When is a patent valuable? By Jack Lander (c)

Read about:

Design vs. utility patents, The PPA (Provisional Patent Application), Patent attorney ethics, Four reasons a patent attorney probably won’t tell an inventor that his or her invention lacks a strong proprietary feature on which to base at least one strong claim and Judging the strength of patent claims, How does the inventor learn about the strength of his claims before spending money to file his patent application? What should you expect from a search and patentability opinion?What should you expect from a search and patentability opinion? and Jack’s role…To read all about the above mentioned topics click here:

Design vs. utility patents: A design patent covers only appearance; it does not protect your invention’s function. And because appearance can be changed so easily, and thus not infringe your design patent, a design patent has very little potential for licensing—virtually zero, unless you also have a utility patent for the same invention, and include the design patent as complementary. A design patent has one claim: “What I claim is the following drawing.”

A utility patent covers function, and is the kind of patent that is implied when patent professionals, corporations, and inventors usually speak about patents. A utility patent typically has several claims that cover in words precisely those features of your invention that are novel with respect to anything known in the past, whether patented or not. Utility patents are the standard patent that gets licensed if the eventual product has market potential, and we are lucky enough and persistent enough to land a licensee.

The PPA (Provisional Patent Application): The PPA is an application only. It does not result in a patent. The main advantage is that you can state “patent applied for” or “patent pending” on your written material, your prototype, and your production, etc., if you launch it before your PPA expires. PPAs are only good for one year, so within that time period you must file your regular utility patent, or you lose the filing date of the PPA as your official filing date. That’s all you lose, however. Your PPA is not read by the Patent Office. It is filed, and only becomes part of your examined patent application file if and when you file for your utility patent.

Patent attorney ethics: A patent attorney (or patent agent) can get a patent on almost any invention except perpetual motion. By creating a very narrow claim, the Patent Office will accept the application, and issue the patent. The trouble with such a patent is that it is of little value if the inventor hopes to license it for royalties (or sell it outright). A patent with at least one strong claim—a claim that will provide a true proprietary advantage over competition for the licensee—may be licensable, but a weak patent is generally not worth much.

Here’s why: a weak patent provides only psychological value. If a competitor discovers that a product is patented, he may decide not to risk creating a competing product. But the vast majority of businesspersons are not naïve. A quick search of the Internet at www.google.com/patents or www.uspto.gov (the Patent Office web site) will reveal the claims of the patent in question, and the essence of a patent’s value is found in the claims. Perhaps a very small business might be fooled, but not the typical corporation that is a promising candidate for licensing. Without a patented feature of the invention that enables the licensee to make more profit than he would without this feature, any money paid to the inventor would reduce his profit, and therefore be a questionable expense rather than a valuable asset.

Four reasons a patent attorney probably won’t tell an inventor that his or her invention lacks a strong proprietary feature on which to base at least one strong claim:

Patent attorneys and patent agents are not specialists in marketing. They typically feel that it is not their province to judge anything but the features of the invention, and their patentability. (Suppose an attorney told you that he thought your main feature was essentially worthless in the marketplace. And suppose that you filed your patent through another professional, licensed your invention, and collected significant royalties. You wouldn’t trust the first attorney again, and you certainly wouldn’t recommend him or her to fellow inventors.)
Some patent professionals (attorneys or agents) are borderline ethical. Fortunately, these are not the majority. But, as with any profession, the idealism that the young professional starts out with may get a bit corrupted along the way. It becomes easy to justify filing for weak patents, and making a lot more money. “Let the buyer beware.”
Some patent professionals come to believe that the independent inventor is a dreamer, and will never develop the skills necessary to conclude a licensing agreement. He may feel that the ego-boosting value of the patent is probably worth the price to the inventor, and not recommend against filing even though the patent will be issued with trivial or weak claims.
Another inventor’s patent that covers the inventor’s strong feature in his or her application is not discovered during the patent search process. And when the Patent Examiner (at the Patent Office) discovers such patent, and rejects the inventor’s strong claim, the patent professional advises that the inventor may as well salvage whatever can be saved from the other claims, even though they are weak. After all, most of the cost of the patent has accumulated at this point.

Judging the strength of patent claims:

First, let’s look into the nature of claims. A patent claim is not at all like an advertising claim, which is a boast of the benefits of the product or invention. A patent claim is generally an unemotional recitation of the hardware in one or more embodiments of the invention. Or, in the case of a process patent, the steps of the process or program. Claims are found as the last section of a patent. A claim typically begins with the words “What I (we) claim is:” or “What is claimed is:” and reads something like this:

A power lawn mower comprising:

a) a motor

b) a platform on which said motor is mounted

c) a rotatable blade connected to said motor

d) means for enabling ease of movement over a lawn

e) a
Every claim begins with a capital letter and ends with a period. Point d) above intentionally uses the vague word “means” rather than “wheels” in order to leave open other options such as rollers, an air cushion, balls, or any other means.

So, you see, in the example there is no claim for superiority or advantage. Only the minimum essential hardware is recited. If another feature were added, such as a rope with which to start the mower, and a competitor found a way to start the motor without a rope, he could “get around” your patent.

