Patents: Part 1

Posted on March 30, 2012

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Article Highlights:

  • When the government grants a patent, they are granting you ownership in that fenced off area. Essentially, a patent owner is a monopoly holder and the only person who can use that particular space.
  • Despite all of the difficulty and cost in obtaining a patent, a patent can be a tremendously valuable.
  • A patent search is an important first step.
  • You want a patent attorney with domain expertise. You want someone who has filed patents in this area before.

First, let me emphatically say that I am not a patent lawyer. What does this mean? It means that if I file something before the patent office they will not recognize me as a lawyer. More importantly for clients, it means that I cannot assist you with your patents or your patent filings. For readers of this article, it means I probably do not know what the hell I am talking about. This article is free, so you are getting what you pay for, and that is my main take away.

For those still reading after that introduction, let me explain why I am writing on patents for the next two articles. Inevitably in the course of business, often at the outset of the business, the business owner seizes upon something new and novel. Everyone is reticent to copy someone else, and when they strike out on their own, they want to do it their way. Doing it your way denotes a certain amount of novelty and uniqueness, and novelty and uniqueness inevitably leads you to whether or not you should patent. Entrepreneurialism and patents naturally intertwine with one another, and accordingly, patents frequently arise as an issue for small business owners.

To get a brief overview of patents, I recommend material on the government website. They do have a good overview of what is a patent, how to file for a patent, and general background information on obtaining patents. In explaining patents and patent law, the analogy that I like, and is often used by patent attorneys, is that a patent is a fenced off area. When the government grants a patent, they are granting you ownership in that fenced off area. Essentially, a patent owner is a monopoly holder and the only person who can use that particular space.

Taking the analogy further, the more fence the government grants you, the larger your monopoly. Because of the increased space, it becomes more difficult to obtain certain patents from the government (because they do not want to provide too many monopolies) and the more vulnerable a patent owner becomes to claims of invalidity (more fence to maintain allows for more area to be penetrated by attacks).

Despite all of the difficulty and cost in obtaining a patent, a patent can be a tremendously valuable. Consequently, it is not an area of protection of your company that you can skip or gloss over. Unfortunately, it is an area that is complex legally, and an area where you have to hire a good (and right) attorney who is licensed to practice before the patent bar.

When I have a client call me who believes that he or she has something that may be patentable, my initial recommendation is to do a quick search on your own. Google has a patent search feature, and you can do some work on uspto.gov. These searches will begin to let you get a feel for what has already been patented by the government in your area of interest.

The next step that I would recommend is that you engage a professional patent search firm1. The main benefit of a search is that you can begin to see whether your idea or concept is patentable. (Remember, of course, to be patentable, you must be unique, and if someone has filed a patent already that is identical to your concept, chances are it is not unique; in fact, you may be infringing on something if you proceed.)

Many patent attorneys disagree with this step as they will inevitably want to do a search on their own, and there may be particular claims or thoughts that can use a patent attorney’s assistance before engaging a search firm. However, I prefer doing it at this stage because (a) it provides an education to the inventor/entrepreneur so that they can begin to talk coherently about their patents, and (b) if they will not pay between $500-$1,000 for the search, I know they do not have the financial commitment to see the patent through to the end.

If you still feel good, now is the time to hire an attorney. The main rule in this endeavor is that you get what you pay for. Firm names do matter in this area, but more importantly you want a patent attorney with domain expertise. You want someone who has filed patents in this area before, and you should be able to figure that out by reviewing their bio. This is not to say that you should immediately go to a top tier law firm. If it is a more standard widget, then a wider array of patent lawyers can assist with competence and get you a good patent at a good price. If it is something particularly unique and complicated, you need to find someone with that particular domain expertise, and that may require a good deal of money. It is not cheap, so you have to do a good cost analysis.

Some additional caveats when it comes to patenting:
1) Business method and software patents — these are trickier areas of the law and are discussed next week.
2) Design Patents — design patents are a different from what is the more traditional “utility” patent. If you are in an industry where you want to protect a design, then this is a unique area that requires specialized knowledge.
3) International — adds an extra wrinkle of complexity. I am not going to touch it.

Mike Goodrich
Goodrich Firm, LLC

1 When you do this, assuming it is a reputable firm, you do not need to worry about confidentiality as confidentiality is standard in the search firm agreement and if they did not keep their patent searches confidential, they would lose all their business.

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