infringement, you should seek the assistance of a patent attorney to determine your best course of action. Get in touch with us if you’d like to learn more, or if you have fears that your intellectual property has been placed in jeopardy.

by aadibi

What Are Provisional Patents? (In Plain English)

Most of the time, the original idea you have for an invention will not be the final draft of the invention that you want to patent. There are details that need refining and time needed for research. However, very often, inventors find themselves in situations where it is in their best business interest to obtain patent-pending status before the final blueprints are drawn and a prototype is developed. In scenarios like these, it’s hard to accurately describe everything that needs to be covered in a full patent because you simply don’t know all of the details yet. With a provisional patent, you can get legal protection for your idea while allowing yourself time to hammer out the details.

The provisional patent application (PPA) takes some of the pressure off of the patent process by giving inventors way to claim “patent pending” status on their invention for a fraction of the effort and cost of a traditional application, albeit only for a limited time. Like all patent applications, a provisional patent effectively protects you from facing any statutory bars that would prevent you from manufacturing and selling your idea, as well as preventing others from manufacturing and selling your idea. It is essentially a short document written in plain English that consists of text and drawings describing your idea. It is much more informal than a regular patent and requires none of the arcane legal jargon. (For more on filing a provisional patent, see NOLO’s guide on Provisional Patent Application Procedures.)

When done correctly, a PPA establishes an effective filing date and allows you to claim “patent pending” on your invention for 12 months thereafter. Filing a non-provisional patent for that invention within that 12-month window then allows you to claim the PPA filing date as proof that your invention was filed before a competitor’s. It’s important to understand PPAs as the first step in filing a non-provisional patent and not an alternative to a non-provisional patent, as they only offer you protection for a short time. You will ultimately need to file a formal patent application to complete the process and fully protect your idea. However, there are marked benefits of filing a provisional patent first, as long as you know what pitfalls to avoid and remain wary and knowledgeable.

So what benefits does a provisional patent offer?

1. It offers an expedited way to protect your invention
2. It costs less to file than a traditional patent
3. It buys you time to consider how to produce and market your invention
4. It gives you legal protection as you negotiate production

Until recently, inventors could legally prove a date of invention that preceded filing a patent by documenting the building of a testing process. The U.S. adopted a first-to-file system on March 16, 2013, meaning that the first person to file a patent for a given idea is given rights to that idea. Under this law, it is in the best interest of the entrepreneur who wishes to profit from the legal protection of a patent to file sooner rather than later. While an inventor can of course file for a traditional patent application and begin to negotiate with manufacturers while they are in the purgatory of non-provisional patent-pending (manufacturers generally won’t risk ripping off an idea if there is risk of a patent infringement lawsuit), the time crunch can sometimes make it difficult to flesh out a viable patent in time to file before competitors. A proper patent application can also be a lot of time, energy, and legal expenses, meaning one should have a very clear idea of their invention and what they want out of it before filing. For more on considerations to make before filing a patent application, see how and when to file a patent.

An Expedited Way to Protect Your Invention

PPAs allow you to forgo some of the more complicated aspects of a patent application, such as the Patent Application Declaration (a statement made under penalty of perjury that you are the true inventor and have disclosed all known information relevant to the examination of the application) and the Information Disclosure Statement (a statement disclosing all the information known to you related to the originality of your invention). Even though the provisional patent does not require the same degree of detail as a full patent, it is still important to be careful in the wording used to describe your idea. A poorly done provisional patent may mean that you do not get any benefits from your idea—or worse, it may be used to demonstrate that at the time of filing you were not in possession of the designs for a particular invention, which is definitely not a best-case scenario.

A Cheaper Way to Protect Your Invention
PPAs are a valuable tool for anyone with a tight budget, i.e., nearly everyone in the patent world. No one has the money to protect every whimsy of an idea with non-provisional patents, but when you have a potentially patentable idea, you still need to take responsible steps to secure your rights. That’s where a PPA comes in. A PPA costs $65 for a micro-entity, $130 for a small entity and $260 for a large company. PPAs also end up costing much less in legal fees thanks to the lack of formal requirements. Between the lawyers and patent searches necessary to prepare a non-provisional patent, the application can end up costing into the tens of thousands of dollars. Additionally, unless you file a non-provisional patent claiming priority benefit of the PPA filing date, the U.S. Patent office will not do anything with your PPA, meaning no additional PTO or attorney fees unless you decide to move forward with your invention. While the financial benefits can be enormous, remember that you should not move forward impulsively, as a PPA can still end up being a waste of time and money if poorly prepared.

