Advice for first-time inventors from a patent engineer
spectrum.ieee.org
spectrum.ieee.org
First you have to phrase whatever your technology involves in a legal vernacular that is weirdly constraining and rarely maps well onto what the thing in question actually does. You always have the sense that you're playing a game of legal-mumbo-jumbo performance art more than actually describing an invention.
Second, you then have to interact with patent examiners. Some are great, many not so much. One I encountered was possibly the dumbest person I have ever met. Thick as two short planks with two extra short planks nailed on.
Third, the process just seems to go on and on. The examiner will make an objection or point to prior art. These actions may have little basis in logic or common sense, but they do seem to move pieces of paper from one box to another. Meetings occur with the examiner and/or their supervisor where your jaw will drop at how little anyone involved understands the technology being claimed.
You can cut through a lot of this with good legal counsel, but that is really just contributing to the gamesmanship of the whole process.
And, in the end, a patent is a pretty meaningless thing. A portfolio of defended patents might be an "Intellectual Property" asset (what an awful term). But so many people have to jump through the process just as a defensive act so they have a sliver of reassurance that using the novel thing they came up with will not lead to immediate cease-and-desist injunctions from IP-fortified competitors. What a collective waste of human creativity.
My first patent was filed a few weeks ago, with consultations with a patent attorney. This is pretty much the highlight of my takeaway as well.
It helps to have a good understanding of the English dictionary and thesaurus to be able to negotiate wording. But yes, it's still mumbo-jumbo. Inventions might be "obvious" to someone else in the trade, but it's hard to say if it's going to be obvious if it isn't described using that trade's mumbo-jumbo instead of Legal mumbo-jumbo.
Having a patent is not a defense to an allegation of infringement and if that's what your legal counsel told you, then you should seek new counsel.
Yes, it's all a bunch of bullshit, but that is what you get when you have a flawed notion of how inventing works.
It's not needed at all. Valid prior art is a defense to patent infringement because it outright invalidates their patent. Full stop. That's the best leverage out there. It's better than being able to prove non-infringement, because the patent remains in that scenario. So when you have good prior art and they threaten to sue, you say "okay, I'll invalidate your patent in a motion to dismiss". If you want to countersue, now you risk your patent being invalidated and still being found liable for infringement.
> If they sue you, you could potentially countersue them for patent infringement.
Maybe? It depends on the patent and their practice. Just because someone accuses you of infringing doesn't mean their practice infringes your patent. It doesn't even follow at all, actually.
>Yes, it's all a bunch of bullshit, but that is what you get when you have a flawed notion of how inventing works.
I disagree and I'm not going to take your word for it considering that everything wrong I've pointed out about your posts. It is ironic that you use the phrase "flawed notion."
The patent is beside the point of the business of inventing and bringing products to market. It's a legal weapon, not a tool to encourage commerce.
Maybe? It depends on the patent and their practice. Just because someone accuses you of infringing doesn't mean their practice infringes your patent. It doesn't even follow at all, actually.
It's not about protecting your inventions. It's a legal weapon.
I'm not sure how this is responsive to my comment, which was directed at correcting your misconceptions about how patents work and are used. I think some people would disagree that it doesn't encourage commerce. Were it not for patents, many inventions would be trapped under trade secrets and would never have been disclosed to the public at all. It's also an odd point to make to me as I never suggested that a patent was a "tool to encourage commerce."
>It's not about protecting your inventions. It's a legal weapon.
Yes, a patent is a legal tool. You were the one that suggested owning a patent was a defensive tool, which I explained to you is not really true, most especially in the context you provided of countersuing.
It's a legal weapon because if people use patents, you should have a patent portfolio just to be able to conduct business if money is no object.
I'll concede that it's not really viable for individual inventors and entrepreneurs, especially since lawyers are expensive and energy and effort are better spent elsewhere. Better hope you slipped by unnoticed and never get sued then.
For the individual lawsuit, sure, owning a separate unrelated patent does nothing for you. The lawsuit will be decided based on the facts of the case and the claims of the patent.
But in terms of applying leverage to get the plaintiff to drop their lawsuit, saying "We'll countersue you for billions in damages. You wanna go, let's fight it out in court and we will ruin your business" can be pretty effective. It's sorta like if your car gets scratched by a mafia don in the parking lot, you insist on taking him to small-claims court for a few hundred in damages, and then a few thugs show up on your doorstep, hold a gun to your head, kill your dog, and are like "Do you still want to continue the lawsuit? It's your right, but we can make very bad things happen to you."
This entire conversation is in the context of general advice regarding patents and you are here insisting that the strategy of two of the largest companies in the world serve as model advice because some of their employees work here.
