September 2009
Mr. Marcelo Copat and Mr. Dan Lechleiter, patent attorneys from Baker & Daniels LLP, treated us to a very useful discussion of patent fundamentals. Here are just a few of the highlights (you should'a been there ...).
In exchange for disclosing your invention to the public in an issued patent the U.S. government gives you a set of negative property rights. You don't get the right to benefit from your invention, but you do get the right to stop others from benefiting for the duration of the patent. What good is that? Many inventors cast their inventions upon the waters of the market, and a patent helps prevent dilution of any profit the market might return. By excluding others from making, using, selling, offering to sell, or importing your invention in the U.S. you:
• may dominate (or at least position yourself well in) the market, by eliminating most competitors and by persuading most of the rest to cooperate with you;
• in so doing, increase the desire of companies to license (rent) or buy your invention;
• add the value of your patent (which, like most other property, can be bought, sold, and taxed) to your company's assets;
• increase your reputation as an inventor or innovator.
The U.S. grants a patent to the first inventor of an invention, not necessarily to the first person to file a patent application for that invention. How do you show you invented first?
• Record your thoughts and actions in detail, in a bound notebook. Just the facts; no opinions. Test results are what they are; don't comment on them. You, and a non-inventor witness who understands what you are doing and who signs a nondisclosure agreement, sign and date every page.
• Record the event and date of conception - the date you think of the final detailed idea of your complete working invention, as it will be sold and used. Also, you might send via the post office a letter to yourself that includes all the details needed to enable someone like yourself to make and use your invention. Don't open the letter; just save it as evidence.
• Record the event and date of reduction to practice (the last step of inventing) - the date you finish building and testing (if necessary) a physical working model of your invention, or the date you file a patent application.
• Keep working on your invention between the date of conception and the date of reduction to practice, and record what you do. For example, record and date your order of materials that will take 6 months to arrive. This is evidence of your diligence, of your one continuous act of inventing.
Be careful about publicly disclosing your invention. Once you do, you have 1 year to file a patent application. Wait an extra day to file, and you are out of luck. So how can you find out whether the cost and effort of patenting your invention is likely worthwhile? One way is to ask people if they would be interested in buying an unspecified product that could provide a specific benefit. If you need to disclose any enabling details about your invention to a particular person, avoid public disclosure by having that person sign a sound confidentiality agreement. Realize that many so-called nondisclosure agreements won't protect you from anything.
Many inventors like the idea of filing an inexpensive ($110 for a small entity) provisional patent application. The patent office doesn't examine the content of a provisional application, and you don't gain anything from a provisional application unless you follow through by filing a later nonprovisional patent application. A poorly constructed provisional application is like a bad haircut - some can be fixed, some can't - and it can dissuade an otherwise interested company from licensing your invention. So why file a provisional application?
• Get a file date for whatever enabling disclosure you include. This is evidence of your interest in patenting your invention, and helps prove you invented before someone else.
• Label your product "patent pending" and operate without fear of post-filing public disclosure preventing a patent.
• Delay the cost and formality of filing a nonprovisional patent application by 1 year.
• During that 1 year, continue to file other provisional applications as you improve your invention, and combine them into one nonprovisional application at the end of the year.
• If at the end of the year you decide not to file a nonprovisional application, and you haven't publicly disclosed your invention, your invention remains a secret.
Draft your patent claims to impale an infringer you would take to court. If two parties would collaborate to infringe one of your claims, which party would you sue?
How much does a U.S. nonprovisional utility patent cost a small entity?
• Minimum application fees: $462. If you get the patent, add publication and patent issue fees: $1055.
• To keep your patent, add $490 at 3½ years, $1240 at 7½ years, and $2055 at 11½ years.
• If you have to enforce your patent in court, plan on spending from $650,000 (less than $1 million at risk) to $5.5 million (more than $25 million at risk).
Enforcing your patent rights against infringement usually involves three steps:
1. Evaluate a potentially infringing product to see if it really conflicts with your patent claims.
2. If it does, tell the infringer. You could:
• simply state that the infringer's product conflicts with your claims;
• ask the infringer to stop infringing;
• file a complaint with the court, but before serving it, tell the infringer a suit is pending (this is good incentive for the infringer to reach an agreement with you);
• file and serve the complaint.
3. If the infringer stops infringing, case closed. If the infringer wants to continue to benefit from your invention, maybe you can agree on a licensing deal. If necessary, take legal action to stop the infringement.
