Author Topic: Any experience with patents?  (Read 1958 times)

socaso

  • Pencil Stache
  • ****
  • Posts: 698
Any experience with patents?
« on: January 29, 2021, 11:26:51 AM »
This is a pretty diverse group so I'm wondering if anyone here has ever obtained a patent.

I am in the process of developing a product to bring to market. I've been formulating the idea for years and with 2020 being so crazy I took the plunge and started to work on bringing this idea to life. I have a manufacturer currently producing the first samples. Initially I hadn't planned to get a patent at all but I'm starting to think it's a good idea. Right now my plan is to get a provisional patent when the design is finalized and I'm starting to bring the product to market. Then that will give me a year to see how my product does in the market and continue to work on the patent process. I've heard quotes of anywhere from $10k-$35k to get a patent so I'd like the chance to test the waters before making that big a financial commitment. The provisional patent will be a few hundred dollars.

Has anyone gotten a patent before? What were your experiences and what advice would you give?

2sk22

  • Handlebar Stache
  • *****
  • Posts: 1628
Re: Any experience with patents?
« Reply #1 on: January 29, 2021, 03:27:13 PM »
I have dozens of granted patents from my years working in big companies. From my discussions with patent attorneys I have learned that patents can be very expensive to defend. Instead, nowadays, patents are mostly used as offensive weapons by big companies to attack competitors. Are you sure you really need a patent?

Watchmaker

  • Handlebar Stache
  • *****
  • Posts: 1621
Re: Any experience with patents?
« Reply #2 on: January 29, 2021, 04:08:40 PM »
You mention a provisional filing so I assume you are imagining a utility patent, and not a design patent. What precisely are you looking for from getting a patent? Are you wanting to dissuade domestic copycats? International competitors? Create value for potential licensing deals or a sale of the company? Does your potential competition consist of mostly small or large companies? What does the patent space look like in your potential field of invention (are there a lot of similar filings, are they recent, who is filing them)? What kind of sales figures do you think this product could reach? Any chance you can keep the inventive part of your product a trade secret?

My background: My current job is to identify patentable inventions by my company and shepherd them through the patenting process. I have been involved in filing a few hundred patents. I come from a technical background, not a legal one. 

socaso

  • Pencil Stache
  • ****
  • Posts: 698
Re: Any experience with patents?
« Reply #3 on: January 30, 2021, 08:20:54 AM »
You mention a provisional filing so I assume you are imagining a utility patent, and not a design patent. What precisely are you looking for from getting a patent? Are you wanting to dissuade domestic copycats? International competitors? Create value for potential licensing deals or a sale of the company? Does your potential competition consist of mostly small or large companies? What does the patent space look like in your potential field of invention (are there a lot of similar filings, are they recent, who is filing them)? What kind of sales figures do you think this product could reach? Any chance you can keep the inventive part of your product a trade secret?

My background: My current job is to identify patentable inventions by my company and shepherd them through the patenting process. I have been involved in filing a few hundred patents. I come from a technical background, not a legal one.

I have a business advisor for another venture I'm working on and when I mentioned this product to him he immediately said I should get a patent. I have been participating in an accelerator course to help bring my product to market and the person leading the course did not think I needed to bother with a patent. I did a search through the US patent database and also on Google Patent and did not find anything very recent or overly similar to what I'm trying to do. This was a cursory search and I'm not particularly well versed on either of these so I can't vouch for the accuracy.

As far as what I would hope the patent would do, mostly protecting my idea. My secondary thought is that if it does well this idea could be something that a larger company would want to acquire and I thought having a patent would make it more valuable. Frankly, I don't know much about patents so when my business advisor said get one I got panicky because I had thought I could avoid that.

vand

  • Magnum Stache
  • ******
  • Posts: 2523
  • Location: UK
Re: Any experience with patents?
« Reply #4 on: January 30, 2021, 10:13:10 AM »
I used to work for a patent agent many moons ago.
As you have discovered, it isn't cheap, and there are quite a few hurdles to jump through before a patent is granted. It may not be much for a large corporation, but for an individual it can be a no goer.

There are also various jurisdictions that need to be applied to separately if you want worldwide protection.

An obvious solution is to present team up with a company to apply.

Even if you get a patent and find that someone is infringing on it, it can be very costly to then pursue them for recompense.

