The popular story goes that Alexander Graham Bell and the second man to file USPTO paperwork related to invention of the telephone, Elisha Gray, did so on the same day, February 14, 1876, when time of day of receipt was not recorded. The exact order in which their paperwork was received that day by the chief patent examiner and how remains in dispute even now, according to the prologue of The Telephone Patent Conspiracy of 1876. Over time, historians seem to have sided with Bell, and Gray has more or less faded into a footnote of history.
In any event, this historical tale illustrates the point about timely and well documented patent filing. Other more recent close-but-no-cigar patent filing stories can make this point even more effectively.
Exercises in Timing
As many can attest from watching late-night television, there exist on the market a plethora of exercise devices sold by almost as many companies. So an inventor with an idea for a new or improved piece of exercise equipment definitely needs to get to the Patent Office before her competitors. That’s something innovators worry about more than having their ideas copied, according to Michael J. O’Brien, Esq., registered patent attorney, The Law Office of Michael O’Brien, a practice that provides assistance with intellectual property. For example, a physical conditioning client of O’Brien’s experienced the Alexander Graham Bell patent-timing phenomenon, when he filed his dumbbell castor patent only two months before a person with a similar idea filed his USPTO application.
“My client had a great strategy: as soon as he figured out what he wanted to sell, he filed a provisional patent application,” O’Brien says, “which secures a filing date and does not have the formalities of a non-provisional application—for example, informal drawings can be used instead of formal drawings. In addition, provisional patent applications need not point out what makes the device novel. The only requirement is to explain how to make and use the device.”
The result: a provisional patent application remains faster and less expensive to execute than a non-provisional application, which preserves an early filing date for the inventor, according to O’Brien. Alternately, depending on the type of invention considered for patenting and how easy its duplication, innovators may want to consider a trade secret methodology, as previously written about in IPWatchdog.
Of course, on the internet, almost anything goes. And IP, such as domain names, remains easy to come up with but hard to own if you’re second. So moving first and documenting your timing can be all that stands between you and having to comply with a nastygram but from a rival’s outside or corporate counsel.
“When we were developing our company, IndieFilmConnect, one of our projects was going to be an online film festival—International Movie Trailer Festival,” says Murray Suid, cofounder, MobileMovieMaking.com, a project of IndieFilmConnect. “At the top of our to-do list was getting the URL InternationalMovieTrailerFestival.com. Years later, a competitor threatened to sue for stealing her idea. We checked on WhoIs and found that she had obtained her URL, thetrailerfestival.com, a day after we got our URL. I pointed this out to the woman’s lawyer, and that ended their assault. Had we delayed protecting our intellectual property, we would have lost that part of our business.”
In other words, even outside of patents, entrepreneurs need to cover themselves every way they can.
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Patents Less about Being First than a Question of Fairness?
While the competitive juices unleashed by the patent application process and its rewards for being first to the USPTO remain a hallmark of capital formation democracy, some feel that it has become fundamentally unfair. It can exist as an especially tilted system for small businesses and startups, according to a few innovation investors.
“I was once an angel investor in a startup where way, way too much money was spent for the patent submission,” says Stan C. Kimer, president, Total Engagement Consulting.” The U.S. patent process is a mess and huge money waster charging ridiculous fees.”
For example, it might have cost Kimer’s startup six figures to patent a product called CapsulePen, an improved kind of pill case, back in 2012. And while this level of expense remains fine for large enterprises, such as IBM, which has won more patents than any other organization for 23 straight years, startups need an alternative, perhaps supported by the federal government, according to Kimer.
“Major corporations with multi-million or even billion dollar research and development budgets can easily foot $100,000 to push a patent though,” Kimer says. “But this could quickly bankrupt a startup. The U.S. Small Business Administration provides support and tools for budding entrepreneurs, but in this area it falls far short. And I have heard members of President Obama’s administration speak eloquently about how small businesses are the backbone of the American economy, yet the administration burdens us with this arduous, costly process.”
‘Methinks thou dost make too many related claims’
Today, part of the cost problem with the patent application process could exist in the possibility that the USPTO denies too many applications because of prior art. And some existing patents might have too much prior art protection based on ludicrous extensions of the base idea, according to some who have gone through the process. Paraphrasing the Bard, William Shakespeare, you could be forgiven for thinking, “Thou dost make too many related claims.”
For example, the holder of a patent for a video tombstone, Robert Barrows, says his idea got rejected three times due to prior art from his initial filing on Oct. 31, 2002, until USPTO granted the patent on appeal in 2006. During the process, his patent expenses easily reached into the five figure range, as he relates.
“One of the prior art patents made so many claims that it was very difficult to overcome,” Barrows says. “I joke that if a dog peed on this prior-art version of a video tombstone, that’s patented, too! So, it’s not just beating competitive patent filings, it’s how to beat the claims of the prior art to get a patent.”
Apparently, making all these related claims could just exist as part of the patent game, because Barrows says he may have started his application with about 30 or 40 claims. But with USPTO on the job, it approved the 2006 video tombstone patent with about eight or nine claims, according to Barrows.
Streamlining the Patent Process
Stipulating that part of the costliness of the patent process could exist in its clunkiness, sources for affordability may remain simplification and automation. Under this scenario, a four-year IP odyssey might decrease to a period of one or two quarters, according to some experts.
“Using modern IP analysis technologies, IP pros look at streamlining the patent filing process, optimizing it to within a three-to-six month time frame,” says Tyron Stading, president and founder, Innography, provider of patent search and IP analytics software. “Where people aren’t focusing is the pre-disclosure process, which could speed time to filing by months, helping to get ideas formalized and vetted faster before disclosure.”
And while USPTO discontinued its own pre-disclosure system in 2007, other research organizations like the University of Wisconsin system have their own setups in place. Takeaway: documented pre-disclosure could help innovators maintain the priority for patenting their ideas.
Overlapping Inventors Lead to Overlapping Inventions?
Even as innovators need to look out toward the competition as a primary consideration in protecting their intellectual property, they must not neglect to take internal safeguards. Another lesson inventors can learn from Alexander Graham Bell is knowing what your colleagues know and what they are doing with that knowledge.
“In cases involving the copying of inventions, these typically result from partnerships that go bad,” O’Brien says. “Two people work on something together, have a falling out and then both file patent applications. A classic example has to do with Alexander Graham Bell and Elisha Gray’s efforts to perfect—and then patent—transmitting voice messages. They did not exactly work together, but they did have access to each other’s material.”
More relevant today remains the situation where teams of researchers collaborate in a common workspace. In that type of scenario, corporations likely have tight controls to prevent IP from walking out the door. But what about research institutions such as colleges?
“There was a famous overlap a few years ago when inventors at a university went to go work for a company and took the IP with them,” Stading says, “an often known issue but something people never take time to research or investigate.”