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~~The Bootstrapper's notepad~~
The case for/against filing a patent application   

FOR:         to protect your invention from competitors
AGAINST:  It won't protect your invention from competitors

How can both be right at the same time?


The Case For Filing a Patent Application

If the cost of filing a patent application is low, (i.e by doing the work yourself), and assuming that the chances of having a strong patent granted are reasonably good - should an application be prepared and filed?

The answer is Yes, without any hesitation (but do not skip the provisos below), assuming you have gone to the trouble to investigate the potential market value of the invention, and found it to be significant.
Here's why: If your goal is to licence your invention to a manufacturing company, a patent or patent application is indispensible. Without such documentation, your chances of attracting interest from a bona fide corporation in your invention are slim to none. If you do attract interest for an undocumented invention, it will likely be the sort of interest to be avoided.

The minimalist inventor needs to take his/her situation into account, and prepare to make adjustments accordingly. The minimalist inventor equips himself with the tools needed to weather the storms. They are:

1. Don't fall in love with your own invention.
It's no joke. The moment that you begin to imagine that your invention is "the greatest thing since sliced bread" is the beginning of the end for your dream. So stand back and try to view it from the perspective of the end user.

2. Educate yourself about the realities of patents.
Don't just accept what you read on the internet as unadulterated fact (including this article). Verify articles for their value against the possible motives of the author. Patent attorneys need to earn a living, like everyone else. So don't expect them to drive you away by telling you horror stories about the patent system. Research the subject using sources without personal agendas.

There is an abundance of information about patents posted on the internet. Some of it is purely informational, and some comes with strings or biases which you need to treat with caution. In most cases, if the source is an educational institution of higher learning, you can trust its unbiased veracity. Here are a few links to check out for valuable insights into the background of patent law and how to navigate it:

3. Understand the reasons for filing a patent application
The reality is that very few inventions are revolutionary breakthroughs on the scale of the transistor, laser, or electric light bulb. But an invention need not be groundbreaking to be commercially viable. In fact, if sales are your ultimate goal, you may not even need a patent.
It's really important to understand reasons to apply for a patent. If you are new to the concept of patents, you may be forgiven for thinking that it's a no-brainer: 'Everyone says I should get a patent'. But they do not fully understand the rationale. It's just a notion that has become part of popular culture.
Usually, when it comes down to deciding whether or not to file a patent application, the issue comes down to cost, as well as the risk of failing to succeed in getting a patent issued. Nothing else seems to matter. The need to get a patent should follow logically after consideration of issues such as competition. If there are no concerns about potential competitors with knock-off products, the issue is moot.

4. Understand issues in your technical field
Technical fields such as software, e-commerce, and methods of doing business are "special cases" and need to be treated separately, because they may involve abstract concepts. The landscape has recently changed in this category, which makes it essential to be able to distinguish between the realities and hype that will be tossed about. Traditional categories of utility patents typically involve mechanical and electrical devices you can touch and feel. In the latter cases, it is a fairly straightforward matter to learn if an invention has a relatively good chance of earning a patent.
There's a lot more to the issue than meets the eye. Not all patents are equal. Don't fall into the trap of getting a patent that you can't put into practice yourself, nor licence to anyone else.

The newbie bootstrapper who aspires to start a company to market a new product is up against formidable obstacles that make the patent issue seem trivial in comparison. So it is important to view things in terms of the broader picture, rather than focusing solely on patents.

In a free and open market, it's all about competition. Your ability to market your new product will depend on how fast your company can grow to a sustainable level where it will be able to retain its position and growth momentum in spite of the inevitable competition from imitators with knock-offs trying to syphon your sales. Some, but not all, such competition can be delayed, rolled back or stalled initially, by the mere act of filing a provisional patent application, giving you the legal right to label your product with the sticker "Patent Pending". This legal right may be obtained for the bargain price of around $200, assuming that you prepare and file the application yourself. This trivial first step may be more valuable than any subsequent utility patent application filed thereafter. Don't forget to check out the literature available to help you learn how to prepare and file your own provisional patent application. It is not that hard to do, and you don't have to be a patent attorney to do a good job. If the invention is potentially valuable, other players are vying for a share in this field, and you delay filing a patent application, then someone else will be able to obtain a patent first, and cut you out of the market. The US and other national patent systems now follow a "first to file" rule. This means that it won't benefit you to keep a diary of your work as proof of your invention date. Regardless of the date of your invention, only the actual date of filing the application counts.
Your best chance of getting and keeping reasonable market share in your product field is to file a patent application, thereby undercutting your competitor's ability to gain market share. In spite of the difficulties involved, it is, in my view, better to file a patent application than risk starting a new venture without one.


