Wealth of Ideas Newsletter, August 2010

Your invention is your baby. We know and understand that – because in addition to helping enforce the rights of patent owners for over two decades, many of us at General Patent Corporation are inventors ourselves.

But that’s also how we know how vitally important it is to do things right the first time, even if it seems too hard, too expensive or simply unnecessary! So without further ado, here are five of the biggest blunders an inventor can make, from the conception of the invention to licensing and enforcing the issued patent:

1. Applying for a patent without professional assistance.

There is an old expression that a person who represents himself in court has a fool for a client. The same principle applies to an inventor who applies for a patent on his own. Applying for a patent without the assistance of a patent agent or patent attorney can lead to all types of problems. The money you pay a patent practitioner will almost always turn out to be money well spent, and it will often result not simply in a patent, but in a better patent.

Inventors who apply for patents on their own can end up with their application being rejected when the patent examiner finds what’s called “prior art.” This is evidence that the invention already exists, so it is either not “novel” or it is “obvious,” two key requirements to qualifying for a patent. A competent patent agent or patent attorney will conduct a prior art search (and if they do not, make sure they do). If prior art exists, while that is not comforting news, it does save you the time, money and disappointment of filing a patent application that will ultimately be rejected.

The other problem with inventor-filed patent applications is that they often end up with very narrow claims, and that results in a patent that is of little value, provides limited protection to the inventor, and will be very difficult to enforce.

Patent agents and patent attorneys specialize in specific technological areas. Make sure you engage a patent practitioner who has expertise in the same technology as your invention. General Patent operates a free Patent Agent - Patent Attorney Referral Service that can locate patent practitioners with expertise in the technology of your invention and who are in your geographical area.

Select a patent agent or patent attorney as you would a physician, financial adviser or other professional services provider – someone in whom you have confidence, who understands your invention, who shares your goals and objectives, and with whom you believe you can work to reach those goals and objectives.

2. Failure to keep records about the dates of the invention’s conception, reduction to practice and diligence.

This is important during the patent application process should prior art show up that predates your patent application by a year or less. If you can prove that you conceived of the invention – did not just think about it, but conceptualized the invention through to a finished, workable product – and did so prior to the date of the newly discovered prior art, you may be able to have this prior art disregarded. Remember that the U.S. Patent system is a “first to invent” rather than “first to file” system (as it is in most other countries), so you need to document that you were the first person to conceive of the invention. Your patent agent or patent attorney will help you understand the terms “conception,” “reduction to practice” and “diligence” and how they affect your patent application.

So how do you prove that you invented the product first, and over what period of time you worked on your invention? There are a few ways. A lab notebook with the dates of conception, reduction to practice and diligence is a good place to start – but often isn’t enough to sway a jury. Reports and emails work well, and you will need corroboration from a witness. Your testimony as the inventor will be considered self-serving and have little or no weight.

3. Paying an invention promotion firm to license your patent without first ensuring that they are legitimate.

Inventor fraud became such a problem over the past few decades that legislation – and several websites and advocacy groups – were formed to fight it. The American Inventors Protection Act of 1999, among other provisions, requires invention promotion firms to disclose in writing the number of positive and negative evaluations they have given inventions over the past five years.

Such firms are also required to disclose their customers’ successes in receiving net financial profit and license agreements as a direct result of their invention promotion services, and dissatisfied customers can bring a civil action to recover statutory damages up to $5,000 or actual damages if the company fails to disclose the required information (and treble damages if the firm intentionally violated the law).

Even with those protections in place, there are still some scoundrels and fly-by-night outfits out there. While the USPTO does not follow up on complaints against invention promotion firms, they do provide a public forum for such complaints, as well as details about what information the firms are required by law to provide to customers and how to request it. Visit the USPTO’s Scam Prevention page to learn more.

4. Directly contacting prospective infringers of your patent.

Many inventors make the critical mistake of contacting the company or companies they believe are infringing their patent(s). While that seems like a logical next step, it is – in fact – fraught with potential problems. Contacting the company you believe is infringing your patent can actually end up making you the defendant in a lawsuit, rather than the plaintiff!

That's because contacting the party you believe is infringing your patent may prompt the infringer to strike first. The infringer could go to court and file what is called a “declaratory judgment” (or “DJ action” or just “DJ”) claiming non-infringement of your patent and further claiming that your patent is invalid and/or unenforceable! And that, as we mentioned, makes you the defendant instead of the plaintiff.

A declaratory judgment is the classic defense mechanism of a company that believes it has a reasonable chance of being sued based on correspondence from another party – in this case, the inventor/patent owner. And as of December 2009, the Court of Appeals for the Federal Circuit (CAFC) made it more likely that a DJ action will not be dismissed for lack of standing if the defendant (i.e. the patent owner) is an NPE or “non-practicing entity” (the patent owner does not practice the patent).

If you believe your patent has been infringed, meet with an intellectual property litigator or contact General Patent Corporation. We will discreetly analyze your claim of patent infringement. If we believe you have a viable claim, and you agree to have us manage and finance a patent enforcement campaign on your behalf, we will engage a law firm and file a patent infringement lawsuit on your behalf. That will make the infringer the defendant, it will put you on the offense and the infringer on the defense, and it will afford you several additional benefits, such as picking the venue (court location) in which the lawsuit is tried.

5. Not marking your products with your patent number – or marking with an expired patent number.

Once you have filed your Patent Application, you can mark products that use your invention with “Patent Pending.” Marking your products with “Patent Pending” has the dual benefits of telling consumers that yours is a cutting-edge product, and it may scare off potential infringers and/or competitors who may decide not to invest their time and resources in a directly competing product that will – or at least may – be protected by a patent.

It is absolutely critical, however, that you put your Patent No. on all products that use your patented invention since it is a way of giving “constructive notice” to potential infringers without triggering a declaratory judgment by the infringer(s). If you license your patent, be sure that all of your licensees also put your Patent No. on their products, or it can weaken your claim to having given constructive notice should you have a patent infringement claim.

As with “Patent Pending,” putting your Patent No. on your product(s) discourages infringers, deters competitors and it can boost your corporate image as an innovative company with products that use the latest technology.

On the other side of the coin, make sure to promptly remove patent number(s) once the patents have expired, and don’t mark a product as “patent pending” if you’ve abandoned the patent application! That’s called “false marking,” and it’s illegal. Another common marking mistake is failing to evaluate your product when it changes to make sure it’s still covered by the patent in question – make sure you don’t “new and improve” your way out of patent protection!

Again, marking requirements only apply to patent owners who manufacture products that use their patented technology, and to patent owners who license their technology to others.

Maybe you conceived of and developed your invention alone, or maybe you had partners and contributors. Maybe you successfully navigated the patent application process without too much difficulty. But there are many areas of licensing, enforcing and selling your patent that – like brain surgery – are best left to experts.

If you are just getting started in the world of inventions and patents, we hope to leave you with three nuggets of advice: Document everything, take advantage of professionals in patent prosecution and enforcement, and do it right the first time.