Here's the post I was responding to:
> But so many people have to jump through the process just as a defensive act so they have a sliver of reassurance that using the novel thing they came up with will not lead to immediate cease-and-desist injunctions from IP-fortified competitors. What a collective waste of human creativity.
So many do not have to do this. For so many people this is beyond the practical. It's only relevant to the people running Apple or Samsung to collect these portfolios. It's not practical advice for so many people.
True and true. In some ways perhaps that’s the point. It is a game of sorts, it is business competition; businesses temporarily monopolizing business on inventions in return for disclosing them. And it makes sense that legal protections for businesses are better & easier for those businesses when they spend money on lawyers, if a little pessimistic. Unfortunately the system is somewhat motivated to try to cut out people who can’t afford lawyers.
You mentioned bad/dumb patent examiners. I’ve never worked with them and only worked with patent lawyers, and I have to say I’ve been constantly impressed with their ability to absorb, understand, and describe highly technical work in legalese (and yes the language is sometimes performative and can sound funny to engineers). Teams creating these inventions take months and years to make something patentable, and when I think about how the lawyer’s job is to understand these new inventions in a short amount of time, over and over, week after week, I feel like they have a hard job and I’m routinely surprised at how well and how quickly they understand it.
This is one of the saddest aspects: so much high-value effort and skill towards an end that, in the whole, I view as a massive drain and retardant on human development.
You may be thinking about old patents where people wrote real engineering information with real details on them that excluded non-working alternatives. Patents are not like that anymore.
I think this speaks to the scale of the economy. There is all this waste. Soooo much waste. And patents are just one small aspect of the constant waste. And yet all these businesses and people, in aggregate "the economy", consistantly make money and progress and invent more. It's impressive.
And still, yes, so much more could be possible.
The world does this despite the patent system. Not because of it. If the patent system were to disappear today all that invention would still go on. It would just put a lot of lawyers out of work and make a bunch of rich companies CEOs nervous.
Look at software: It existed for decades and decades without patents and the technological progress in that field vastly surpasses that of any other contemporary science/technology. Then we tried applying patents to software and it did nothing but create a giant mess, destroy small businesses, and make a bunch of patent attorneys (and their friends) rich. There is literally no benefit to society from software patents. It is 100% negative.
Of course this assumes access to lawyers who are familiar enough with the subject matter. But if you don't have that, then you're screwed, and your patents will be weak.
In my submissions to the patent lawyers, I have a section such as "proposed claims" and I write them in conversational language. I explain why I think each claim is important. This is also useful when other people such as managers have to be involved in deciding whether an invention is worth patenting or not.
They're an obstruction to technological progress, not a help, and a mechanism by which parasitic actors (lawyers etc) can leech of those who're moving society forward (engineers etc).
The solution to stopping competitors copying your stuff can, should be, and is, technology, not statutes.
Unfortunately once something's a statute it's a herculean task to undo it, in stark contrast to engineering - you undo bad things by unilaterally making new good things.
I am not a layer not patent attorney, but I have extensive experience as a former asset manager of a IP portfolio of an international stock market traded information company and inventor/co-inventor on multiple US and non-US patents and patent applications.
This sentence is poor advice, since the one-year rule exists only in the U.S., whereas other countries have stricter rules. So it is recommended to always keep things secret (meaning you can only tell people under NDA about it) until a patent application is filed. You will normally want to be able to exercise your patent rights (a government-granted, time-limited, territorial monopoly) in multiple jurisdictions, not just the U.S., as your competitors will likely sit not just in the U.S. (if you file only in one country, people can work around your patent by using the method disclosed therein in another, unprotected jurisdiction instead, which is perfectly legal).
Another piece of advice, namely to file a provisional application first, is only advisable if you are not quite ready to file the full application, yet you are afraid someone else may file first. In most circumstances it may be smarter to file a full application as the first action; the reason is that no new material matter may be added to the provisional application, and in the course of writing and "fine tuning" the language of the final application, one often wishes to include additional matter. To sum it up, a provisional freezes the scope of the application, while not providing you an earlier "priority date".
You need to understand IP well to play this game; most people don't. It's also a game with large capital requirements ($100k/lifetime of a patent, including extension fees, foreign filings and translations) and very long time lines (double decades rather than weeks). But if executed carefully, a single transaction (case of patent litigation or licensing) may bring an IP owner more $$$ than they may earn with their normal operational business.
Wasn't this rule retired? I vaguely remember something in this regard.
"It's also a game with large capital requirements "
True. And many BS patents from big corporations are getting granted because their lawyers fight day and night to have it granted. And many solid patents from single inventors get rejected. The patent examiner is just lazy, likely does not even read your applications and rejects it on grounds that make it obvious that he has neither, read nor understood your applications (dont ask :-) ). While this can be fixed, it leaves your skeptical about the whole system.
