In a previous article titled Inventing Strategy 101: Laying the Foundation for Business Success we discussed one important truth for all inventors to keep in mind. The goal is not just to create a cool invention, and the goal is not simply to obtain a patent. Instead, at least for most inventors, the goal is to make money. The cool invention is a prerequisite, and a patent (or at least a patent application filed to protect you as you proceed) are a means to that end and not the end in and of themselves. But if you want to engage in a business responsible approach to inventing, having a patent strategy and understanding the basics of patent law (see here and here) is required.
Patents confer rights and when you have rights you have an asset that can be sold or licensed. But you will have an asset that can in some circumstances be sold or licensed even before you actually obtain a patent. Increasingly more and more companies are looking for outside ideas and inventors can and do strike deals before a patent is issued. It is safe to say that in most, if not all of those cases a patent application of some sort will be applied for and form the basis of the deal, which will become about acquiring rights you may ultimately obtain as the patent application matures into an issued patent.
It is true, however, that the further you are down the path toward a final solution being real the more valuable your invention will be. While I am not suggesting anyone rush out and spend a lot of money building a prototype (see Prototype Basics), obviously if you have a working prototype that answers a lot of questions compared to an inventor who has only sketches on paper. Similarly, if you have an issued patent you are taking risk out of the deal because there is no lingering question about whether a patent will issue — a patent has already issued.
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While it is always wise to focus on bite size steps and achievable goals, inventors need to consider obtaining patents (plural) rather than obtaining a patent. The old legal saying we learn in evidence goes like this: “A brick is not a wall.” That is obvious. But a patent is not a wall either. If you have a single patent with a set of claims you have some exclusivity. But if you have more than one patent, which each has a solid claim set you have more exclusivity. If you have multiple patents then you really start to build that wall. So if your invention is going to be a huge success you will likely have multiple, perhaps many, patents. There is real advantage in the licensing context to always having an application open that will allow you to gain more claims because when it comes time to license or sell you sell or license the rights you are known to have (i.e., issued patent rights) and the rights you that are uncertain and will create risk (i.e., rights to pending applications).
Of course, the journey starts with a patent (singular). If you can get a patent you can get more, assuming you have a well drafted patent application that appropriately describes your invention in its full glory with discussion of alternatives and variations.
With all this in mind, let’s talk about getting a patent (singular). There may be instances where getting some patent protection quickly could be beneficial. That will not necessarily be the right strategy for everyone, so it is probably wise to consult a patent practitioner and/or an inventor coach who can help you plot and navigate the right strategy for your invention and business objectives.
There are several strategies for obtaining a patent in a relatively short period of time.
Patent Strategy #1: Helping examiners go out of order
First, you can file a patent application, but with the average pendency in the USPTO being well over 2 years (much higher for some inventions) you need to have a prosecution strategy that is calculated to lead to easy, quick issuance. While the original disclosure needs to be sufficient to support the entire invention, there is no need to file a large number of claims in the original application. Filing a small number of claims, even exceptionally narrow claims, can significantly increase the likelihood that an examiner will quickly address an application. Patent examiners are supposed to take applications in the order in which they are received, but that doesn’t always happen when a patent examiner is looking to find applications toward the end of a reporting quarter in order to make sure they make their work production quota. So a small number of narrow claims can make for an attractive application for a time pressed examiner to pick up next.
Patent Strategy #2: Learn from early interviews
Second, patent examiners are also allowed credit for conducting an interview prior to undertaking work on a First Office Action on the Merits. Approaching the patent examiner and offering to discuss the invention prior to a Action on the Merits can pay dividends. Generally you don’t want to rush to get a first action allowance because if you do that inevitably means you could have gotten broader claim coverage, but if you are willing to take what you can get quickly and then circle back for broader claims with a continuation this strategy, filing very narrow claims can certainly work. To successfully pull this off you should file a small number of very well written, narrow claims. During your conversation with the patent examiner in that early interview you ask the examiner to hold off on an Office Action until you file amended claims that take into account the substance of the interview. That set of claims you file should address any concern raised by the examiner and will hopefully get you an allowance, or much closer to one.