Furthermore, if you then modify/improve the original invention you may need to apply for a new/updated patent.

So all in all, it is obviously a very big cost, and tbh we had virtually zero private inventors as clients. They were nearly all large and well established companies protecting their IP.

secondcor521

  • Walrus Stache
  • *******
  • Posts: 5847
  • Age: 55
  • Location: Boise, Idaho
  • Big cattle, no hat.
    • Age of Eon - Overwatch player videos
Re: Any experience with patents?
« Reply #5 on: January 30, 2021, 12:21:50 PM »
I have one US utility patent, plus a number of trade secrets and defensive publications.

Getting and defending patents is expensive.

It is also my limited understanding that utility patents must be (or are strongly preferred to be?) filed before any product containing those inventions are made available for public sale.  Something to do with the idea being in the public sphere somehow affects patentability mumble mumble.  So if you're thinking about a patent and thinking about selling your product which embody that patent, you may want or need to consider the timing and ordering of those two events.

I know a tech company I used to work for made strong efforts to file for all the relevant patents before they sold products with the invention in them.  I think it was even a question on the invention disclosure form - something like "Will your idea be used in a product?  If so, which one?  When will it be released?"

Patents can take several years to issue, so I think filing for it ahead of selling the product is sufficient, but again, not an expert.

G-dog

  • Senior Mustachian
  • ********
  • Posts: 19749
Re: Any experience with patents?
« Reply #6 on: January 30, 2021, 12:56:13 PM »
This is a pretty diverse group so I'm wondering if anyone here has ever obtained a patent.

I am in the process of developing a product to bring to market. I've been formulating the idea for years and with 2020 being so crazy I took the plunge and started to work on bringing this idea to life. I have a manufacturer currently producing the first samples. Initially I hadn't planned to get a patent at all but I'm starting to think it's a good idea. Right now my plan is to get a provisional patent when the design is finalized and I'm starting to bring the product to market. Then that will give me a year to see how my product does in the market and continue to work on the patent process. I've heard quotes of anywhere from $10k-$35k to get a patent so I'd like the chance to test the waters before making that big a financial commitment. The provisional patent will be a few hundred dollars.

Has anyone gotten a patent before? What were your experiences and what advice would you give?

I have 15 years experience as a patent agent. 

You don’t “get” a provisional patent, that is an application that automatically expires after one year.
Think about filing multiple provisional patents as you go through your development period and discover things you decide to change. Lock down those changes as early as possible.

Do REALLY GOOD searches now - and keep doing them.  Make sure your invention isn’t already disclosed (in publications, any presentations, or other patent applications worldwide). 

Avoid the “we will write, file, and market your invention” type businesses out there - many are frauds, lots are just crap.  Go to a real patent attorney.

Not sure what kind of agreement you have with the manufacturer, but your discussion with them may have started your one year window to file patents (public disclosure).  Also, changes during development there may make one (or more) of their employees a co-inventor of the final product.  You. Should have an agreement that covers this scenario.

I have LOTS of advice on working with law forms / patent attorneys, as well as patent examiners.

familyandfarming

  • Stubble
  • **
  • Posts: 145
Re: Any experience with patents?
« Reply #7 on: January 30, 2021, 01:47:56 PM »
A million years ago I went through the process of getting a patent for something that a one person company stole before I could figure all of it out and brought it to market. In her defense, I had contacted her to see if she wanted to buy my idea, as she had brought a similar product successfully to market years before. She failed miserably and spent around $30,000 (I think) in the process. The conclusion I came to was, "Not all ideas, though patentable, are money making ideas."

I used the book (before widespread internet use) "Patent it Yourself" from Nolo Press. Here's a link: https://store.nolo.com/products/intellectual-property I think it's an okay idea to have a bit of a background before you spend big bucks.

I remember seeing my invention on the wall of a well-known boutique store at a mall for the first time. I was impressed that she had stole it so well, down to the color I had mentioned to her. I fussed a little, and then months later, read in a trade journal that it was a bust. Better her than me! But, if you have a fantastic idea as good as the intermittent windshield wiper, get going! Mine wasn't!

BTW, the boutique and the mall do not exist anymore...

