EEVblog #1167 - Let's Talk About Patents

[EEVblog]

A quick chat about Innovation Patents vs Invention Patents for another video quickly turned into 30 minutes of general talk about patents, the patent system, patent applications, patent attorneys, over-unity free-energy quackery, the claims and examination process and a host of other stuff, with patent attorney Dr Phil Burns.

[johnlsenchak]

Sorry  Dave this was boring.  

[darik]

I believe the rule for a perpetual motion machine in the US is that it's the only thing for which you need to demonstrate a working model in order to get a patent.

[BrianHG]

With an international audience here at EEVblog and slightly differing rules from country to country, what was covered in this video must be taken with a huge grain of salt unless all you want is a dated public document of your idea and sort your troubles later.

If you are seeking a patent, you better understand what you are trying to protect, can it be protected under the rules of your nation and the idea better cover the long term cost and investment of protection.   If you do not have a guaranteed path to both at least 10 million in investment and 5x that profit, lasting a good number of years, plus a real secure set of claims in your patent which cannot be circumvented by a new better idea or concept, dot not waste your time with a patent.  And, unfortunately, getting those claims right means seeking some professional guidance before submitting a patent.  I know this sounds harsh, but protecting your patent costs big $ depending on who might be copying your idea and this needs to be a consideration.

If you are patenting an idea to sell just the patent, unfortunately, to make that sale, you still must prove that your invention still has a guaranteed path to both at least 10 million in investment and 5x that profit, lasting a good number of years, plus, the patent must be granted, otherwise, no one would give you a penny of money for it unless you con someone out of their money.

Going multinational means multiplying my $ figures by at least 2, if not 5x to 10x.

[glarsson]

I believe the rule for a perpetual motion machine in the US is that it's the only thing for which you need to demonstrate a working model in order to get a patent.

How can you demonstrate that your perpetual motion machine will work perpetually?

[BrianHG]

I believe the rule for a perpetual motion machine in the US is that it's the only thing for which you need to demonstrate a working model in order to get a patent.

How can you demonstrate that your perpetual motion machine will work perpetually?

Nice one! 

[kosine]

"Have you got a patent?" is one of the very first questions any potential investor will ask. A lot of potential customers will ask it too, especially the larger ones. The both know they can get the product cheaper by cutting you out of the equation, so if you don't have a patent you're stuffed from day one.

Yes it costs, but no more than hiring staff. One person's salary will easily exceed your annual patent costs, even if you apply internationally.

And yes, defending patents can also be expensive and time consuming, but only if it goes to court in a big way, which 90% of the time it doesn't. (Patent trials can be a real crap-shoot, and in the UK at least, the court will appoint an impartial mediator to try and broker a deal before a hearing can take place. Cases are rarely open & shut, and neither side really wants to take the risk of losing, so deals tend to get done.)

The fact is, if your idea is really any good, then you will almost certainly end up dealing with legal action at some point. "Where there's a hit, there's writ" as the saying goes. So again, you really do need a patent or you have zero defence when that day arrives.

In practice, if someone does copy your idea then you target the companies selling it as well as making it. Most people simply don't want to get involved in legal action and will drop the product and move on.

Business is tough regardless of how you play the game. But the patent system exists for a reason, it's not perfect, but it's a necessary evil. Having a patent agent is really no different to having a lawyer or an accountant. You're kind of expected to have one if you want to be taken seriously.

[BrianHG]

"Have you got a patent?" is one of the very first questions any potential investor will ask.

(A clarification for those who have never done a patent before)
And when they are asking this, they do not mean 'Have you applied for a patent?', or, 'Do you have a patent pending?'
They mean do you have a granted patent and which 'CLAIMS' have been granted to you.  This is the key thing...

If you do not get advice from a Patent Agent specialist before submitting your patent, and it is your first patent, you will screw this part up I guarantee.  And your patent most likely end up being worthless.

Everything Kosine said is correct.

[sandalcandal]

Hopefully Phil, another patent attorney or someone experienced in getting patents done can read this.

It's fun ragging on bad clients and people trying to get patents who have no idea what's going on but I'd like to know what an "ideal" client would be like. I'm in the process of filing for my first patent and I want to know what it means to make the process go as smoothly (and cheaply) as possible. I'd like, if possible, an answer more detailed and expansive than "talk to your attorney and do as they ask". How do I have my shit together? What questions should I be asking? (What questions should they be asking??) At what point to I became an over eager annoyance? Edit: Also at what point am I doing the attorney's job for them?