I comment in geneal support of this advice.
We have started to submit a presentation that would be used for an examiner interview as our provisional application.
In the process of doing some research on patents a while back I came across this article [0] which really resonated with me.
[0]: “Against intellectual property” — Brian Martin, https://documents.uow.edu.au/~/bmartin/pubs/95psa.html
I am not convinced an independent inventor is able to ever file a patent that can not be countered from another patent that had no intention to cover the inventor's use case when written, it's just a useful tool to protect the filer in any and all scenarios.
Does anyone - except patent specialists who make their living from this - see value in the patent process at all any more? We're a long, long way from the original intent of the process these days, it seems.
I'm not sure what's so difficult about this concept in the age of verifiable chains of communications and transactions.
Put your great idea up on arxiv and it becomes prior work which the patent office can find. Or publish it in some conference. Etc. It gets officially timestamped and you're all done. You don't need any of this useless verifiable chain of communication nonsense. The world figured out how to do this centuries ago in far simpler ways.
Whether the patent office finds your prior art or not, that's a whole other question. They may still grant a patent no matter how obviously it overlaps with prior art. But then you can use your prior art when they come to try and shake you down, if it comes down to that.
Patents also turn "I got crushed by Google" stories into legal battles done by patent trolls that often have a decent payoff.
Also, are you genuinely saying that US district courts are corrupt? On what basis?
What their point is. I don't know who sable is, I'm not a mind reader and searching would just require me to make an assumption as to what their point would have been.
> Sable is a patent troll who very famously sued Cloudflare, and recently lost. What else could they possibly mean?
I don't think that's what the word famous means!
All things aside, I don't think pointing to one instance of this occurring is a great argument. Mind you that the invalidity issue went to a jury which means it escaped at least 3 rounds of determination by a judge, including a JMOL. Meaning that the judge felt there was enough evidence for a jury to be able to find the patents were valid. So, again, I don't think it's the slam-dunk some people seem to think.
For a well-known case, consider Hangprinter, by Torbjorn Ludvigsen: a 3D printer without a frame. He had built it and documented the whole thing in YouTube videos. Then someone heard of the idea and went ahead and got a patent on it.
Torbjorn turned on the Internet for help, started a GoFundMe campaign to collect resources, and with the help of an experienced attorney, managed to have the patent limited so much that does not affect almost any other printer. The "experienced attorney" part was the most crucial, in my opinion, and he could not have chosen anyone better than the one he used.
You can read all the details in the entry named "Patent Got Narrowed 5-8-2023" on Torbjorn's blog https://torbjornludvigsen.com/blog/
My assumption was that tagline meant what to said, that it didn't matter when you create or publish something, that the government was open to giving a monopoly to whomever jumps through the legal hoops first.
...which has been a major load of salt I've carried around with me.
First-to-file and first-to-invent are instead what happens if you get two different people who try to file for a patent before that point. In a first-to-invent system, there's an adjudication process that's going to look at all of the internal records to figure out who "invented" the process first (which, in the absence of evidence, is going to default to the first person to file anyways). In a first-to-file system, the first person to get their paperwork in the door is going to get the patent.
This doesn't mean that an unscrupulous person gets to look for public disclosures and rush their own patent applications to beat out the original inventor. You still need to demonstrate independent conception of the idea (although this would likely only be demonstrated in the context of an actual trial).
[1] I don't remember it's length, but I want to say it's like a year.
There are nuances however with prior-filed patent applications. While such applications are not immediately public, once they are published (typically 18 months after filing), they become prior art retroactively, as of their filing date.
Even if a person independently conceives of a patentable idea, they shouldn't be able to get a patent for it if there exists prior art (although it obviously happens sometimes because the patent examination process isn't perfect).
IPRs and PGRs can also be used for this, and are cheaper than doing it at a full-blown trial.
These rules only apply when two people with the same invention both file a patent. If you publish something on Monday and someone files a patent (really - a provisional) for it on Tuesday, you are prior art to their patent and can be used to make it "obvious."
1) While many do indeed file for the broadest patent possible, in my (limited) experience so far this makes an application much easier to reject. The application that I've seen so far that was the most difficult to reject was made difficult by extremely specific claims.
2) The best argument I've ever heard in favor of the USPTO is that it allows small inventors to hedge market competition risk. Imagine you are an AI startup, developing a novel model architecture for a domain-specific application. You file a patent for the method, and once your product begins selling and Microsoft creates a fast-follow product you can sue. Microsoft will have much more to gain from buying your company at that point than giving up the market to some plucky dorks with a Patent, and your IPO is just the cost of doing business for them.