Edit to add: I didn't actually get (or spend lots of money) getting a patent for that product. She beat me to it. Lucky her...
« Last Edit: January 30, 2021, 01:57:45 PM by familyandfarming »

scottish

  • Magnum Stache
  • ******
  • Posts: 2742
  • Location: Ottawa
Re: Any experience with patents?
« Reply #8 on: January 30, 2021, 07:12:46 PM »
The three companies where I've had patents filed all used a scoring system to try and assess whether an invention should be patented.

Inventions were scored on 4 criteria:

1.  How innovative is the invention?     
2.  What is the market value for the invention?
3.  How hard is it to design around the invention?     In other words, if you own a patent on the invention, is it easy for a competitor to circumvent the patent?    Patents that are easy to avoid aren't very valuable.
4.   How hard is it to detect the invention?     If you can't detect the invention, you can't tell if someone is infringing on it.    This means it's not enforceable  (assuming you can afford to enforce it).

There's another criteria that's more specific to the telecoms business - is the invention related to a standard?     Patents that are required by a standard can become more valuable.

Something to think about, anyways.

I think there's a blog at y-combinator (maybe by Paul Allen?) that expresses some ideas about startup companies and patents.    It would be worth tracking that down and reading it.

KarefulKactus15

  • Handlebar Stache
  • *****
  • Posts: 1283
  • Location: Southeast
Re: Any experience with patents?
« Reply #9 on: January 31, 2021, 08:53:21 AM »
I have never done a patent.

But I follow this blog who happens to be a patent attorney. I linked an article about patents And inventors specifically.

http://livingstingy.blogspot.com/2015/12/why-inventors-never-win-problem-with.html?m=1

He has alot of articles about it.  The general vibe I get is patents are financially challenging for the little guys and easily defeated.  Additionally - add in places like china or other that don't even honor our patent system.   

Watchmaker

  • Handlebar Stache
  • *****
  • Posts: 1621
Re: Any experience with patents?
« Reply #10 on: January 31, 2021, 09:28:24 AM »
I have a business advisor for another venture I'm working on and when I mentioned this product to him he immediately said I should get a patent. I have been participating in an accelerator course to help bring my product to market and the person leading the course did not think I needed to bother with a patent. I did a search through the US patent database and also on Google Patent and did not find anything very recent or overly similar to what I'm trying to do. This was a cursory search and I'm not particularly well versed on either of these so I can't vouch for the accuracy.

As far as what I would hope the patent would do, mostly protecting my idea. My secondary thought is that if it does well this idea could be something that a larger company would want to acquire and I thought having a patent would make it more valuable. Frankly, I don't know much about patents so when my business advisor said get one I got panicky because I had thought I could avoid that.

Without knowing more details, I'll say it's unlikely that it's worth your time and money to try to get a patent. In most circumstances, companies just aren't afraid of an individual inventor's patent: they'll be able to engineer around it, come up with an invalidity argument, or just count on their ability to out-lawyer you if you sue them.

If you're worried about someone else coming along and patenting a similar thing, then (depending on what the inventive part of your idea looks like) simply selling the product may give you good prior art, or you may want to look into a defensive publication (a cheap and quick way of establishing prior art against future patent applications).

vand

  • Magnum Stache
  • ******
  • Posts: 2523
  • Location: UK
Re: Any experience with patents?
« Reply #11 on: February 01, 2021, 01:56:53 AM »
I have never done a patent.

But I follow this blog who happens to be a patent attorney. I linked an article about patents And inventors specifically.

http://livingstingy.blogspot.com/2015/12/why-inventors-never-win-problem-with.html?m=1

He has alot of articles about it.  The general vibe I get is patents are financially challenging for the little guys and easily defeated.  Additionally - add in places like china or other that don't even honor our patent system.

What a great article. Very sobering and illuminating!

KarefulKactus15

  • Handlebar Stache
  • *****
  • Posts: 1283
  • Location: Southeast
Re: Any experience with patents?
« Reply #12 on: February 01, 2021, 10:18:42 AM »
I'm talking out my ass here with absolutely no proof.... But look at yeti and the Walmart brand ozark.  One is 40$ and the other is 5$ and it like a carbon copy.  Like patents are great if you have the money to fight.... But to me it seems more financially effective to just get a product to market and develop a brand.   For all you know the product may not sell.

KarefulKactus15

  • Handlebar Stache
  • *****
  • Posts: 1283
  • Location: Southeast
Re: Any experience with patents?
« Reply #13 on: February 01, 2021, 10:23:52 AM »
I have never done a patent.

