how to patent

M. Arth...

Patent bedamned. The big question is how to deal with the idea if it has any value and to keep yourself from spending a fortune before you find out.

That is why we have the Reality Check?.  There are scams and even patent practitioners that can get a lot of money out of you for ideas that have no possibility of making money.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop?
E arly L egal A dvice I s N ot E xpensive?
Reality Check?

JimIvey

Here's a little article I call, "The Most Important Thing You Need to Know About Patents":

http://www.iveylaw.com/index.php?option=articles&task=viewarticle&artid=3&Itemid=3

In short, Timing!  You need to know what sort of activities in which you may engage can damage your patent rights.

There's a book on the patent process generally by David Pressman called "Patent It Yourself" (Nolo Press).  A lot of people get started there.

In essence, you add to the aggregate body of public world knowledge and you can prevent others from exploiting what you've added for a period of time.  The patent will (i) add your knowledge in the form of a detailed description and (ii) will define, in legal terms, exactly what you're entitled to prevent others from making, using, selling, importing.  Of course, the knowledge you add has to actually be added (not there before) and be more than an obvious variant of what's already in the public knowledge.

Are you interested in filing in the US first, or in Canada?  I'm CTO of a startup based in Calgary and I have a number of Canadian clients and contacts, so I can help you get going in the right direction however you'd like to proceed.

Regards.

M. Arth...

Ivey,

Is it not true that the claims of a patent define the invention? Thus just getting a patent could be a waste of time, money and worry?

Now as weak patent to a commercial client may have fighting value and publicity value. But JUST getting patents can be a waste of time money and worry. There are questions more than the law itself and the patent that don't seem to be dealt with here.

There are non lawyer operators that make $100M a year and get patents. Only one in ten thousand get back more than they pay.

I think the realities of the law as well as the law itself has to be presented to the client. One of the best patents I have ever gotten was shown to a company that rejected it.

Within three years the industry offered a $50,000,000 prize for a device such as that patent. The company we showed it to got the $50,000,000 turning out an invention not as good as the patent and not infringing the patent.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop?
E arly L egal A dvice I s N ot E xpensive?
Reality Check?

JimIvey

Auslander,

I'm sure by now we all know about your services and your perspective on value of patents.

However, I think you overlook the obvious.  The value of patents generally cannot be determined adequately by patent attorneys or agents.  The value of a patent is the total sum of the market value of all embodiments which infringe any of the claims less any difficulties with enforceability of the claims.

What we, as patent attorneys/agents, can do is minimize any problems with enforceability by complying with the prevailing applicable patent laws as best we can and by writing and getting allowance of claims as broad as possible.  

Thus, the claims should encompass as many embodiments as possible.  However, not all embodiments have equal value.  What we generally cannot do is assess the market value of embodiments which do infringe.  A broad claim can be less valuable than a narrow claim, depending on what is precisely covered by the claims.  

Consider this as an example:  suppose on one hand we have a very broad claim for treatment of a non-fatal disease which afflicts less than 10 people every year, and suppose on the other hand we have a very narrow claim which is infringed by Microsoft's Internet Explorer.  Which would you rather own?

Unless you include a detailed financial model and market analysis in your service for evaluating a patent prior to filing, I would suggest your service is an incomplete analysis at best.

Personally, I don't do market analysis.  I tell my clients what the patent will cost them (roughly) and highlight any pitfalls I might see which might compromise the ultimate value.  But the utlimate value and the weighing of that value vs. the costs is somebody else's job.  And, in my opinion, it must be the job of someone familiar with the economics of the market to which the invention pertains and familiar with economics generally and business plan evaluation.  That person is typically not a patent attorney.  If you have full competence in the economics of all the markets in which your clients are (or might become) involved and in patent law, you're a rather impressive person indeed.

Regards.

M. Arth...

Ivey,

Where the prior art is vast, a patent may offer such limited protection as to be valueless. An inventor not in a particular business can gain little by getting and "avoidable patent".

Who would buy it, and what could the inventor do with it?

