My 200th United States patent issued today, titled Device Power and Resource Management. According to data that I analyzed in the blog post I made when I received my 100th issued patent, there are well under 1,000 people in the world with that many issued patents. I know the patent system from a unique vantage point as a Harvard-trained attorney, prolific inventor, and innovation consultant. Here are some of the lessons I’ve drawn from my years as an inventor.
If you don’t have a good patent lawyer, here is how to find one: I have previously written about how to improve your business by improving how you work with your patent lawyer, and after working 200 inventions through the system from idea to issued patent, I stand by that advice. In terms of finding the right lawyer, it is important to understand that the right lawyer for you, this year, for a particular invention, may not be the right lawyer for your friend, for you in the future, or for a different invention. It is possible to find the right lawyer for you across a range of patent applications and over a long period of time, but first, it is important to try an application or two with a candidate.
I’ve long said that a good patent lawyer-client relationship can be understood through the analogy of marriage. The best spouse for me may well be a terrible fit for you. I may change over time, or my spouse may, and the day may come when the match no longer works as it should. This stems from the odd nature of patent work. Your patent lawyer needs to eventually be able to act as if she is reading your mind. When you say “it would be cool if the invention was also mobile”, the lawyer should immediately start envisioning what you probably mean — and get it right. If you are thinking of vehicles and drones and your lawyer is thinking you mean making it small enough to fit in your pocket, that is a red flag. Your lawyer should know what you are good at (I’m good at writing specifications for example) and what you are bad at. The lawyer should anticipate providing a lot of help where you are weak, and a lot of encouragement where you are strong.
The best thing you can do when looking for a lawyer is to recast it as looking for the right lawyer at this time, for this job. This is the dating theory of finding a lawyer. The “first date” is a brief (hopefully free) meet-and-greet with the lawyer, allowing each of you to see if there is good chemistry and an ease of communication. The “second date” is sending an invention disclosure to the lawyer and working together to write up a strong patent application. After a few dates, evaluate whether this is the person for you, and if so, you’ve found the patent lawyer for the majority of your own. You will still need other patent lawyers (for example, if your lawyer knows nothing about the subject area of your invention or if your lawyer has a conflict of interest).
Like any relationship, people and needs change. As difficult as it may be to terminate your relationship with a lawyer who has been in your corner for years, it is a business decision and sticking with a lawyer out of sentimentality is an easy way to spend a lot of money in fees for bad outcomes.
Your guess about the value of an invention is probably wrong: Inventors fall in love with their inventions, and that can lead to disaster. Review the invention with a friend. Ask your patent lawyer their opinion on valuation and chance of issuance. Most importantly, look at your invention as objectively as possible, asking “will people buy this invention?” You’ll get it wrong sometimes. I once invented a device that would use three colored lasers to project an image directly onto a user’s retina. Because of the complexity of biotech inventions and patents, the cost of patent prosecution was going to be very high. On balance, I thought that the chance people would be ok with lasers shooting directly onto their retinas was small. Because I thought a market for such an invention would not exist in any financially meaningful way, I never filed for patent protection. It seems I was quite wrong about the commercial viability of such an invention.
You will file for patents that turn out to have no commercial value. You will pass on patents that turn out to have commercial value. Don’t let it discourage you. It is simply the nature of patents.
Post-issuance monetization is hard: This is a relatively new problem. From the founding of the republic, the United States held inventions in high esteem — a function so important to the success of the nation that the power to grant patents was specifically granted to the government in the Constitution. Until passage of the America Invents Act, an issued patent was a strong piece of property, with a presumption of validity. The America Invents Act created a range of “post-grant review” processes that allow an administrative agency to strip this property right from the inventor without any intervention from an Article III court (i.e. a Federal District Court, a Federal Circuit Court, or the U.S. Supreme Court).
The America Invents Act has so weakened the value and reliability of patents that the market for patent sales and licenses has collapsed and copy-cats and foreign-produced infringing devices are regularly imported to the US on the theory that US patents are sufficiently weak that a simple post-grant review filing will compel an inventor to either give up or grant a license for pennies on the dollar.