But I follow this blog who happens to be a patent attorney. I linked an article about patents And inventors specifically.

http://livingstingy.blogspot.com/2015/12/why-inventors-never-win-problem-with.html?m=1

He has alot of articles about it.  The general vibe I get is patents are financially challenging for the little guys and easily defeated.  Additionally - add in places like china or other that don't even honor our patent system.

What a great article. Very sobering and illuminating!

I strongly encourage OP to read that article.

That guy runs a completely non monetized blog and has no agenda. He has his engineering / law degree, worked at the patent office and also ran his own patent firm for many years. Additionally - he writes personal finance articles and is very value aligned with mustachianism even though I don't think he thinks highly of Pete.

He has many sobering articles about how people think it should be vs how it actually is.

socaso

  • Pencil Stache
  • ****
  • Posts: 698
Re: Any experience with patents?
« Reply #14 on: February 01, 2021, 12:05:50 PM »
I have never done a patent.

But I follow this blog who happens to be a patent attorney. I linked an article about patents And inventors specifically.

http://livingstingy.blogspot.com/2015/12/why-inventors-never-win-problem-with.html?m=1

He has alot of articles about it.  The general vibe I get is patents are financially challenging for the little guys and easily defeated.  Additionally - add in places like china or other that don't even honor our patent system.

What a great article. Very sobering and illuminating!

I strongly encourage OP to read that article.

That guy runs a completely non monetized blog and has no agenda. He has his engineering / law degree, worked at the patent office and also ran his own patent firm for many years. Additionally - he writes personal finance articles and is very value aligned with mustachianism even though I don't think he thinks highly of Pete.

He has many sobering articles about how people think it should be vs how it actually is.

Thank you, I did read it. I don't think I will pursue a patent. I may file for the provisional patent just for some peace of mind during the first year we are trying to launch the product. I looked into similar products and noticed that they mostly did not have patent. One had a patent for a part of the product but not the whole product.

Blindsquirrel

  • Pencil Stache
  • ****
  • Posts: 690
  • Age: 6
  • Location: Flyover country
Re: Any experience with patents?
« Reply #15 on: February 02, 2021, 06:11:52 PM »
 DW is a patent agent and would listen to G Dog. Search the ever loving crap out of your idea and see what Google, USPTO, Bing etc. turn up and follow every link. DW has done a fair few searches (and searching patents is its own little niche and she has access to the best patent data bases and special searching software ) for folks we know and or friends and in all cases she has turned up prior art swiftly. (we are talking a small number hours of expert work max and a couple of cases an hour max.  Would definitely search on your own before investing cash. Could be a fine thing though.

Reynold

  • Bristles
  • ***
  • Posts: 355
Re: Any experience with patents?
« Reply #16 on: February 03, 2021, 10:30:57 AM »
I am a patent agent, and have gotten patents for several small inventors.  There has been some good information in this thread, especially from G-dog, and an important point is that whether you need a patent depends a lot on what you intend to do with the product and how expensive it is to bring to market.  In the Alexander Graham Bell case, consider how expensive it would have been to set up all that infrastructure before you could charge dollar one for any service.  Even for the example Farmandfamily gave, I'm sure the $30k+ spent by the invention thief was mostly to make the product and bring it to market.  A patent is a small portion of that.  For the windshield wiper inventor, if he had NOT had a patent, I very much doubt the car companies would have even made that initial offer of a few million dollars. 

The set of circumstances where it would make sense for you to get a patent is a fairly narrow, but not nonexistant one.  You don't necessarily have to sue to get some value out of a patent, if your most likely competitors are small, domestic ones simply sending a threatening letter saying you have a patent and they are infringing may shut them down.  If your most likely competitors are, like the case with the Yeti coolers, large companies that can get it made cheaper in China, you will need to be partnered with a large company to have a chance of fighting them off.  Clearly Yeti is either not large enough or doesn't have patents broad enough to protect its designs. 

The best option for an individual inventor is probably, as the Living Stingy article alludes to, partnering with a larger company with the resources to 1. Make, 2. Market, and 3. Sell your invention, and take a few percent licensing fee in return.  They may have more interest if you have patent protection, as they could be a more credible threat to an infringer than you as an individual.  They are also unlikely to try to end-run you if you have a patent filed, because it is probably cheaper to pay you a few % than to take a risk that you get mad and sue them, juries actually tend to be pretty sympathetic to damage cases like heartless corporations stealing from garage inventors. 

