Category: Patent

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Licensing an Invention: Lessons from Nikola Tesla

TeslaNikola Tesla was reduced to taking work as a day laborer digging ditches after previously working as an engineer with the Edison Company and then being forced out of a company he started with two other investors. He was down on his luck, unable to find work as an inventor or engineer.  He was broke and despondent describing this time as “a year of terrible heartaches and bitter tears.” He lamented that all of his high education in science and mechanics was “a mockery.”

But in the midst of this hardship he did not give up on inventing. He continued his work and filed a patent on a hydromagnetic motor. Opportunity would come through an unexpected place–through a network connection prompted by the mere discussion of his hydromagnetic motor invention on the ditch digging job. This story shows the need for carrying on in the face of adversity.

Nikola Tesla is an inventor best known for his contribution to the design of alternating current (AC). His work on the AC motor and AC power allowed for transmission of power for longer distances. His AC systems provide a foundation for the AC power systems used today. His work on AC electricity brought him recognition and wealth in his 30’s, but in his forties his stature fell somewhat by his actions and efforts related to the wireless transmission of power. Bernard Carlson’s biography,  Tesla: Inventor of the Electrical Age, provides a detailed look at Tesla’s life and work.

The success in licensing rights in Tesla’s AC motor and AC power system patents to the Westinghouse Electric Company provides potential lessons for licensing an invention and taking it to market.

 1. Use your Network to Find A Partner

While Tesla was working day labor digging ditches, as explained above, Tesla told the foreman about his invention efforts on the hydromagnetic motor. The foreman then introduced Tesla to Alfred Brown, who was the senior Western Union Manager. Brown knew he needed the business help of Charles Peck, who he knew previously. Brown was technically oriented and Charles Peck was business savvy.

Peck and Brown agreed to cover Tesla’s development and patenting costs. They also provided him with a salary of $250 per month. The three agreed to split the profits in thirds with a third to Peck and Brown, a third to Tesla, and a third reinvested in future developments. Before focusing on AC motors, Peck and Brown first encouraged Tesla to work on a pryomagnetic generator.

Not every inventor needs a financial/business partner but sometimes its helpful. You never know who in your extended network can help. Its not clear that Tesla was asking for help from the foreman. It appears that he was merely talking about his invention. Tesla was able to talk freely about his thermomagnetic motor invention because he had already filed a patent application on it. Sometimes you might want to keep your invention confidential even after filing a patent application for business or competitive reasons (not patent reasons). But in other cases, talking about the invention after filing a patent application in conversations with others can produce unexpected positive connections and results.

2. Know When To Pivot

Tesla’s efforts at making a pyromagnetic generator ran into problems. As Carlson recounts, Tesla was “[d]istressed that he was an able to perfect this invention, [and] Tesla feared that Peck and Brown might abandon him….” But they did not. Peck had confidence in Tesla. Peck encouraged Tesla to focus his work on an electric motor.

Peck likely encourage Tesla to work on electric motors, because he was aware of the market at the time. Carlson writes, “Peck and Brown were probably comfortable with Tesla investigating motors because of the growing discussion in electrical circles about using motors in central stations.” It can be difficult to know where to pivot to. But it is important to be aware of the market developments, which can indicate where to turn next.

3. Have Something to Show

Tesla had to convince Peck and Brown that he should work on AC motors rather than DC motors. Nearly all of the central stations in the U.S. in the mid-1880’s were running DC not AC. The DC generators and the copper distribution network required Edison to sell DC systems in densely populated areas. Westinghouse therefore saw an opportunity to design AC systems that could serve dispersed populations profitably.

In order to convince Peck and Brown that AC was the way to go, Tesla devised a demonstration. The demonstration had a similar purpose as Christopher Columbus’s alleged demonstration to Queen Isabella where Columbus allegedly stood an egg on its end in order to convince the Queen to finance Columbus’ ships.

To demonstrate the power of AC rotating magnetic current, Tesla attached a four-coil magnet to the underside of a table. He placed a copper plated egg and several balls on top of the table. Tesla applied two out-of-phase currents to the magnet, which caused the egg to stand on end and caused the egg and the balls to rotate on the table top. Tesla explained that the spinning was caused by the rotating magnetic current. Peck and Brown were then impressed and supported Tesla’s work on AC motors.

Tesla learned from this that to sell others on his invention he had to provide a demonstration or a show. I think this is likely true for many inventions. It harder to sell an invention without a prototype or a demonstration that allows others to see how it will work. Oral and written descriptions often do not have the persuasive power of a prototype or demonstration that others can see and touch. In Tesla’s case the demonstration was not even a motor. Instead the rotating egg showed the power of AC. Since a motor’s function is to rotate an output shaft the rotation of a metal egg was a sufficient proxy to achieve the desired interest from Brown and Peck.

4. Have a Story to Tell

Every successful inventor must tell a story that sells the invention to financial backers, other companies, decision makers, and/or the ultimate consumer. As Carlson stated, “no idea, no invention goes anywhere unless one is willing to tell a story about it, a story that another person finds interesting and persuasive.”

Not only did Tesla have something to show, he had a story that accompanied the demonstration. His story tied his invention to a famous figure, Columbus, who achieved what others thought was not possible–sailing west without falling off the flat earth–and in doing so, made a remarkable discovery, America. The implicit link that Tesla made was that if Peck and Brown got on board with AC, they would be associated with an endeavor that would change the world.

