Virtues of Obtaining a Patent - Some Questions for The Experts

[Paul Marossy]

Hypothetical question:

Say I invent this device that would be in a total niche market and I anticipate at least 1000 units being sold, probably 2 to 3 times that in the course of a few years. Now, to protect myself, I think "I need to get this thing patented" so a big company can't see my offering, say "Hey, here's an untapped market for us to pursue, and look it's not patented. Well, we'll patent it!" - and basically steal my idea, get all the revenue and then prohibit me from making my own creation.

So here's the question I'm hoping to have answered:

Just when is it worthwhile to get something patented, assuming that it can be? And if it can't be patented, what other protection from theft would I have? Just a copyright and trademark/tradename?

[Sir H C]

If you can show you were selling something before they "came up with it" they can not stop you.  Why would you think most of these big guys care about such small quantities.

Remember, can you afford to defend your patent.  Win or lose, you pay a lawyer, and if you lose then the lawyer is out of your pocket.  If you win, it might be years, decades before it is truly settled (check out the intermittant wipers guy).  So it is usually best to make it quality and be there first so that people go to you and you are branded with said item.

Patents really help the big guys figure out what you did.

[R.G.]

I once read that you never truly own anything that you can't protect. There's a lot of truth in that.

A patent is government's way of keeping records as to who is recognized as being first, and the permission to sue on that basis. The protecting is up to you to do.

There are two ways to protect something. There is exclusive protection, which means that you and only you can use or allow others to use it. And there is nonexclusive protection, which means that you cannot keep others from using it, but they cannot prevent you from using it. Exclusive is what patents nominally are. Public domain is nonexclusive protection, because no one else can patent something that was previously made public by someone else.

I chose the "public domain" approach with the Millenium Bypass trick of using a reverse biased diode as a current source. My description of that technique prevents anyone else from ever preventing ME from doing it. But they can do it for free, too.

Patents are not necessarily the best protection. The government does not enforce your patent. They let you enforce it, at whatever cost to you it is. The costs are steep. No lawyer I know of will take on a lawsuit for less than a $10K retainer or a contingency cut of the action if the suit is favorable. That's a stiff entry cost.

The fellow that invented interval windshield wipers patented it, then took his patent to all of the Big Three automakers to offer them a license. All three said "No, thank you." and then put interval wipers on their next year's model cars. The inventor predictably sued. The case was only recently (late 90's) settled in the inventor's favor. It took him over 30 years to get a favorable ruling and literally millions of dollars in legal fees before he got a dime back. He died a couple of years after the suit was over. He had to sell off partial interests in his eventual winnings to outsiders to get enough money to continue the suit. When a major corporation says, "So sue me...", that's a serious threat. IBM literally fought the US government to a standstill on the IBM antitrust case over a period of over 20 years. There were IBM lawyers that came to work for the company right out of law school that never worked on anything else.

Which is rather far fetched, I'll admit, but it illustrates what can happen in a nightmare situation.

All of which taken together says that patents are sometimes useful, but like copyrights, they're more often useful to corporate giants than to normal people because justice costs so much today.

Take a read at http://www.tinaja.com/glib/casagpat.pdf for a fairly clear-eyed view.

[Paul Marossy]

WoW. That Don Lancaster paper is quite sobering.  Well, that at least verifies my thinking on it. I do realize that it would be my responsibility to protect myself from patent infringement, when it does occur. It seems to be simply a case of he who has the most money "wins"... 

[MartyMart]

WoW. That Don Lancaster paper is quite sobering.  Well, that at least verifies my thinking on it. I do realize that it would be my responsibility to protect myself from patent infringement, when it does occur. It seems to be simply a case of he who has the most money "wins"... 

Sad but mostly true !!
I looked into the costs of a UK/Europe/World patent last year.
It was something quite cool, not stompbox related, the costs were prohibitive
so we never took it any further.
For a 4 dollar item, we'd have had to sell an awful lot !!
My brother in law runs a medium size maufacturing firm and they spend thousands defending their
patents ...    .... ( hospital sterilized poo and pee bags & trimmings ..!! )

Marty.

