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Ciciora's Corner - Should you get a patent?

Mon, 02/04/2013 - 12:16pm
Walt S. Ciciora, expert on cable and consumer electronics issues

First, you need something patentable. Your invention has to be useful (it has to work), it has to be novel (never done before) and it has to be non-obvious (the most argumentative part).

Walt S. CicioraHave you ever considered getting a patent yourself? Should you?

This is not an easy decision. It’s a lot of work, and it is expensive. Done right, it’s very expensive. And that’s just the beginning.

You will recall from a previous column that a patent is the right to exclude someone from making, using or selling your invention. That’s done through the courts. If you are not willing or can’t afford to sue, your only hope is that someone who is willing and can afford to sue will help you, usually for part of the proceeds. Alternatively, you hope someone will buy the patent. It is an asset called “intellectual property.” Otherwise, you have a line on your resume and not much more. Oh, yes, there’s that new hole in your bank account or second mortgage on your home.

But maybe we’re getting ahead of ourselves. First, you need something patentable. As mentioned before, your invention has to be useful (it has to work), novel (never done before) and non-obvious (the most argumentative part). Those are the necessary but not sufficient requirements for getting a patent. Now you have to completely disclose the details of your invention in text and figures so that anyone with ordinary skill can practice your invention. Having done that, once you have your patent, you can attempt to preclude anyone from practicing your invention for a fixed number of years. You have a temporary monopoly to enforce. After the patent expires, anyone can practice the invention. The idea is that this gives you a head start as a reward for being creative.

The last column described the parts of the patent. That’s serious work. The claims are the legal parts that describe the invention in a very specific format. That should be done by an experienced patent professional. Think in terms of $500 to $700 and more per hour. Think many hours.

The next issue is whether your patent is worth anything. Does it have commercial value?

The patent can be either a “pioneering patent” or an “improvement patent.” A pioneering patent opens up a totally new line of commerce. If the new line is successful, everyone involved will need a license for the life of the patent. This is the most valuable kind of patent. But a pioneering patent is almost by definition in a new area that may take time to develop and grow. There will be doubt, resistance and opposition. You will need patience and a thick skin. During that time, there is no revenue. You need the “staying power” to wait for the market to adopt the new invention. An improvement patent, on the other hand, builds on an existing line of business and makes it more profitable. Either new features are added or costs are lowered. A good improvement patent gives the owner or licensee significant advantages in the marketplace. The good news is that the market is already developed. But the improvement is incremental, and so the value is less.

If you are employed, you need to review your employment contract to see if your employer has ownership rights to your inventions. Even if your invention has nothing to do with your employer’s line of business, there may still be legal issues. Check carefully. And be sure not to use “company time” or company facilities, such as tools, computers, etc. If your invention is along the lines of the employer’s business, you should still consider getting a patent. In that case, your employer will bear the expense, and a company or outside lawyer will do most of the work. This may help your career and will certainly look good on a resume. If your company isn’t interested in your invention and you wish to pursue a patent, get written permission that includes a statement of your rights if you do get a patent. Can you license a competitor?

Are you willing to start a business and use the patent yourself? That’s the way to get the most value out of the patent, but it involves the most risk.

There is another patent approach if you are not sure. It’s called a “provisional patent.” This is much less informal but less protective of your invention. You write up your invention as best you can and mail it in to the patent office. It goes into a file, and you get an acknowledgement. You have a year to convert the provisional patent into a regular patent. If you don’t, your letter is destroyed. If you do, your provisional becomes part of the file history of your patent. The date of the provisional gives you protection on what you disclosed in the provisional. So be careful about being comprehensive.

Email: wciciora@ieee.org

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