5. File Patent Application(s)

After Tesla developed a prototype model polyphase AC motor in his lab, he proceeded to file a patent application. And instead of filing multiple applications on individual motor designs, he and his patent attorney Parker Page filed one comprehensive patent application that included not only a new AC motor, but also a new system of electrical power transmission. According to Carlson, this was a bold and unusual move at the time. However, now it is quite common to file a patent application covering an overall system.

As Tesla did, the safest position is to file a patent application before going public with the invention. In the U.S. (but not most foreign countries) there is a one year grace period, but its best not to rely on it if you don’t need to.

6. Build Your Reputation, Obtain Social Proof

Brown and Peck decided on a strategy of patent-promote-license regarding Tesla’s inventions. They decided that in order to successfully promote Tesla’s inventions, Tesla needed to gain recognition in the field. Tesla had not previously joined any trade organizations or been involved in the electrical engineering community. First, they obtained the endorsement of a known exper in the field, Professor William Anthony. Tesla demonstrated his AC motor to Anthony and Anthony was impressed. Anthony then spread the news about Tesla’s motors to his fellow engineers and discussed the motors in a lecture he gave at MIT.  Therefore, the endorsement of Anthony provided the initial social proof within the relevant community. Then, Peak and Brown contacted the technical press and Tesla’s inventions received favorable coverage there. Then Tesla was invited to give a lecture on his motor and system of electrical power transmission at a meeting of the American Institute Electrical Engineers. This set the stage for the licensing of the patents to Westinghouse.

Not every invention requires a strong technical reputation in order to gain recognition with the intended audience. However, you need to have an understanding of what your audience expects in order to gain their attention and have them take you seriously. Tesla gained the social proof within the required group in order for his invention to be taken seriously. You need to figure out what social proof and reputation is necessary or helpful in promoting your invention. And as Telsa’s experience shows, you don’t have to have a preexisting strong reputation, you can build one when you need it.

7. Make the Sale

Ultimately Peck worked out a license of the patents to the Westinghouse Company for what amounted to $200,000 over ten years. More work had to be done in the development of Tesla’s AC power systems at Westinghouse, but licensing was a step along the path that ultimately put Telsa’s power systems in commercial use.

Peck died later and Tesla was unable to find someone like Peck who could guide his inventive efforts and help sell his later inventions. Therefore, Tesla is often known for his later inability to successfully commercialize his inventions after the AC motor/power invention. Yet, as shown above, Tesla benefited from the partnership with Peck and Brown. They were able to successfully guide the licensing of this inventions related to AC power. Of course, not all inventors require a business partner. But inventors and entrepreneurs sometimes forge relationships that foster a balance between creativity/imagination and business.

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Do I need a utility patent or a design patent?

Design patents protect the visual ornamentation embodied in an article of manufacture (e.g. a product). In other words, a design patent protects the way a product looks. This is in contrast to a utility patent that protects a process or the way a product functions or operates.

The Ordinary Observer
The protection afforded by a design patent is quite narrow as compared to that provided by a utility patent. Design patents are effective at preventing direct knockoffs. Courts have set out an ordinary observer test for determining whether a design patent covered a product, e.g. whether the product infringed the design patent. The court will consider whether the product and the design shown in the drawings of the design patent are substantially the same in the view of the ordinary observer.

What do your customers care about?
If customers would be satisfied with a competitor’s product that has an appearance that is not substantially the same as your product, then a design patent may not provide a large competitive advantage. However, design patents are particularly useful for product the visual appearance of products where the appearance an important factor in the purchasing decision of a customer.

Protecting Unique Portions of Product
Design patents can be drafted to cover not just the entire visual appearance of a product, but also a portion of the visual appearance of a product. In this way, the most unique portion of the product can be protected regardless of the more usual or unimportant portions of the product.

Protecting an Invention with Design and Utility Patent Protection
When concerning whether to seek a design patent or a utility patent, it is important to consider whether you would like to stop competitors from copying the visual appearance of your product (design patent protection) or the functional features of your product (utility patent protection). You might decide that you want to prevent competitors from copying the visual appearance and the functional features of your product, in which case you would file a design patent application and a utility patent application on your product.

Summary
A design patent (1) is relatively inexpensive compared to a utility patent, (2) protects the visual appearance of a product or a portion of a product, (3) is effective for preventing or stopping direct copying of the visual appearance of the product, (4) has a 14 year term, and (5) does not require the payment of maintenance fees after the design patent is granted.

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What if someone else invented with me (Co-Inventor Disagreements)?

When more than one person contributes to the conception of an invention, each person contributing will be a co-inventor of that invention on the corresponding patent application. The combination of all of those that contributed to the conception of an idea claimed in a patent is known as the inventorship of the patent or patent application. This article explains steps that can be taken to handle future situations where a disagreement arises between the co-inventors.

Inventorship
Inventorship cannot be negotiated. In other words, you cannot agree that someone that did not contribute to the conception of the invention is an inventor. Likewise, you cannot agree that someone that did contribute to the conception of the invention is not an inventor. If a person contributed to the conception of the invention claim in a patent application, that person must be named as in inventor.