Luckily, even if the US has broken its patent system (it fell out of the U.S. Chamber of Commerce’s top ten nations for patent protection for the first time ever in 2018), there are plenty of other countries to file in. China is actively pursuing patent filings from overseas inventors. Europe’s patent system remains strong, as does Japan’s, South Korea’s, and Singapore’s. India is paying far better attention to improving its patent system. In short, as the United States patent system weakens, foreign patent systems strengthen. As a matter of public policy, this presents an enormous risk to U.S. Competitiveness over the long term. As a business matter for inventors, this argues strongly in favor of filing outside of the United States.
When I first started inventing, the typical pattern was to file a United States provisional application (which is basically a placeholder that preserves your filing date for a year), then file a United States utility application together with, sometimes, a Patent Cooperation Treaty (PCT) filing and subsequent foreign filings. After the U.S. system’s fall from grace, my typical pattern is now to file provisionally in the United States, file a PCT application claiming priority to the U.S. Provisional, and then file in China and Europe, delaying a U.S. filing until the last second as U.S. patent law is in such a state of flux that filing the U.S. utility application any earlier than necessary runs the risk that U.S. law changes in a way that renders the U.S. filing weaker or valueless. I’m not trying to be a doom-and-gloom voice on the U.S. patent system. This is the weakest it has been in my lifetime, but it is important to understand that U.S. patents have gone through many up and down cycles and may be on the way to recovering.
You’re going to be called a patent troll no matter what you do: The term “patent troll” was likely coined by Peter Detkin while he worked as counsel for Intel. Of course, Mr. Detkin moved to Intellectual Ventures shortly after coining the term, and I would be surprised if he did not regret creating it. While patent troll was initially aimed at entities that purchased patents from the inventor and then enforced them against operating entities, it has experienced “definition creep”, and is not infrequently used to describe an operating entity that invented something, patented it, and then asserted the patent against a competitor trying to steal the invention.
Taking a step back, we can see why the term actually makes some sense. The “troll” terminology used references the children’s stories about a troll hiding under a bridge and making everybody who wants to pass pay a toll. Once we are using a bridge as the analogy, we can describe it far more accurately than the simple one word pejorative does. Jane builds a bridge, spending money and years getting everything right. It is Jane’s bridge. Jane decides to sell the bridge in order to get the cash to launch her next venture. The bridge purchaser then charges people to cross the bridge. Patents and bridges are both property, and to say that there is something pernicious about selling your own property should have no place in a capitalist democracy such as the United States.
Regardless of whether the term “troll” is part of a propaganda campaign to weaken patent rights (as I would argue) or a legitimate description of patentees (a position advanced by several large tech companies), it is important to be prepared for the name calling.
Nobody knows what is patentable in the United States anymore: While there are certain things that are clearly patentable, there is a huge swath of intellectual property that sits in a grey area that the Supreme Court created in the Alice case. Get your lawyer to advise you as to his or her opinion about patentability, but understand that even if your lawyer is right today, it does not mean that he or she will still be right by the time the patent is examined or enforced. The law is in flux, and high value inventions that fall near the grey area may be worth pursuing even if they are unlikely to be considered patentable subject matter under the rules in force at the moment. If it is possible to treat an invention in the grey area as a trade secret, it may make sense to hold it as a trade secret rather than risk public disclosure through a patent system that goes on to reject the patentability of the invention.
Inventing is still fun: I probably should have led with this one. Inventing is awesome. Sitting down with your kids and helping them invent is awesome. I love working with start ups and others to further develop inventions or show them how to invent in a patentable way. Once in a while, it is important to look up from your computer and just think about how cool it is that you get to make money by just coming up with ideas.
Gary S. Shuster is an inventor and technology lawyer. He provides representation to clients in the development, licensing, sale and funding of new technologies and business enterprises, the protection and enforcement of intellectual property and trade secrets and the prosecution and defense of complex commercial and intellectual property litigation.
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