3) To the extent that "it is very difficult to get a man to believe something his paycheck depends on him denying", I am aware of a personal incentive to argue for the utility of the USPTO. Idk what else to say besides offer me a job on your engineering team and I'll quit immediately. (edit: actually I do know what else to say: If you don't care about patents don't apply for one. Fully optional endeavor. If you do care about patents, then I am here to help.)
> The application that I've seen so far that was the most difficult to reject was made difficult by extremely specific claims.
Tradeoffs: the narrower the patent, the less useful it is, because it's that much easier for your competition to just tweak something inconsequential.
> once your product begins selling and Microsoft creates a fast-follow product you can sue
Not that easy - you need to be able to afford a patent law fight. Big companies like MS might just take it anyway and risk the lawsuit, because they can afford to drag it out longer than you can stay solvent.
On the other hand, if you go the trade secret route, Microsoft can't fast-follow because you didn't publish the whole thing.
>Not that easy - you need to be able to afford a patent law fight. Big companies like MS might just take it anyway and risk the lawsuit, because they can afford to drag it out longer than you can stay solvent.
People bemoan plaintiff-side patent litigation financing but this is exactly why it exists and is a good thing, imo.
The very _concept_ of software patents should leave a bad taste in anybody's mouth.
Getting that job was almost as easy as getting a software job in 2019. I had a masters in EE and a few years of SWE experience. I sent out 5 applications to top local law firms, got 3 interviews, and one offer over the course of a month. Apparently, the bulk of people in that role were post-docs in bio/chem who weren't excited about managing student loan debt while being underpaid lab people. (The EE/CS contingent was 5 out of 30 in the role, and I was the only one with actual SWE experience, so it gave the me and the firm creditability with inventors)
My salary matched my SWE salary, I had my own office + secretary, and the firm paid overtime and law school tuition. They also charged $250/hour for my time. I also only lasted about year in that role since it was very isolating and not collaborative.
The coolest part of that whole experience came a couple years later when I went to dinner with my wife, her close friend, and the friend's serious boyfriend. In the "what do you do" chit chat, he mentioned working with someone on a new way to brew and chill coffee quickly that they were close to bringing to market.
When I asked if it works like [describes invention exactly] his mind was absolutely blown away. As it turns out, I wrote their patent.
Infact the patent holder can file a lawsuit against a startup. Now even if the startup can prove that the patent is invalid, it has to spend precious money on the lawsuit.
Does this mean if I disclose an invention, that nobody can patent it after a year?
This is my explicit reason for writing about BitGrid out in the open, since 2004.[1]
If it turns out to be useful, that's awesome. If not, it's been a fun mud ball to polish.[2]
Others can. But during their application who is going to tell that there is a prior art? Patent offices only do basic checks on existing patents and not on the wider internet.
Once the others get their patent, you can appeal [1] it.
[1] I am not sure its the right word
You can challenge the patent at the USPTO to instigate an in partes review.
You can also raise a defense of 'the patent is invalid' if the patent owner tries to sue you.
i.e. if you disclose your IP publicly, there is zero protection from getting scooped by competitors and trolls. If you NDA more than 17 entities, than it becomes public domain in some countries.
Patent-pending status is somewhat of a more economical tool, and buys time to entrench a manufacturing product line in a market. A fully complete patent is only useful for litigation and customs enforcement... and can't be revised to cover sleazy IP workarounds.
We only won about 4 out of 7 international scope patents I drafted, so YMMV. =3
> Now, the patent system may or may not still retain some marginal utility in a Fortune 500 enterprise. But, as a Midnight Engineer or other small scale startup, nearly any involvement whatsoever with the patent system in any way, shape, or form, is virtually guaranteed to cause you a monumental long term loss of time, money, and sanity. I'd guess the main problem is the mythology that has built up around the patent process over all the years. A mythology which no longer applies to the Midnight Engineer or to a small scale startup.
For those who don't know, Lancaster was for decades one of the best-selling authors on electrical and electronic engineering, with columns in popular magazines. He was constantly providing consulting services to engineers who were designing products, too. I don't know if he ever had a commercially successful product himself other than his books, but I still think his reasoning is worth weighing.
If that doesn't tell you it's an extortion racket on anyone with useful ideas then I don't know what will.
In US someone else can still patent your invention if you didn't. That's where the extortion is to patent it.
ANS encoding was invented and published by it's inventory without patent explicitly for everybody to be able to use it.
And yet Microsoft just patented a subset of it. It was granted a patent on a thing they didn't invent and was already published for the explicit goal of leaving it patent free.
The trouble with a weak patent system is that things which used to be patented are now trade secrets. How Waymo and Tesla do self-driving is a trade secret, for example.
This would eliminate a whole range of ills with the current system that seems to do little except keep lawyers employed.