Four basic questions—four W’s—should be considered by every aspiring patentee. In this part 1 in a series of 4 articles, we’ll address who should apply for patent.
Let’s start with an overview of four W’s for patent:
- Who should apply for patent?
- What is a patent and what does it take to get one?
- Why should I get a patent?
- When should I apply for patent and when should I launch the product?
These questions may seem simplistic. They’re not. They’re fundamental. In fact, this series is inspired by an article on Patents Demystified recently published by a patent attorney who addressed only one part of Question 4 above. (That article promises more in an upcoming book.) Personally, I prefer to start at the beginning and to approach a subject logically, orderly, and thoroughly.
Another, perfectly valid question is, how to go about the steps of securing a patent. That’s essentially a technical question, and one that you might ask when you engage a patent attorney to advise and represent you. The answer will depend on several factors—I will list a few resources below.
Who should apply for patent?
I separate the world of aspiring patentees into two camps, namely, those who have an “idea,” and those who are “in the business” of the field of invention.
I have an idea
Many would-be patentees can say only that they have an “idea” (or “concept”). The idea typically is sparked by a late-night TV ad or a daydream of a consumer product such as a garden sprinkler. With reticence, the aspirant unveils their idea to make the hose blue instead of green.
Are they in the business? No.
Do they have any sketches, drawings or photos? No.
Do they have any written description? No.
Have they tried it? No.
Do they have any training or experience in the field? No.
How does it work? They don’t know, “but it would be great if it can be done!”
These aspirants don’t have an invention, let alone a patentable one.
They usually don’t have any money, either.
“Idea” people are often eager but seldom qualified to enter the patent process.
I hate to be crass, but aspirants in this camp may wish to save their cellphone minutes—or call someone else, if they must.
I’m in the business
Can you say, “I’m in the business”? If so, you’re in the more promising camp of companies that have a particular expertise, usually acquired through experience, education, and training in a particular industry, technology, or craft. They tend to be experts in their particular niche. There are whole industries that most people don’t even know exist. These are fields in which skilled people have labored for their entire working lives, unbeknownst to the general public. (Because they’ve sought my assistance, I now know more about programs, polymers, paper plates, power tools, and powder metals than I ever imagined possible, and that’s just in the P’s.)
People who are “in the business” usually know the “state of the art.” They know the needs and the problems. They have the technical capabilities to fill the needs and to solve the problems.
Many inventors are engineers or programmers. Others are machinists, musicians, traders, electricians, firemen, or nurses. Some are technically trained; others work with their hands.
The sad thing about skilled people
There’s a sad thing about people who really know their fields. Everything is obvious to them, in hindsight. After they fill the customer’s need—after they solve the technical problem—they say to themselves, “Of course!” (Actually, they’re usually deadpan—no exclamations.) “All I did was apply my knowledge and experience to solve the problem in front of me,” they typically say, if asked. And they’re rarely asked to explain their accomplishments. To them, it’s all in a day’s work. Let’s get the product out the door. On to the next project.
This is the inventor’s biggest mistake. They fail to recognize the significance and the patentability of their own inventions. They don’t think of themselves as inventors. They don’t think of their “improvements” as inventions. So they never enter the patent process. Only later—often too late—does it occur to them that a patent might be good to have, for example, to stop a competitor (or a customer) from making a low-price end run around the innovator.
Many of my best clients have entered the patent process only after they’ve been sued by competitors for alleged patent infringement. Their typical response is, “They can’t patent that!” Oh, but they did! The competitors did patent “minor” improvements, and you can, too.
If you or your people create new or improved products, you probably fail to recognize most of your patentable inventions. (We offer training courses for engineers, scientists and managers to help them recognize potentially patentable inventions and to talk them through the process of how to convert an “improvement” into a patent to protect the company’s proprietary rights vis-à-vis competitors.)
People skilled “in the business” are sometimes reluctant yet often qualified to enter the patent process. How do I know they’re qualified? Because decades of experience have shown me that when experts in their own fields create new products to solve existing problems and fill customer needs, there’s usually a patent or two to be had. Part of the reason is that it’s unlikely that anyone else has approached the problem in exactly the same way. (Certainly, a patentability or novelty search can help define and shape the patent claims, which in turn will provide focus for the specification and drawings.)
As Shakespeare observed, “there is a tide in the affairs of [business people], which, taken at the flood, leads on to fortune; omitted, all the voyage of their life is bound in shallows and in miseries.” Julius Caesar, Act IV, Scene 3.
Business people: “Take the current when it serves or lose [your] ventures.” Id. Patent your improvements and keep your company ahead of the competition.
Cost-benefit analysis can be useful
As suggested above, price shopping for patent services can be penny wise and pound foolish, but a little cost-benefit thinking can be useful. If you expect to sell $100,000 or more of an improved product, it might be worthwhile to invest some fraction of the expected revenues in patent protection. How much is market leadership worth to you and your company? Are margins important to you and your management?
People in the business usually fare better than laypeople
The reality is that laypeople with mere “ideas” are seldom “ready for patent,” in the language of the U.S. Supreme Court in Pfaff. (I have written about Pfaff previously, e.g., in the context of the America Invents Act of 2011.)
On the other hand, if you’re “in the business,” and if you’ve made an “improvement,” you probably are qualified for patent, and if you “take the current when it serves,” a patent application may lead “on to fortune.”
A few words on how to apply for patent
For information on how to apply for patent, see my articles, for example, Patent — Picture or 1,000 Words?; When to Call a Patent Attorney; More Words, Less Patent Clarity; Build Your Patent Portfolio: Preparation, Prosecution, Appeals; Obtain Allowance of Software Patent Under Alice and Guidelines; and 7 Tips for General Counsel: How to Invest $100K in Patents Now. For additional details, visit the U.S. Patent and Trademark Office. Of course, if you want legal advice or representation, you’ll want to engage a patent attorney.
Who should apply for patent? With few exceptions, the answer is companies that are already in the business of the field of the invention. Such businesses are most likely to be qualified to benefit from patent protection, yet, ironically, they’re also most likely to miss the opportunity.
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