the case against filing a patent application

It should be made clear that none of the following points should be taken to imply that a patent should never be filed. However, a patent application that is filed carelessly, or casually, may produce an unintended result more costly than if no application had been filed. As mentioned above, the inventor can easily find him/herself in a trap when a filed patent application ends up becoming restricted to the point where any novelty it contains is insignificant from a commercial standpoint, resulting in a total loss. Generally, such losses are limited to attorney fees for patent filing, in cases where an applicant discovers, sadly too late, that the invention has no commercial value. Such cases occur far too frequently, a fact that can be documented in a number of ways:

The US Patent Office currently has in excess of 10 million patents on record, of which 5 million patents were granted since 1980. Various estimates indicate that only a tiny fraction of patents on record (i.e. less than 5%) are ever commercialized*. This means that in the last 35 years, only about 250,000 patented inventions gained any commercial success. Although this sounds rather astounding, a random sampling of patents on file in the USPTO database shows an abundance of trivia, and "widgets" as being the subjects of so-called inventive ingenuity. Far be it from anyone to judge the value of another's creativity. However, if we allow the market to do the judging, the outcome is all too clear. There is simply too much worthless stuff that goes by the name "invention". Just one more problem attributable to the inadequate rules of the patent system.

Then there is the dark side of patents involving litigation, astronomical litigation expenses, enormous risk, and patent trolls. This is like a bad horror movie, only real. So the bottom line in this proverb is to repeat the first rule of the minimalist inventor:
Don't fall in love with your own invention....
Gather some hard, objective information before taking the next step of filing a patent application.

*based on information posted on the internet. This is an unverified estimate

Patent Application Strategies
Without a defined patent strategy you may be simply idling with the motor running. At minimum, you must have an idea or rationale for filing a patent application. It is not enough to simply file a patent application without any understanding of what a patent can and cannot give you.  Having a well defined, articulated patent strategy is best, because it gives you a roadmap to move forward with your project. Below are a few examples of snippets of patent strategies you may use for developing your own patent strategy.

The Defensive patent:

Filing a patent application is the best, if not the only way, to prevent a subsequent patent from being granted to a competitor, who might use it against you. The rationale is simple. If you have a jump on the competition, you might do well in the marketplace without a patent, if no one else can get one for the same invention. But patent examiners are only human. In a prior art seach they must conduct during the prosecution of your competitor's patent application, they may easily miss any reference to your earlier invention, and grant a patent to your competitor. This later patent would undoubtedly be invalid in any test case, but it would be up to you to sue for infringement and prove that the later patent is invalid. Such an action would take the wind out of the sails of any struggling start-up. So, place your prior art directly under the nose of the patent examiner by filing your patent application first, then making sure that the whole world knows about your invention by publicizing it. Do not leave any room for an inexperienced, or overworked patent examiner to grant a patent to a future infringer of your earlier patent.

The "Just in Case" patent:

You have an invention, but have concerns about its market value, its patentability,  its technical viability,  or any number of issues that give you a feeling of uncertainty, but do not want to simply drop the  ball and allow for the possibility of losing your proprietary rights.
Such a case is designed for a "just in case" patent application, in which you hedge your bet, file a provisional patent application at minimal cost, and proceed to develop and monetize the invention
The "just in case" patent is best when its cost is at its rock-bottom low, by doing it yourself.

 The Strategic patent

Filing a patent application, particularly a provisional patent application can be part of an overall strategy whose purpose is to give the startup company an all-important time slot in which to roll out a monetizing process, allowing to gain a market foothold relatively unencumbered by well-financed competitors. Allowing the provisional application to expire, or launching a corresponding utility application whose primary purpose is to ensure that the disclosure (the essence of the invention contained in the application) is brought before the officials in the patent office, and disclosed. The patent application may be deliberately abandoned, once its contents have become public record. The invention then falls into the public domain, ensuring that no one can then obtain a patent on the same subject matter, and prevent our new start-up from pursuing its business.

Defending a patent, once issued, against competitors with deep pockets can be a devastating experience which can unravel a newly formed company. Therefore, alternatives which bypass litigation become the best hope for surviving an assault by competitors.

The Patent Portfolio

Having a plurality of patents to cover a single invention can be an enormous benefit from several perspectives: The monetary value of the portfolio can be significantly greater than the sum of the individual patents, if they buttress one another. A patent portfolio can be attractive to a licencee who might balk at licensing a single patent. There is a certain element of prestige added to a portfolio missing from a single patent, which may add value. In addition, a patent portfolio that covers multiple aspects of your technology adds legal clout to your level of patent protection, such that possible litigation may even be avoided.
It's a given that the astute minimalist inventor would have aquired the skills needed to hone a fairly decent patent application after a few trials. These skills can replace fees of a six figure payout for patent application preparation and prosecution. They may also add a swagger to your stride. How's that for incentive?
Large corporations like to throw their weight around using their massive patent portfolios, numbering in the thousands, to put the fear of god into their competitors. Some corporations have in-house patent law departments staffed with patent lawyers churning out patent after patent. These patent porfolios are given the term "patent thicket" when they are clustered together tightly around a particular product concept they are designed to protect. The idea is to provide "bullet-proof" protection to guard against the possibility of any competitor daring to enter the market with a similar product. The enormity of sums spent by corporations (and conversely, earned by law firms) in litigating its patent portfolios makes the gross national income of some nations pale in comparison.
A provisional patent application is relatively easy to prepare, when compared to a full non-provisional utility patent application. You do not need to spend thousands of dollars for attorney fees. There are adequate guidelines available that will allow you to prepare and file a provisional patent application online.

