Bad Patent Advice from the Wall Street Journal

By Gene Quinn
May 1, 2009

In order to stay atop of what is happening in the patent world I subscribe to a Google news service that will send me an e-mail whenever there is a new post relative to patents indexed with Google News.  Most of what crosses through Google News in terms of patent news are short news stories about whatever giant corporation has recently settled a patent lawsuit, filed a patent lawsuit or licensed a patent portfolio.  Today, however, one particular news story caught my attention because it was in the Wall Street Journal.  It was not really a “news” item, but rather a question and answer column where folks write in questions to Alexandra Levit, who then answers a handful in a weekly column.  While most business people believe they can give competent patent advise without knowing anything about patents, the danger is that advise from those who are not familiar with patent law is often wrong, sometimes to the point where if it is followed rights would be instantly lost forever.  Unfortunately, that is exactly what would happen if anyone were to follow the advise Ms. Levit gave in her column today.

To set the stage, here is the question asked and the answer give by Ms. Levit:

Q: I am a retired executive for a Fortune 500 company and have an idea that would change the lives of many people. Two of my children are lawyers and have put me in touch with patent attorneys, but I cannot afford to engage them. I am looking for a wealthy person or company that I could partner up with and share the ultimate profits based upon their participation. Any thoughts or suggestions?

A: Congratulations on your business idea. I do think, though, that it’s going to be hard to solicit help from a wealthy benefactor unless you happen to know one in your personal life. You’re right to do some work on your own before shelling out lots of money to a patent attorney, though. As a first step, you should make sure someone hasn’t thought of your idea already. Go online and look for products similar to your idea in indexes such as ThomasNet and note the various manufacturers in your area. If you find that your idea is in fact unique, don’t use an invention promotion company that advertises on TV or online. Instead, go back to ThomasNet and contact a VP of marketing or research and development at each company. In your call or e-mail, ask where you can send a short proposal about your idea.

First, before I get into the substance of the advice provided, it is important to realize that practically every patent attorney and patent agent gets inquiries like this on a weekly, if not daily, basis.  If I had a dollar for every time I received an e-mail from someone saying that they have a life-changing invention, or world-saving invention, I would be able to retire.  The story goes, as in this case, my invention is critical, essential, life-altering and I know without a doubt that it will succeed.  These messages then ALWAYS go on to say, I just don’t have the money, but those with money would get a great deal if they would partner with me and fund my invention.  Sometimes it even goes further and implies that anyone who is wealthy would be lucky to get such a great opportunity.  I try and preach to inventors that if they want to be taken seriously they need to keep it real, and this is an enormous red-flag and serious people will flee from you with this story.  The truth is ideas and inventions are everywhere, and if you are not willing to put up your own money that says you don’t believe in your own invention enough, so why should I?  Finally, inventors without “skin in the game” invariably walk away because they have nothing invested.  This story is not taken seriously by anyone in the industry and if you are serious and have an invention you cannot lead with this type of pitch.

Now, to be fair, there is some good advice provided by Ms. Levit, but lets start with what is incorrect and potentially very dangerous.  Ms. Levit explains that it is appropriate to engage in research prior to going to a patent attorney, which is indeed sound advice, but then never suggests taking steps to secure rights prior to disclosing the invention.  If anyone follows this advise they will instantaneously lose any and all foreign patent rights that may otherwise be available.  This is perhaps the single largest mistake that is made by those with only vague familiarity with the patent system.  It is well known by many that you can engage in certain activities in the United States prior to filing a patent and without risking the loss of rights, provided that a patent application is filed within the allowed time, typically 12 months from the happening of certain disclosures.  It is then assumed that this is also the law throughout the world, which is incorrect.  The United States is the only country where you can disclose first and patent later.  Everywhere else the law is what is referred to as “absolute novelty,” which means that you must file a patent application before disclosure.  Do it in the wrong order and you lose any patent rights you might have otherwise been entitled to receive.