A Way to Buy Time in a Competitive Market

Since it’s best to obtain patent pending status as soon as possible in the current legal climate, you should consider filing a PPA once you have an idea that is concrete enough to describe. Then, as you take steps towards filing a non-provisional patent, you can make improvements to your original PPA, or even file a new PPA if your idea changes substantially from your first draft.   This allows you additional flexibility in the development of your idea, as new subject matter cannot be added to a non-provisional patent once it is filed. If you are still in the development stages of your invention, you should definitely consider filing a PPA over a non-provisional patent.

A Way to Protect Your Idea During Business Negotiations

Most potential manufacturers can be trusted to be honest, but even so, there are few inventors in the market to patent an idea that would rely solely on trust when disclosing an idea to negotiate a deal. At the same time, most manufacturers are very understandably unwilling to sign binding non-disclosure agreements before even seeing an invention. (However, these business relationships do take place. You can learn more about trade secrecy and inventions at https://nondisclosureagreement.com/). In terms of your own business interests, it’s important to remember that under the America Invents Act, passed September 12, 2011, public sale of your invention or disclosure of your idea prior to filing a patent can interfere with your ability to obtain patent protection. A PPA allows you legal protection over your idea while you finalize the business plans needed for a non-provisional patent.

A word or two on disclosure

Unless the ideas in your PPA are disclosed properly, you will not benefit from an earlier filing date. When describing your invention in a PPA, you should disclose as much as possible to make sure your ideas are legally protected. There have certainly been many inventors with provisional patents who, upon filing for a non-provisional patent, were disappointed to find out that someone else had patented an aspect of their invention that they left out of the original designs. However, as stated before, improperly describing your idea at this stage can lead to problems if the idea changes significantly from the original blueprints. It is important to make sure that you have developed your idea and business strategy so that you can describe them in sufficient detail and avoid these complications down the line.

That means no cutting corners. Even though a PPA is much less formal than a non-provisional patent (and therefore, a bit less work for your lawyer), it still must provide a complete description of the invention that is broad in terms of what is covered, but specific enough to meet all patentability requirements at the time of filing. What do I mean by complete? Generally, a patent is considered to provide a “complete” description of the invention if someone familiar with the technology is able to make and utilize the invention using solely the patent application that is filed. Basically, your provisional patent should read like a good instruction manual for assembling and using your idea. For further protection, it should also include any alterations or variations that occur to you during the development process.   If your invention begins to generate income, competitors will inevitably appear and try to gain access to your market. The more savvy competition is not going to infringe upon your rights, but will instead seek to approximate your invention as closely as possible without technically mimicking your idea. Therefore, you should think of your invention in terms of ‘what works’ and not just ‘what works best’ to make sure you are legally covered.

Whether or not a PPA is the correct move depends on your business plans, the stage of development of your invention, and the relative benefits of disclosure. While a PPA can seem like an entrepreneurial dream come true, it’s important to seriously consider all of these things before moving forward with any patent application. If the correct considerations are made, however, a PPA can offer you an excellent way to legally protect your intellectual property while allowing you time to iron out the fine details in order for the more involved non-provisional patent application.

by aadibi

When To File a Patent

Everyone has had an idea that struck them as the next ‘big thing’. You might quickly dismiss some of these ideas and move on. Other times an idea sticks. Hopefully you do a bit of patent research and think you might really have something that’s never been done before. These ideas whether out of nowhere or after years of careful consideration, hit us with such inspiration and originality that we can’t help but wonder, “Should I go ahead and patent that?”
While what you have in mind might rival the Roomba in innovation, its important to consider all factors before going through the legal process of filing a patent. Depending on the idea, market, and execution, getting a patent could either be the best business decision of your life or a big headache that costs you more time and energy than it was worth. Unfortunately, it’s not as simple as mailing in blueprints and collecting cash from anyone foolish enough to produce something similar to your invention. After you and your patent attorney submit a patent, your invention becomes “patent pending.” During this time, the patent office may contest aspects of your claim, leading to a back-and-forth between the patent attorney and examiner that’s known as a patent prosecution. Because of the complications that can arise during this process, it’s important to ask yourself these questions before taking the legal plunge:

• What do I want to accomplish with a patent?
• What are the benefits of patenting my idea?
• Is my patent viable?
• Is there a market for my invention?

