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[d1776ante]

I have well along idea for a medical device. I don't have the money to make a prototype but maybe enough to file a Provisional Patent App. Will that be enough protection to try to sell the entire idea to a company?

[M. Arthur Auslander]

dear d1776ante',

If you know that what you have is different from the state of the art and the claims can be broad you still may have a hard time. Just getting a patent or having a good invention doesn't mean much unless you know the people who are WILLING  to buy.

It may be a bit easier with medical but this is not the days of Edison when a patent on a good idea could really make money.

[di117ante]

I know the medical field is interested in it since it was created by two doctors to meet their own needs.

First, I never asked if it WOULD sell, only if the PPA offers protection during a sales pitch.

Second, if patented good ideas can't really make money anymore, I think IBM has been greatly misled.

[JimIvey]

The short answer is "sort of".  You're much better off with a real patent application.  But then a PAP (some people argue that there's a difference between PPA and PAP -- I don't agree) is better than only an NDA (Non-Disclosure Agreement).  And, of course, an NDA is better than nothing.

As for the response answering a question you didn't ask, that happens sometimes -- actually quite frequently in this forum.  I'm probably guilty of that myself.  Each of us in here has been through the ringer with a client on numerous ocassions and we have a pocket full of experience that we believe everybody needs to know, even if they don't know they need to know it.  I'm trying to avoid chiming in unless I think I have something of substance to add.

In terms of patents making money, I have to respectfully disagree with Mr. Auslander.  I'm seeing a bit of a sea change in the way IP is used.  There are venture groups forming for the sole purpose of buying unenforced (and under-utilized) portfolios for the purpose of enforcing them.  This IP arbitrage seems to be a harbinger of a dramatic change in the IP marketplace.  I'm not sure it will make the world better, but I see the change coming.  It looks like we'll be living in "interesting" times.

Another interesting thing to watch is that the head of IP at IBM recently left IBM and joined Microsoft.  It's going to be an interesting time in the software industry too.

Regards.

[Chris1372456]

Mr. Ivey raises a good issue about the groups scavenging for "unused" patents. The start-ups they previously belonged to should have just filed the patent (especially if it was  a business method patent) and sold it off immediately.

I know thier intention was probably to build a  strong business, but the chances can be sort of thin in many areas, not just the internet.

Why not just file the patent and sell it? Remember the people who got rich in 1849 were the ones selling shovels and pans, not the ones breaking their backs prospecting.

[M. Arthur Auslander]

Dear Chris1372456,
Give me a drag on that before you throw it away. Just getting a patent usually has no relationship to being able to use the patent and make money.

Any one that can afford buy would usually have enough money to to find a Patent Lawyer they can trust. The chances are enormous that an honest patent lawyer could see through and around most patents. Just filing is not much better than going to the scam artists.

[M. Arthur Auslander]

Dear Chris1372456,
Give me a drag on that before you throw it away. Just getting a patent usually has no relationship to being able to use the patent and make money.

Any one that can afford buy would usually have enough money to to find a Patent Lawyer they can trust. The chances are enormous that an honest patent lawyer could see through and around most patents. Just filing is not much better than going to the scam artists.

Inventions are risky but from my experiece Medical inventions may have a better chance.

[JimIvey]

Why not just file the patent and sell it? Remember the people who got rich in 1849 were the ones selling shovels and pans, not the ones breaking their backs prospecting.

I've got some clients doing exactly that right now.  However, the value grows tremendously the more you remove risk and uncertainty from your portfolio.  For example, an issued patent is worth much more than an application.  And not all applications/patents are created equal.  Like Mr. A warns, the underlying technology has to have value.  Much more value is attributed to IP that people currently infringe as opposed to technology that we have to convince someone to adopt.

However, there are diamonds in the rough out there.  I may be sitting one some.  :-D

Regards.

[M. Arthur Auslander]

Dear Mr. Ivey,

Why don't you make it clear that it is not "the issued patent" that counts but the BREADTH of the claims in the patent.

The worst of it is that even GOOD patent may still not make money.

[JimIvey]

Why don't you make it clear that it is not "the issued patent" that counts but the BREADTH of the claims in the patent.

Because it's simply not true.  We've been down this road before.  I'll explain it again for those who missed it the first time.  I'd link to my prior post, by I can't find it in the search tool.