[kosine]

I'd say an ideal client is someone willing to learn. Don't worry about doing their job for them - aspire to it! If you can speak their language you'll work as a team and get much better results. Get to know them, go drinking with them if you get a chance. (Pro tip: when dealing with professionals, always book the last session on a Friday afternoon. Never met an accountant, lawyer or patent agent who didn't like an after-work drink on a Friday. For the price of a couple of beers, you get an extra hour of free consultation.)

Go learn the system. Most patent offices have a lot of "self-help" info on their websites, which is a good place to start. Knowing when the different stages of system happen, what it costs and what deadlines you have to meet can be a big help. As an example, if you want to file in other countries you may need translations doing, so you want to be discussing and arranging this a good couple of months before the filing deadline.

Free patent searches can be done online these days, learning how to use those resources and finding all the relevant prior art gives your patent agent a head-start (and saves you a bit of money).

If you can use any graphic design software you can put together some artwork for the patent application. Better it comes from the inventor rather than hoping you patent agents can do justice to your idea. Even some pencil sketches will be a big help to them, but if you can do the images yourself you'll save money.

You should also have a go at writing a draft description, or at least listing the most important features of your idea and how it's different from the prior art. You will probably see things your patent agent may miss and be more aware of all the variations you could make to your idea. Remember, you can't add anything to an application once it's filed, so include everything you can think of.

Ultimately, getting a good patent is a collaborative effort. You shouldn't just offload it to a patent agent, you need to meet them half-way. Even if it's your first application, go as far down the road as you can. The effort is worth it, and I promise you it will make a difference. Good luck with it!

[BrianHG]

Hopefully Phil, another patent attorney or someone experienced in getting patents done can read this.

It's fun ragging on bad clients and people trying to get patents who have no idea what's going on but I'd like to know what an "ideal" client would be like. I'm in the process of filing for my first patent and I want to know what it means to make the process go as smoothly (and cheaply) as possible. I'd like, if possible, an answer more detailed and expansive than "talk to your attorney and do as they ask". How do I have my shit together? What questions should I be asking? (What questions should they be asking??) At what point to I became an over eager annoyance? Edit: Also at what point am I doing the attorney's job for them?

Before you start, Google 'your idea key words and & US PATENT'.  Google will show existing patents.  Read them, download their .pdf version so you can see what a patent looks like.

Note that to get a patent, your idea must be feasible and non-existing public knowledge, the concept / written patent must contain unity of invention, contain 'Novelty', have 'Inventive Steps', and have 'Industrial Application'.

Unfortunately, I'm experienced in US patents only, and if you are not making a product for Australia specifically and you want to sell or get investment, I would recommend getting a US patent first as that's where most of the tech money is.  Yes, I do use a professional Patent Agent & the $$$ do rack up.

For the US, use this site to get the patent info:
https://www.uspto.gov/patents-getting-started/general-information-concerning-patents
Under fees, you would probably be filing as a private micro-entity, however you should still read everything available.

Your patent images need to be Black and White drawings.  No color, no halftone, only a wide hatchet patterns are allowed.  I use simple 2D drawing tool in 'Open Office', as it has the nice swirly arrows where the beginning and ending may be positioned with an illustration number.

I know some patents, like those from Apple's desktop user interface have some minor half tones converted to black \and white, but play it safe and try to stick to line drawings.

[kosine]

Agree with everything BrianHG says. Espacenet.com is another good site for searching the patent archives. (So much easier than the old microfiche system at the British library!)

Only thing to add is that (in total, not all at once) you can be looking at £3000-5000 per country in costs (including patent agent fees), and about 3 or 4 years from application to grant. Varies between countries, and you can speed things up in some cases. After year 4 you start paying annual renewal fees as well, which are currently a few hundred per country (again, it varies).

Oh, and don't miss deadlines whatever you do. It's not a very forgiving system.

[j7b]

I was hoping Phil would take the opportunity to refute #106 and rant like "Tip #1: Don't bother learning electronics! It's a waste of time and money! Best case scenario, you'll end up with bins of components you won't be able to find when you need them, expensive instruments you'll hardly ever use, and burns all over your hands! If you're really unlucky, you'll get lead poisoning from your solder, cancer from all the fumes and chemicals you'll expose yourself too, and probably even electrocute yourself! Don't do it!"

