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I have an Invention ... Now What?
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   Patent usefulness ?
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michael_e
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Patent usefulness ?
« on: Jul 16th, 2005, 5:06pm »
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A little background. I was a mechanical design engineer for about 20 years and have for the past 12 have been a jeweler . I cut gemstones, carve waxes and cast them in metal and use many of the same tools that I did when working as an engineer. IN my present work I have built, and use, many machines and tools that are unique, non-obvious and of tremendous utility, (at least to me and I would imagine to other people who work with small precision machines and tools).  
 
I have often considered attempting to obtain patents on some of the more unique and useful items that I have invented from necessity.  I have detailed drawings, working units and am well versed in the technologies leading up to them as well as any claims that can be made for them. No one else has ever been exposed to the operational characteristics of  these machines and so I assume that  it would be fairly easy to get the ball rolling and begin an attempt to patent at least one idea.  
 
The question is, "How useful is a patent in defending an idea ?"  
 The reason that I have not pursued this before is that many people that I have encountered have held the opinion that patents have little value other than to bolster  a person's ego. Their contention was that any business entity who had enough money, could do pretty much what they wanted against an individual with a small resource base and little ability to actually defend a patent.  
 
 Any opinions about actually defending a patent that has broad enough appeal to attract a business entity with enough resources to overwhelm the original inventor ?  
 
 
 
Michael E.
« Last Edit: Jul 16th, 2005, 5:07pm by michael_e » IP Logged
Wiscagent
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Re: Patent usefulness ?
« Reply #1 on: Jul 17th, 2005, 6:36am »
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Michael –
 
You ask some good, practical questions.  Most of your questions do not have a single, definitive answer; but I’ll share some of my thoughts.
 
An option for protecting your older tools, machines, and processes is to maintain them as trade secrets.  In order to create and maintain a trade secret you must (i) carefully document the inventions; and (ii) make an effort to keep the inventions secret.  By having detailed drawings, it sounds like you may have gone a long way towards meeting the first requirement.  The second requirement largely consists of having any employees or visitors to your shop sign confidentiality agreements, banning photographs of your equipment, ensuring that customers can not see your equipment and processes, and the like.  
 
A trade secret would allow you to sue anyone who misappropriates your invention, i.e. steals it. But trade secret status provides you no protection against someone else’s independent invention.  Note that depending on actions you have already taken, you may have lost the opportunity for trade secret protection. If you wish to pursue trade secret protection, contact an intellectual property attorney.  
 
Regarding patents - any of your inventions that have been in commercial use for more than one year are no longer patentable anywhere in the world.  A few countries including the U.S., allow a one-year grace period before you apply for a patent on your invention.   If you apply for and are granted a patent, the patent allows you to sue anyone who sells, imports, or uses your claimed invention.  If you are considering patent protection you should hire a patent attorney or a patent agent.
 
The answer to one of your questions, "How useful is a patent [or a trade secret] in defending an idea?" relates to the phrase “gives you the right to sue.”  If someone is infringing your patent or has stolen your trade secret you can sue them.  There is no certainty that you will win your case.  You can be sure that taking someone else to court will cost you money, time, and aggravation.
 
There is some validity to the  “… contention was that any business entity who had enough money, could do pretty much what they wanted against an individual with a small resource base and little ability to actually defend a patent.”  On the other hand, if you have a strong case and are reasonable in your demands, many businesses will be perfectly willing to negotiate a settlement.  For most businesses being sued is not an ego thing; they want a quick, inexpensive way out of legal problems. If you have a strong case and are reasonable in your demands, many businesses will be perfectly willing to negotiate a settlement.
 
The above generalities are based on my understanding of U.S. law.  For legal advice specific to your situation, hire a lawyer.
 
 
Richard Tanzer
patent agent
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Richard Tanzer
Patent Agent
Isaac
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Re: Patent usefulness ?
« Reply #2 on: Jul 17th, 2005, 7:20am »
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I don't think the actual situation is quite so gloomy.  Yes it
does cost money to enforce a patent, but sometimes the real fight
is at the preliminary injunction stage and the fight at this
point is generally at a lower level of expense than a complete
fight to the finish on the merits.  There are some streamlined
procedures for putting a stop to infringing imports too.
 
