Covering Your Ass, Part 2

May 28th, 2008 Chris Posted in Intellectual Property | No Comments »

We talked about NDAs in the last post. Now let’s talk about something that can be even more effective at protecting your great ideas but is one of the most intimidating: the patent! It is true that patents are complicated. Remember I’m not a lawyer but here are a few of the things I think about…

Let’s start with what can be patented. Most people think about patenting a thing: a new widget, mouse trap, Wankel rotary engine, whatever. What some don’t realize is that you can patent a process – a sequence of actions performed by some mechanism typically involving inputs and outputs. Sound like software? You betcha! Processes that can typically be embodied in software are, typically patentable. Even manual processes like the Heimlich Manoeuvre can be patented.

Can be patented doesn’t mean can be successfully patented. There is a list of requirements including things like:

• Is it new? Obviously you can’t patent something that is already in existence (although you can improve on existing inventions). It doesn’t matter whether someone else has patented it or not – if the idea already exists then you can’t patent it.
• Do you own it? If you invent something while employed by a company, that company typically owns any invention in the field it operates in.
• Is it in the public domain? Typically, if you tell people about your idea before filing your patent application (especially if you publicize or offer it for sale), then you will have trouble getting a patent granted or at least a patent that will survive a challenge.

Practically speaking, having a patent can be a great way to dissuade competitors. If someone copies you, they run the risk of you suing them. And in most jurisdictions there is a significant penalty to be paid if they did so knowing about your patent. Is it practical in most cases to go around suing people? Usually not. Especially not for a micro business. I’ve been involved in a couple of legal actions around patents and they can get expensive ($1-2M). But usually, a credible patent is enough to brush competitors away from the plate without having to actually bean them with a lawsuit.

The first step in the patent process is to draft a patent application and submit it for review by a government patent examiner. It can take years for review which is why you often see “patent-pending”. It specifically refers to the case where the patent is filed but has yet to become a full “granted patent”. Don’t worry though, your claim to your invention will be based on the date that you submitted your application. So even if someone has copied you while your patent is being reviewed, as soon as it is granted, you can go after them for their past indiscretions. So feel free to warn potential infringers even if your submitted patent application has yet to be granted.

If you have ever read the language required for a patent patent application, they are gory (warning: shameless self-promotion). I have a fair bit of experience and I wouldn’t attempt to draft a patent without at least a lawyer’s review.

Ah – there’s the rub. For a micro business, can you really afford to spend thousands to try and patent every new idea you have? If you are like our business or are just cheap like me, you can’t.

But don’t worry – there is an easier option which I think is perfect for the micro business. It’s called the “Provisional Patent Application”. More on that next time…

C.

P. S. I generally am referring to the U.S. Patent system in these posts. It’s the biggest market for most inventions and it’s relatively straight forward to get protection for your invention in other countries thanks to the Patent Cooperation Treaty.

P. S. S. Remember – I’m not a lawyer so please don’t rely on me for legal advice. In other words, don’t even think of suing me.

P. S. S. S. In retrospect, this is a somewhat boring topic and I already regret spending this much time on it. There will be only one more post in this series, I promise. But please read it as it will be the best one ever, I promise.