Sometimes workman or engineers are hired to make a prototype of the invention. If the hired person only carries out your instructions for making the invention, then that person might not be considered an inventor depending on the circumstances.

Ownership
On the other hand, ownership of an invention can be negotiated and transferred. Therefore if one person conceived on the invention, and a second person provided funds to patent and commercialize the invention. The first person would be the inventor, but the second person could not be named as an inventor. Instead the first and second person could form a partnership, corporation, LLC, or other entity, where each person’s ownership interest could be divided in the entity and the entity could own the invention. Further, the first person could sell all of the right in the invention to the second person and then the second person would be the owner and the first person would be the inventor.

Joint Inventors
If there are two or more inventors, under the patent law, each inventor will own the patent jointly with the other inventors. However, under the law this allows each inventor to make, market, sell, license, or otherwise grant rights in the patent and receive moneys therefrom without splitting the funds with the other inventors. Further, the each inventor does not need to get permission from the other inventors to undertake such activities with respect to the patent.

Co-Inventor Disagreements
One problem arises, if all inventors are not in agreement. This can occur when one inventor is engaged with an company that has an interested in licensing or selling the product/service. They may be less likely to do a deal if they know that an uncorperative inventor could sell the same rights to that company’s competitor, in which case they would have to compete with that other company to sell the patented product. That competition would make the deal less valuable to either company than if they had no competition.

This is normally not a problem when all inventors are in agreement. However, it becomes a problem when inventors having a falling out or disagree about how the patent should be utilized. Further it is problem if one inventor wants to proceed forward with commercializing the invention and the other inventor no longer wants to participate. While at the beginning inventors maybe in agreement about how they intend to proceed, it can take between 3 and 5 years to obtain a patent and a lot can change during that time.

Legal Entity for Ownership and Invention Exploitation
Whenever there are more than one inventor it is best to form a legal entity in which the inventors own an interest (e.g. own shares). The ownership of the invention can be transferred to the legal entity. The internal operating documents of the entity can describe (1) the ownership interest of each inventor (and other non-inventors, if desired), (2) how the invention will be commercially exploited, (3) how disputes are resolved between inventors, (4) what happens if one or more inventors wants to proceed but other inventors do not, and (5) many other business considerations.

The legal entity formed can be a written partnership, a corporation, an LLC, or other entity. The legal entity provides the vehicle for owning the patent, making decisions with respect to the patent and its commercial exploitation, and dealing with situations where an inventor wants out of the business. Further the legal entity may be attractive to potential business partners and licensees because they would need to deal with one entity and not multiple inventors.

Therefore, forming a legal entity to own invention rights in an invention having multiple in inventors can lend clarity to the commercialization and decision making processes related to the invention and related patent application or patent.

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Should I create a prototype before applying for a patent on my invention?

Prototyping_BreadboardYou are not legally required to create a prototype before filing a patent application. However, depending on your invention and the circumstances of your case, it may be beneficial to develop a prototype before filing a patent application, as explained below.

The U.S. patent laws do not require that you create or build your invention or otherwise create a prototype before filing a patent application. However, the law requires that your invention be described to the level of detail in your patent application where one skilled in the technical area of your invention (skilled in the art) can recreate your invention without undue experimentation by reading your patent application. It is best to to error on the side of more disclosure of details regarding the invention rather than less when writing a patent application.

Enough Detail
If you have a general idea about how your invention would work, but if you can’t describe how one important component of your invention would interact with another important component of your invention, then you may need to further engineer or prototype your invention before applying for a patent. On the other hand if you know for example your device needs a motor to operate certain components. But you are not inventing a new motor. And you know how those other components would interact with the motor, it may not be necessary to know all the internal details of the motor in order to proceed with a patent.

Further Inventing During Prototyping
It is well known that oftentimes when developing a prototype you will learn additional details about your invention and you may make changes and improvements during prototyping. There are at least two ways to deal with the possibility that prototyping will result in new details about your invention.

Multiple Patent Application Approach
The first is the most protective procedure. The first approach provides that you file a patent application on your invention before prototyping. The first application will record the details known that that time. Then prototyping proceeds. If additional details or changes are discovered or made to the invention during prototyping, then your patent attorney can evaluate whether a second application should be filed on the new material discovered or invented during prototyping. Further you can decide from a business perspective whether the new details are sufficient to justify the cost of a second application.

Prototype First Then Patent Approach
The second approach is to develop a prototype before filing a patent application. You will want to have any third parties that you work with to develop a prototype sign a nondisclosure agreement (NDA), because it is important that your invention be maintained as confidential before patent filing as explained here. After prototyping is complete, when a patent application can be prepared including any new details discovered during prototyping.

Evaluating Novelty of New Details
There are some details that might be discovered during prototyping that would not warrant a new patent application. Such details depend on your particular circumstances and invention. For example, if during prototyping you discover that the overall length of your invention should be longer than previously anticipated. That discovery might not warrant a new application. Generally the scaling up or scaling down of an otherwise scalable component that produces expected results from such scaling does not substantially impact the patentability of an invention or a feature. The exception to this rule is when the scaling was achieved when such scaling was not previously possible or thought possible in the relevant art. Your patent attorney can advise you whether any changes or invention that occurred during prototyping is likely to warrant inclusion in a second patent.