Certainly if your resources are tiny enough, your patent,
copyright, and trademark rights can be ignored.  Unfortunately
trade secret protection is often a poor and ineffective substitute,
and enforcement may still require suing somebody.
 
On the flip side, if an attorney sees "Eolas" like potential in
your case he would take the case on a contigency basis.
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Isaac
JimIvey
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  jamesdivey  
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Re: Patent usefulness ?
« Reply #3 on: Jul 17th, 2005, 1:11pm »
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I'll just echo the sentiments expressed so far.  Patents aren't for everybody.  If competitors aren't scared off by your patent(s), you have to resort to a court (or courts, considering appeals and such) to have your patents enforced.  And, that's not cheap.  Even if you think you can get triple damages for willful infringement, there's substantial risk that you won't get anything, and that you'll lose your patent (if invalidity is raised as a defense).  On contingency, you may not be risking much loss, but your attorney is -- so either you'll have to assume the risk yourself or convince somebody else that the risk is well worth taking.
 
Of course, there's a less extreme way to extract value from a patent portfolio.  Present enough risk to your competitors that they'll pay something to avoid the conflict -- a royalty.  However, you should be aware that, like taxes, royalties often have emotional value attached to the dollar value.  Like the way many will spend $1,000 to save $50 in taxes, many would rather litigate than pay a reasonable royalty -- even if reason and simple economics would dictate otherwise.
 
Lastly, I've heard others say that patents are useless based on their own experience in failing to enforce their patents.  Each and every patent is a custom made "one-of" thing.  Failure to enforce one doesn't show that all others are useless too.  I've seen a very wide range of quality of work in patents.  I've seen very experienced practitioners draft claims that were so clever in capturing a potential "design around" that they didn't even cover the prototype.  And, even in the work of good practitioners, I've seen the occasional "unfortunate" word in the claims, allowing for valuable design arounds.
 
In addition, it's impractical to always prepare a patent application that's impervious to challenge as invalid.  The universe of potential prior art is just too vast to consider in its entirety for every filing.  And, the universe of potential pitfalls is also too vast and at least partially beyond the control of the patent practitioner to completely avoid in all circumstances.
 
Given all this, it should be appreciated that not all patents are created equal, and to a large extent, spending the resources up front on a patent you intend to enforce is a good idea.  An ounce of prevention is worth a pound of cure.  Unfortunately, people often select the cheapest way to get a patent and then try an inexpensive manner of enforcement and then blame "the system" when it fails to work justice.  Remember, in the US legal system, you're entitled to all the justice you can afford.
 
So, to answer the basic question as to whether patents are useful, I'd say the answer is certainly "Yes" if you create them properly and you use them properly.  Whether patents are a good value for you in your particular circumstances is a different question entirely and depends on your circumstances.
 
As for your particular circumstances, I agree with the others -- you may have "in public use" problems.  Private use isn't such a big problem in the US, but private use for too long raises the issue of laches (pronounced "latches" -- use it or lose it applied to your legal rights).  The outer limit is 6 years and perhaps shorter.  I have no idea to what extent private non-experimental use in the US has in other patent jurisdictions and to what degree laches applies outside the US in patent law.
 
I hope that helps.
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James D. Ivey
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George
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Chinese Patent Attorney

   
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Re: Patent usefulness ?
« Reply #4 on: Jul 17th, 2005, 8:23pm »
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on Jul 17th, 2005, 6:36am, Wiscagent wrote:

Regarding patents - any of your inventions that have been in commercial use for more than one year are no longer patentable anywhere in the world.

 
"offer for sale"/"commercial use" taken place in the other countries generally will not impact the patantability in China unless there are brochure or product intruduction documents associated the "offer for sale"/"commercial use"  which  discloses the patented technical solutions.  
 
For example, a product sold in US for 10 years still can be patented in China as long as there is no printed document disclosure.
 
George
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