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Patenting for the small companyThe 50 to 499 person high-tech company
Jonah [email protected]
Nothing presented here is legal advice.
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A government-enforced 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
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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
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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
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Maintains an accurate docket Solicits invention disclosures
◦ Hangs around the water cooler Conducts prior art searches Conducts inventor interviews Routinely writes and files the highest priority invention Checks conference papers against invention disclosures
The patent specialist role
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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
Obvious does not carry its dictionary meaning in the context of patents.
Obvious means that multiple prior art references must be reasonably combined to prove a claim not-novel.
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Each claim element limits the market scope◦ Fewer potential products infringe
Less market value Each claim element limits the prior art
◦ Fewer references for the combination 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.
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A motor vehicle (large market, much prior art)
A motor vehicle having:◦ Four wheels; (eliminates motorcycle and airplane market
segments)◦ 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.
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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.
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The invention disclosure form
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Capture whiteboard drawings Edit a doc together using a projector
◦ Keep the invention disclosure doc at hand1. Have inventors dictate a picture claim2. Break out dependent claims3. Achieve the broadest reasonable claim 14. Define technical terminology
The inventor interview
Avoid inventor “myopia”.Describe other companies’ conceivable products.
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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 draft applications
The busy inventor
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No part of a well-executed strategy◦ Used by pre-funding startups◦ Used by unrepresented inventors◦ Used for unplanned filings before
public disclosures Conferences
Delays the date of receiving an enforceable patent
Encourages careless drafting
Provisional patent applications
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Foreign patents 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
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Budgeting
These are gross
approximations
Activity Approximate attorney fees
Approximate Office fees
US non-provisional (regular) patent application
$10,000 $1500
Strong US non-provisional patent application
$20,000 $1500
Provisionalpatent application
$500 $130
Strong provisionalpatent application
$8000 $130
Provisional conversion $6000 $500
Translation (per language)
$5000
PCT procedure $500 $2000
Per-foreign office filing $3000 $1500
Enforcement litigation $2,000,000
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Patenting is mandatory Draw a team with expertise in technology, legal, and
marketing Be quantitative in choosing inventions to patent Search non-patent prior art Draft claims meticulously Consider international strategy and budget
Conclusion