Things Your Mother (and Patent Attorney) Never Told You

This is a follow-up to the previous blog, 10 Invention Marketing Untruths That Hurt Inventors.

When I get a patent, it can not be reversed.

False. Once you've been issued a patent, procedures may be taken, by a competitor perhaps, to have your entire patent disallowed. Patents have different strengths. It may be very defendable, or not worth the paper it's printed on.

Can the US Patent Office issue you a patent on your invention if it infringes another patent?


Just because you receive a patent, it doesn't guarantee that you can utilize your invention without gaining permission from another patent holder whom you may infringe. And, the patent office is under no obligation to even inform you of this.

Here's an example: Edison invents a light emitting device using electricity. Very novel, right? Shortly after this, smart  you invents an improvement, a light bulb using electricity AND uses tungsten filament so that it lasts longer, and you get a patent on this improvement. That's fine, but for as long as Edison's patent is valid, you will need to license or get permission from Edison in order to use or sell your patented invention. The next brilliant light bulb inventor may have to get permission from both of you while your patents are current.

I have a patent pending, so am I protected?

Not really.

You are only 'protected' from the patent examiner introducing material after the date of your application that may interfere with you getting a patent. Otherwise, you can not necessarily stop anyone from using or commercializing your invention while your patent is pending. In fact, they may keep on infringing your patent after your patent issues if you don't put the infringers on notice and take legal measures to deal with it, the costs of which you will need to bear. Otherwise, the infringers may keep on infringing your patent without retribution.

So you say, "No problem, I'll just sue the infringers". You're half right. You may sue them. But, there is a problem. The average legal cost for each side to engage in a patent lawsuit is well over a million dollars. So unless you have a spare million or two sitting around, in order for you to get a law firm interested in taking on your case on a contingency, or commission basis, you will have to show that the possible worth of your invention is well over two million dollars. Plus, the law firm will have to spend $50,000 to $100,000 cash up front to do the due diligence to figure out if they even have a good possible winnable case. Of course, if YOU pay this you will have a better chance of getting a good law firm to accept your case on contingency.

Do you still want to sue the bastards? Unless you are prepared to call the bluff of an infringer and assert your patent rights with the kind of financial resources I've just outlined, what good is a patent? Now, that's a good question.

But, I can only stomach so much reality in one blog, so you will have to wait until my next blog to learn more from 'mother':)

 Disclaimer: Please know that I am not a patent attorney and I do not give legal advice. I approach these issues from a business prospective. Always use a registered attorney or agent for matters relating to patenting and the law

Ron Docie, Sr.
President, Docie Development LLC
Guest Blogger

Ron Docie, Sr. is President of Docie Marketing and Docie Development. He is the author of The Inventor's Bible, How to Market and License Your Brilliant Ideas, and has successfully commercialized new products and technology for himself and his inventor clients for over three decades.

Apr 26, 2010
by Anonymous

Largely correct

As a patent attorney myself, I agree with most of your general comments.

Certainly the patent gives you the right to EXCLUDE others from doing--not to do it yourself (an odd concept for people to understand). That is key and I think that supports your comments that getting a patent does NOT mean you are "in the clear".

It is also important to know that getting a low quality invention past the PTO doesn't mean you won't have your patent overturned in court. With that said, the issued patent does receive a strong presumption of validity-- particularly as it relates to prior art that was considered during prosecution. In other words, you still get a significant procedural benefit right off the bat.

Finally, while I fully agree regarding the cost of enforcement, there are other benefits rather than simple enforcement that can be attained for less cost:

1) Investors: if you believe you WILL be big one day, investors give value to issued patents. You can also borrow against them as collateral on a loan.

2) Competitors are still on notice and will often have to workaround: once you put an infringer on notice, they have a strong incentive to stop infringing as they may be subject to triple damages for "intentionally" infringing on your patent. The threat of such a large damage claim--even if hypothetical--is powerful. This is especially true if the infringer may be seeking capital financing.

3) Licensees/partners: many solo inventors will license or otherwise grant larger companies the right to enforce their patents subject to a rev share. This is not common for any old patent and still needs to be tied to a specific product or services but it can be an effective way to leverage the power of the large while still staying small.

So yes, I agree with many of your points but I would be wary of dismissing patents altogether as a valuable asset of any inventor or small company with a great idea.

Best regards,

Kendall Thiessen

Apr 26, 2010
by Anonymous

Pump and dump

Then there is the possibility someone can just be told there is an infringment, not care, build a ton of stuff in China, bring it in before you can get an injunction and then dump it, take their profits and disolve the company.

Patents and infringements and bickering is for the big boys. A million? I am involved in a suit that both sides have spent WAY more than that...and it has gone on for YEARS.

It can also work something like this...big fortune 100 corporation don't care and just ties it up in court and bleeds and bleeds the small guy. Puts small guy in the poor house and buys his company courtesy of bankruptcy court...don't think it happens? Happens ALL the time...

Or two hard headed smaller companies won't compromise and finally one collapses. The stupidity that went on at Code-Alarm years ago was a PERFECT example.

Bigger company examples would be Microchip against Chamberlain.

Best thing to do is try and pay royalties. Most patents are not worth the paper they are printed on, they issued and revoked one years ago on a method to swing on a swing for gods gimme your milk money...

Plus, are you sitting there 24/7 looking for infringing products?

Look at Philips licensing program for their huge portfolio with the color kinetics patents. Even they took a look and went..."not worth it"...

Always remember Shakespeare had it right in Henry VI..."kill all the lawyers". 95% of them are blood sucking souless useless vermin who contribute zero to society. In 2006 (ABA young lawyers reference), 36% of congressmen were trained as lawyers.

The smile to your face, take your money, do nothing, change nothing...completely useless souless wasters of oxygen.

So when you say, but I'm well within the law and I know my (haha...gotta love George Carlin for "you have no rights) rights...

Well...hope you have tons of money. I would suggest, if a large corporation is in obvious violation of a patent, kill their CEO or some members of his family...maybe he will get the message. It is quick, cheap, leaves the lawyers out of it. Mobsters at least have some code of ethics. The fact that William Jefferson Clinton even still has a license tells me it is all corrupt.

Good luck. I prefer to go the licensing route, and when that doesn't work, outright violence and intimidation works MUCH better...