Another problem with Ms. Levit’s advice is that no serious and reputable company will engage in any discussions relating to an idea.  In fact, I will go so far as to say that if you find an individual or company willing to discuss your idea or invention prior to  you having filed a patent application you are speaking with someone who is either unknowledgeable or unreputable.  Those who are knowledgeable and reputable know that it is in their own best interests only to talk to those who have filed a patent application.  Filing a patent application means you are serious, proceeding in an appropriate business manner and most importantly that you have defined your invention.  Companies work on inventing in-house, and some will accept outside submissions.  The nightmare scenario for a company is to hear an idea from someone only to realize they are already working on that in-house or licensing in the technology.  If they hear your idea and do not proceed with you they are opening themselves up to liability because if they do not do business with you it will seem as if they stole your idea.  The theft of ideas is extraordinarily rare, but if you tell someone your idea and they come out with it after your disclosure it looks suspicious.  Therefore, reputable people and companies absolutely require that you have a patent application filed so they can evaluate what you have sworn is your invention, and so they can appreciate the full scope of what you have invented.  This allows them to rationally determine whether your invention has merit, and whether they need to deal with you.

What Ms. Levit did get right is that it makes sense to at least try and do your own search first, but searching online for similar products is only a very small first step.  I hear every week from inventors who do this, don’t find their invention and think it is smooth sailing because their invention is so great if it existed it would already be on the market.  This may seem logical, but history and experience proves that it is faulty reasoning.  There are many different reasons why a product doesn’t make it to market, and once an inventor has received a patent and then doesn’t follow through for one reason or another, many companies simply have no interest in pursuing the product.  This is because the invention has fallen into the public domain and if the product becomes popular then anyone and everyone could make it, which does not make for a good business strategy.

It is also important to understand that if you are going to do your own patent search you are certainly going to miss patents that could be found by a patent attorney or skilled patent searcher.  Nevertheless, if you can spend some time looking and find inventions that are to close for comfort then you have saved money and only lost some time.  For those who want to try and do the best patent search they can first I strongly recommend reading US Patent Searching 101, which is a patent search tutorial aimed at inventors, and also law students I teach.

Undeniably, the best and most correct thing Ms. Levit said was that you should not work with invention promotion companies.  How and why anyone works with invention promotion companies today is something of a mystery.  The top invention promotion companies have repeatedly been charged with violations of law by the US government, and in some cases have had hundreds of complaints filed against them.  Those who want to avoid invention scams can if only they would do a simple Google or Yahoo search to investigate whether a company is a known scam.  Nevertheless, many inventors sign without doing any research to see if the company is reputable.  Over time I have become convinced that those who fall prey to invention promotion companies do so because they want to believe the path to riches is easy, and someone will do all the hard work for them because their idea is so good.  First, ideas are not patentable.  Second, money without hard work only happens in fairy tales!

Happy inventing!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 20 Comments comments.

  1. Alexandra Levit May 1, 2009 3:21 pm

    Hello Gene, my apologies if any of the guidance I provided in my Reinvent column was perceived as inaccurate. I received this advice from an inventor who has been through the process. Because I am not familiar with the invention process myself, I must rely on sources for my information.

    I appreciate your clarification of the issue and the fact that you noted that some of the guidance was correct. I hope that you understand that I have about 100 words to answer these questions – so by nature the answers cannot be detailed and involved enough to constitute the step-by-step advice that would be found on websites such as yours.

    Thank you,

    Alexandra Levit
    Columnist, Wall Street Journal

  2. Gene Quinn May 1, 2009 3:35 pm

    Alexandra-

    Thanks so much for commenting. Having had to write for short, hard word limits I certainly feel your pain. I hope I didn’t come across too confrontational, I just wanted to use your work as a vehicle to try and get information out to inventors. Also, given there was a chance it could be interpreted incorrectly and that the Wall Street Journal is viewed as being so reliable, I wanted to get the post up. I am a BIG Wall Street Journal fan! Keep up the great work!

    Thanks.

    -Gene

  3. Luis Figarella May 1, 2009 4:09 pm

    Gene:

    Great work in finding and commenting on the column. I am a Patent Agent in Nashua, NH, and also wish I had the $1.00 you speak of (I’d be at the beach in Vieques all winter). The loss of international rights inadvertently is one of the saddest events.