Thank you for this great presentation, Mr. Copat and Mr. Lechleiter!
In exchange for disclosing your invention to the public in an issued patent the U.S. government gives you a set of negative property rights. You don't get the right to benefit from your invention, but you do get the right to stop others from benefiting for the duration of the patent. What good is that? Many inventors cast their inventions upon the waters of the market, and a patent helps prevent dilution of any profit the market might return. By excluding others from making, using, selling, offering to sell, or importing your invention in the U.S. you:
• may dominate (or at least position yourself well in) the market, by eliminating most competitors and by persuading most of the rest to cooperate with you;
• in so doing, increase the desire of companies to license (rent) or buy your invention;
• add the value of your patent (which, like most other property, can be bought, sold, and taxed) to your company's assets;
• increase your reputation as an inventor or innovator.
The U.S. grants a patent to the first inventor of an invention, not necessarily to the first person to file a patent application for that invention. How do you show you invented first?
• Record your thoughts and actions in detail, in a bound notebook. Just the facts; no opinions. Test results are what they are; don't comment on them. You, and a non-inventor witness who understands what you are doing and who signs a nondisclosure agreement, sign and date every page.
• Record the event and date of conception - the date you think of the final detailed idea of your complete working invention, as it will be sold and used. Also, you might send via the post office a letter to yourself that includes all the details needed to enable someone like yourself to make and use your invention. Don't open the letter; just save it as evidence.
• Record the event and date of reduction to practice (the last step of inventing) - the date you finish building and testing (if necessary) a physical working model of your invention, or the date you file a patent application.
• Keep working on your invention between the date of conception and the date of reduction to practice, and record what you do. For example, record and date your order of materials that will take 6 months to arrive. This is evidence of your diligence, of your one continuous act of inventing.
Be careful about publicly disclosing your invention. Once you do, you have 1 year to file a patent application. Wait an extra day to file, and you are out of luck. So how can you find out whether the cost and effort of patenting your invention is likely worthwhile? One way is to ask people if they would be interested in buying an unspecified product that could provide a specific benefit. If you need to disclose any enabling details about your invention to a particular person, avoid public disclosure by having that person sign a sound confidentiality agreement. Realize that many so-called nondisclosure agreements won't protect you from anything.
Many inventors like the idea of filing an inexpensive ($110 for a small entity) provisional patent application. The patent office doesn't examine the content of a provisional application, and you don't gain anything from a provisional application unless you follow through by filing a later nonprovisional patent application. A poorly constructed provisional application is like a bad haircut - some can be fixed, some can't - and it can dissuade an otherwise interested company from licensing your invention. So why file a provisional application?
• Get a file date for whatever enabling disclosure you include. This is evidence of your interest in patenting your invention, and helps prove you invented before someone else.
• Label your product "patent pending" and operate without fear of post-filing public disclosure preventing a patent.
• Delay the cost and formality of filing a nonprovisional patent application by 1 year.
• During that 1 year, continue to file other provisional applications as you improve your invention, and combine them into one nonprovisional application at the end of the year.
• If at the end of the year you decide not to file a nonprovisional application, and you haven't publicly disclosed your invention, your invention remains a secret.
Draft your patent claims to impale an infringer you would take to court. If two parties would collaborate to infringe one of your claims, which party would you sue?
How much does a U.S. nonprovisional utility patent cost a small entity?
• Minimum application fees: $462. If you get the patent, add publication and patent issue fees: $1055.
• To keep your patent, add $490 at 3½ years, $1240 at 7½ years, and $2055 at 11½ years.
• If you have to enforce your patent in court, plan on spending from $650,000 (less than $1 million at risk) to $5.5 million (more than $25 million at risk).
Enforcing your patent rights against infringement usually involves three steps:
1. Evaluate a potentially infringing product to see if it really conflicts with your patent claims.
2. If it does, tell the infringer. You could:
• simply state that the infringer's product conflicts with your claims;
• ask the infringer to stop infringing;
• file a complaint with the court, but before serving it, tell the infringer a suit is pending (this is good incentive for the infringer to reach an agreement with you);
• file and serve the complaint.
3. If the infringer stops infringing, case closed. If the infringer wants to continue to benefit from your invention, maybe you can agree on a licensing deal. If necessary, take legal action to stop the infringement.
Thank you for this great presentation, Mr. Copat and Mr. Lechleiter!