TechRoadmap Incorporated Patenting it yourself Saving money or wasting it? Bruce A. Horwitz

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. A CONTRACT WITH SOCIETY What is a Patent, really? limited time monopoly learns of your invention You Society

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Reason to Patent Gain a Competitive Edge Technology based competitive edge –Block/hinder competitors from copying YOUR product –Block/hinder competitors from improving THEIR product –Maintain freedom to operate – cross-license “currency” –Reduces the risk of innovating Non-Technical – business based competitive edge –Add market value to your company –Attract strategic partners, customers, and employees –Enhance branding, market effectiveness –Improve bottom line through licensing (IBM ~ 1/9) –Deter new competition (>400 Autoliv/Morton/Thiokol airbag)

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. What’s the Down Side Stimulates competitors to “design around” or beyond your invention. When does your protection start? Only when your patent issues! More Risk – your patent can be invalidated but the IP can never be made secret again.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. More Downside Budgeting for a [U.S.] Patent Steps Conception Reduction to Practice Patent Disclosure Prior Art Search Patent Application Office Action Issue fee Maintenance Fees Total Cost Costs Indirect 5 to 20 labor hours $500 ~ $2000 and up $7.5k ~ $10k and up ($790 * /160 * ) $3k ~ 5k per Action $1370 * $940 * ; $2150 * ; $3320 * ( 3.5 ; 7.5 ; 11.5 years) $15,000 ~ $25,000

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Strategic IP Management What sort and “how much” IP protection should you obtain? –Patents versus Trade Secrets versus Publishing –Defensive versus Offensive –Value of competitive edge –Protecting competitive position or generating license income Budget considerations –Initial cost –Maintenance fees –Cost of defending your patent –Loss of patent by invalidation.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Benefits of the Contract For the inventor Gives you a monopoly on a competitive advantage Blocks others from improving their ideas Bargaining chip for cross- licensing For Society Simulates investment in R&D Knowledge revealed advances state-of-the-art and stimulates other inventions. When your patent expires, everyone has the knowledge to make, use, and sell what had been your secret.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Government Administration Contract has many T’s and C’s PTO administrator (examiner) decides if you meet all the terms and conditions Do you meet the terms of “the deal” NOT a judgment on value of the invention (NOT as good a judge of validity as one would like! Very limited time allowed per application)

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. “Contract” terms: an invention must be… –“Novel” – If it’s already been publicly disclosed, why should you get the monopoly? –“Non-Obvious” – It’s no benefit to society if every mundane change, adaptation, or new combination is locked up in a patent. –Reduced to Practice – If you can’t convince me it works, why should you get a monopoly?

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. “Contract” terms: The application must include… Claims – An exact definition of your invention. Enablement – After expiry, I should be able to “practice” your invention without you. “Best Mode” – Can’t short change society by holding back the best way to make your invention – no secret sauce allowed. All and Only Inventors – no inventor cheated by you, no non-inventor getting benefits.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. “Contract” terms: Can’t delay filing because… Public Disclosures – Society won’t hold back other people from making use of public knowledge forever. On-Sale Bar – If you want the monopoly, it is unfair to gain the benefit of sales without starting the patent clock running. Abandonment – If you sit (secretly) on your invention, Society may reward the inventor who shares his knowledge with the world.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. A Final Condition The inventor has a “Duty of Candor” to inform the PTO of anything that might be material to the examination process (like known prior art). Similar to IRS self-reporting requirement for income. Failure to be honest can invalidate patent even if the material itself is not grounds for rejection.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Common IP Mistakes that cost you money The first words out of our mouths! –Inventions, licensing, etc., etc., etc. –A sound strategy linking IP to business is paramount Poorly written claims – technically flawed, not covering how others might circumvent your patent (not understanding what your attorney has written) Poor search to identify dominating patents, prior art = difficult office actions Not maintaining a good notebook system (really!)

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. More common mistakes Filing on each invention made Filing in more countries than needed Assuming that filling a patent provides protection Believing that a provisional application can be a “napkin with a cover sheet” Forgetting that application will be usually published

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Really costly common mistakes Invalidating your patents by –Making a public disclosure prior to filing –Not documenting invention and date –Not getting documentation witnessed –Not citing all known prior art –Not describing best mode –Including erroneous or excluding valid inventors

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Is it worthwhile to file a patent? If you are filing for technical reasons, ask –How broadly patentable? –Easy to design around? –Claims capture the value? –Cover intended product? –Cover competitors products? –Enforceable? –Any dominating patents? –Regulatory barriers?

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Is it worthwhile to file it yourself? If you are going to file a patent, you can save up ~$15,000 by filing yourself. If you are going to file a patent, you can waste ~$3,000 and many hours by not knowing what you are doing. You will only know which you’ve done when someone wants to infringe your patent – after the fact.

TechRoadmap Incorporated Copyright 2004 TechRoadmap Inc. Contact Info Bruce A. Horwitz TechRoadmap Inc. 76 Judith Rd. Newton, MA