Conclusion
I often evaluate inventions to determine (1) whether further engineering is recommended before patenting or (2) whether it is recommended to file a patent application first. The approach depends on the particular circumstances of your invention and the extent to which the important details of your invention have been developed or might be further developed during prototyping.

Photo credit to flickr user Maciej Wojnicki under this creative commons license. The photo shows an electronic breadboard, which is often used to create and test prototype designs in the electronics field.

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Invention and How to Predict the Future

Larry_Page_Charlie_Rose1The future is already here — it’s just not evenly distributed.

Trying to determine whether your product or service will be a success is the business of predicting the future. Predicting can be hard. The difficulty is compounded by the fact that often you will want to determine whether there is a market for the invention before spending money on the patent process, but patent law encourages you to file a patent application before you make your invention public. Below are ideas on predicting the future.

Larry Page, founder of Google, said in a conversation with Charlie Rose:

Invention is not enough. Tesla invented the electric power we use, but he struggled to get it out to people. You have to combine both things: invention and innovation focus, plus the company that can commercialize things and get them to people. . . .

Lots of companies don’t succeed over time. What do they fundamentally do wrong? They usually miss the future. I try to focus on that: What is the future really going to be? And how do we create it? And how do we power our organization to really focus on that and really drive it at a high rate? When I was working on Android, I felt guilty. It wasn’t what we were working on, it was a start-up, and I felt guilty. That was stupid! It was the future.

Chris Anderson, entrepreneur and former editor-in-chief of Wired magazine, says he doesn’t try to predict the future, but he actually does by observation. Anderson said:

I actually never, never make the mistake of trying to predict the future, ’cause I suck at it. And I fall back — and you’ll forgive my little semantic parlor trick here — but I fall back on William Gibson’s famous quote that ‘the future is already here — it’s just not evenly distributed.’ To predict the future, you just have to keep your eyes open, and there it is.

Anderson’s strategy of predicting the future by observation is the concept discussed by entrepreneur and investor, Chris Dixon. Dixon said:

…Business people vote with their dollars, and are mostly trying to create near-term financial returns. Engineers vote with their time, and are mostly trying to invent interesting new things. Hobbies are what the smartest people spend their time on when they aren’t constrained by near-term financial goals.

…

It’s a good bet these present-day hobbies will seed future industries. What the smartest people do on the weekends is what everyone else will do during the week in ten years.

(empahsis added).

Makers are a type of hobbyist. What does it mean to be a maker? Seth Godin spoke at the World Maker Faire and said this:

[7:58] What real makers understand is this: If it might not work, then you are doing some making. If you are doing something that might not work…then you are doing something important because it is risky.  It’s risky because when you finish, you need to turn to someone and say here, here it is. I made this. And the other person can say I don’t like it … it doesn’t work right … i don’t want it. That is hard.

…[A]ll hacking is, all innovation is, all creating is, all science is: is doing things over and over and over and failing and failing and failing until it works. So if you are not willing to fail, then you cannot possibly innovate.

…if you are a maker, what have you made recently that was a complete and epic failure?

(emphasis added).

Turning back to predicting the future, a post from brainpicking.org about a PBS video from Joe Hanson provides highlights of a discussion on why some science fiction writers are good at predicting the future.  The video provides:

One right prediction in any one body of work would be lucky, but this many right answers can’t be luck – clearly, something sets these people apart. Many of the greatest sci-fi writers also had serious scientific training: Isaac Asimov had a Ph.D. in biochemistry, and Arthur C. Clarke had degrees in math and physicns; H.G. Wells had a degree in biology…

At its core, good science fiction must rest on good science…

(emphasis added).

Conclusion
So, it is important to focus on the future. The future is already here, you only need to look for it. One place to look for it is in cutting edge science. Another way to look for it is to watch what makers, hackers, and hobbyists are doing with their free time.

Photo credit to flickr user Steve Jurvetson under this creative commons license.

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What is Prior Art?

In general, the US only rewards inventors that conceive of “new” ideas or inventions. To determine if an invention is “new” the US Patent Office (or a US Court) compares the invention to “prior art.”

In general, “prior art” consists of disclosures or events that occur before a person conceives of an invention, or in some cases before a person files a patent application. In the United States, this concept will change after March 16, 2013 under the new patent law (the Amercia Invents Act or “AIA”). Prior art is important because, if that prior art discloses or suggests the invention, then the invention is not considered new and the prior art disqualifies a patent from being granted on the invention.

Pre-AIA
For US patent applications filed before March 16, 2013, an inventor could “disqualify” some prior disclosures and events as prior art by showing that he conceived of his invention and worked on the invention diligently before the date of the prior disclosure or event, as long as the prior disclosure or event did not occur more than one year before the inventor filed his US patent application on the idea. This allowed an inventor to benefit from his invention without the inventor having to rush to file a US patent application, as long as he still filed promptly within one year from the first occurrence of the prior disclosure or event.