    Like you, I am a big fan of the WSJ, and feel for Ms. Levit and the “bad” advise she received. Personally, I think graduating with a technical degree and not being able to spell “Patent” is a shame, but then again, the ABET is not going to answer any of my letters anytime soon.

    I give an “IP Primer” chat to the EE graduates of my undergrad school (my department at the U. of PR-Mayaguez) every term, a way for me to “pay it forward”, and for them to learn about the basic rules of inventions (and yes, if it were the Alaska School of Mines I am not sure I would trek there in February either!).

    …now if I could only get more customers in PR, in the wintertime…

    Stay well,

    Lu Figarella PE
    Nashua, NH
    http://www.mxpatent.com

  4. Stuart Fox May 3, 2009 1:23 pm

    Gene:

    I agree with most of the comments you made – sadly many journalists and others express misunderstandings regarding inventing and patenting.

    While the US is as far as I know the only country with a first to invent system, on the other hand you may be surprised to learn that the US does not have a monopoly on the Grace Period – Australia has enjoyed this facility for many years and I understand approximately 40 countries also now have Grace Periods similar to the US system.

    Importantly, as far as I am aware, none of the European countries have a Grace Period, although I understand some countries are considering it.

    Your comment re inventions falling into the public domain and not being good business strategy is also very true and sadly rare to see. It is important for inventors to note, espescially those considering donating their idea to the world by ‘public domaining’ – this may well be counter productive – ensuring the innovation never becomes available, because without a monopoly, a potential manufacturer may never recoup their investment.

    Many advisors also promote confidentiality or non-disclosure agreements but breech may be hard to prove – far better to lodge a patent application.

    Invention submission companies are proliferating all over the world, but unfortunately the US seems to be the only country which has relevant legislation – The American Inventors Protection Act .

    Stuart Fox
    Chairman
    Inventors Society of Australia

  5. Mark Malek May 4, 2009 9:32 am

    Stuart – Great information to have. Thanks for posting it.

    I have run into these problems very often with inventors. Most patent attorneys have had the inventor that comes into their office and wants to file a patent application for an invention that they disclosed more than one year ago. The only saving grace for these folks is to file an application on an improvement to their original invention that they have not yet disclosed. The other big problem that is very well pointed out in Gene’s post is the forfeiture of International Patent Rights. All of this information leads to the same conclusion for small inventors – provisional patent applications can be an invaluable tool to provide initial protection to your invention. Provisional patent applications are not overly expensive, and, when timely filed, can eventually lead to both US and foreign patent protection.

  6. Rob Suarez May 4, 2009 1:39 pm

    Unfortunately, most solo inventors don’t even realize that they have a patentable invention until they have already disclosed it. Usually it is not until after they have been in negotiations with a larger entity and now money is in the picture do they start to think about patent protection. Until inventors start to pay attention to protecting their inventions from the onset of the invention process, patent practitioners will always be in a “race to file” in an attempt to secure/salvage rights.

    Another great post, Gene. Keep up the good work!

  7. Dave Hofman May 4, 2009 1:53 pm

    Note also that Canada and Mexico also have 12-month grace periods, assuming the confirmations of such that I received from my Canadian and Mexican associates are correct (which I have no reason to doubt).

  8. Gareth Dickson May 4, 2009 2:24 pm

    Gene:

    I don’t believe Ms. Levit anywhere stated that the invention should be disclosed. Her advice is to send “a short proposal about your idea”. A caveat such as “without disclosing any of the unique ideas behind the proposal” would have avoided any misunderstanding, but (in addition to the information on foreign grace periods provided by other posters above), it is not the case that disclosing “a short proposal” will *necessarily* cause the inventor to “instantaneously lose any and all foreign patent rights that may otherwise be available”.

  9. Gene Quinn May 4, 2009 2:36 pm

    You are really splitting hairs here. The article says: “ask where you can send a short proposal about your idea.” This is bad advise for a lot of reasons. First, you are suggesting that an inventor who is not familiar with patent law make a decision regarding disclosure of an idea vs. disclosure of protectable aspects of an invention. That is a very dangerous thing to do. Inventors are already of the belief that they don’t need a patent attorney or agent because they know enough to handle it themselves after having bought Patent It Yourself. We all know that this is pure folly, and the reason why many independent inventors ultimately receive patents that are hardly useful. Nevertheless, for those who want to send their idea to another or a short proposal you need to realize that you cannot disclose what makes your invention unique, as Gareth describes. That being the case I guess I have to ask, what is the point in sending something so vague that it conveys nothing useful for evaluation purposes?

