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[patentologist]

Hi all:

patent rights do not kick in until the patent is issued.  Until then, are people allowed to copy the idea without being punished for it.  Their defense being we weren't sure if the patent would issue so why should we have stopped. so what protection do I have from the time a patent is filed till the time it issues?

Secondly, can i market my patent pending innovation for licensing before it issues.  If so, can it be exclusive? What can I do to stop others from infringing?

Thirdly, how do I protect a major corporation,such as google from being interested in my patent pending innovation without actually pursuing it on their own until the patent actually issues. 

If my goal is to get into licensing agreements with one or more corporations for using my patent pending innovation, how can I best protect my idea such that they are willing to negotiate with me yet not copy my idea without getting a license.  Also, i hear they do not like signing NDAs before discussing?

Thanks,

[Kaitlin]

The patent people will be able to expand on this, and correct me if I'm wrong, but as for the first part of your inquiry, the potential for infringement damages exists from the time you've filed your application, PROVIDED that any potential infringer is on NOTICE of your pending application.  For example, if you disclose your invention by selling the thing after filing, but before the patent issues, you need to make sure you mark the do-hicky "patent pending" before it hits the market.  This marking gives notice of the patent application and anyone copying the invention does so at their peril.  If the patent issues and they've infringed any of your claims, you've not only got the right to stop them from continuing to infringe, but also to get damages going back to when they first had notice of the patent pending. 

As for licensing, you'll want to make sure that you consult with a patent licensing attorney about both the law and real-world pitfalls.  E.g., you may find a company wanting to take over prosecuting your patent for you and this may seem like a good thing.  But this can cause problems if your financial returns are dependent on the quality of the final patent protection achieved through the prosecution.  Brunsvold's work on licensing warns that this is a potential danger if, e.g., the license provides for royalties to be paid on products manufactured "under the patents". 

You also need to be very careful in contracting concerning unpatented technology to avoid running afoul of the anti-trust laws.  A patent gives you a legal right to a monopoly for a limited time.  Outside that time period, laws on restraint of trade apply.

[JimIvey]

Hi all:

patent rights do not kick in until the patent is issued.  Until then, are people allowed to copy the idea without being punished for it.  Their defense being we weren't sure if the patent would issue so why should we have stopped. so what protection do I have from the time a patent is filed till the time it issues?

You really don't have any protection at all.  You can't enforce any patent rights until your patent issues.  Monetary damages can include damages for infringement prior to issuance and after publication of your application under certain circumstances, but you can't even try to collect those damages until after your patent issues.

Secondly, can i market my patent pending innovation for licensing before it issues.  If so, can it be exclusive? What can I do to stop others from infringing?

Yes, you can market any innovation, even without a patent application pending.  Of course, it usually helps to have some power to stop the licensee from using your technology as leverage to get the license.

Yes, it can be exclusive.

You really can't do anything to stop others from infringing, but it's not hopeless.

Some people use Non-Disclosure Agreements (NDAs) in conjunction with patent protection. 

Sometimes you can convince a potential licensee that they can be the exclusive licensee (or assignee) of your technology and that it would give them a competitive advantage.  They'll have to believe your rights in your innovation will some day be enforceable against their competitors.

If the innovation requires heavy, up-front investment (fixed costs, like tooling up for example) and will take a long time to recoup that investment, it's more risky to go forward with your innovation only to be thwarted before recouping that up-front investment.

Thirdly, how do I protect a major corporation,such as google from being interested in my patent pending innovation without actually pursuing it on their own until the patent actually issues. 

You really don't.  Google (and other large companies) can easily implement someone else's innovation without even realizing it -- simple independent invention.  I suppose you can try to present them with an NDA early and, in essence, announce yourself as someone who intends to eventually have exclusive rights in the technology. 

If my goal is to get into licensing agreements with one or more corporations for using my patent pending innovation, how can I best protect my idea such that they are willing to negotiate with me yet not copy my idea without getting a license.  Also, i hear they do not like signing NDAs before discussing?

Yeah, many don't like signing NDAs. 

I've heard a number of strategies.  Approach a sales product manager for the particular product into which your innovation can be integrated.  They tend to be more excited about how the innovation would affect their sales performance whereas engineers don't like to be up-staged and attorneys are paranoid by profession.

If they won't sign an NDA, speak of achievements and results of the technology rather than how the results are achieved.  For example, "I can reduce the cost to make each of your widgets by 25%."  If they ask "How?", ask them to sign the NDA before you'll go further.  When talking to a potential licensee, you should be focused primarily on how it's going to make them money anyway. 

Regards.

[patentologist]

Thanks for your responses. 
broadly speaking, the idea is an improved classification system for google/youtube.

Developing the algorithm to show how it works is a time consuming and expensive process.  I know I can file a patent claiming that those skilled in the art can implement it therefore, I have not considered developing the application as of yet.

Further, it makes no sense to develop it unless it can be integrated into google's technology. it may be easier for them to make the application the way they want utilizing the ideas expressed in my patent application/algorithm.

How do I assess a monetary value for improving classification systems.  its hard to put a monetary value to reduced speed, better search results.

If I have three or four different features in my invention, and they all work hand in hand but may also have individual value, is it more cost effective to file 1 patent and extra claims or 4 patents with the same general disclosure but with 20 claims each covering the different aspects.  what determines the best approach to take. 

