Patenting Your Invention

July 30, 2004 2:10 AM

MetaLegalFilter: So, how foolish/wise is it to patent something yourself? [read the fine print inside]

I've tentatively come to the conclusion that I have a novel idea, which, if it does indeed turn out to be novel, could be big.It's not particularly capital intensive, but will probably require a few key partnerships to pull off.

To keep it from being swiped while I figure out how to pitch it (and while I'm pitching it for that matter), I'd obviously want to file a patent. Money is, of course, an issue. Most of my disposable income is going elsewhere at the moment, and it would be pretty inconvenient to divert it into spending four figures on a patent attorney, but if I save for a few months, perhaps possible. Although I've wandered into the local library and Borders and checked out the Nolo Press books, and discovered I could probably file a provisional app myself for under $100 and a full app for $400.

Thing is... if this really were a novel invention, and if I'd be pitching to people who have much more money and bigger lawyers than I do... well, I wonder if the DIY approach would really be wise. Can having a good patent attorney do the filing protect the idea better if push comes to shove? Would that even matter considering I'd have a heck of a time coming up with court costs in the event of such a confrontation?

And yes, I understand that if I can't raise a few grand to work on the idea to begin with, this is doomed to begin with. This question is mostly to help me figure out how much I might think of investing in protecting the idea before trying to raise shoestring funding for it.

posted by weston to law & government (9 comments total)

I've got a bunch of patents but they were all handled by the attourneys my company retains. Prior to filing for the patent I knew my inventions inside and out. There wasn't a transistor you could point at where I wouldn't know what it's bias current and voltage was. I knew where it was useful and where it would potentially trip up our competition.

So I filed.

What came back was recognizable as my intellectual property but their claims were much broader than what I was envisioning. I've been through this process maybe 6 or 7 times now plus others where I wasn't the principle inventor and I'm much better at figuring out how to broadly make claims.

So a patent attourney who knows the area you're trying to protect can be valuable in that he'll know where to look for possible applications for your invention. These attourneys are rare and expensive though. You can probably do a good enough job by yourself.

What's the value in a patent? Well, it gives you a limited monopoly on an invention. If you're a corporation then most likely you'll use them like cards in a very high stakes poker match. Somebody accuses you of patent infringement and you rifle through your patent portfolio looking for areas where you can accuse your competitor of infringing on you. You then avoid massive payoffs to your competition by paying smaller payoffs to your attourney. If you're a private individual then its there to protect you from somebody else poaching your idea (vulture capitalists you try to engage, your best friend, this rich friend of your best friend etc)

Your patent also only protects you as much as you're willing to defend yourself. The patent is just a shield, if you don't raise your shield (by going to court) then your patent won't protect you. The patent isn't magic either, it won't tell you that somebodies using your idea or has come up with it independantly (very possible, look at the history of calculus for instance), that's your job too. You need to be a watchdog.

Your best value is if you can license or sell the patent to another party, it's then in their interest to defend the patent as well since they would've bought it to gain some advantage over the market.
posted by substrate at 4:41 AM on July 30, 2004

If you can afford it having a professional help you through this process pays great dividends. When shopping your idea around to investors or potential licensees having a professional looking patent application on file helps give you credibility. If you write well, especially technical writing, then you can probably put together a fairly decent provisional application. If you do not have the money for a patent attorney right now then getting this filed can be important. The earlier the better. A provisional application is only good for one year and then you will need to file a non-provisional (regular) application and foreign applications within that year.

The claims in the application define your protection and it is here especially that a professional will generally provide much better results than an amateur. An patent attorney will run you anywhere from three to ten thousand dollars in your area of the country depending upon the complexity of your invention. A common strategy is to file the provisional yourself and then seek financial assistance in the intervening year from investors or potential licensees to get a professional application on file and file foreign patents. Some people wish to avoid the cost of foreign filings, but many major corporations will take much less interest if they can not protect foreign markets. This puts pressure on you to get some results in selling your idea in that first year. You will probably also want an attorney to help you with negotiating with any investors or licensees. Good patent attorneys are plentiful, attorneys experienced in licensing and venture capital are much harder to find. Shop wisely and make sure they have real experience in these areas. It goes without saying that the so called invention promotion companies which advertise in magazines and on TV and which purport to get you a patent and market your idea are mostly shams.
posted by caddis at 5:00 AM on July 30, 2004

One thing, if you don't have a very firm idea of who would be interested in your patent then it's an ensured lose proposition. Look through the patent database some time. Most patents don't return a dime for the inventor.

I would also recommend reading these two articles by Don Lancaster.

The Case Against Patents
The Case Against Patents ebook
posted by substrate at 5:05 AM on July 30, 2004

I have some experience with this very very costly and frustrating experience. In my opinion:

1) It will cost a minimum of $5,000 to successfully file a patent, including legal fees, rewrites and research.

2) It will take a very long time (2 plus years of correspondance with lawyers and patent clerks).

3) You will probably not be successful unless you have a very unique idea that no-one has even touched on before.

My advice would be do your research, make sure what you're filing hasn't been done before, find a great attorney, and be prepared to risk between $5,000 and $10,000 in a failed bid despite your best efforts. Sorry for the pessimism, but I've been involved with four filings, none have worked out for reasons I can only describe as arbitrary.
posted by loquax at 5:32 AM on July 30, 2004

Hire a good patent lawyer or patent agent. It's an investment. Disclaimer: I do IP work, just not patents, so I do have a bias.
posted by anathema at 5:38 AM on July 30, 2004

What anathema said. We civil law attorneys have a saying:

Pay us now, or pay us later, either way you'll pay us.

You are so much better investing in an attorney now, then having to hire one later to defend you or your patent. New lawyers tend to bill less per hour then their more experienced counterparts. If you know any young attorneys ask them if they know anyone who graduated with them that practices patent law. Or, contact an IP (intellectual property) law firm and ask to talk to a new "new associate." Although a newbie lawyer will charge less, their work will be supervised by an experienced attorney, so you'll get the benefit of their experience, but not have to pay as much for it.
posted by Juicylicious at 7:06 AM on July 30, 2004

Your patent also only protects you as much as you're willing to defend yourself.

This is a VERY important point. Even if you've got a bulletproof patent, anyone can simply steal your idea and dare you to do something about it. If you can't afford the lawsuit (both in time and money), the patent will be effectively worthless.

...this is what happened to my grandfather, who had a basic patent on technology now used by every single farmer who uses mechanical harvesting equipment. Unfortunately, he couldn't afford the lawsuit when the big equipment companies stole his idea, so he never got a dime.
posted by aramaic at 7:42 AM on July 30, 2004

I'm currently in the middle of a patent application. It's a slow and burocratic process and I'm very glad to have handed much of the legwork over to a patent attorney. As a patent neophyte, one thing the lawyers were very useful for was interpreting what we'd produced and written such that they had a much better notion of how wide they could broaden the claims and still obtain the patent than we did. That kind of experience is worth paying for, in my opinion. Depends on how experienced the lawyers you use are, of course - like with anything, a specialist is always best. Fortunately, the company I contract with is footing the bill, but I can understand your hesitation, it ain't a cheap undertaking. And as everyone above says, a patent is only worth your willingness to defend it.
posted by normy at 9:47 AM on July 30, 2004

NB this is written by a friends father.
This book was written by a friends father about his experiences fighting for his patents and the lawyers involved. It is a very sobering experience knowing the person involved and all that he had to go through to stop people stealing his work. Without the international patents he would have been lost.
posted by stuartmm at 12:33 AM on July 31, 2004