Eret C. McNichols
Maier & Maier, PLLC
Real World v. Patent World
Legend has it that long ago King Hiero II was given a golden crown that was made by a local goldsmith. The King was leery of the goldsmith's honesty and tasked Archimedes to determine the authenticity of the golden crown. Archimedes had to accomplish this task without damaging the crown in any way. He was fraught with anxiety on how to determine the authenticity with out damaging the King's new gift. To ease his nerves one night, Archimedes took a hot bath. As he stepped into the tub he noticed the water level rise, spilling some on the floor. Instantly, he realized that the water rose by an amount that was equal to the volume of his body. Archimedes knew that without damaging the crown he could use the volume and the weight of the crown to determine what whether it was a fake and made of mere silver or authentic and made of pure gold. He was so excited he ran through the streets, dripping wet and naked, shouting "Eureka!" which means "I have found it!"
This anecdote teaches us that conception is the foundation of innovation. Nearly every free thinking person that has both an imagination and an inquisitive mind has conceived of at least one idea. Conception is that "eureka moment" when the solution to a problem becomes instantly clear.
As any inventor knows, the real world and the patent world are mutually exclusive. For example, an inventor may invent a widget that does something or makes a task easier. That inventor may build and use the widget to improve her own way of life. In such an example, her widget is so useful that her neighbors want one for themselves, so being the good neighbor she builds each of them one. As the idea catches on and the orders come in, our inventor realizes that she could sell these widgets to offset her time spent building them, which she does. But a person in the next county begins building the widgets at a faster pace and selling them for a lower price. Naturally, our inventor cries "no fair."
The moment an inventor desires to profit off of their idea or prevent others from making it, they enter the patent world. This is a world full of mundane details, antiquated language and strict timelines. The line between an inventor maintaining their rights in their invention and losing them is as this as a knife's edge.
There are many important steps that inventors and small companies must know to successfully maintain their rights in their invention. Below is a Top Ten Pitfalls list of the most common mistakes every inventor or small company should avoid during the patent process.
Invention, Not to be Confused with Conception
Pitfall #1: Having an Idea but no Invention:
In the patent world, merely having an idea is not enough. An inventor must also reduce the idea to practice before the idea is considered an "invention" by the USPTO. Some inventors mistakenly think they must have a prototype built. The USPTO does not require any mock-ups or prototypes.
The USPTO requires that each patent is enabling, which means essentially that the inventor can explain how to build the invention, how the invention works and what it does such that a person having ordinary skill in the art could make the invention themselves. Therefore, an inventor who is serious about pursuing patent protection can move forward once they can explain how to build the invention without having to actually build a prototype.
Pitfall #2: Believing Someone Else Will Pay Your Expenses:
Protecting one's intellectual property is a serious investment. It requires time, patience and money. Many inventors seek patent protection on ideas which they plan to sell or license to third parties. This is a common approach and can be very beneficial to both parties. Many third parties, however, will not invest in something that is inherently risky, such as a patent application. Rather, large companies may wait until a patent issues before they enter into patent licensing or purchasing negotiations. As a result, the inventor may be financially responsible for the fees involved with drafting and prosecuting the application.
Successful inventors and small companies establish a team or find investors that share their dream. As a result, an inventor backed by investors has a greater chance of managing the financial burden of the patenting process than inventors who attempt to manage the costs alone.
Pitfall #3: Not Keeping an Inventor's Notebook:
The time from the "Eureka moment" to the reduction to practice may be somewhat lengthy. During that time additional inventing and experimenting may take place before the inventor has a patentable invention. It is critical for an inventor to document the inventing process in an Inventor's Notebook that includes dates documenting the process.
Such notebooks may be used to prove the Date of Invention, which back-dates the filing date of the associated patent application. This date may be used to overcome prior art cited by the Examiner that pre-dates the patent application but post-dates the actual Date of Invention.