Post-AIA
For US patent applications filed after March 16, 2013, prior disclosures or events that occur before the inventor actually files his US patent application cannot be disqualified as prior art by the inventor unless the inventor can demonstrate that the prior disclosure or event was in fact derived from the inventor’s own work and the disclosure or event occurred less than one year before the inventor filed his patent application. Thus, under the new patent law, an inventor can disqualify a prior disclosure or event by another person as prior art if he can show that the disclosure or event was his own work, i. e., the disclosure or event was not independently created by the other person, and the disclosure or event occurred less than one year before his US patent application was filed. Also, be aware that this is the law in the US; in many countries any disclosure or event that occurs before a patent application is filed, even of the inventor’s own work, depending on the circumstances, can disqualify the patent application.

Examples of Prior Art
What types of disclosures could be considered as “prior art?” Any publication such as a brochure, a magazine article, a published patent or patent application, advertising, a web page, a college thesis, or instructions that accompany a product may be considered a prior art disclosure depending on the circumstances. The text of the publication may be in any language. The disclosure can be no language at all, just pictures. The publication can be located in any country of the world.

What types of events could be considered as “prior art?” A public showing of a product, a public or private offer for sale, a sale of a product, prior invention by another, a prior filed patent application, public use or commercial use of a product, or public knowledge of the invention are all examples of events that could be considered “prior art” depending on the circumstances.

Exceptions
There are exceptions to the above disclosures and events qualifying as prior art. For example, some public uses may be considered experimental under some circumstances. Some inventions by another person may not be prior art if the prior invention remained secret and was abandoned by the prior inventor. There also may be ambiguity in what is considered a “public” showing or use, or a “publication.” It is important to review particular details of the suspected prior art with a patent attorney.

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What is a Patentability Search and Opinion?

PatentSearchThis article provides reasons why you should have a patentability search performed and addresses common questions regarding patentability searching and resulting patentability opinions. A patentability  search is designed to tell you the likelihood of obtaining a patent on your invention. The law does not require that you do a patentability search search (also known as a patent novelty search) before filing a patent application, however often a search is the right first step in the patent process.

When a U.S. non-provisional patent application is properly filed, an Examiner at the Patent Office will perform a patent search on the invention as set forth in the claims of the patent application to determine whether you should be granted a patent. So why should you have a patentability search performed if the Patent Office will do one regardless? A patent search is almost always recommended so that you can avoid the cost of preparing, filing, and prosecuting a patent application on an invention for which a patent is not likely to be granted or for which the business value of the patent may be limited due to the prior art. The results of a patent search can also be used by a patent attorney to draft a stronger patent application on your idea.

Purpose of the Search
The purpose of a patentability search is to determine whether and which of the details of your invention are new. Patents are only granted for new inventions. If a prior patent or patent application discloses each and every detail of your invention then you will generally not be able to obtain a patent on that invention–because the invention is not novel (e.g. new). A search is therefore designed to give you information about whether you are likely to obtain a patent on your invention.

If the patentability search results show that you are not likely to obtain a patent on your invention because each and every detail of your invention is disclosed in a prior patent or patent application, then you can avoid spending money for preparing, filing, and prosecuting the application. In this way, you can think of a search as insurance against the risk of not obtaining a patent after spending money preparing, filing, and prosecuting a patent application.

If (a) not all details of your invention are found during the search or they not found in one prior art reference and (b) assuming the unfound details provide a patentable improvement over prior art, then the question will arise whether it would be worth pursuing a patent on those details that were not found during the search. This becomes a business question for you to decide. The patent search assists in determining the scope of patent protection you could obtain (e.g. what aspects or details of the invention could be protected and what aspects could not be protected). Aspects that the search reveals could not be protected could be copied by competitors. Therefore you are in a position to determine whether it makes business sense for you to pursue protection on the aspects of your invention that could be protected by a patent.

Patentability Searching vs. Patent Clearance Searching
A patentability search is different from a patent clearance search or a non-infringement search. Patent clearance searches and non-infringement searches are designed to address whether the commercialization of your idea would infringe any patent owned by someone else. A patentability search is not designed to address whether the commercialization of your idea will infringe any patent owned by another. The references to searching in this article refer to patentability searching and not patent clearance searches and or non-infringement searches.

My Product is Not on the Market, Do I Need to Search?
Generally, yes. The fact that your product is not available in the market does not necessarily mean you will be granted a patent on that product. The sale of a product in the market place may be one way of determining whether an idea is new. However, the publication of an idea in a patent or patent application is another way to determine whether an idea is new. There are countless patents and patent applications at the Patent Office that disclose products that are not currently on the market. So even if your product is not on the market, it may be disclosed in a patent or patent application at the patent office. Therefore, a search is recommended even when the product is nowhere to be found on the market.

Why would there be a patent or patent application on an idea, but that idea is not found in a product on the market? There are numerous reasons why a patented idea is not found in a product on the market, such as (1) the patent owner did not have access to sufficient capital to develop the product, (2) the owner could not gain access to retail space or appropriate channels of trade, or (3) the owner could not gain sufficient publicity or consumer interest in the product, etc. So while a patent can provide a competitive advantage, a patent is no guarantee of commercial success for the corresponding product.

Can I Do My Own Patent Search?
Yes, but just like many other do-it-your-self projects, a professional may achieve better results than you would on your first try. However, you may like to perform patent searching on your own because you may identify relevant prior art references, which if such references disclose all the features of your invention, would enable you to avoid the cost of hiring a professional patent searcher. However, before concluding your invention is not patentable based on the results of your search, you should consult a patent attorney for advice as to whether under the law you would be able to obtain patent protection even in light of the prior art references you found.

