The Crossroads of Patents, Copyrights, Trademarks, Technology, and Business

I have reviewed a few situations where someone has sought direction after submitting a patent application which was created using patent application drafting software. Such software is typically marketed as allowing one to create quality patent applications without having any prior experience. Of the applications that I have reviewed where the applicant used such software, I have yet to see a quality patent application. Each had a questionably specification and questionable claims. I don’t know whether it was the user or the software, but I knew some of the likely results for the applicant: higher difficulty in being granted a patent, lesser scope of protection on any granted patent, and/or the need for an additional patent application on the same  product.

A patent is a technical document that is supposed to communicate nuanced technical information to the patent office  and others having skill in the technology at issue. The language is typically college level with technical terms and frequently uses non-primary definitions of terms or self-defined terms. Having been a software developer and software enthusiast for several years, it doesn’t seem that off-the shelf software could produce such a result. When I think about some of the results from commonly available language related software, such as Babelfish, Google translator, or the word processor grammar level ratings, it seems consistent with that view. It is a far leap to take natural language input and consistently produce a nuanced technical document that complies with the goals of the applicant and the non-intuitive requirements of the patent office. That view has been supported by the poor patent applications that I have seen from such software. Problems from those poor applications included very weak applications to the need to effectively start over.

Disclaimer: This post was written by a patent attorney… but you probably knew that when you came here.

It is tough to sit across the desk from someone and tell them that I think someone took advantage of them, especially when that money could have been better used to help them with prototyping or other steps in their business plan. When I have spoken with people who have used inventor assistance outfits, it appeared they spent a lot of money and received little value in return. In one situation, an inventor and his/her associates paid about $20,000 to an inventor assistance outfit. From what I could tell, they were delivered the following:

1. the filing receipt for a submitted provisional application (they did not have the actual submitted application).
2. the filing receipt for a later filed nonprovisional application (they did not have the actual submitted application).
3. a five to ten page marketing presentation for their product with illustrations, advantages of the product, and other information.
4. about 200 addresses for companies that might be interested in purchasing the product (the addresses were general and not directed to a specific person at the company).

For argument, let’s assume a value of $5000 – $10,000 for the preparation and filing of the patent applications, which may or may not be fair given the product at issue. That leaves a range of $10,000 to $15,000 for the remainder of the deliverables. That value for those deliverables  seems very questionable. Moreover, the inventor assistance company was still marketing further “services”  to the inventor and associates (for additional fees or royalties, of course).

Make no mistake, the invention and entrepreneurial process can be difficult, expense, and time-consuming. Furthermore, it is rare that an individual will possess all of the skills, time, and money necessary for the complete invention and commercialization process. Thus it is tempting to fall prey to an outfit that markets “one stop shopping” support and relief to the time and stress involved in the process.

I am not sure why such low value was delivered, as the above $10,000 – $15,000 is enough to deliver higher value deliverables and still have a good profit margin. Nonetheless, the situation is fairly typical of what I have seen from inventor assistance companies. For this reason, I suggest talking to other inventors, business counselors, intellectual property attorneys, business attorneys, or others to seek professionals to help you in your invention and entrepreneurial process.

When working with an inventor or  startup, a frequent question is whether it is financially prudent to proceed with a patent application. More often than not, I am not in a position to concisely answer the question, as the question may hinge more on economics than intellectual property. A patent search may shed some light on the prudence of moving forward from an intellectual property standpoint, but it doesn’t help answer whether the cost and effort involved in a patent application are worth it. For people at some large business entities or educational institutions, the value may be easier to determine. Moving forward with the process may increase that person’s salary or credibility. For an individual inventor, startup, or small business, the choice is not that simple.

For the startup or individual inventor, a patent should be thought of as an asset. The goal for a patent application should not be a certificate to hang from the wall. In other words, what will moving forward do for your business. You purchased a computer to easily enter, store, search, and communicate data (reducing labor and storage expense). You purchased hosting services for your website to inform others of your product or service (increase revenue) and to enhance your other marketing efforts (reduce expense). You worked with a product designer to optimize the experience of your product for your customers (increase revenue). Even though you probably did not formally analyze purchases for the above, you at least made a “gut level” feel as to how the purchases were beneficial.

