Patent application

New Inventions – Three easy ways to destroy your chances of getting a patent

Justin Blows

Justin Blows

Guest Post – Justin Blows is a Patent Attorney and the founder of Phoenix Intellectual Property. He has extensive experience in protecting a very broad range of technologies, including mechanical, electrical, information and communications technologies (ICT), mining, optoelectronics and photonics, water, and energy. 

Prior to his present career, Justin co-founded and was a chief investigator of  The Centre of Excellence for Ultrahigh Bandwidth Devices for Optical Systems (CUDOS) at The University of Sydney and a reviewer of IEEE Photonics Technology Letters, and be a member of technical committees such as the Conference for Lasers and Electro-Optics (CLEO).

Justin has authored over 100 articles in the fields of science, engineering and patent law, including the effects of Carbon Emission Trading Schemes on patent strategy. You can contact him via his Linkedin profile.

* The invention diagram above has an interesting story, see the panel down the bottom 

Introduction

Destroying your chance to patent an invention is easy. Here are several traps and how to avoid them.

The trap of early disclosure

Every couple of weeks or so, I receive an enquiry from a business owner with an invention they wish to protect with a patent. We have a very pleasant conversation about how effective the invention is.

Then I am unexpectedly deflated by their revelation that their invention is selling well.

Disclosing the invention before filing a patent application restricts, and in most cases destroys, your chance to patent the invention.

Disclosing your invention generally includes, for example:

  • telling others about the invention
  • selling, or offering to sell the invention
  • providing gifts or samples of the invention

Trap

The best way to avoid this trap is by filing a patent application before you progress too far. Selling or disclosing your invention after filing a provisional patent application will not destroy your chances of a patent being granted to you.

If you wish to speak to a person about your invention before patenting your invention, another option is to have the person sign a non-disclosure agreement, which is also known as a confidentiality agreement.

Passing on information which is covered by the non-disclosure agreement to the person will not destroy your chance to patent the invention.

Non-disclosure agreements, however, have weaknesses. For example, how do you prove that leaked confidential information was leaked by a party bound by a non-disclosure agreement? In my view, it is generally better to either file a patent application or keep the information secret than rely on a nondisclosure agreement.

The trap of poor patent drafting

Drafting a specification for a patent application requires great care and consideration. A provisional patent specification, for example, is the foundation for the entire patent process. Saving money with poor drafting is false economy.

That is why the law stipulates that only qualified patent attorneys can professionally draft a patent specification in Australia. Drafting a quality patent application which survives rigorous patent office examination is intellectually challenging even for a patent attorney with years of experience.

Patent applications are not just rubber stamped. The patent office is actively looking for reasons not to grant a patent application. A poorly drafted patent specification is less likely to survive examination and any aggressive legal challenge by a team of highly motivated patented attorneys, technical experts, and lawyers.

I have been asked if I can prepare a very cheap provisional patent application. This can only be done by taking short cuts that reduce specification quality. Alternatively, I am asked if it is possible to self-draft a provisional patent specification. I assume that the requestor wants a sense of security that they have a patent application.

This sense of security is false and potentially dangerous. If the requestor discloses the invention during the life of the provisional patent application and the provisional is found to be consequently invalid then patent rights may be lost. The amount saved is a tiny fraction of that lost by reduced drafting costs.

I have found that a well drafted patent application attracts significantly less objections from patent examiners. The amount saved during examination then generally greatly exceeds the amount saved by cheap drafting. Spending money for a well drafted patent specification actually saves money.

The trap of trying to patent an old idea

An invention is only patentable if it is new. With over 100 million published patent documents, it is likely that one of them discloses something similar to your invention. It is, in fact, relatively easy to inadvertently try to protect a new invention with language that encompasses an old idea. When this is discovered it is necessary to narrow the scope of the language used.

Any amendments must be well supported by the disclosure in your patent specification. If your proposed amendment is not supported then it cannot be made and you will be stuck with the language that encompasses the old idea destroying your chance to patent the invention.

Prior knowledge of a document disclosing a similar idea generally results in a superior draft that gives the client a better outcome.

It is prudent to conduct a search of the patent and other literature before drafting the patent specification, so that language of appropriate scope can be used at the outset to avoid destroying your chance to patent the invention.

You can contact Justin if you need advice on Intellectual Property and Inventions.

Important Patents

Ed: The back story behind the feature patent image is that this is one of the inventions that revolutionised the mechanisation of farming.

Harry Ferguson was an Irishman who invented the 3 Point Hitch that solved the problem of tractors overturning when they hit an rock in the ground when ploughing often killing the driver, this also ensure the ploughs constantly stayed in the ground, made the attachment of various implements universal and basically allowed the tractor to drive any implement which could be attached to the 3 point linkage.

Harry built a few of these in the UK where he invented them but they didnt sell very well, he then took it to the US and made a handshake deal with Henry Ford to use this on the Ford tractors, who went on to capture 20% of the tractor market in a very short time.

Eventually Henry reneged on the deal when it became very profitable for Ferguson, Ferguson sued him and got awarded $USD 9 million which in todays money is a great result for a patent payout.

.Ferguson and Ford, the handshake agreement

I like this one in particular as 60 years later I find myself the owner of a vintage Massey Ferguson 35 which amazes me, it is still going like a train and is one of the most fantastic pieces of kit, for a 60 year old tractor it has so many smart mechanical and hydraulic features, starts every time and is tough as an old boot.