[Paul Marossy]

I've heard about that windshield wiper case from a friend of mine who graduated from law school a few years ago. Wasn't it about the intermittent wiper control? Anyhow, maybe I jump to conclusions too quickly, but the idea of a patent almost seems to be antiquated and mostly pointless these days, at least for little guys like me. It doesn't seem like there really is any true way to protect your idea/invention.

[gez]

http://www.invent.org/hall_of_fame/68.html

http://www.goodyear.com/corporate/history/history_story.html

[jrem]

There is also another spin to the whole patent thing . . .   royalties.   I was recently on a bus trip from a hotel to the Tokyo airport, sitting with two co-horts, and a third guy gets picked up at another hotel.   So we're all talking biz, and the whole patent thing comes up (cause where I work we have a bunch of them), and the third guy (not part of our group) turns out to be an IP guy (intellectual property), whose past life was at IBM, and is now an idependent consultant (working for IBM, that's what he was doing in Tokyo, imagine that).

So anywho . . .    he made this point that what big bidness be doing now is collecting (or buying) patents, then researching other industries (i.e., stuff that the patent wasn't orginally designed for) that are using similar technolgies that infringe on the patent, then they go after them for extort (ahem) "royalties".  They cave all the time since it's easier to pay $50k for a royalty than it is to drop a $5m product line.  The upside is huge, and this guy was laughing about all the money he makes at it.

He made the point that sometimes one patent can pull in multiples of "royalties" from different markets.

He referenced a book on the concept, it excapes me now, something like "toys in the attic" or "ideas from the attic" but an amazon search doesn't bring it up.

Regards, John.

[H S]

He referenced a book on the concept, it excapes me now, something like "toys in the attic" or "ideas from the attic" but an amazon search doesn't bring it up.

"Rembrandts in the Attic"

The fellow that invented interval windshield wipers patented it, then took his patent to all of the Big Three automakers to offer them a license.

The problem with the intermittent wiper guy was:

"He wanted to be a manufacturer and supply that system to the automotive industry," Richard Aitken, a Washington patent lawyer told the Washington Post. "That was the most important thing to him."

He could have gotten cash much earlier for a bare license to the OEM's.

A patent is like a deed to property, except the property is an idea.  Fences are a nuisance to people who don't own property, and patents are a nuisance to people who don't have ideas!  People who do have ideas generally want to respect the intellectual property of others, even when there isn't a patent, as you can see in this forum.

U.S. patents are the best value in the world, but even so they're usually too expensive for the market opportunity represented by a stompbox.  The larger barrier to boutique copyists is the trouble of setting up production and marketing for a second-comer product.  Are you going to compete on price for a 1000 unit/year product?  No bucks there, and no glory either--you become a well-known jerk!

But what if it turns out to be a 100,000 unit/year product and attracts Behringer?  It helps to build a brand name everyone wants.  (But they'll still take a shot at copying your trade dress!)  At that point, a patent is your best protection--or rather, the threat of a lawsuit that the patent represents.

[Paul Marossy]

.S. patents are the best value in the world, but even so they're usually too expensive for the market opportunity represented by a stompbox.  The larger barrier to boutique copyists is the trouble of setting up production and marketing for a second-comer product.  Are you going to compete on price for a 1000 unit/year product?  No bucks there, and no glory either--you become a well-known jerk!

But what if it turns out to be a 100,000 unit/year product and attracts Behringer?  It helps to build a brand name everyone wants.  (But they'll still take a shot at copying your trade dress!)  At that point, a patent is your best protection--or rather, the threat of a lawsuit that the patent represents.

Good points. 

[mojotron]

From my experience of filing many patents for network/computer ideas via employers and working with some good lawyers I had a couple of points:

1) If you have some way to prove that your idea was conceptualized and documented - before - some other person - then they could not claim to have "invented" it... For filing patents, this is a must, you have to show that there is not another inventor of the same idea. So, if you actually put your device out there and sold a few you would be able to claim that you were the initial inventor - if you were indeed the initial inventor... - use lots of black epoxy if you go this route..