• Can I expect to get claims covering a competitor’s idea?

What do I want to accomplish by patenting my idea?
What is your business strategy once you obtain a patent? Are you planning to manufacture and sell your product? Do you want to license the rights and benefit from the royalties? Do you simply want legal bragging rights for having a damn good idea? While affirmation from the United States Patent and Trademark Office might seem like exactly what you’re looking for, a patent may not be the best strategy going forward–even in the case of a patentable and marketable idea. For example, if your idea deals with the design or manufacturing of a product and would not readily be reverse engineered, keeping it a trade secret is worth deliberating. Determining the proper strategy requires reflection on what you hope to achieve using your idea and how a patent might facilitate that.
What are the benefits of patenting my idea?
What can a patent do for you? While ideas are a dime a dozen, the legwork required for a patent-worthy invention should be seriously considered before rushing over to your local patent attorney. There’s nothing worse than a patent sitting in your file cabinet and collecting dust while competitors benefit from the published blueprints of your brain-child.

The thing is, a patent is an explicit bargain coming from a long tradition of industrial practices—limited exclusivity in the rights to produce your invention in exchange for an understanding that those rights will eventually be shared with the public.   It’s crucial to understand what this bargain means in the context of your idea and situation as you enter into the patent process. Great ideas happen all the time, but filing a patent and executing an idea takes thought and preparation. So, before you rush over to your nearest patent attorney, spend some time contemplating whether the potential rewards outweigh the potential costs.

The first thing to consider is the exact rights that patenting an idea will give you. A patent gives you the right to exclude others from making, using, selling, and importing a product or process covered by your claims. Many people (including Supreme Court Justices) explain patents as a monopoly, or as a legal process that provides a monopoly. However, the term monopoly in this setting is misleading. Patents do have the ability to exclude competitors from your target market, resulting in a sort of monopoly, but this requires a strong patent with solid claims. There exists a large gap between a baseline document you can push through the U.S. patent office (the majority of patents) and a patent that gives you an edge over competitors.

Is your patent viable?
Of course, as an entrepreneur, you’re probably banking on obtaining a patent that does give you a bit of a monopoly, which is why you must examine the viability of your patent before moving forward. The unfortunate reality is that the majority of patents that are filed do not result in financial gain for the investor. While the estimate for the percentage of patented innovations has risen slightly (from an estimated 2% to anywhere between 2% and 10%), this is mostly a result of the mass amount of portfolio licensing that happens at the highest corporate level. Given these odds, it’s essential that inventors flesh out their ideas before patenting—lest they run the risk of a rejected application (or worse, a successful application that is too narrow in scope to legally protect an idea). In a best case scenario for an entrepreneur patents give you an opportunity to build out a position before competitors can bite into your share of the market.

In order to determine the viability of your patent, you first need confirmation that your invention works. Whether through rigorous testing or a crude prototype, it’s important to know that whatever you are spending the time to legally protect is worth legally protecting and not a dud that wasted you several hours filing paperwork. You should then seriously consider whether or not a patent helps to promote your business goals to figure out whether it makes sense to move forward with a patent attorney.

If a patent really is the best choice for you, it’s time to look into a professional patent search. It’s important to know the scope of the rights you would be able to obtain in order to inform your business inquiries. If it turns out that there is not an opportunity to get rights through a patent, or that the anticipated rights would be quite narrow, there isn’t much point trying to file.

The road to riches isn’t well paved. It will take time, money, and energy to create a successful patent. Continuing to invest time, energy, and money only makes sense if the project continues to make business sense, so as you develop your idea and move forward into legal territory, it is important to periodically reevaluate the viability of your idea.