 

Fordson 8N

 

It’s a matter of effort

Ryan Pawell

Ryan Pawell

Ryan Pawell is  PhD candidate at the University of NSW and is developing an affordable disposable microfluidic chip to bring down the cost of delivering gene therapy to HIV patients.

He received his BSci, Mechanical Engineering at the University of California, Santa Barbara and led a team of engineering students to prototype a tool for anterior cervical discectomy and fusion.

He also worked in R&D at Inogen developing a portable oxygen concentrator for the treatment of chronic obstructive pulmonary disease.

You can connect with Ryan here linkedin.com/in/rpawell  and see more about his work in the Youtube video at the end of the article

It’s a matter of effort

A few years ago I was a research engineer intern at a medical device manufacturer and after hearing of cuts to the tertiary public education I wondered how the public education system was going to compete with the private system if it had significantly less money. I spoke to my supervisor and he responded with, “I am pretty sure it is a matter of effort.”

Ironically, the business I worked for was started by three undergraduate students in their junior year of college and when getting started the founders lacked sufficient funds to incorporate. Now, thirteen years later the business is valued at over $250 million after a recent IPO. For these ambitious students, it was definitely not a matter of money, but a matter of effort.

While I was there, we were approached by a number of people who were interested in selling components and patents to us that appeared to significantly advance the existing products. However, after reading the fine print and crunching the numbers it was realized these ideas, while both ambitious and admirable, were not feasible. Over the past few years of a few opportunities for joint ventures or research partnerships have popped up and I continue to apply the lessons learned during this internship to each of these opportunities.

Most importantly, always do your due diligence. The internet is a very valuable tool and before spending much time on a new science or technology or when evaluating a potential employer, make sure to use it.

There is no need for an expensive market report or technical evaluation, and I’ve found these reports to lack critical information that may be readily obtained with a quick Google search.  Typically, patents serve as the foundation for new science and technology ventures so this is a good place to start. For a small company, an hour or two is all that is required to answer the following questions:

  • Are there any patent applications in the public domain that are assigned to the company?
  • If so, does the inventor work for the company?
  • What do the patent figures look like? Do they contain vague illustrations or hard data?
  • Do the original patent applications have a solid claim set with increasingly broad claims?
  • Do competing companies have any patents in this space?
  • Are any of these patents granted?
  • Which patents have the earliest priority date?
  • Is there any overlap between assigned patent applications and competing patents?
  • If so, who owns the patent with the earliest priority date
  • Also, have any of the granted patents been successfully litigated?

The point of the intellectual property due diligence is to determine if the company has a strong foundation and if the intellectual property portfolio provides the company with the unfair competitive advantage required to succeed. International search reports obtained during the patent review process are very limited and the legal structure of the patent system puts the onus on the patent holder, thus, even if a patent is granted it is important to do a bit more digging.

A new venture with a solid intellectual property foundation cannot succeed without a significant market opportunity. In tech, this can be verified by generating users, however, for hard goods and hard science it is more difficult. Again, with a quick Google search, it is possible to obtain an overview on a variety of markets. Some market research companies list market sizes and growth rates publicly, others require you to pay for the whole report. This part of the due diligence process should be used to determine if the juice is worth the squeeze and should answer the following questions:

  •  Are the target markets large or small?
  • Reasonably, what portion of that market does the intellectual property get you access to? Could the venture reasonably generate 100 million in revenue in the long run?
  •  Do the numbers from your independent market research match up with those described by the company? If not, why not?
  •  For extra credit, it is worthwhile to call up a potential customer or two and carefully determine if the company is solving an actual unmet need, a perceived need or a non-problem?
  •  Is there anyone who would be reasonably competing with your product after launch currently in the market place?
  •  If so, how far along are they? Series A? Series B? Multinational IPO?
  •  Reasonably, how far away is this new venture from product launch? And, how far might your competitors get in that time?

The third and final part is used to vet the team. This is where social media is great. Many people will have a decent LinkedIn or Twitter presence. Online profiles are self-filled, meaning there is always a bit of room for generous self-promotion so you can use their profiles to identify exactly how honest they are and to answer the following questions:

  • Does each member of the team have some relevant qualifications?
  • Do they have the relevant experience?
  • Do they have LinkedIn recommendations from people outside of their current organization?
  • Most importantly, how do they describe themselves in their profile? Can this be verified? For example, do they list himself or herself as an inventor, but only have a failed patent application for 30 years ago in their name?
  • For extra credit, you can Google their name to read any relevant news or articles?
  • Most importantly, if their online presence is non-existent, what does this tell you?

Conveniently, this entire due diligence process can take place in less time than required to drive to and from a meeting. Most importantly, this bit of the due diligence process can be performed without signing a non-disclosure agreement and can be used prior to establishing a more formal relationship to avoid the awkward meeting or phone call required to decline the opportunity if it does not suit you or the due diligence indicates you should do so.

While the above process may seem unnecessary or somewhat overkill. It is best not to judge a book by its cover, some very qualified and experienced people have proposed new ventures that simply did not add up. Lengthy Ivy League letter trains and brand names on the resume are no guarantee that the venture is worth the time.

This article was written in the context of vetting new venture proposals, however, the same questions should be asked if looking to embark on your own.

It is only a matter of effort.

 

UNSW Video on Ryan’s project

Photo by n_sapiens