2) It's likely assumed, although it may be part of the patent law, that from the time you start selling something that you want to patent - you have about 6 months to submit an application before you loose the ability to do so cleanly. I'm not a lawyer, but I think that it is assumed in the law that a person files a patent before selling any implementation of that idea - so to sell the device without a patent puts you in sort of a gray area.

3) A patent makes your idea public record - so you only have a number of years (I believe 5) from which you "own" the idea. After that, anybody can use your idea that you have documented for them... So this works against you if you think your idea is really so unique that no one would also come up with it or reverse engineer it...

4) The value of patent defense is questionable for the small guy... if a company with more resources wants to use the idea - you can sue them, but there is a million ways to work around your idea. They could find a prior implementation... file a related claim for an idea that hinges on a detail that differentiates the idea that they are using that sets it apart just slightly from your idea...

5) If you look hard enough, not many ideas these days are really that unique. I almost think that it takes a sharp legal team to hit the patent office at just the right time to push one through....

So, I don't see too much value in filing a patent unless there are some really huge $$ involved ($10M+), the idea is really-truly unique, and/or you have an employer that values the idea as an asset.... I got $2-5k for any application that got filed on my behalf - so it was worth it for me - but I would not do this on my own.

[Paul Marossy]

Interesting stuff, mojotron.

Actually, according to the US Patent Office website (http://www.uspto.gov/web/offices/pac/doc/general/index.html#patent), "Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available."

And, if I interpret the following correctly, someone overseas can make your patented object, make them and sell them and there's nothing you can do about it - unless someone living in the U.S. is importing them.

"The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO."

I guess that's how Behringer can clone Boss/Roland products (and whatever others) and get away with it - they're not subject to the same patent laws as we are in the U.S. I suppose lawsuits can still be filed and what not. Is there other versions of "a patent" elsewhere in the world? Boy, this area gets more and more grey, doesn't it?!

I am beginning to think that the Cornish, Klon and whoever else method is the best - just cover that darn PCB in a brick of epoxy. It'd be hard to reverse engineer, that's for sure... 

[mojotron]

..."Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States ..."[/i]

Ahh.. sorry I was wrong - from the horse's mouth - 20 years.... I'm not sure where I got 5 years - I suspect this is a deeper topic then a technical guy would want to stray into.... 

And, if I interpret the following correctly, someone overseas can make your patented object, make them and sell them and there's nothing you can do about it - unless someone living in the U.S. is importing them.

True, but maintaining the ability to import into the US (huge market) is a big deal. So, patent law is enforcible, but this is way outside of my experience with the subject....

"... the patentee must enforce the patent without aid of the USPTO."
..this area gets more and more grey, doesn't it?!

I am beginning to think that the Cornish, Klon and whoever else method is the best - just cover that darn PCB in a brick of epoxy. It'd be hard to reverse engineer, that's for sure... 

"A Dab will do ya..." 

[Paul Marossy]

"A Dab will do ya..."

Every time. 

[The Tone God]

I do not like the patent system as it is now. The mis-use / abuse of it has gone out of control particularly in the case of software but it is happening everywhere now. It really needs to be updated seriously. It's broken and doesn't work as it was intended originally now.

I have a bunch of ideas that I could get a patents for but I chose not to for the following reasons.

1. The time and cost factor of getting patent increases my time-to-market dramatically. In this day and age of near instant information availability and production capability that means alot.

2. I have to disclose everything publicly about my idea. The is essentially handing over my design and R&D to anyone who wants it for free. This reduces the time-to-market and costs for everyone else.

3. The responsibility of proving that someone is using my idea literally is on me. I have to spend time watching the market to see if someone is using my idea, collect evidence, and bring forth the case. Time and money I rather spend else where.

4. To make matters worse if the idea is modded in even the slightest way then things become very complex and therefore time/money consuming in the end with no guaranty that it will turn out in your favour.

5. What do you do if the offender is in another country that doesn't respect patents ? See point 2 above.

In the end no matter what you do be it laws, copyright, circuit obscurification, circuit protection (like epoxy), etc. if someone really wants to reverse engineer your product they will. Accept it already. The only positive way to get full protection is not to release the product and even then you are just hoping that no one gets the same idea you did.