Although an inventor should not expect a valid marketability opinion from a patent professional, an opinion on the strength of the claims that the professional anticipates will be accepted by the Patent Office is a legitimate question. A patent professional, by the ethics of his profession, must advise the inventor on the strength of claims in the application that he or she will prepare. (In most cases in my experience the inventor must ask the question in order to get this advice.) Also, the inventor, himself, should use his best judgment. This is done by comparing the claims of “prior art” to the claims that the patent professional anticipates writing on the inventor’s behalf. “Prior art” usually only covers patents, but is anything published or publicly revealed by any means at any time in history. Comparison is the key, whether done by patent professional, inventor, or Patent Examiner.

How does the inventor learn about the strength of his claims before spending money to file his patent application?

This should be accomplished by having a patent search done by a patent professional or a professional searcher, and by obtaining a written patentability opinion from a patent professional. Some professionals will merely write something like “your invention may be patentable,” leaving a lot of room in the event that the application is rejected. A well written opinion will discuss the claims of other patents with respect to how your claims will be written. If you don’t get this kind of detail in your opinion, contact the opinion writer, and ask for it.

Some inventors do their own search on the Internet, and conclude: “There is nothing else patented that is like my invention.” This is usually a good way to waste a lot of money on an application that will be rejected by the Patent Examiner. Professional searchers search much more than just the obvious Class and Sub-class under which your invention is categorized. They use key word searches, and also refer to the Classes and Sub-classes listed on patents that cover inventions similar to yours. (The Classes and Sub-classes are numerical categories used for filing patents. The system is similar to the well-known Dewey Decimal System used by libraries.)

Thus, I recommend that inventors either hire a professional searcher, or have the patent professional who will prepare the application subcontract the search. The professional will usually delegate the search to an associate, a professional searcher in the

Washington, DC area, and, based on the prior art discovered, write the patentability opinion. (Searching is rapidly changing, and nowadays it is less important to visit the Patent Office physically, and search the hard-copy files.

One such searcher is Ron Brown, my personal searcher, who has thirty years experience, and guarantees that his searches will uncover all significant prior patents. Ron can be reached at 1-800-616-4332. Ron has a working relationship with a patent attorney who provides a free patentability opinion. (There’s no catch; he hopes to get your patent application business.) Ron states that in most cases this attorney advises against filing because a strong patent will not result.

What should you expect from a search and patentability opinion? You should receive a “package” that contains one or more patents (usually four, five, six etc.) and a letter from the patent professional recommending whether you should file an application or not. The search and opinion will usually cost from $500 to $1000. If the recommendation is against filing, you have three options:

· abandon the project; · file anyway;

· discuss the reasons for this opinion with your patent professional, and take a fresh look at your invention to determine if you can invent a novel feature that is different from your former feature, and better than the those covered in the competing patents that you received. If the patentability opinion favors filing a patent application, it should contain (but seldom does) a statement about how strong the resulting patent will be, if issued. Thus, in most cases you will have to confer with the patent professional regarding the anticipated claims that he or she believes will withstand the Patent Examiner’s judgment, and ask how strong these claims are relative to the inventions covered by the search.

The legal strength of the anticipated claim(s) is based on the novelty of a feature of your invention, and how difficult it will be for another inventor to get around your claim using a different feature that is equal to or stronger than yours. Now, assuming that the answer is that at least one claim will be strong, a second question should be asked: What is the probability that my patent will issue based on the strong claim? Filing does not automatically mean a patent will issue. Only about two-thirds of filed patents actually issue.

Tales of questionable ethics:

One attorney I know personally did a search on the Internet, and advised his client to file for a patent. The application came back rejected due to a patent from 1917 that covered exactly the same invention. The response of this attorney was to ask for another $1000 to cover writing a rebuttal that would “. . . dazzle the examiner with legaleze.” (That’s an exact quote. The inventor is one of my clients. No one dazzles a Patent Examiner. This is ridiculous as well as unprofessional.) This same attorney advised another of my clients to file, and, again, prior art was found that the attorney should have found. The inventor’s $2500 filing fee was wasted.

Yet another attorney for one of my clients refused to give a written patentability opinion. I advised my client to not pay the search fee bill. Why was this attorney acting paranoid? Who knows? Probably he knew that the application would be rejected, and he didn’t want anything in writing that could work against him later. Lastly, I recently reviewed the patent of an inventor who developed a smoke detection system in which all detectors in a home communicated with each other. The advantage was that a fire in the basement, for example, would trigger the alarm in the second floor bedroom, thus providing maximum time for people to exit the home. I found that the radio communication feature, although clearly shown in the patent’s drawings, was not covered in the claims. This fellow was looking for a licensee based on the communication feature, and it wasn’t included in his patent. I reviewed this patent for a client who is not the inventor, so I don’t know whether the inventor is blissfully ignorant of his lack of coverage, or what. But the inventor’s prospect for licensing based on inter-detector radio communication is nil. What probably happened is this: The patent application, as filed, asked for the radio communication, but this claim was rejected by the Examiner due to prior art, yet the drawings were accepted as submitted.

My role:

I’m not a patent professional. Nothing written above is to be construed as legal opinion or legal advice. If you have any doubts about any of the above, contact a patent attorney. I don’t write patent applications or give patentability opinions. I do, however, offer advice on the marketability of an invention, and I base this on the feature(s) of the invention that is covered by one or more claims. My role is that of mentor (advisor, consultant, teacher, etc.) I prepare planning for inventors on their invention development, protection (as above), marketing, and financing. For more information please visit my web site at www.Inventor-mentor.com Best wishes for your inventing successes,

Jack

Heritage

Village,

Southbury, CT

06488203-264-1130 Jack@Inventor-mentor.com

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