You can search at the U.S. Patent Office website. However, presently only patents going back to 1976 are word-searchable at the patent office website. All patents are searchable by patent class. You can also search through other search tools, such as Google Patents.

In any event, even if your search results do not reveal any obstacles to seeking a patent, it is best to engage a professional patent searcher, such as a patent attorney or trained patent searcher, to perform a search as a professional patent searcher may uncover results that you did not find given the professional searcher’s experience, access to search tools, and knowledge of searching techniques.

Need for Explanation of Patent Search Results
It is important to understand before requesting a patent search, what you will receive when the patent search is complete. Will you be given a patentabiliy search with a patent attorney’s opinion as to the chances of obtaining a patent on your idea along with an analysis of the results? Or will you only be given a pile of patents and patent applications with no analysis?

While sometimes the results of a patent search might be apparent from the patent references themselves, often it is necessary to have a patent attorney explain what the patent search results mean. For example, after reviewing the patents and patent applications from a patent search you might come to the conclusion that your idea is not patentable because it is obvious in view of the results. However, the obviousness doctrine under the law is not synonymous with the common meaning of the word obvious and a patent attorney may have a different opinion that your idea could be patentable and may not be found obvious under the law.

Many low cost patent search providers do not provide an analysis of the search results but only provide you with a pile of patent documents and leave it up to you to figure out what they mean. We think it is important to obtain a patent attorney’s analysis of any patent search results.

Am I Guaranteed to Get a Patent After A Patent Search?
The short answer is no. Even if a patent search provides results that show a favorable position for the client to proceed with a patent application, non-public prior-art may still exist which could prevent you from obtaining a patent. Most U.S. Patent applications are secret or not publicly available for 18 months after the date that the patent application is filed. Some patents are not publicly available until, and if, the application issues into a patent. However, a patent application that was filed a month ago on the same invention as your invention, would not be discovered in a patent search today, but could be considered prior art that could prevent you from obtaining a patent on your invention.

This seems unfair. Why can non-public patent applications be used as prior art against my invention? The publication period and prior art effect reflects a balancing between informing the public of inventions in patent applications and some patent applicants’ desire to keep the applicant’s idea private before a patent is issued to prevent copying during the patent pending stage.

Even though a patent search cannot guarantee a patent will result from a patent application on the invention, a patent search is a reasonable step to ensure that publicly available prior art patents or patent applications do not exist that could block you from obtaining a patent on your idea.

Can the Results of a Patent Search Inform the Value of a Patent on my Idea?
The question of the value of a particular patent is a difficult question that is the subject of many different types of analysis. However, you should consider that a patent may have value in a number of ways, such as: (1) the extent that you can stop competitors from copying your idea, (2) the extent to which other companies will be interested in paying you for a license to make or use the technology of your patent, and (3) the extent to which customers, inventors, financial institutions, and others will be impressed by you having a patent in a way that is helpful to you.

With respect the first and second points above, a patent may be considered valuable to the extent that others cannot design around your patent and provide customers a similar product while not infringing your patent. A patent attorney will seek the broadest protection on your idea to reduce the possibility that competitors could design around your patent. However, a patent attorney cannot draft the claims in your patent that would cover the prior art. Therefore a patent search can inform you of how broad the scope of protection you could achieve by showing you what a patent on your idea could not cover. A patent on your idea could not cover the prior art. Therefore if the patent search reveals prior art which your competitors can use and which your patent can not cover, then you must consider whether the features of your invention that are not disclosed in the prior art are features which your customers would seek out or whether customers would be happy with the unprotectable features shown in the prior art. In other words, are the new features of your invention sufficiently important to customers, such that customers will seek those features from you as opposed to choosing features in the prior art provided by competitors? To the extent that the results of a patentability search assist in considering those questions, the search may be helpful in determining the business value that a resulting patent might provide. A patent is no guarantee of the commercial success of your idea, especially if customers are happy to use products having prior art features.

To illustrate this idea further, consider a scenario where a patent is analogized to a fence that is placed around a plot of land. In this analogy a patent is like a fence and the land within the fence is like your idea or invention claimed in a patent. The fence allows you to determine who can occupy or use the land and what they must pay for doing so. The fence is valuable to the extent that customers want to occupy or use your plot of land for the price you offer for access to the land. If the customers are happy to use alternatives such as competitors’ land or public land, then your patent is worth less than it would be if customers were unhappy with the alternatives and sought your land because of the features and benefits unique to your land.

Conclusion
A patentability search is generally helpful in determining whether you could obtain a patent on your idea. It is also helpful in determining the scope of patent protection that you might be able to achieve.

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Freedom to Operate and Patent Clearance Searching & Opinions

PatentSearchA freedom-to-operate opinions involve an analysis of the results of a clearance or non-infringement patent search to determine whether a particular product, service, or group of products or services, if commercialized, would infringe patents owned by others, or stated another way, whether the client has the freedom-to-operate regarding the product or service at issue. This is different from a patentability search, which seeks to determine whether or not an idea is new and could be protected applying for a patent.