My thinking is if someone puts the time/money into reverse engineering one of my designs then they have earned the privilege to use it. If they don't want to spend the time/money doing that then I would discuss a possible licence arrangement.

Andrew

[MartyB]

Q:  Why are lawyers buried 25 feet underground?

A:  Because deep down they're really nice guys.


Did you hear that Osama Bin Ladin took a hundred lawyers hostage and said that if his demands aren't met he'll start releasing them one by one?

[Paul Marossy]

All good points, Andrew. I don't know that much about patents, but I feel the same way in only a couple of days of looking into this - it needs to be overhauled!

[puretube]

I do not like the patent system as it is now. The mis-use / abuse of it has gone out of control particularly in the case of software but it is happening everywhere now. It really needs to be updated seriously. It's broken and doesn't work as it was intended originally now.

a sociological problem... ( o tempora - o mores )

I have a bunch of ideas that I could get a patents for but I chose not to for the following reasons.

One-offs are not worth the patent-hassle - don`t start messing with the idea,
unless you`re sure it`ll provide your first million...

1. The time and cost factor of getting patent increases my time-to-market dramatically. In this day and age of near instant information availability and production capability that means alot.

time works for the applicant: if the procedure might take 5 or 7 years,
you get protection from the day you filed...

2. I have to disclose everything publicly about my idea. The is essentially handing over my design and R&D to anyone who wants it for free. This reduces the time-to-market and costs for everyone else.

so the "public" can see if you`re for real an inventor, or knock your knuckles...

3. The responsibility of proving that someone is using my idea literally is on me. I have to spend time watching the market to see if someone is using my idea, collect evidence, and bring forth the case. Time and money I rather spend else where.

it`s on the patent lawyer - you can help him save money for yourself,
by monitoring the market (a.o. by visiting H-C and this forum)

4. To make matters worse if the idea is modded in even the slightest way then things become very complex and therefore time/money consuming in the end with no guaranty that it will turn out in your favour.

it`s all in the claims - don`t leave it to your lawyer alone, when postulating them...

5. What do you do if the offender is in another country that doesn't respect patents ? See point 2 above.

patents can be granted in over 170 countries... (ok, ok, at ~ 100 times the costs...)

In the end no matter what you do be it laws, copyright, circuit obscurification, circuit protection (like epoxy), etc. if someone really wants to reverse engineer your product they will. Accept it already. The only positive way to get full protection is not to release the product and even then you are just hoping that no one gets the same idea you did.

never accept it! stand up for your right!
Not releasing/licensing your product = zero result (except personal private fun...)

My thinking is if someone puts the time/money into reverse engineering one of my designs then they have earned the privilege to use it. If they don't want to spend the time/money doing that then I would discuss a possible licence arrangement.

Revenging may be a "sport" to some, a "workout" or "exercise" for others,
but to me it doesn`t give anyone the rights to exploit my thinkings...

Andrew

Ton.

[puretube]

Hypothetical question:

Say I invent this device that would be in a total niche market and I anticipate at least 1000 units being sold, probably 2 to 3 times that in the course of a few years.

if it`s a 5$ device, it`s not worth it (at 1k units/year...)

Now, to protect myself, I think "I need to get this thing patented" so a big company can't see my offering, say "Hey, here's an untapped market for us to pursue, and look it's not patented. Well, we'll patent it!" - and basically steal my idea, get all the revenue and then prohibit me from making my own creation.

the question here is:
1.) do you just want to prevent them from copying you?
or
2.) are you afraid that they infringe your idea, claim it to be theirs, and in turn prevent you from profiting from your own idea?

So here's the question I'm hoping to have answered:

Just when is it worthwhile to get something patented, assuming that it can be?

if so, THIS is the very moment to immediately stop talking about it in public (i.e. e.g. here)
until it is filed!

and don`t bring it on the market even when you think you gooped the hell out of it,
before that date!

And if it can't be patented, what other protection from theft would I have? Just a copyright and trademark/tradename?

that`s the hard part of the game...

[R.G.]

Let me say this again. I don't think it sunk in.

You cannot own anything that you cannot defend in some way. Think about it.