Patenting for the small companyThe 50 to 499 person high-tech company

Jonah ProbellJonah@Probell.com

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