What is involved in a Clearance or Non-infringement Search?
A non-infringement search begins by first considering in what jurisdiction the product or service will be sold. For the purposes of this article we will consider the scenario where the product is sold in the United States. When the product will be sold or the service operated in a foreign jurisdiction, such as in Europe, foreign attorney’s assistance is likely necessary.

Next the search scope is determined by considering the features of the product or service at issue. Then a patent search is performed comprising the search scope previously determined. Then during the patent search relevant patents are flagged for further analysis.

The flagged patents are then checked to see whether they are expired due to age or due to a failure of the patent owner to pay a maintenance fee. Maintenance fees are due at 3 ½, 7 ½, and 11 ½ years after the patent issues. Expired patents generally cannot be infringed, except in the case that the patent owner timely petitions to revive a patent after failing to timely pay the maintenance fee. However, in such a case of revival, the law provides certain protections, called intervening rights, to someone that makes substantial preparations to manufacture, use, offer for sale, or sale while the patent was expired (after the 6 months grace period).

Patent Analysis
Of the flagged patents that are not expired beyond the grace period, a detailed analysis occurs to determine whether such patents pose an infringement risk to the product or service at issue. The detailed analysis involves interpreting the meaning of the claims and the terms within the claims. The interpretation includes reading the specification of the patent and reviewing the drawings. It can include reading the file history of the patent application that corresponds to the subject patent to determine whether anything that occurred during the prosecution (the interaction between the patent applicant and the Patent Office) of the patent application will shed light on the meaning of any terms in the claims. The interpretation may also include reviewing the prior art cited in the subject patent. Further steps may be taken during the analysis, such as, performing further prior art searching to determine whether prior art limits the scope of claim terms at issue.

The closer the patent claims are to the product or service at issue and the more ambiguous the claim terms are, the more time it is likely to take to determine whether the patent claims present an infringement risk.

Invalidity Search and Analysis
In some cases, the product or service does not avoid one or more claims of a patent after interpretation and analysis of the terms of those claims. In such cases, an invalidity analysis may need to be performed. An invalidity analysis seeks to determine whether the Patent Office made a mistake and granted the patent owner more protection that they had a right to in view of the prior art (e.g. previous inventions and publications). In other words, an invalidity analysis asks: did the Patent Office grant the patent owner protection over an invention that is not new? An invalidity analysis requires further searching or consideration of the prior art to determine whether claimed features in the patent are in-fact not new in view of that prior art.

Even if a patent attorney determines that one or more claims of a patent are invalid, thereas no guarantee that the patent owner will agree. Therefore proceeding forward with a product that would infringe a claim that a patent attorney has opined is invalid, still presents a risk that the patent owner will sue based on that patent.

Conclusion
A clearance search is used to determine whether your product is likely to infringe another’s patent. An invalidity analysis considers whether the Patent Office made a mistake and granted the patent holder more protection than they were entitled to receive. These steps can assist you in determining whether there is a patent risk in proceeding with the sale of a product or service within the United States.

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Ideas on Successful Software Design, Creativity, and Startups: Hackers & Painters

Hackers_And_Painters

The way to create something beautiful is often to make subtle tweaks to something that already exists, or to combine existing ideas in a slightly new way.

Paul Graham is an entrepreneur, programer, and venture capitalist. He co-founded Viaweb, which was purchased by Yahoo! and became Yahoo! Store. Later he co-founded Y Combinator, a seed capital firm. In 2004, Paul authored the book Hackers & Painters: Big Ideas from the Computer Age which comprises a series of essays on various topics including “Why Nerds are Unpopular,” “The Other Road Ahead: Web-based software offers the biggest opportunity since the arrival of the microcomputer,” “How to make wealth,” and “Design and Research” among many others. Each of these essays are available at Paul’s website. The book provides many great ideas on design, creativity, and startups.

The Test of Time: Predicting Successful Design in Advance is Hard
In chapter 2, Paul discusses similarities between hacking and painting. As others have noted, successful innovation is often at the edge of the current technology. Paul discusses beauty in the context of design and the difficulty in measuring success:

The way to create something beautiful is often to make subtle tweaks to something that already exists, or to combine existing ideas in a slightly new way. This kind of work is hard to convey in a research paper
…
And there no correlation, except possibly a negative one, between people ability to recognize good design and their confidence that they can. The only external test is time. Over time, beautiful things tend to thrive, and ugly things tend to get discarded.

Paul notes cross disciplinary exposure is important to creativity:

I’ve found the best sources of ideas are not the other fields that have the word “computer” in their names, but the other fields inhabited by makers. Painting has been a much richer source of ideas than the theory of computation.

Try to Provoke a Design war in New Markets involving Tough Problems
Paul provides advice for winning against big companies when you’re a startup:

Only a small percentage of hackers can actually design software, and its hard for the people running [a big] company to pick these out. So instead of entrusting the future of the software to one brilliant hacker, most companies set things up so that it is designed by committee, and the hackers merely implement the design. If you want to make money at some point, remember this, because this is one of the reasons startups win. …. So if you can figure out a way to get in a design war with a company big enough that its software is designed by product managers, they’ll never be able to keep up with you.

But Paul says you it’s hard to get an established company into a design war. So, the best place to do so is in new markets. And “If you want to make money, you tend to be forced to work on problems that are too nasty for anyone to solve for free.”

Find Stars By Looking At Free Time Activities
How to do you find those hackers that can actually design software? Look at what they do in their free time.