There are several formal methods of patent valuation, such as the cost approach, the market approach, and the income approach (the dominant approach for intellectual property). Typically, those approaches may require the expense and effort equal to the cost of moving forward in the patent process. Thus they may not be suitable at this stage of the process. Some questions that might give a “gut level” feel as to whether to move forward to not include:

• How does your idea help increase revenue or decrease expense?
• Will a patent application help investors better understand and evaluate the concept?
• Is the idea in a new field of technology?
• Is your idea operable only as an improvement to another product or can it be sold independently as a complete product?
• How large is the total market for your idea (or a related market)?
• What percentage of the market can your idea help you gain?
• How many related products exist as your competition?
• How fast is the industry changing?
• What are the alternatives to your idea?
• How much does it cost to manufacture your product?
• Is the idea in a growing, stable, or declining industry?

Those questions may not lead to a definitive answers,  but they should provide guidance on the decision as to whether to proceed towards a patent. When you made the decision to purchase (or not purchase) a computer, hosting services, or other products and services, you analyzed how it would help your business. You should do the same in deciding to move forward in the patenting process.

Frequently, I am asked when a patent application should be filed . I often start the discussion with questions in two areas:

1. Is the new product or process complete?
2. What is (or will be) happening to demonstrate and monetize the new product or process?

Is the product or process complete?

In asking this question, I am,  in part, trying to determine if the inventor can meet disclosure requirements for a patent application. The disclosure needs to be sufficient and precise enough to show what the inventor knew at the time of filing the patent application. Additionally, the disclosure should contain enough information to enable one knowledgeable in the technology at issue to make and use the technology.

In one conversation, I talked to a musician who wanted to alter input sounds and music in a certain manner. At the time, he was not clear whether he wanted to alter the sound mechanically, electronically, or other means. In his case, it was far too early for him to proceed with a patent application. He needed to work further on his idea to define, refine, and possess it. On the other hand, I have met with people who have had the idea for a new product, drawings, and were able to effectively discuss the creation and operation of the new product. In some cases, those individuals had sufficient disclosure to file a patent application, even before a prototype was built.

What has been done and what will be done with the new product or process?

Frequently innovators are trying to monetize the new product or process (no surprise there). This may involve demonstrations, pitching to angels/VCs, sales, offer of sale, distributing information on the product, etc. In the United States and other countries, patents rights are impacted by public disclosure, public use, offers of sale, or sale of material which is the subject of a patent application. Generally all of those actions cause a loss of foreign patent rights. In the United States, a patent must be filed within a year of those actions to avoid a bar to one’s patent rights. However, as a practical matter, even if one expects to only seek patent rights in the United States, the patent application should be filed before any of the mentioned actions. One risk in exposing the idea is that another may file a patent application prior to your patent application.  In the U.S., the first person to file usually succeeds in litigation when there is a dispute as to who owns the intellectual property. Thus, one is in a better position by filing a patent application prior to public presentation, public use, sale (or offer) of the new product or process.

Clients frequently ask whether it is possible to be granted a patent on an invention that does not contain new components. The answer is “yes.” The majority of patents are in fact “combination”  or “improvement” patents. It is rare that someone creates something as new as a transistor or another fundamental building block technology. People frequently create new machines or articles of manufacture based on existing technologies. Take a look at the attached article titled “Self-Taught Inventer [sic] Creates Homemade Electric Wheelchair”

http://www.weirdasianews.com/2009/11/27/selftaught-inventer-creates-homemade-electric-wheelchair/

In essence, his creation is a combination of existing technology. The bare bones elements of his creation include shaped materials in various components, wheels, and electricity. The video shows him using commonly available tools to build his creation. We know that metal of various shapes is not new. We also know that powering the rotation of a shaft via electricity is not new. However, a wheelchair with a shaft attached from which multiple wheels are connected that enables the injured or elderly to descend stairs without assistance is a combination of existing technology that could form the basis of patent application.

Assuming the wheelchair does not already exist, the main question to ask is whether the new combination of features is nonobvious. In other words would a person of ordinary skill in the technology have combined the features to produce the unique item on the filing date of the patent application? If not, and the new combination complies with other aspects of patent law, a patent can issue on the new technology.