[Marco]

If you do not get advice from a Patent Agent specialist before submitting your patent, and it is your first patent, you will screw this part up I guarantee.  And your patent most likely end up being worthless.

How do you find a good one? It's a rather fast moving field and patent lawyers/agents are undoubtedly not immune to laziness and inertia, or indeed just plain incompetence.

[BrianHG]

Agree with everything BrianHG says. Espacenet.com is another good site for searching the patent archives. (So much easier than the old microfiche system at the British library!)

Only thing to add is that (in total, not all at once) you can be looking at £3000-5000 per country in costs (including patent agent fees), and about 3 or 4 years from application to grant. Varies between countries, and you can speed things up in some cases. After year 4 you start paying annual renewal fees as well, which are currently a few hundred per country (again, it varies).

Oh, and don't miss deadlines whatever you do. It's not a very forgiving system.

In the US, filing a utility patent as an micro-entity with less than or equal to 20 claims, with up to 5 of them in independent form (double check these figures, but this was the maximum of my current filing), you can request an accelerated examination which will get your patent granted in under a year (so long as the idea is original).  My last one took only 5 months.  However, with my patent agent, he requested that the during the interview call with the US examiner, we requested that the granting should be held off for six months as we wanted to file an international PCT version of the patent giving me the maximum deadline time to file the PCT, then file in other individual countries.  However, since I now had a letter of acceptance from the US office stating that my patent will be granted on date xxx, it was usable to begin seeking investment.

[BrianHG]

If you do not get advice from a Patent Agent specialist before submitting your patent, and it is your first patent, you will screw this part up I guarantee.  And your patent most likely end up being worthless.

How do you find a good one? It's a rather fast moving field and patent lawyers/agents are undoubtedly not immune to laziness and inertia, or indeed just plain incompetence.

I got lucky for my most recent patent as my current agent was discovered while trying to transfer my previous 3D glasses patent's IP.  My first patent in the 90s was done with a partner in the US and all I did was describe the technology and the agent wrote a patent which I corrected and approved.

The later 2 I did more of my homework and made a better text & description while the patent agent also did his best to generate a final text.

This last final patent, was done with a local agent here in Montreal, one who was an technology IP management specialist and understand the 'market' of what my inventions will be used in.  This vastly improved the final claim structure in my latest patent securing my invention from infringement.  (I ended up with a monster 125 page document...)

@Marco, I sent you a PM.

[sandalcandal]

Thanks for the great replies kosine and BrianHG. I'm glad to say I've done most of what you've suggested already but I need take a more serious look at the international patent processes beyond Australia.

If you do not get advice from a Patent Agent specialist before submitting your patent, and it is your first patent, you will screw this part up I guarantee.  And your patent most likely end up being worthless.

How do you find a good one? It's a rather fast moving field and patent lawyers/agents are undoubtedly not immune to laziness and inertia, or indeed just plain incompetence.

This is also a question I had. Talking with a friend also applying for patents for the first time there can apparently be some issues working with patent attorneys. In particular they had issues getting time with/from their attorneys. Apparently due to them being small time customers with therefore little repeat business, being new to the process therefore requiring more time teaching/guiding they were a lesser return on time investment for the attorneys so as a result got given low priority. Not great attorneys!

We ended up looking for attorneys from a different city because apparently all the local ones are less than satisfactory according to my friend. For the attorney I've decided to engage, I found them running a booth at startup conference and had a good chat to them. Obviously since they were exhibiting at a startup conference they're looking for business with startups and chatting to them they showed strong interest; further coming to visit our own booth later. From the multiple patent attorneys I got in contact with and "tendered" I also asked to see some of their published works which helped me get a better idea of their past experiences as well as the quality of their work. Quality of communication in those initial email correspondences is also something I tried to use as an indicator.

So far things are going pretty well with my current attorney. I guess time will tell.

[BrianHG]

Thanks for the great replies kosine and BrianHG. I'm glad to say I've done most of what you've suggested already but I need take a more serious look at the international patent processes beyond Australia.