That said, most companies that actually develop new products usually have more products they would like to develop than they have money for, so it can be hard to get them interested in an outside idea.  Having at least a provisional on file, plus a NDA, would be wise before showing them anything.  Then document every interaction. 

Do be careful with showing this to anyone not under NDA, or offering it for sale, or putting it on a web site to show it off.  Any of those things starts a 1 year clock in the U.S., if you don't file at least a provisional during that time, you can't ever get a patent on it.  Some of those actions immediately bar getting a patent in some foreign countries. 

If you do decide to pursue a provisional, which is low cost, you want to try to get your product manufacturing and potential partner companies lined up pretty quickly, so you, or they, can decide on the more expensive follow-on utility filing during that 1 year window.  I suggest understanding how to do a good provisional application, or its largely worthless. 

I typically have a good half hour conversation with anyone thinking of getting a patent from me so they understand the pros and cons.  I would rather not waste my time and their money if it doesn't make sense for them. 

familyandfarming

  • Stubble
  • **
  • Posts: 145
Re: Any experience with patents?
« Reply #17 on: February 03, 2021, 08:15:21 PM »
One other thing to add. After making a bunch of prototypes in my basement, I took my invention to a local die mold factory. The injection mold was going to cost $10,000. That's when I started to slow down. Did I love it THAT much? And then it was stolen. There is a God.

The podcast "How I Built This" is a great one for insight on how people brought things to the marketplace. I enjoy it!

markbike528CBX

  • Handlebar Stache
  • *****
  • Posts: 1967
  • Location: the Everbrown part of the Evergreen State (WA)
Re: Any experience with patents?
« Reply #18 on: February 22, 2021, 04:15:38 PM »
Unlike 2sk22, I only have one patent to my name.   
We started the process in 2016 and it was awarded in early 2019, much to my surprise.

I didn't think it was patent-able (motherhood and apple pie style idea), but my boss said, "patent it", so I contacted SemiBigCorp patent people and process.
It was farmed out to an outside law firm.  I answered the patent lawyer questions, sent in some drawings and waited.

After the patent was issued, a competitor used much of the idea and beat us to the next contract.   The drawings of their system were basically ours, just mirror imaged.
No challenge was issued, no patent defense done by SemiBigCorp (household name).  As I had retired before patent issuance, I was just mildly miffed about the lack of defense.

Hopefully OP, YMMV.

As I was retired, my first inkling of patent issuance, was an offer for framing, plaque, or other fancy display.

I have dozens of granted patents from my years working in big companies. From my discussions with patent attorneys I have learned that patents can be very expensive to defend. Instead, nowadays, patents are mostly used as offensive weapons by big companies to attack competitors. Are you sure you really need a patent?

2sk22

  • Handlebar Stache
  • *****
  • Posts: 1628
Re: Any experience with patents?
« Reply #19 on: February 23, 2021, 07:46:04 AM »
Unlike 2sk22, I only have one patent to my name.   
We started the process in 2016 and it was awarded in early 2019, much to my surprise.

I didn't think it was patent-able (motherhood and apple pie style idea), but my boss said, "patent it", so I contacted SemiBigCorp patent people and process.
It was farmed out to an outside law firm.  I answered the patent lawyer questions, sent in some drawings and waited.

After the patent was issued, a competitor used much of the idea and beat us to the next contract.   The drawings of their system were basically ours, just mirror imaged.
No challenge was issued, no patent defense done by SemiBigCorp (household name).  As I had retired before patent issuance, I was just mildly miffed about the lack of defense.

Hopefully OP, YMMV.

As I was retired, my first inkling of patent issuance, was an offer for framing, plaque, or other fancy display.



The part about getting mail from the plaque companies was funny - that's exactly how I would typically find out that a patent had been granted :-)

Talking about defending patents: In one instance, I found a feature in Android that was definitely covered by one of my patents. Hah, I thought, we'd definitely be able to nail Google so I fired off an email to our IP department. "Cool down" was the reply, turns out that my company already had a patent cross-licensing deal with Google. Ah well...