Patent Strategy #3: Prioritized examination
Third, you can always pay the Patent Office a fee and they will move your application to the front of the examination line, getting a decision within 1 year, sometimes even within 6 months. This fee for service acceleration of an application is known as “Track One” or prioritized examination. The Patent Office offers Track one prioritization for utility patent applications and plant patent applications. Track One gives your application special status with fewer requirements than the accelerated examination program and without having to perform a pre-examination search or filing what is known as an examination support document. I do not recommend anyone use accelerated examination, but if you need a patent fast and you can afford the extra fee Track One prioritization is definitely the way to go. I didn’t put this first simply because it costs extra. A request for prioritized examination currently costs $1,000 for a micro-entity and $2,000 for a small entity, which is in addition to whatever other fees are typically due at filing. This extra cost can be significant for many, but if you need a patent quickly it can be well worth the investment.
Patent Strategy #4: Patent Prosecution Highway
Fourth, while probably not applicable for many inventors or even small businesses, if you are able to obtain a patent outside of the United States in a country having a Patent Prosecution Highway (PPH) agreement with the USPTO you can move to the front of the examination line. This can become complex for some inventors because if the invention is conceived in the U.S. you need a foreign filing license prior to filing outside the U.S., and you obtain a foreign filing license by filing either a utility or provisional patent application in the U.S. first. But if your invention is one that will require a long prosecution wait and you are not able or inclined to pay for prioritized examination you may find it useful to file first in the U.S., obtain a foreign filing license, and then file in a country where you can obtain a patent more quickly. Obviously, this strategy adds costs associated with obtaining at least one foreign patent, so it needs weighed as an option within your overall business strategy. You will hear many patent attorneys make reference to “Toronto pronto,” which is in reference to the fact that it can generally take less time to obtain a patent in Canada and the U.S. and Canada do have a PPH agreement. Under the PPH if you get claims allowed outside the U.S. you can generally expect those same claims to rather quickly issue in the U.S. So if your strategy is to gain exclusive rights through North America perhaps this PPH related strategy would be useful. For more see Following the Patent Prosecution Highway for a Smooth Ride.
Patent Strategy #5: Maintenance fees force patents into public domain
Fifth, maintenance fees are required to be paid in order to keep the patent from falling into the public domain. Maintenance fees are due at 3 ½ years after the date of issuance, 7 ½ years after the date of issuance and 11 ½ years after the date of issuance. Many inventors, particularly individual entrepreneurs, do not intend on making maintenance fee payments, which means their patents may be able to be inexpensively acquired. Obviously, this strategy isn’t particularly useful for those who want to pursue a licensing strategy for their own inventions, but if you are looking to acquire a patent or build a portfolio it can be productive to swoop in and acquire patents before maintenance fees would come due. In one situation I counseled a client that he couldn’t patent what he invented because someone already had a patent on the invention (which was virtually identical). He reached out to the patent owner who hadn’t done anything with the patent and had another maintenance fee coming due. So the client gets a patent through assignment with some years of exclusivity remaining.
Patent Strategy #6: Don’t forget design patents
Finally, design patents are frequently overlooked, but when acquired in bulk they can provide a quick, cost-effective means for building exclusivity. Design patents have gained in strength in recent years due to the altered infringement test, which no longer focuses on the point of novelty. Thanks to the Federal Circuit’s Egyptian Goddess decision infringement analysis focuses on the totality of the alleged infringing product and whether an ordinary lay observer would believe the allegedly infringing device is a copy of the patented invention. Design patents have been issuing of late in as quick as 9 to 12 months. Anyone with a tangible product should not overlook design protection. It is cheap, easy and quick to obtain a design patent, and if you are looking to use the coveted terms “patented” having a design patent gives you that. Design patents have also been successfully used to stop counterfeits at industry trade shows, so for many inventors they will be extremely valuable and well worth the cost of obtaining. Just remember, design patents protect appearance, not functionality.
Up next in this series will be in-depth discussion of continuation strategy (mentioned above), which allows inventors to accept a set of claims and then circle back for more patent protection. For now suffice it to say that just because you obtained a patent doesn’t mean that you have exhausted the available protection that could be achieved from a properly drafted patent application.