If you are serious about international, you first thing to do is file a PCT, which must be files less than 1 year before you first filed you patent in you local country and it must be filed before your patent is granted in your local country.

That PCT gives you a reserved set of time to file that patent invention in any of the PCT countries within the PCT's deadline time.  The PCT price isn't too bad, but translating and filing your patent in the separate countries will begin to cost a ton...

Here is the PCT countries:
https://www.wipo.int/pct/en/pct_contracting_states.html


Here are the PCT FAQ / rules / procedures:
https://www.wipo.int/export/sites/www/pct/en/basic_facts/faqs_about_the_pct.pdf

[BrianHG]

One note about patent 'attorneys' and patent 'agents'.  Patent agents most likely will have more experience in dealing with multiple countries and have access to a network of investors and be specialized in dealing with technology IP.  When seeking an agent, make sure they are approved/members in multiple countries and have a portfolio with access to many investors in your invention's realm.

Patent attorneys may be more focused with local laws and suing for IP theft.

Note that this is only from a limited personal experience.

[sandalcandal]

@BrianHG

My goal going into getting a patent was a bit short-term; just trying to get a priority date and making it so I don't have to NDA every person I want to talk to about our tech. Fortunately, my attorney plans for a PCT roadmap in general. They've provided material explaining the PCT roadmap with the PCT filing then filing in each jurisdiction and so forth but I'm yet to do more detailed reading. Also speaking with my attorney about our provisional patent application draft so far, they are drafting to enable international compatibility; with the US in particular. I also remember talking to them about cases where they do local filing for other international firms and send their drafts to other international firms so I guess they're an "agency"? Sounds like I've got a pretty decent attorney

(PM sent)

[bitwelder]

Bit unusual EEVblog episode... is Dave cooking something that requires Dr. Phil expertise? 

[kosine]

PCT is a whole different ball game and definitely requires agents who have the necessary experience and international contacts. Most good firms will have a case study / portfolio page on their website you can check, and if you're just starting out it may be worth paying a little extra for the services of a big city firm. Most patent agents will consult with more knowledgable colleagues when necessary, but bigger firms have more contacts in-house and around the world.

The other thing you can do if uncertain is get a second or third opinion from other patent agents. Show them the application you've already had done and get them to review it. Won't cost a huge amount since they're just proof-reading it. You could even transfer the case to them if you need to change horses midstream. (This happens quite a lot when investors come in. They often want to transfer the patent work to their own agents.)

Once you've found a good agent, stick with them. I've had a couple over the years who have left a big practice to set up their own company, so I moved with them. They still retain their old contacts but are usually a bit cheaper. If you can find an agent that's already gone this route, then they're probably a not a bad choice.

[compuphase]

For me, the prime example of the benefits of innovation patents has always been AU 2001100012 (on a circular transportation facilitation device). I am actually somewhat surprised Phil didn't mention it, because here in Europe that patent is often cited in training & consulting.

[sandalcandal]

Once you've found a good agent, stick with them. I've had a couple over the years who have left a big practice to set up their own company, so I moved with them. They still retain their old contacts but are usually a bit cheaper. If you can find an agent that's already gone this route, then they're probably a not a bad choice.

The particular agent I got actually recently left one of the biggest firms in Australia and brought a bunch of clients with them apparently. I don't think the firm they're in now is really "small" nor is it new however. I also had a look at their other team members and they seemed like a solid firm with multiple people with background in electronics/electrical.

Seeing that I'm already following most of the advice being given is reassuring.

However, I'm not sure we have much budget left for getting second opinions at the moment unfortunately.

[ntlord]

One note about patent 'attorneys' and patent 'agents'.  Patent agents most likely will have more experience in dealing with multiple countries and have access to a network of investors and be specialized in dealing with technology IP.  When seeking an agent, make sure they are approved/members in multiple countries and have a portfolio with access to many investors in your invention's realm.

Patent attorneys may be more focused with local laws and suing for IP theft.

Note that this is only from a limited personal experience.

This is highly dependent on the country. And for example, is inapplicable in the U.S. In the U.S., the only difference between a patent agent and patent attorney is that the attorney went to law school and passed a state bar. There is no theoretical difference in skill level or experience, other than the fact that in the U.S. at at least, agents typically have more advanced degrees. But that is not a requirement, just a practical reality--most people with advanced degrees are done with schooling.