Conflict exists between the interests of inventors and patent attorneys who are tasked with protecting their inventions.
Inventing and commercializing a new product is extremely challenging, period. Obstacles abound. You have to be committed, dedicated and full of passion. Even then, you’ll still probably fail. That’s the nature of entrepreneurship. To become a successful inventor, you must learn from your mistakes and keep getting up to bat.
In my experience, many inventors are blind to this reality. I can relate. I remember feeling so determined to make my invention happen, I refused to listen to anyone else. This attitude is typical of inventors I’m afraid. Our inventions are so consuming, we aren’t always able to see clearly.
This is especially problematic when it comes to the patenting process. Because if you spend tens of thousands of dollars on a patent that goes nowhere, how likely — let alone able — are you to take action on your next idea?
Selling fear is easy. “If you don’t file a patent, someone else will beat you to it!”
This is very shortsighted, I feel. Providing knowledge is much more difficult, and thankless. That’s just how it is.
Intellectual property is only valuable when deployed strategically, to further a business goal. That’s a far less sexy sentiment than what I hear over and over again online, which is that having a patent will stop someone else from stealing your invention. If only it were that simple!
I’m not alone in my frustration. Michael Marra is an inventor whose firm Marra Design Associates helps inventors license their toy, game, novelty, and seasonal ideas for royalties. Over the past three decades, he has licensed more than 150 product concepts that were not patented. He holds and has held patents in several industries — all paid for by licensees.
“Inventors and the public at large have been indoctrinated, conditioned and persuaded to first ‘protect’ their new idea by securing patents,” he wrote in an email. “But patents do not provide protection! Patent infringement lawsuits can easily cost six figures — with no guarantee of recovering a single dollar nor an amount covering legal fees, let alone banking a profit.”
To interest a potential licensee or retailer, an idea must substantially raise the bar in its specific category. But in Marra’s experience, most patent attorneys do not consider this aspect of the invention, which is key to profiting commercially. Instead, research is strictly limited to making sure the idea does not infringe on other patents.
“There are attorneys who patent ordinary board games when all that is needed to ‘protect’ the intellectual property is a trademark and/or a copyright. Ethical? Not so much. Game manufacturers worldwide patent a game only when it has a unique technology, mechanical or electronic device; otherwise, trademark and copyright suffice. Ask yourself: Why would an attorney scare you into applying for a patent?”
After coaching, mentoring and educating inventors for two decades, I encourage you to be wary of the following red flags when seeking assistance from a patent attorney/agent.
1. They don’t care about the marketability of your invention. If the individual you approach never inquires about your plan for getting to market, that’s cause for alarm.
Tariq Najee-Ullah, a former USPTO patent examiner who is now a patent agent, asks everyone he consults with, “What do you want to get out of this? What’s the purpose of the patent? What do you want to happen?”
Most inventors are focused on an immediate need and not thinking big enough about their end goal, he said.
“But a patent is not a business plan. I tell clients who apply for a non-provisional patent, ‘By the time you are issued this patent, I hope your business has made a lot of money.’ The point being, don’t wait to get your engine running.”
It’s not a coincidence that the U.S. Patent & Trademark Office is housed in the Department of Commerce, he added.
You may be better served by other kinds of intellectual property (like copyrights, trademarks, and trade secrets) depending on what your commercialization strategy is. You may not need a patent at all.
2. They don’t encourage you to search for prior art. Prior art is evidence that your invention already exists and therefore cannot be patented. If your invention has already been patented, well, you don’t need a patent attorney anymore do you?
When your patent practitioner finds patents that relate to your invention, they are required to disclose them in your application to the United States Patent & Trademark Office. The examiner who reviews your application may use these patents against you, to argue that your invention is not novel. In that sense, there’s little incentive for a patent attorney to look.
There will always be prior art. It is vital that you not only find it, you study it. What you learn will help you make a go or no go decision.
Given the tension between prior art and patentability, third parties are typically recommended to do prior art searches. When my patent attorneys recommended I hire an independent firm to search for prior art, I did. For the price of $1,800, I was told I was in the clear. Later, I discovered the firm had failed to uncover two patents that described my invention exactly. The first patents I filed turned out to be worthless as a result. (Thankfully, my attorneys recognized a mistake had been made, and covered the cost.)
A close reading of those two patents lead me to identify a niche I could carve out and patent, which were methods of manufacturing.
Searching for prior art myself would have saved me significant time and money.
If you can afford it, consider having an intellectual property strategist review the market and the landscape in regards to the prior art. Most cannot, though. No one is going to work harder than you. So I highly recommend learning how to search the market for similar ideas and prior art.
3. They don’t disclose the total cost of obtaining a patent. It’s not as if you file a patent application and receive word it’s been approved. No. Obtaining a patent requires going back and forth with a patent examiner, sometimes many times. These are known as office actions, and can become very costly.
Disclosing the full cost of drafting, filing, and negotiating a patent application would discourage many inventors.
You can expect to pay $25,000, plus or minus. Because the cost can fluctuate, patents attorney are inclined to share the low end. Ask your practitioner to be very frank with you.
4. They don’t disclose your chance of getting a patent that is broad enough to be worth anything. Sure, you might be able to get a patent. But will the claims actually cover anything worthwhile? It’s impossible to say for sure. But without searching for prior art and studying the marketplace, it’s even more difficult to make a good evaluation.
5. They don’t recommend filing a provisional patent application first. “Drafting a provisional patent application is just as expensive as filing a patent.” I’ve heard this many times. This attitude and advice is wrong in my opinion. Provisional patent applications were invented as a lower-cost first patent filing. Use the year of patent pending status afforded to you to figure out if your invention has legs. File additional provisional patent applications when you make improvements.
If you rush to get a patent, you will most likely end up needing to file another application — which is one reason why a patent attorney might not encourage you to file a PPA first.
The conflict boils down to this. Inventors have big hopes and dreams. Patent practitioners need to make a living.
My advice? Do your own homework. Determine what your strategy for getting to market is. Make use of provisional patent applications.
A good patent attorney will look at your relationship as going into business together and want you to keep coming back because you’re successful. And in fact, I’ve relied on the same patent attorneys for 20 years because the advice they gave me was so good. They were truly looking after my best interests — and not just their business — when they told me: Don’t focus on protection. Focus on selling!
This article was originally published on Forbes.com.
