At Aire Plastics, we see new patented projects and receive Intellectual Property questions almost every day.  Many of these projects leave us scratching our heads.  Why do inventors patent concepts or ideas when they are soooo far away from being an invention worth protecting?  Our frustration about this topic isn’t to criticize the inventor. It’s just because many of these ideas are really great and would be awesome to see come to life.

The truth is, applying for and getting patents for an invention is an important part of the product development process. But, when it is done too early, too late, badly, or not at all, it can potentially destroy a really innovative product.

I had my own questions about patents and protecting intellectual property, so I decided to get some answers.  This article will be the first in a series of interviews with Intellectual Property lawyers.  Each specialize or have a special interest in patents for inventors, product developers and engineers.

*You will note my own ignorance on this subject by the questions I ask.  Just like Rich will later tell me, there are NO dumb questions! That’s how we get the answers we need!

At the end of the series, I will be giving you some clear objectives to work through before calling an Intellectual Property or Patent lawyer.  Just like when working with manufacturers, being prepared before making the first phone call or sending the first email will raise your chances of finding the right lawyer and getting the best value out of their services.

My first interview is with Richard Stim from Dear Rich: An Intellectual Property Blog (http://dearrichblog.blogspot.com/) who is an expert on Intellectual Property and is worth following for news about this subject.

Here are a few things we cover in this interview:

• Resources for independent inventors
• When is filing a patent NOT a good idea
• Defending your Patent
• Inventors Journals

Let’s get started.

Jason:  Can you describe what you do in 1 sentence?

Rich:  I’m an attorney (not a patent attorney) and I’ve written books and a blog about licensing, copyright, trademark and other intellectual property matters.

Jason:  When is an idea NOT ready to patent?

Rich:

  The financial analysis is the more important one and should ultimately determine your decision.  If a financial analysis determines, for example, that your shower head can never be manufactured at a competitive retail price, you probably should not bother with a patent.

Jason: We have had many inventors come to us with ideas that they have patented which simply aren’t manufacturable or would need a lot of redesign for manufacturing before the idea would even be worth considering.  Did the inventor make the wrong choice in patenting their idea?

Rich: Again, a realistic financial appraisal would have likely have uncovered the design and manufacturing flaws.  By realistic, I mean a thorough analysis of the market, hopefully with someone familiar with the industry and with the costs and revenue sources — similar to the kinds of analysis performed by business schools.

Jason: What would be a scenario in which filing a patent would NOT be a good idea?

Rich: There are many scenarios when filing a patent would not be a good idea.  Remember that less than 3% of patents are commercialized and half of those don’t succeed in the marketplace.  David Pressman’s book, Patent It Yourself, has a lengthy checklist on when an inventor should seek a patent.

Jason: How much protection does an NDA provide before filing a patent?

Rich: An NDA is a contract for secrecy.  Like any contract, it requires enforcement… meaning you have to have the means to go after a trade secret thief.  It’s always wise to use one although many potential licensees refuse to sign them.  If you have the bargaining power, seek an attorney fees provision.  I have a website where you can obtain free NDAs, optional provisions, and explanations. (www.ndasforfree.com).

Jason: I always ask our customers to send me an NDA.  Many times they respond that it isn’t necessary because they have a patent pending.  Should inventors and startups continue to ask for signed NDA’s when working with suppliers and manufacturers even after they have a patent or a patent pending?

Rich: “Patent pending status” is achieved by filing either a regular patent application (RPA) or a provisional patent application (PPA).  Placing the “Patent Pending” wording on your product puts the world on notice that the USPTO is in the process of examining your great idea (and hopefully will approve and issue a registration).  If your application is rejected (or a year passes after your PPA is filed and you haven’t filed an RPA), you should remove the “patent pending” tag.  During this pendency period — before the USPTO approves your application — you cannot use patent law to stop others from making, using, or selling your invention.  You must wait until the patent issues before you can chase infringers.  There is one exception:  If your RPA is published (which usually occurs 18 months after filing the RPA) and the infringer is made aware of the publication, you can later sue (after the patent is issued) and collect damages for the period starting with the date of notification.  In other words, you must write to an infringer and let them know that the patent is published and that you’re coming after them once you get your registration.

Jason: We talk about patenting ideas but are simple concepts patentable?

For example:  a user interface that uses water.  I say this because I believe touch screens where patented before the idea was manufacturable.  What is the benefit to doing this?

Rich: I can’t really address a theoretical question like that.  If it’s novel and nonobvious, it’s patentable.  Simpler concepts are often difficult to patent because it’s more likely there is prior art.

Jason: If I ran into a patent on a patent search couldn’t I just make my design a little different and patent my version of the concept?

Rich: Not sure if you’re talking about design or utility patents, now.  But, yes, many people design around existing patents.  There are ways to limit “design-arounds” when drafting patents.  A patent attorney can lead the way.

Jason: Can you give us a brief description of what a patent lawsuit looks like?  When is it worth perusing and when is it not?

Rich: Generally, if you’re an independent inventor, you will have hard time financially defending or pursuing a patent lawsuit.  You can look up the gruesome details on the web.

Jason: How much protection does a handwritten inventor’s journal with clear documentation give to the inventor?

Rich: Notebooks are still relevant but not as important as before passage of the AIA.  Now that we’re using a first-to-file system, there is limited need for proving conception of an idea

Jason: My dad always told me to write out my ideas and then send them to myself by registered mail but not to open it so I had sealed and dated proof of my idea.  Is this realistic?

Rich: No, sorry, it’s worthless.  What’s to stop you from sending an unsealed envelope to yourself and then years later putting the idea in it and then sealing it?

Jason: We easily can find the definition of a provisional patent application and a patent application; can you describe the difference in laymen’s terms?

Rich: The Nolo site, where I used to work, has good explanations:  https://www.nolo.com/legal-encyclopedia/provisional-patent-applications-29856.html.

Jason: Can you give us an example of a scenario in which a provisional patent application would be a smart choice?

Rich: Generally when you need more time to determine the financial viability of your invention but you can’t afford a full-blown patent application.  Patent attorneys may differ on this issue.

Jason: Other than Dear Rich (which is great), what are some essential resources that inventors should look into?

Rich: I like the emails from Internet Patent News: patnews@global-patent-quality.com and the Patently-O Blog:  http://patentlyo.com.

Jason: What is the dumbest question you’ve ever been asked about patents or patenting a product idea (Please don’t list one of the above questions…hehehe).

Rich: Wouldn’t want to characterize anyone’s questions as dumb.  Asking questions is always good.  What is dumb is when you don’t ask questions.

Thanks Rich for being so direct.  I think you have given us a great start to learning about patents and Intellectual Property!

Please check out Rich’s Blog and the sites he mentioned above.  I certainly will.