The Good, the Bad, and the Ugly

First, let's present some background...It seems to be totally contradictory - and it is -  Patent law is a ball game with many curve balls. And the playing field is very uneven. You might even say that it is a game in which the odds are stacked to favor the players with the deepest pockets. This runs contrary to the principles of democracy, where everyone should be provided with equal protection under the law. There is no equality in patent law. 

It has also been said that a patent is nothing more than a "lottary ticket to a lawsuit". It's a bit of a paradox, that while patent law is intended to incentivize and protect innovation, the system itself has failed to innovate to keep up with changing times and to meet the needs of 99 percent of the population. The common sense understanding is that a patent is something granted by the government to protect an invention. That was indeed the traditional intent of patent law. But over many years things got to be more and more complicated. Consider the analogy of a family residence, with a fence surrounding the property. The fence defines the borders of your territory. If someone intrudes into your property without permission, the police are just a phone call away to nab the intruder. However, in patent law, there is no such thing as "patent police" to stop anyone from copying your invention, thereby stealing your intellectual property. Nor is there a clearly defined border that is visible and understood or respected by everyone to deter a competitor. Sadly, following a patent grant, you are completely on your own to protect and defend your patent from any competitors and imitators. Worst of all, should you require legal protection for your invention, do not expect to get it easily or affordably. Such cases are the exclusive domain of big players with deep pockets. Ordinary middle class people do not fare too well against such odds. It appears that the middle class has been thrown under the bus by this system. Under the circumstances, it is surprising that there is any incentive left to file patent applications, let alone to innovate. Yet many people seem to cling to a fairy-tale illusion about the patent system, and still believe that a patent provides a kind of invincible shield that magically protects intellectal property with no additional effort required.

As a necessary first step, it is important to insert a note of caution to inform the minimalist inventor  about the realities and risks which are a normal part of every patent application. This is especially important before the inventor invests in services of a patent practitioner and prior to committing to a significant fee for services which, in hindsight, are shown to be redundant, excessively costly, premature, and might have been performed by the minimalist inventor  him/herself, given the appropriate introduction to the patent system. Given the complexities, it will pay you to do some in-depth research into pros and cons, ins and outs of patents before rushing out to see a patent attorney whose role is limited to preparing, filing and prosecuting your patent application, after having provided the usual patentability opinion. This opinion, in case you are unfamiliar with it, will give some degree of assurance that you might succeed in receiving a patent in due time. But you won't know for sure if any or all your claims will be allowed or if some or all will need to be altered or amended, or what, if anything is left over after years of pendancy will still have any value. Unless you do your homework first, you will likely be purchasing a very expensive pig-in-a-poke. Any patent attorney will confirm to you, if asked, that he or she will do their utmost to secure a patent on behalf of you, the client, but that there are some contingencies beyond their control, which you alone must be prepared to deal with, including;
  • Final rejection of your patent application by the patent Examiner following years of pendency, several office actions containing objections, and/or claims rejection (it can happen)
  • An issued patent whose scope is narrower than expected, as a result of unexpected prior art citations or narrowing of scope by the patent examiner. The issued patent, if put into practice, might infringe a current unexpired patent of a very large, and litigeous competitor, who will be pleased to bury you in litigation expences if put to the test.
  • The issued patent when implemented, produces a dissapointingly poor result. This may be attributed to any number of reasons, including excessive cost, poor engineering design, or simply lack of need for the solution provided by the invention
  • The monetary cost, years of delays and lost opportunities, the stress and associated anguish can also account for a very high toll which the inventor  alone must be prepared to shoulder.
There may come a point where the inventor must admit defeat, drop the entire project, and move on, having gained valuable , though costly experience. To be fair to the patent practitioner, the role which this individual plays is limited to patent services. It is your job to ensure that those services meet your requirements, regardless of any outside advice you may be given. Insofar as the high costs are concerned, in a free market system, prices will rise to meet demand. (just  ask any economist to confirm this). Corporations form the bulk of clients for many patent law firms. These customers can afford to pay big bucks for these services. You, the minimalist inventor, must expect similar treatment when you choose to play in this arena. Therefore, you should choose wisely, by choosing the smart minimalist alternative.


copyright 2015-16 All Rights Reserved.   The contents of this website are solely the opinions of the author or provided as illustrative examples, and are not intended to be taken as legal opinions, nor to be considered to be applicable to any particular case. These contents are provided without warranty for accuracy or fitness for use. Use of the contents is at the reader's  discretion, and no attorney/client  relationship is established thereby