Is there a market for my invention?
Related to the idea of whether or not your patent makes business sense is whether or not there is a market for your invention. While considering potential markets when filing a patent may seem obvious, many inventors fail to properly do so. The simplest litmus test for whether or not there is a potential market is to talk to people who might be interested in your idea and listen to their opinion. If 20 people you know who are in your target market tell you that they’d be interested in your invention, that’s a fairly good sign. If 20 people in your target market all say that your invention would be a waste of money, you should probably go back to the drawing board. Now, for the real test, come back a few days later and ask those 20 people if they liked your idea well enough to tell anyone else about it. If a few people were interested enough to endorse you, you can guarantee more wide-spread enthusiasm for your idea

Finding a target market is easy for a lot of inventors, mostly because they’ve created an improvement to an existing gadget or have invented something that, although novel, does something more efficiently than whatever existed before (think of the switch from VHS to DVD). However, depending on your invention, it might be necessary to first create a market. This, of course, is much more difficult, as it requires convincing people that they need something they might not have previously thought about. For example, look at the DVR. Before we were able to pause live television and record our favorite shows, the DVR might have seemed excessive, but once you have a DVR, you quickly realize its utility. Of course, the utility of the DVR is fairly straightforward. With some products, you might need to create interest by educating the consumer about your product, creating demand and, ultimately, a market.

Without a market, your patent has no way to become a monopoly. Careful thought needs to be put into whether a market exists or can exist, how large that market is, and whether your invention can compete within the market. Patents that are litigated are litigated precisely because there is a market and, therefore, money at stake. However, numerous patents are created that obviously do not have a market and could never yield a monopoly that benefited the inventor. For examples, take a look at the Museum of Obscure Patents.

In addition to considering the parameters of your envisioned market it’s important to avoid exaggerating the size of the market in the heat of your excitement. Spend some time thinking about who will want to utilize your invention and why. This is extremely important, and really deserves its own article, but as you make predictions about the success of your idea, it’s imperative to remain realistic and avoid falling into the common pitfall of believing that everyone will purchase your product or service. Once again, there are tons of obscure patents out there that went nowhere.

Can I expect to get claims covering a competitor’s idea?

A successful idea begets copycats who want to take your market. It’s just business—nothing personal. Simple economics tells us that if there is money to be made then new people will continue to enter the market until all the additional money is tied up. A patent prevents these new entrants from encroaching on your market, which is another reason that before filing a patent you should have thought out the branding and development and have a clear idea of how your patent could be monetized.

In order to know whether a patent is worth the investment, the more important question is not “Can I get a patent?” but rather, “Will the scope of protection that a patent offers be legally advantageous?” While narrowing your claims can make obtaining a patent easier, it allows competitors the opportunity to take the barebones of your invention and layer on enough specifics to make it seem new. The US Patent Office is overflowing with digital file cabinets of patents that are exploited in this way.

So, should you decide to file, what sorts of claims will you be likely to receive, and will your patent prevent competitors from using your invention? After all, a patent isn’t a guaranteed royalties generator, but simply a document that gives you the right to exclude others from using your idea. Put another way, patents prevent mimicry of your idea, but they don’t guarantee that other people will want to pay to mimic it.

But if your idea is that good, why wouldn’t other people want to use it? Let’s take a look at the pharmaceutical industry as an example. In the fast-paced world of biochemistry, tons of compounds are developed that have the potential to treat various diseases and ailments. At the time of development, the pharmaceutical company has no way of knowing which compounds will be useful for research or will pass clinical trials and be approved by the FDA for sale. However, if they do not patent their idea, they run the risk of another company manufacturing the next big cancer drug or the cure for Parkinson’s. As such, pharmaceutical companies spend millions obtaining patents, only a few of which end up benefiting them.

As a pop-culture example, think about the corn-baller, the fictitious kitchen appliance from Arrested Development that was marketed by George Bluth in the 1970s. While the corn-baller remained a Bluth family staple, its tendency to give its operators serious burns meant that other producers were not likely to try to reproduce it, making any patent George Bluth might have filed unprofitable.
Remember: There are many different regulations surrounding the types of goods that can be sold and produced and how these goods are sold and produced. Getting a patent does not mean that your idea will meet these regulations and that you will have the right to sell or market your invention. It only means that you can prevent competitors from selling or marketing your idea.

While deciding whether or not to patent an idea can seem daunting, making these considerations during the planning stages should leave you well prepared and well equipped to file a patent. Success isn’t easy, and failure unfortunately common, but if you believe in your idea and plan correctly, you may find yourself well on your way to business prosperity.

by aadibi

How To Find the Right Patent Attorney

Patenting an invention is a complex and involved process that can be crucial for the growth of your business. Finding the right attorney, with the right experience, who you like working with is key. This post will briefly walk you through how to approach the process of finding the right attorney for your needs.

