This document provides information and advice for small companies regarding patenting. It discusses that patenting is mandatory for small companies to protect their innovations. It recommends forming a patent committee comprising of CTO, legal, and marketing to review inventions and prioritize patent filings. It also provides tips for harvesting ideas from employees, conducting prior art searches, working with inventors, determining patent strategy and budgeting for patent costs. The overall message is that small companies need a thoughtful patenting process to extract value from their technological improvements.
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Patenting for the small company
1. Patenting for the small company
The 50 to 499 person high-tech company
Jonah Probell
Jonah@Probell.com
Nothing presented here is legal advice.
Information in this presentation may be inappropriate for some businesses.
Consult your own knowledgeable advisor.
2. A government-supported monopoly
◦ For a limited time
◦ In a particular region
On a technological improvement
To extract the economic value of a
market segment
The intersection of law, technology, and business
3. Not playing the game is not an
option
Under a first-to-file system, a
company must act or be blocked
by a later competitor
A company must understand both
the rules and strategy
Patenting is mandatory
4. 1. Desperation
◦ In need of a patent to get funding
2. Disregard
◦ Too busy on product development to spend time patenting
3. Exuberance
◦ Behind a competitor in the patent race
◦ Patent, patent, patent
4. Discipline
◦ Significant maintenance fee and foreign filing costs
◦ Thoughtful patenting decisions
The four stages of small company patenting
5. Comprises: CTO, Legal, and Marketing
Meets quarterly
Reviews market developments and competition
Prioritizes invention disclosures for filing
Checks product release schedule against invention disclosures
Plans US and foreign patenting strategy
Reviews patent budget
The ideal patent committee
6. Maintains an accurate docket
Solicits invention disclosures
◦ Hangs around the water cooler
Conducts prior art searches
Conducts inventor interviews
Coordinates with outside counsel
Routinely writes and files the highest priority invention
Checks conference papers against invention disclosures
Stimulates innovation
◦ See Michael Moore article: Hands-on counsel
The in-house specialist role
7. Each claim element limits the market scope
◦ Fewer potential infringers have all features
Less market value
Each claim element eliminates prior art
◦ Fewer references describe all elements
Greater (re)exam strength
The double-edged sword
Claim elements
Value Strength
Value-strength inversion
Both allowability and
enforcement are per-claim,
not per-application or patent.
8. A motor vehicle (large market, much prior art)
A motor vehicle having:
◦ Four wheels; (eliminates motorcycle and airplane market)
◦ Two seats; and (eliminates sedans and SUVs)
◦ A bed for carrying lumber. (eliminates sports cars)
A motor vehicle having:
◦ Four wheels;
◦ Two seats;
◦ A bed for carrying lumber; and
◦ 1001 colored lights. (no prior art, but no market)
Fancy truck claim example
The name of the game is the claim.
9. 1. Propose various claims of different breadths
◦ Describe conceivable products of competitors, prospective licensees, and
potential acquirers
2. Search for prior art and eliminate non-novel claims
◦ All material prior art must be saved and filed
3. Analyze the market size that each novel claim can capture
Testing whether to patent an invention
Avoid focusing on your own products
10. Avoid searching patents, lest you learn that your product infringes
Thoroughly search non-patent prior art to save the examiner time
◦ Examiners only have a few hours for each application
Let the examiner find patent prior art
Add and amend claims
Finding prior art strengthens a patent
◦ Acquirers and investors study patent applications’ histories
Searching prior art
The examiner is your friend.
11. Brainstorm frequently and informally
◦ Start in the kitchen, move to the whiteboard
Be aware of projects underway
Query inventors on:
◦ Recent problems solved
◦ Product differentiation
◦ Competitors’ developments
◦ Market needs
Never reject an idea
◦ Encourage creativity
◦ Keep a long list
◦ Solicit invention disclosures
Harvesting ideas
Effective brainstorming can
spawn product innovations.
12. What is the problem being solved?
Draw one or more diagrams showing all elements
How does the invention work (a few paragraphs)
What are the minimum basic components / steps
What are some useful variations?
Propose some claims (optional)
What competitors and markets would be captured by patenting this
invention?
Who contributed to the invention?
The invention disclosure form
13. Capture whiteboard drawings
Edit claims together using a projector
◦ Keep the invention disclosure at hand
1. Have inventors dictate a picture claim
2. Break out dependent claims
3. Achieve the broadest reasonable claim 1
4. Define technical terminology
See D. C. Toedt paper: Reengineering the Inventor Interview
The inventor interview
Avoid inventor “myopia”.
Describe other companies’ conceivable products.
14. No visible deadline for many filings
Product deadline pressure is ever-present
◦ There is never a good time to work on patents
Bonus programs are insufficient motivation
Assign inventors time to review applications
The busy inventor
15. No part of a well-executed strategy
◦ Used by pre-funding startups
◦ Used by unrepresented inventors
◦ Used for unplanned filings before public disclosures
Conferences
Postpones receiving an enforceable patent
Encourages careless drafting
Provisional patent applications
16. Foreign applications must be filed within one year of US filing
Consider where likely-infringers reside
Consider foreign market size
◦ But only what products might be made if the US market is closed
Use PCT procedure to buy an extra 18 months if needed
Determining where to patent
18. Patenting is mandatory
Draw a team from technology, legal, and marketing
Harvest ideas
Be quantitative in choosing inventions to patent
Search thoroughly, but only non-patent prior art
Allocate inventors’ time for patenting work
Consider international strategy and budget
Conclusion
Patents don’t protect products. Patents confer a right to exclude. Patents can be used to create a state of mutually assured destruction.
Distinguish between patent applications and patents. Application pendency is typically 3 years.
Due to employee turnover, trade secret protection is weak.
The first-to-file system creates a race to the patent office.
Credit to Meredith McKenzie.
Organizing for effective patenting requires first understanding basic claims theory.
Claims drafting is fraught with expensive peril. Use an experienced practitioner.
Know your market. Write to describe specific foreseeable products.
An invention being obvious to its inventor should not dissuade from patenting.
A ‘seen it all before’ attitude leads to premature dismissal of potential ideas.
Minimizing searching to get broad claims cheap and fast works, but produces a poor patent.
Every paper filed at the USPTO becomes public information.
Managers can help to identify clever ideas.
Support engineers’ skunkworks projects.
This form is key to drafting a good application.
This should take 60 to 90 minutes.
The interview should take one to two hours.
Does the preamble identify a product or process that a target competitor would infringe?
Would each claim be infringed by a single party?
Are the elements' relationship clear?
Get assignment agreements promptly after filing in case of inventor departure.
If filing a provisional, always include a claim. That is necessary for consideration in many foreign offices.
The US allows one year to file an application after a public disclosure. Most other countries bar patentability immediately upon public disclosure.
Few attorneys or agents work per-project. Almost all attorneys and agents work at an hourly rate from $250 to $850.
Carry-out an inventor bonus plan, which is mandatory for patent validity in some countries.