Pitfall #4: Talking about your invention:
Inventing is an exciting and dynamic process. Many inventors are so overcome with excitement they want to share their ideas with others. The mere act of disclosing an idea or invention can be very risky, and inventors should quickly take steps to protect their newborn idea.
Any inventor and small company should know that disclosing the invention to a party who has not signed a nondisclosure agreement, under a duty not to disclose or not a co-inventor is very risky. If an invention is disclosed to a non-inventor two things happen: (1) the inventor is at risk of losing rights in their invention; and (2) a 12-month clock starts during which time the inventor must file a patent application or risk the idea becoming public knowledge.
To protect yourself, keep a notebook that documents the details and the dates of your inventing process and experiments, as described above. Moreover, protect your invention by not disclosing the specifics of your invention to others.
Pitfall #5: Losing the Footrace:
The USPTO awards patents to the first-to-invent rather that the first-to-file. That is not to say there is not a footrace that takes place. Let us take the example of the inventor that was born and raised in a cave. He has no exposure to the outside world whatsoever. But since he is an inventor, naturally he wants to solve the problem of his continual darkness. So he toils for years and finally comes up with the light bulb. He steps out of his cave, holds up his invention for the world to see and cries "Eureka, I have invented the light bulb." In this example, our caveman inventor is in fact a true inventor of the light bulb. Sadly for our protagonist, he is a few hundred years too late and therefore not the first-to-invent.
The lesson here is that parallel inventing occurs more often than one may realize. Edison and Tesla were always competing with each other on similar inventions. Therefore it is very important to file a patent application as quickly as possible to reduce the likelihood that another true inventor may beat you to the USPTO.
Patent Searching
Pitfall #6: Thinking Your Individual Search is Enough:
A common mistake for many inventors is to assume that since their invention is not sold in the marketplace no one has thought of the invention before. Remember, the patent world and the real world are mutually exclusive. Some really great and practical inventions have already been patented; however, some of them may not be in the marketplace simply because there is no market for them.
Therefore, each inventor should search trade magazines, go to conventions, search the internet, search online, and search patents using Google Patent Search and the U.S. Patent and Trademark Office's web-based search page. These are great tools to quickly determine if there is any product or service out in the public realm that is similar to your invention. Once you have completed your own individual search and have not found anything that is substantially similar, now it is time to hire a professional to conduct a more thorough search.
Pitfall #7: Hiring an Invention Marketing Company to Conduct a Search:
Many inventors have quipped that inventing was the easy part, whereas getting their inventions manufactured and on the shelves is the hard part. As a result, many inventors who are unfamiliar with the patent world often turn, at their peril, to patent marketing companies for advice. Invention marketing firms are attractive because they claim to be a one-stop-shop to help the inventor search, patent and market their invention. Sadly, most of these invention marketing firms take piles of money away from inventors and squander the potential intellectual property rights those inventors may have by not properly following U.S. Patent Law Rules.
Remember, invention marketing firms make most of their money from selling your actual invention. Therefore, they are highly motivated to get your invention to market as quickly as possible with little regard for your rights in the invention.
Moreover, disclosing your invention to an invention marketing firm can be very risky. Typically, the firms force the inventors to sign contracts that sign away at least some of their rights in the invention or the inventor's right to bring a lawsuit against the firm.
One option is to hire a patent attorney or a patent law firm to conduct the search. One difference between a Patent Attorney/Law Firm and an invention marketing firm is that an attorney is required to put the client's interests above all else. A tenet of law is that an attorney must be a zealous advocate for his or her client. A special legal relationship is formed between an attorney and client, one that is markedly different than the relationship between an inventor and an invention marketing firm, which is most likely based on a contract, where the inventor may unknowingly be signing away their rights in the invention or even their right to bring a lawsuit against the invention firm.
Moving Forward - Filing a Patent Application
Remember, intellectual property should be seen as an investment. As a result, the same basic investing rules apply. For example, (1) remember that no single investment is likely to make you millions of dollars; and (2) do your homework. Protecting intellectual property takes patience, time and money, much like any other investment.