That is the crux of the Reality Check?. By the same token a minor improvement in a crowded art may have value, if only advertizing value to an applicant or assignee or "Patent Pending" may have some value.

I don't make the decision but pose the question to the client.

My experience has shown that there is a class of inventor, comparable to horseplayers, that feel that they must get patents.  I have found it difficult to to solicit such patents even though the inventor may go elsewhere and be scammed with an issued patent with transparently avoidable claims.

To the commercial client a weak patent and a trademark might have value. This is a usual suggestion of ELAINE's Workshop?, E arly L egal A dvice I s N ot E xpensive?.

ELAINE's Workshop? is an attempt at enriching the inventor by NOT filing or filing early enough to maximize the possibility of value.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop?
E arly L egal A dvice I s N ot E xpensive?
Reality Check?

JimIvey

I can appreciate what you're saying.  On ocassion, I've encountered people who think they know a lot about patents and they don't like my advice and they go elsewhere and I wish them well.  I'm not afraid to tell a client that their application has little chance of issuing and that the value will be limited (if I so believe).  And, I think it's nice that you've packaged and branded your pre-filing due diligence.

Here and outside this forum, the question of pre-filing searches has come up quite a bit.  Here's my perspective.

Most of my clients have made the determination to go forward with an applicationm before even talking to me about filing the application.

I'll break down patent applicants into 3 categories.

First are those who are a going concern and are building a portfolio of patent applications and patents.  They'll file them all and avoid the expense of a pre-filing search (which is substantial if you're filing many applications).  If a few applications of the bunch don't produce useful claims, so what?  It's just not cost-effective to do a pre-filing search.

Second are those who are a going concern and are planning on marketing their product/service no matter what happens in the PTO.  For them, some claims are always better than no claims, so they'll also forgo the pre-filing search.

Third are those who have an idea but no existing business.  They either have no intention of bringing it to market themselves but intend to extract royalties from other going concerns or hope to start a business primarily on the value of a single patent.  For this third category, conducting a pre-filing search makes good sense.  

Most of my clients fall into the first two categories, so a pre-filing search is rarely part of my practice.  However, I ocassionally see a client from the third category and do counsel them regarding the value of a pre-filing search.  But most of the questions in this forum do not pertain to pre-filing searches and I don't consider it part of "the most important thing you need to know about patents."  I think timing issues which can bar a patent altogether (thereby removing any issues pertaining to "value") are far more important -- especially for most of my clients.

Regards.

Penny B...

Burn some midnight by becoming familar with a summarized version of your patent system:

http://strategis.ic.gc.ca/sc_mrksv/cipo/patents/pt_main-e.html?icservices=e_pat


Patent Search D/Base

http://patents1.ic.gc.ca/intro-e.html

M. Arth...

Ballou,

I frankly resent doctors because they can be so superior with the claim of knowin g mor than you. Well that does not mean that in either case doctor or lawyer that just because you can read the statutes and the case law, that when push comes to shove you can avoid the use of a doctor or lawyer you can trust.

You can make a complete fool of your self know and reciting statute and case law.

That is why the medicical profession and legal profession have survived even though there will always be abusers.

JimIvey

Auslander,

Uh... what the hell are you talking about?!  Normally, your posts are composed of complete, grammatically correct sentences.  However, in this one, I'm having a rather difficult time parsing out your meaning.

As far as Penny goes, (a) she's been around the block with respect to IP issues and entrepreneurship and (b) she merely pointed the original poster to a source of information regarding Canadian IP law.  

I thought her reference to Canadian IP law was appropriate and helpful to the original poster.  I didn't see any hint of intellectual elitism, if that's what you were getting at.

Regards.

P.S.  I'm sure you're tired or something.  I don't mean to give you a particularly hard time about your typing.  And, not to boast, but I'm posting this hopped up on codiene and antibiotics with a dog bite on the finger that types "l, o, p, commas, and periods" ( ouch ouch ouch.....).  ;-)

M. Arth...

Ivey,

If I could get my secretary to answer posts to this forum, there would be no spelling or gramatical errors. I wouldn't type, I"d proof read and corrrect.

My typing is self taught.