The value of a patent has many facets, one of which is what it covers.  In terms of the coverage of a given patent, the value is the aggregate value of all embodiments covered by the claim(s) in question.  Of course, for any given claim, broader is more valuable.

But in comparing the value of one claim to another, the breadth alone doesn't answer the question.  Consider the following example:  what's worth more, (i) a very specific and narrow claim infringed by Microsoft's Windows XP or (ii) a very broad claim covering medical treatment for a rare disease that afflicts 10 people per year worldwide?  I'd rather have the former narrow claim than the latter broad claim.  The former claim covers only one embodiment but that embodiment is attached to a very high monetary value whereas the latter claim covers many embodiments whose aggregate value is rather limited.

And, the following point should be obvious, but I'll make it anyway.  Issued claims are presumed valid.  Pending claims are not.  Issued claims are actionable (i.e., you can sue someone for infringing them).  Pending claims are not.  A broad pending claim is virtually worthless, while a narrow issued claim has some significant and appreciable value.

So, I'll have to respectfully disagree with your assertion that issuance of a claim is insignificant and breadth is all-important.

Regards.

[Ira]

With all due respect, although interesting, I think your discussion fails to address the question posed.

A PPA provides an inventor with a "priority date."  If the date is prior to another filing for the "same" invention, the inventor has a superior right to a patent.

However, in this case it appears that the invention "was created by two doctors to meet their own needs."  If so d1776ante is not entitled to a patent at all, provisional or not.

Obviously, an attorney working with the client can skillfully modify the invention so that it becomes an invention of d1776ante.  However, an attorney and client can also modify an invention described in a PPA or an issued patent to provide for new patentable subject matter.

More appropriately, I think d1776ante would need to get an assignment from the Drs. and file in their names, perhaps adding his name as an inventor.  Further, so as not to mislead d1776ante: no claims are necessary with a PPA.  The salient aspect is that a PPA contains a disclosure of your invention.  The claims are used for the enforcement.  A PPA only provides a priority date, and does not create a right to "exclude others" as an issued patent does.

[JimIvey]

You're right.  One important issue that we sort of glossed over was inventorship/ownership.  Thanks for bringing it up.

Regards.

[M. Arthur Auslander]

Dear Ira,

The question is what do they have, what can they do with it and would the difficulties (sp) be worth the invenstment of time money and worry. The abstration of your answers does not help the inventors to look for the their best solution which may include doing nothing.

[Daniel Miller]

Jeez, Auslander get a grip. Your awfully anti-patent for an IP "lawyer".

It is possible for a big fancy lawyer to be wrong once in a while. It's not up to the attorney to determine what is MARKETABLE. That's (I believe) for a MARKETING specialist.

And in your multiple responses you still haven't even remotely answered the beginning question; does a PPA give legal recourse if someone else copies the invention?

No doubt you'll have to get the last word in and tell us all we're impudent fools in your domain. It's sad really.

[eric stasik]

Dear Mr. Miller,

Regular visitors to this forum are familar with Mr. Auslander's "drum beat" questioning the value of having a patent.

While I also at times have expressed some frustration at the unique way in which Mr. Auslander expresses himself, I have come to accept that his point of view is a valuable contribution to our little forum.  

Too many people run to the patent office, or to a fancy high priced patent attorney, to obtain a patent which will never amount to anything except large expenses. This is a fact. Even the smartest, best run companies extract value from less than 20% of the patents they obtain. For individual inventors with no expertise in the patent business, it may be one out of a hundred, or a thousand which are even worth the expense.  

Inventors who have an idea as often excited about it and anxious to get it "protected" without really thinking, or even knowing, what value a patent will provide.  

Invention marketing companies and, yes, many fancy high priced patent attorneys feed on these poor inventors. Instead of helping them, they screw them. Not always intentionally, but to someone who has invested 10 thousand dollars into a patent which provides them no value, it doesn't really matter to the inventor if the intentions of his representative were pure or not. It's just as hard to sit down afterwards.  

Many people post in this forum asking for advice on how to get a patent never having really taken a step backwards to see if they should be filing a patent in the first place.  

d1776ante is just such a person. he/she is jumping the gun. instead of asking what sort of protection a provisional application will provide,  d1776ante should be asking whether or not he/she should be getting a patent in the first place.

In my practice, when people ask me about a provisional application, a big red flag of doubt

Mr. Auslander's mantra, although seemingly off-topic, is actually answering the question d1776ante should be asking.

Kind Regards,

Eric Stasik