Do you know what classification this invention will come under and what the backlog is at the USPTO for prosecution.  Should I file for the expedited patent prosecution path (for more money) if my invention has to do with improved classification/search?

where can i find the time frame for this particular art unit.

[JimIvey]

You raise a lot of complex questions.  I'll address a couple.

How to value IP in an innovation.  That's hard, really hard.  Not many know how to do it.  In fact, as far as I know, no one really knows how to do it, including the person to whom you'd be trying to sell your idea.  So, you'll have to make an argument for a desired valuation.

You can look into Google's financial reports.  As a publicly traded company, they have certain financial reporting obligations.  Perhaps they'll report advertising revenue generated by Youtube.  You might also consider approaching not only the market leader for your technology but perhaps also a hungry no. 2 or other competitor.  If Google is number 1 by a large margin (and I believe they are), they might not be all that excited about improving.

Then again, you might show advertising revenue on Google products that are really well indexed compared to Youtube ad revenue to show that they could do better with Youtube if it were better categorized.

As for determining backlogs, there's a post somewhere in these forums that explains that a USPTO publication reports the average filing date of applications receiving their first Office Action in the most recent 3 months for each technology group. 

Well, might as well figure it out.....

• Go to the Patent Gazette.
• Select the most recent edition.
• Press the CONTINUE button.
• Click Notices.
• Click Patent Technology Centers.

The far right column shows that information -- giving a sense of the backlog for a given group.  The groups listed include descriptions of subject matter, so you should get a fairly good sense of your wait time in the Patent Office.

Looks to me like your backlog would be anywhere from 3.5 to 4.5 years.

Regards.

[yapex]

The far right column shows that information -- giving a sense of the backlog for a given group.  The groups listed include descriptions of subject matter, so you should get a fairly good sense of your wait time in the Patent Office.

Looks to me like your backlog would be anywhere from 3.5 to 4.5 years.

Looks like the info is not up-to-date (10/27/2009 report).  E.g., still shows Dudas, "new" TC 2400 not shown (GAUs from 2100 and 2600 over a year ago), average filing date are definitely old (for example, most of us in our AU have apps with '08 filing date in our new dockets, yet the date shows '05).

No, not 3.5 to 4.5 years.  (all my recent FAOMs have '07 or '08 filing dates)

[JimIvey]

Yapex alludes to an ancient, yet still effective, means for estimating a wait for a patent application -- using a telephone to communicate with the examiner (if known) or the technology group receptionist if the technology group is known or is reasonably predictable.  I haven't tried that in a while, but it still works as far as I know.

Regards.

[blakesq]

Kaitlin,

Patent infringement damages can theoretically start at the earliest when the patent application PUBLISHES, not when the patent application is filed. 

blakesq

The patent people will be able to expand on this, and correct me if I'm wrong, but as for the first part of your inquiry, the potential for infringement damages exists from the time you've filed your application, PROVIDED that any potential infringer is on NOTICE of your pending application.  For example, if you disclose your invention by selling the thing after filing, but before the patent issues, you need to make sure you mark the do-hicky "patent pending" before it hits the market.  This marking gives notice of the patent application and anyone copying the invention does so at their peril.  If the patent issues and they've infringed any of your claims, you've not only got the right to stop them from continuing to infringe, but also to get damages going back to when they first had notice of the patent pending. 

As for licensing, you'll want to make sure that you consult with a patent licensing attorney about both the law and real-world pitfalls.  E.g., you may find a company wanting to take over prosecuting your patent for you and this may seem like a good thing.  But this can cause problems if your financial returns are dependent on the quality of the final patent protection achieved through the prosecution.  Brunsvold's work on licensing warns that this is a potential danger if, e.g., the license provides for royalties to be paid on products manufactured "under the patents". 

You also need to be very careful in contracting concerning unpatented technology to avoid running afoul of the anti-trust laws.  A patent gives you a legal right to a monopoly for a limited time.  Outside that time period, laws on restraint of trade apply.

[bsbinla]

broadly speaking, the idea is an improved classification system for google/youtube.

Developing the algorithm to show how it works is a time consuming and expensive process.  I know I can file a patent claiming that those skilled in the art can implement it therefore, I have not considered developing the application as of yet.

Further, it makes no sense to develop it unless it can be integrated into google's technology. it may be easier for them to make the application the way they want utilizing the ideas expressed in my patent application/algorithm.

How do I assess a monetary value for improving classification systems.  its hard to put a monetary value to reduced [increased] speed, better search results.

Algorithms are not patentable.  Wait for the Bilski decision before acting on this, it will hopefully provide a framework for you to fit your invention into to make it patentable. 

As to the valuation of your invention, I would suggest implementing it experimentally integrated with a google site search engine on an e-commerce site.  Google offers an extensive API that should make this feasible.  Then use google analytics to track user searches and funneled goal success rates (conversions).  Use your system on random days, then compare the goal results from those days against the standard search goal results.  If your system demonstrates tangible improvement, I would consider approaching web analytics firms (like coremetrics or omniture) rather than google.

Good luck.

[JimIvey]

I think there's a disconnect between the meaning of "algorithm" according to dictionaries and the meaning of the word as understood by software engineers.  While the term literally means solving a problem using symbols (originally Arabic numerals, 0-9 -- presumably on paper or a white board), software people often use the term to describe a series of steps performed by a computer to bring about a desired result.

The latter is clearly patentable (eligible subject matter for patents).  The former, not so much.

Regards.