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Patent 101 - Article from Levi Davis's Weblog, June 2008

 

Please check with Mr. Feigin before relying on any quotes attribued to him.  (The quoted language isn't always fully correct.)

 

Most people have never heard of Nikola Tesla. Modern historians sometimes refer to him as the “Father of Physics,” and “the man who invented the 20th century.” Working for Thomas Edison in the 1880’s, the young Serbian engineer redesigned Edison’s direct current generators, making them more powerful and efficient. He left the company over a pay dispute and later feuded with his former employer over the over which type of electricity was better. Edison said direct current, Tesla said alternating current. Tesla was right about that one.

Tesla was responsible for advancement in remote control technology, robotics, computer science, and nuclear physics. In 1943, shortly after his death at the age of 86, the United States Supreme Court recognized him as the inventor of the radio. There are many reasons why many people have not heard of him; one of the biggest is that he never understood the patent.

Now if you are sitting on a great idea, and want to avoid becoming the next Tesla, consider a few things before running to fill out a patent application: the patent process costs $10,000 to $20,000 on average; after spending all that money, there is no guarantee that you will get the patent; and even if you do, there is no guarantee that you will ever make any money.

So when you are thinking about a patent, what should you do first? “You should keep quiet,” said to patent attorney Michael Feigin. “You need to get confidentiality agreements from everyone you work with.” The United States protects inventions for a period of time between disclosure and application for a patent, but other countries do not. If you disclose what you are working on, someone in Canada can start selling it, and there is nothing you can do about it.

The most important reason to get a patent is because you have an invention or idea that will make money or enhance the value of your business. Patents need to be considered in this light. “Patents do not make money on their own,” Feigin said. “They do not do anything. They give you the right to stop others from doing something. They need to be one piece of a bigger business model.”

Another consideration is whether a patent is likely to be issued. A product has to be new and unobvious to qualify. These two words are applied in a legal sense, which can often depart from common sense. “Things that you might think are obvious may not be from a patent standpoint,” Feigin said. “Talk to an attorney. A patent can be given to something that is just an incremental improvement over something that already exists.”

When the decision is made to pursue a patent there is an important first step to remember, according to Feigin: do not talk. Do not tell anyone about your invention until the application is filed. “The application is a legal, quasi-technical, document with specific rules about how it should be filled out,” Feigin said. The wrong wording may invalidate your claim, or be exploited in court to give someone access to your idea. All patent attorneys have a science background, and understand the nuances of patent terminology. Feigin recommends coming in early in the process, so you can be flexible with the invention. An attorney will do a novelty search, to determine if there is a good possibility that the idea is unique, and then should craft an application in the broadest language possible to give you the most protection.

There are a few alternatives to patents that you could consider and are easier to get. Copyrights cover written work, and can even apply to computer programs. Trademarks protect symbols, like the McDonalds arches. Both of these protections are limited, however. A patent provides the broadest protection. Obtaining a trade secret, like the formula for Coca Cola is another possibility, but impractical. “Trade secrets are usually inapplicable in the long term,” Feigin said. “People will leave the company and share your secret, and it can always be reverse engineered. Other than a patent there is no protection against reverse engineering. In exchange for disclosure the government will give you 20 years of protection.”

Feigin almost always recommends that his clients file an un-provisional patent application. Provisional applications only delay the actual filing a year, and often cause technical problems that can be expensive to untangle. The only reason to file a provisional one is if you have to disclose your invention right away, and do not have time file for a regular one.

When filing an application there are two options for help: a patent attorney, and a patent agent. They both take the same exam from the United States Patent and Trademark Office, and are certified to represent you before it. Patent agents are cheaper, but they cannot represent you in any legal setting outside of the patent office. You can always represent yourself, but most books published on the subject, including one by the Department of Commerce, strongly recommend against it. “It is one of the areas of law that you never want to do without an agent,” Feigin said. “Patent law is very specific. It involves interpretation of language and drawings that can affect the scope of your protection. If you do something wrong, you cannot go back and change it.”

Invention submission companies advertise themselves as a cheap alternative, but they have a dubious track record. “They are almost all scams,” Feigin said. “Do a lot of research before going to one. Nothing replaces hard work.” The American Inventor Protection Act of 1999 required all invention submission companies to disclose how many of their clients had made a profit working with them. Most of the companies had less than two percent.

When selecting a patent attorney keep in mind that this is someone you are going to be working with for the next 15 years. Find someone you can communicate with and who can tell you about all the legal issues you might encounter. When you can, it is best to go on recommendation.

If you learn how to navigate the patent system you will hopefully avoid being the next Nikola Tesla. Not that being recognized as one of history’s greatest scientists would be so bad, you just do not want have to wait until after you are dead for it to happen.