    Also, reputable people and companies do not accept idea submissions. If you send someone who is reputable your idea they will either not respond, or they will respond that they do not accept ideas or the submission of inventions where there has not been a patent applied for. Thus, only those who are not reputable would engage in discussions based on a “proposal about an idea.” This being the case, and given that you should not disclose what makes your invention unique, I again question why one would do such a thing.

    There is a growing distrust of patent attorneys and many are suggesting that inventors simply don’t go to a patent attorney. That is careless advice. If you do not want to obtain professional assistance then you should not be upset when others take your idea (which they legally can do) and cut you out. You should also not be upset when you do something that compromises your ability to obtain a patent (which is something I see frequently, as do all patent attorneys).

    -Gene

  10. Gareth Dickson May 4, 2009 4:34 pm

    I agree that failing to identify what should absolutely not be disclosed is incomplete (and possibly negligent) advice. The point I am making is not at all that inventors should decide themselves what is patentable and therefore must be withheld from disclosure, but to counter the impression given by your initial post that inventors cannot even discuss the aims of their invention or the problems it is intended to solve without jeopardising certain foreign patent rights, which is not the case. We’re on the same page otherwise, but I think the clarification is important.

  11. Gene Quinn May 4, 2009 9:22 pm

    Thanks Rob. What you say is completely right. Most inventors don’t know that they have something patentable until it is already gone. To be fair, a lot of companies make the same mistake. That is why IP audits used to be all the rage, although I think that kind of data mining has faded in popularity. When scientists and engineers are told what is patentable they are so frequently surprised because to them it is trivial. Perhaps it is in the greater scheme, but the line between a trivial non-patentable tweak and an eloquent patentable innovation is a fine line. That is why inventors should rely on patent attorneys or agents first.

    I hope all is well with you.

    -Gene

  12. Fran May 6, 2009 8:26 pm

    yes, Canada does have a 12 month grace period as well for the filing in Canada. It has gotten some people into trouble though. People will disclose the invention, file in the US within a year and then wait another year to file in Canada claiming priority from the US application, not realizing that the public disclosure will be beyond the 12 month grace for the filing of the CDN application.

  13. Gene Quinn May 6, 2009 8:54 pm

    Fran-

    That same thing happens here in the US as well. Independent inventors frequently fail to realize that 102(b) says that you must file in the US within 12 months of publication, use or sale. It sounds like Canada has the same rules. I am seeing a pattern develop here. NAFTA countries seem to have similar rules.

    -Gene

  14. patent leather May 7, 2009 8:31 am

    talking about erroneous patent articles, I read this article this morning:

    http://www.pcmag.com/article2/0,2817,2346670,00.asp

    There are so many things wrong with this article it is sad. Maybe Gene you should contact PC mag and offer to be their IP consultant, obviously they need some help Even worse, this article was on the front page of Google news.

  15. Gene Quinn May 7, 2009 9:19 am

    Patent Leather-

    WOW! That article is embarrassingly incorrect. The entire premise of the article is wrong! I think I know what I am going to blog on today! Thanks.

    -Gene

  16. JB May 7, 2009 11:12 am

    Great article Gene. One question regarding:

    >>> “Therefore, reputable people and companies absolutely require that you have a patent application filed so they can evaluate what you have sworn is your invention, and so they can appreciate the full scope of what you have invented. This allows them to rationally determine whether your invention has merit, and whether they need to deal with you.”

    What about companies that lead an inventor on, listen to his/her ideas, figure out how it works, then figure out a way to workaround (or even to infringe and take the chance with litigation later on). How common is this?
    For this reason I question whether an inventor shouldn’t delay in providing all the patent details (patent #number, claims, …) – and instead just speak in terms of WHAT the invention provides. Without the HOW details, it would be more difficult for such a company to cheat inventors this way. I realize that at some point the full details will need to be handed over – but hopefully an inventor can delay this enough to assess the honesty of the potential licensee AND get a better understanding in the level of interest.