When we interviewed programmers, the main thing we cared about was the kind of software they wrote in their spare time. You can’t do anything really well unless you love it, and if you love to hack you’ll inevitably be working on projects on your own.

In chapter 15, Paul talks about software design in the context of designing software programming languages. However many of the principles discussed apply to the design of any software and to design in general.

The Designer Should be an Intended User
Paul asserts that you must start by focusing on the user. But that does not mean doing exactly what the user says. Paul states, “I don’t think there is any field in which the best work is done by the people who just make exactly what the customers tell them to.” Yet, he provides that the designer should be one of the intended users:

You’re most likely to get good design if the intended users include the designer himself. When you design something for a group that doesn’t include you, it tends to be for people you consider less sophisticated than you, not more sophisticated. And looking down on the user, however benevolently, always seems to corrupt the designer. … If you think you’re designing something for idiots, odds are you’re not designing something good, even for idiots.

Paul analogizes to creation in other fields, noting that the design in software is for human use just as it is in other fields:

All arts have to pander to the interest and limitations of humans. In painting for example, all other things being equal a painting with people in it will be more interesting than one without. It is not merely an accident of history that the great painting of the Renaissance are all full of people.”

Paul notes that morale is important in design, “If you’re board when you’re drawing something, the drawing will look boring.” In art as in software design starting with a prototype that can be refined into the final product is helpful for morale. If you build software that can be working and testable in an hour, the prospect of that immediate reward is motivating. Similarly painters often “start with a blurry sketch and gradually refine it.” From morale Paul circles back to the problem with designing for the unsophisticated user, providing:

It’s hard to stay interested in something you don’t like yourself. To make something good, you have to be thinking, “wow, this is really great,” not “what a piece of shit; those fools will love it.”

Hackers & Painters is a great read with much more than can be touched on here. If you are a hacker, a startup, a maker/designer, or if you run a software company, you should read Hackers & Painters or you can read the essays on the web.

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How do I find my competitor’s patents or patent applications?

Often we are asked to find out whether a specific competitor has a patent or patent application that would cover (1) the client’s product or (2) a known product of the competitor’s. There are several approaches that can uncover patent or patent application information about a competitor depending on the circumstance. Information about the patent activity of a competitor my provide you with with information about your competitor’s planned activity before it is seen in the marketplace.

The Public Disclosure Patent Bargain
The bargain of a patent is that you provide information about your invention to the public–by describing the invention in a patent to the level that one skilled in the art could practice the invention–and in exchange the government grants you a time-limited monopoly on your invention. This way invention is encouraged through the monopoly to the inventor and technological arts and sciences are advanced by the disclosure of the invention to the public.

Therefore the content of a patent is publicly available information. In the United States, patent applications may also be public. Therefore it may be possible to discover a competitor patent application before it becomes a patent. As a result, publicly available patent information can provide you competitive business intelligence regarding your competitors.

The default rule in the U.S. is that patent applications are published 18 months after the earliest filing date. However, there are exceptions to this rule. For example, if the applicant requests non-publication or if the application is subject to a government secrecy order, then the Patent Office will not publish the application. Non-publication is not allowed if the applicant wishes to seek foreign patent protection.

A Known Number
If the patent number or patent application number is known then it is easy to retrieve the corresponding patent or patent application. For example to your type the number in the Patent Office Search Tool or the Google Patent Search Tool and retrieve the patent or patent application.

Unknown Number
In the case of a patent application, the patent application may not be known. This can occur because the competitor product is marked with “patent pending” but without any corresponding number. This can also occur if the product or literature is not marked. Further this can occur, if the client is not aware of a competing product or service from a competitor, but would like to know if there are any publically available patent applications that would inform the client what product development activities the competitor is undertaking.

There are several methods that might reveal a competitor’s public ally available patent information.

Assignee/Owner
An assignee search can be performed looking for any patent application that names the competitor company as an assignee (owner).

Patent applications are often filed in the name of the inventor rather than in the name of a company. Therefore it is possible that a company could file a patent application on behalf of one of its inventor/employees without identifying itself as the owner of the subject matter of the patent application. Further, it is possible that an owner might file a claim of ownership (record an assignment) after the patent application is published. In these scenarios, searching for the competitor company name at the patent office might not reveal a patent application that is owned by the competitor.

Inventor Information
Each patent application generally must name the inventor(s) of the subject matter of the patent. Therefore if the names of probable inventors/engineers associated with the competitor are known, then a patent search and patent application search can be performed looking for any patent or application that names those inventors or engineers.

When the competitor is a small company, it may be likely that the owner of the company will be an inventor. Therefore, a patent search can also be performed looking for any patent application naming the owner as an inventor. For more on identifying inventors see: How to Find a Competitor’s Patents or Patent Applications — Part 2.

Invention Subject Matter Searching
In addition to searching for the assignee and inventors, searching on the subject matter of the invention at issue can uncover patents or patent applications that are connected with the competitor company.

Conclusion
There are a number of ways to discover your competitors patent and patent application activity. Searches can be conducted of published patents and patent applications for certain assignee (owners) and/or inventors. Searches can also be conducted for patent documents having the subject matter of the invention at issue. These searches can provide competitive business information about the invention and product development activities of competitor.