Step 1: Assess Your IP Needs

Before you begin you should put some time and thought into determining exactly what your needs are and the technical nature of your invention. Experience in your area will be key to making sure IP matters can be handled smoothly. Does your business specialize in inventing, marketing, and selling new products and innovations? If yes, then you probably want to look for someone who specializes in patents and trademarks in that area. However, if your business is also involved in online ventures or publishing, it might behoove you to seek out an attorney who deals with First Amendment and information technology law. If you’re trying to patent IP core to your startup it would also be a good idea to look for a lawyer with experience in that area.

Another decision you’ll need to make is to determine what kind of professional best suits your needs: a patent agent, or a patent attorney. Both patent agents and patent attorneys are licensed to practice by the U.S. Patent and Trademark Office. However, while a patent attorney is a full attorney specializing in patent law and is thus able to represent you in a court of law, a patent agent has only passed the section of the bar exam pertaining to intellectual property and lacks the full legal capabilities of an attorney. With the downside that a patent agent cannot represent you in court. As both patent agents and patent attorneys are required to hold a technical degree in a field such as electrical or mechanical engineering, computer science, chemistry, etc., you’ll want to choose an agent or attorney whose technical specialty encompasses the kind of invention you’re seeking to patent. But generally speaking given the technical and legal complexity inherent in most patent matters most people opt for patent attorneys.

Finally, a useful preliminary step might be to spend some time doing your own homework about hiring attorneys in general and patent procurement (by reading articles like this one). While you won’t be filing the patent yourself, doing the research to familiarize yourself with the legal process and steps involved in filing a patent can make it easier for you to work with your attorney, and potentially cut costs & help you save money down the road.

Step 2: Look For Patent Attorneys In the Right Places

Now that you’ve gone through the process of assessing your needs, it’s time to search for the attorney that will best meet them! It is recommended that you avoid the common, if misguided step of asking around for recommendations in your social and professional circles. While people you know might be happy to recommend a lawyer they know personally, you must be sure they’ve actually had a working relationship with them and that they specialize around your needs.  If your colleagues do know a lawyer who has successfully practiced in a certain area this could at least be a good way to start evaluating a candidate.  

I’d recommend searching through the web and evaluating the profiles and ratings of local attorneys in your area. The goal here is to gather as much information as possible on the reputation of your attorney and spot red flags early. At this phase the firm or attorney’s site, social profiles, Google Business Pages, and sites like Avvo are all your friend. Nothing will replace meeting your attorney in person and making sure you can both have a strong working relationship but you’ll save yourself some time if you can at least be confident that both of you can work well together.

Another option is to check out local inventors’ groups and clubs. These groups can be helpful in providing recommendations for patent attorneys and agents in your area. The United Inventors Association is a non-profit organization helps inventors and inventors’ organizations, and their website can help direct you to nearby inventors’ groups: www.uiausa.org.

The goal is to find out everything you can about their reputation and how they represent clients, including reviews of their services and quotes to the press. It is also useful to try to get a sense of their workload, as lawyers who are already involved in large and ongoing cases will have less time and attention to devote to your case.

As a final check make sure you’re dealing with the real deal. The United States Patent & Trademark Office search can help you find licensed patent attorneys and patent agents organized by state.  And of course make sure they haven’t been disbarred.  

Set Up Preliminary Interviews

Now that you’ve finally established a list of a few qualified candidates for the job after doing your research, it’s time to get in contact with their offices. When you get in touch, first make sure that they’re currently accepting new clients, and if so, schedule a preliminary interview. Make sure to dress professionally for your interview, and arrive prepared with all the relevant details that will help your potential lawyer decide whether or not the two of you are likely to have a fruitful working relationship. Be ready to ask questions about how in particular they usually conduct patent searches, the patents they’ve successfully registered in the past, their anticipated time frame for working with you, and the fees you can expect to pay. Make sure to ask for references of past clients, and to check them.

It’s worth looking into whether a particular attorney you’re considering, any of their other clients, or even their family has potential conflicts of interests that might impede their giving you the service you’re paying them for. Finally, be sure to look over and thoroughly understand a copy of a firm’s retainer agreement before making any commitments.

If you need any more tips finding the right patent attorney feel free to message me directly.