April 2011
So, naturalists
observe, a flea
Has smaller fleas that
on him prey;
And these have smaller
still to bite 'em,
And so proceed ad infinitum.
- On Poetry: a Rhapsody Jonathan Swift
Innovation in a free market is risky. For example, a utility patent can help to
minimize the risk of competition, but is itself a risk. Investment (from $10,000 to $30,000) in a
patent application is wasted if the patent office denies grant of a
patent. And a patent doesn’t even guarantee
that we can use, sell, or profit from embodiments of our own inventions, though
we can often do so without a patent.
Patent attorney Ronald Aust
helped us understand the risk of a utility patent and how to minimize it.
In some ways, a patent is like a land deed. A deed specifies where someone’s land is; claims
of a patent specify where (in the world of useful ideas) someone’s invention
is. Owners of either land or invention
can tell others to keep off their property, can sell or rent their property,
and can use their property to develop business relationships. Both land and invention can be inaccessible
to the owner if they are enclosed by another’s property. For
example, if you improved someone else's recently patented chair by adding
rockers to it, you might need to reach a cross-licensing agreement with that
person before you could sell your patented rocking chair.
Unlike a land deed that can convey a high probability of permanent
ownership, a patent conveys a moderate probability of time-limited (usually about
17 years) ownership. A patent is just the
patent office’s tentative (though influential) opinion that a patent holder
owns intellectual property. Anyone may,
for good reason, challenge that opinion in a federal court. If the court decides that the patent is
invalid or unenforceable, the defending patent owner loses the patent and at
least $300,000 in legal expenses.
Not every innovator
needs a patent. If the law would let you
sell embodiments of your patented invention, it would often let you sell those
same embodiments without having a patent.
A patent is only one means of protecting your share of the market. Other protective means include persuasive
marketing and public relations, an enthusiastic sales force, a strong business
network, or high startup costs. Especially
for a fad invention whose popularity will quickly fade, or for an invention
that won’t yield enough profit to attract competitors, it might make more sense
to skip the patent and go straight to market.
The first step
toward obtaining a patent is to show that the invention works (utility patents
are granted only for useful inventions).
That can be done explicitly (in an actual reduction to practice) by
testing a physical form of the invention, or implicitly (in a constructive
reduction to practice) by filing a patent application.
The second step is
to enter the lengthy (think at least 2 years) patent application process,
usually through one of two doors. The
earlier and tentative entry – a provisional patent application – leads only to protection
(for 1 year) of a place in line at the patent office. This gives an applicant time to save money
for the patent process, to study the market, or to decide whether the benefits
of a patent will outweigh the costs. The
later and assertive entry – a nonprovisional patent application – may be opened
directly or via the tentative entry, and can lead to a patent. Opening this door by filing a nonprovisional patent
application starts a dialog between the applicant and the patent office examiner. They discuss whether the invention merits a
patent, and if so, what the final form of the patented invention will be. If all goes well, and after the applicant
pays several fees, the examiner will allow issue of a commercially valuable
patent to the designated owner of the invention. If the examiner decides instead to deny issue
of a patent, appealing the decision or requesting continued examination of the
application can still result in a patent.
Keeping the patent for several years requires payment of more fees.
Literature searches
performed before filing a patent application decrease the risk of wasting money. If a patentability search finds that someone
else invented your invention first, there is usually no reason to file a patent
application. If a freedom-to-operate
search finds that using your own invention will require negotiation of a
cross-licensing agreement, you will be able to make a more informed decision
about whether to file an application.
While your
provisional or nonprovisional patent application pends, you might study the
marketability of your invention. If few
people would buy the invention at your selling price, you might decide to cut
your losses and abandon the application.
Pending legislation
(America Invents Act, H.R. 1249,
S.
23) proposes to grant a patent to
the first inventor to file a patent application, rather than to the first to
invent. If that Act becomes law, filing
a series of provisional applications on inventive increments, as your invention
develops, will decrease the risk of losing the race to another inventor.
Thank you, Mr.
Aust, for helping us decide whether to patent our inventions.