Once an inventor or a small company decides to invest in their intellectual property, great care should be taken to make sure as much intellectual property rights as possible are protected. It is important to remember that an invention is only as strong as the patent which claims the invention. Therefore, it is paramount that the application is drafted by a patent attorney that knows the rules of the USPTO, knows the troubles that may lurk during prosecution and knows the problems that may be encountered during litigation.
Pitfall #8: Cutting Corners on the Patent Application to Save Money:
This pitfall is the most common and usually the most detrimental to the inventor. Typically, inventors fall into trouble in two ways: (1) the inventor drafts and files a provisional patent application or a non-provisional application themselves to save on costs; or (2) the inventor hires a patent marketing firm to draft and file a provisional or non-provisional application.
Any time a patent application, whether provisional or non-provisional, is drafted by someone who is neither a patent attorney nor a former patent agent, the risk of the inventor losing some of their rights in the invention is extremely high. A great deal of case law exists regarding which statements in a patent application can be used as "admitted prior art." For example, if the inventor begins to describe their invention in the "Background" section of the patent application, at least some case law indicates that the Examiner can use those statements against the patent owner to reject the application. Many inventors do a wonderful job explaining their invention in a patent application. If, however, they are not extremely knowledgeable of the rules of the USPTO and the U.S. case law, they are in danger of inadvertently losing their intellectual property rights.
To ensure that your patent application is properly drafted, a patent attorney should be hired to conduct the drafting. This will ensure, at the very least, that the application cannot be used against itself.
Patent Pending Status
Patent Pending is a status that any inventor or patent owner can claim once a patent application is on file with the USPTO. Many inventors see the great potential this status has to negotiate licenses or approach manufactures to build their invention.
Pitfall #9: Overstepping the protections of "Patent Pending":
Patent Pending gives the patent owner protection only on the subject matter that is disclosed in the application itself. This means that Patent Pending status does not protect different variations, improvements or embodiments of the invention that are not described in the filed application. Often times an inventor may talk about the next generation of the invention or other improvements they are working on. These disclosures may not protected by the filed patent application and therefore such public disclosures may prevent the patent owner from obtaining a intellectual property rights on such improvements.
To best protect oneself, the patent owner should not discuss any improvements that are not disclosed in the patent application until a provisional or non-provisional application has been filed that includes those improvements.
Pitfall #10: Signing a Third Party's Nondisclosure Agreement without Attorney Review:
In many cases, inventors or small companies will desire to negotiate a license or the manufacture of their invention with a larger company. In such cases, it is in the best interest of the patent owner to arrive to the meeting with their own nondisclosure agreement (NDA) that was prepared by their patent attorney. If the patent owner signs a NDA that was prepared by the larger company, the patent owner is at a disadvantage because the NDA was prepared and drafted by the larger company's legal counsel. As a result, the NDA is written in favor of the larger company.
Therefore, the patent owner should either use their NDA or have their patent attorney review the third party's NDA prior to execution.
Even if the patent owner has all their ideas on file with the USPTO and has patent pending status, it is a good idea to execute a NDA. In the event the third party breaches the NDA, the patent owner has an immediate cause of action to bring against the breaching party. Without a NDA, it may take many years of prosecution before a patent issues, giving the patent owner the rights to bring a suit against the third party. As a result, having both a NDA in place and an application on file is essential before discussing the invention with potential licensees, purchasers or manufactures.
Conclusion
Patents should not be scene as a way to "get rich quickly." Rather, they are tools that enable inventors to establish personal monopolies for their inventions. Corporate empires have risen and fallen due to intellectual property. As a result, protecting your intellectual property is an endeavor that demands patience, commitment, time and money. A portfolio of protected intellectual property may be the backbone of a company, therefore each inventor and small company must take care ensuring that their intellectual property is as strong as possible.
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