    Am I being too paranoid? Or doesn’t this seem to happen more often in the software world? …I have read about several large software/Internet companies that *seem* to deal this way. If anything, I suspect this happens more in software technology because a small software inventor has a legitimate reason for asking a $1million+ on a new technology and the potential licensee figures they’ll take their chances in court.

  17. Gene Quinn May 7, 2009 11:31 am

    JB-

    You make an excellent point, and I think I probably need to blog on this a bit in the coming days.

    I am a fan of moving forward in an appropriate and traditional business manner. People who are serious will act like they are serious. You should never lay your cards out on the table completely unless and until there is some reason to believe it would be beneficial. There are companies and individuals both in the patent world and entertainment world that will let you spill everything and then take what you give them. Ideas are not something that can be protected, and inventions are only protected if a patent exists. On top of that, one of the things some may do in the invention context is look at what you have and then try and engineer around. Legally there is nothing wrong with that, so your job as an inventor needs to be to proceed with caution in an appropriate business manner knowing that the law will allow others to take what they don’t have to respect.

    What I like to do is start communications only after a patent application has been filed. Then preliminary communications would vaguely describe the invention, indicate that a patent has been filed and test interest. All situations when negotiations and deal-making are involved are different, and you have to be flexible and evaluate the risk vs. the reward at any given point. Having said that, if there is interest you are not likely to be able to get a confidentiality agreement signed yet. So what you might do is send an executive summary, a copy of the filing receipt proving an application has been applied for and maybe one or more drawings. You want to gauge interest before showing everything. Hopefully along the way a confidentiality agreement can be obtained and the complete application shown, including claims. If not, perhaps you show everything but the claims, or maybe only the claims. It is also important to realize that you may not want to give the filing receipt because then the other party could potentially file a protest. So what you might want to do is wait until the application is published before you do anything because after that no protest can be filed. You can petition for early publication, which is easy to do.

    There is a lot that goes into this, and you are right to be paranoid. Do remember that in order to make a deal you will need to show the cards at some point. This is why inventors really should engage a patent attorney. It is an expense no doubt, but strategy doesn’t and should end when you file the patent application.

    -Gene

  18. Adam June 27, 2009 11:47 am

    Gene,

    I have just completed part of the patent process. I did hire a very nice attorney and we filed my patent under a provisional patent this week to save a little money up front. This is helping us release our products for sale in about three weeks. We are going to file our non provisional patent in about two months. We estimate we will be able to afford the more expensive non provisional in that time, but we have twelve months to complete the filing is it takes longer. Our product is one of those “save everyone help the earth” products but in a practical way. Our current occupation is manufacturing so we have done our research.

    My biggest fear is that someone can “rip off” my invention. Is that possible now that I am filed? I do understand that if someone could prove that they had my idea before me then I could have problems but we have done a very intensive search and i actually came up with the idea over 6 years ago I just couldnt put it all together at that time. Can you help to settle any of my fears or what additional precautions should I take?

    Please let me add that my attorney is very able and comes in high regard. He has told me that I am safe to a very high degree but a second opinion would be nice.

    Thank you,
    Adam.

  19. Gene Quinn June 27, 2009 1:17 pm

    Adam-

    Once you get a provisional patent on file you are fairly safe. There is always a possibility that someone will start doing things that would infringe you, and you really have no ability to stop that until you have an issued patent, but you have put the wheels in motion and others who come after you could not steal your invention out from under you as long as you see it through to getting a patent.

    You might want to talk to your attorney about seeking early publication when you file the nonprovisional patent application. I am working on an article that will explain some strategies, but that together with claims that are likely allowable can create rights against others as of the time the nonprovisional patent application publishes.

    Best of luck to you.

    -Gene

  20. Law Help June 3, 2010 5:38 pm

    Many will reveal this kind of invention, file in the US within a year and then wait another year to file in Canada claiming priority from the US application, but you have put the wheels in motion and others who come after you could not steal your invention out from under you as long as you see it through to getting a patent.
    =================
    sunnys