Do we need it?
Does it work?
Have you used it?
Can we enforce it?
All your questions will be answered tonight * after you fill forms A1,A2 and B7, send them to our main office, wait 3 months for approval, reapply forms E and F, contact our legal suport team and ....
Your friendly (non-US) physicist and patent attorney here
>Do we need it?
The debate will never end. Considering the alternative for recovering investment in R&D is use of trade secret I'd say we do need it.
>Does it work?
Yes but not perfectly. Contrary to what some think the system is continuously changing, particularly due to case law.
>Have you used it?
I do this for a living.
>Can we enforce it?
Yes but it can be painful. The Apple disputes are well known but actually far, far from the norm. Usually it is quietly settled before reaching litigation stage and when litigated frequently settled out of court. Just because Jobs wanted to "go thermonuclear" and a lot of journalists have Apple devices a lot of people now have some strange impressions of the system.
The 1+ billion settlement was big but the Nokia settlement was far bigger but little reported.
>All your questions will be answered tonight * after you fill forms A1,A2 and B7, send them to our main office, wait 3 months for approval, reapply forms E and F, contact our legal suport team and ....
I think you need a new counsel.
I looked a bit into the patent system few years ago, but I didn't do anything back then.
I still have a few questions, I'd like to hear your take on it.
1. Do you think that filling a patent without an attorney (especially the first time) is suicide?
Is it reasonable for a company with limited funds?
2. How much does the whole thing typically cost?
I've read about 10's of thousands per patent, with several patent required per market item.
3. When some people patent an entire technology (ie some fancy method to cut metal sheets, or a microchip lithography technique) can you just ignore them?
Will they come after you/block your sales?
Especially if their total assets are in the low 10s of millions?
I'm asking because I'm aware of a technology that currently only a single company uses, and overcharges a lot for it. Could moving the manufacturing outside EU/US help avoid legal issues, or do people actually block the imports?
4. Are provisional patent applications riskier than trying to keep a trade secret?
Do you think a start-up should get enough capital for a good attorney before applying, or do it with a cheap/no attorney, before demonstrating the technology (and risking to reveal the trade secret)?
1: Unless you have a lot of experience it is suicidal: it does disclose your invention but is unlikely to achieve the best possible protection.
You could however use some of the self help guides on he net to get a clearer written statement on what your invention is. Strange as it may seem it is a common problem that the inventor does not disclose all the relevant parts to the patent attorney.
You should particularly focus on how your invention differs from prior art and what the technical effect of these differences are. Also you should consider what is the simplest, most primitive embodiment of the invention that (just) work, and what your preferred embodiment is.
2: We are in the service industry. You are our highly valued client. This means you are the boss and should shop around a few places for the best deal. That deal is far more than cost alone, rather you need to find someone you have a good chemistry with, someone you will work well with because you will be in this for a long time.
Cost is hard to state upfront since there are expenses throughout the process which can last about 20 years.
First and also a major cost is drafting. 5 - 10 k$ with pharmaceutics in the high end of this.
Next is filing: less than 1k$
Reporting and amending claims, 2 - 5 rounds at 2k$ each, roughly. The number of rounds before the Examiner is an unknown. Some times it is like pulling teeth.
At 12 months from filing is the deadline for international filing, a PCT application is about 5k$
At 30 and 31 months from filing date (called the priority date) is the due date for national/regional filing costing another 5k$ each.
So all this is spread out over many years.
Not even the biggest players go all out on filing, many are selective about what is also filed abroad. Sometimes they stop after the PCT application and drop national/regional phase, or perhaps pick a single country or region
OK, that was verbose so I had to split it.
3: people and particularly sales people say they have patented an entire field. rarely is that the truth. It will however get the press blaring.
If they have a patent they will try to stop you since they have to do so in order to avoid passivity and having their patent unenforcable. You can set up operations in a place they have not filed a patent. You can also see if their patent can be cancelled but keep in mind that this act will open up for full competition also from low cost countries. That might not be what you want. far better then to invent something improving on their technology.
Their assets can be low but they can still be dangerous to you.
>paid by taxpayers
So all taxpayers across the world have paid for research done at one university? Or did you mean that research at US universities paid for by US taxpayers should also be free to any other countries?
I am not saying that would be wrong; I just suspect you haven't considered who is paying for what.
Also surprisingly many sneer at research thinking all is well enough already - until they grow old enough to need more medicine in which case they expect it just to materialize out of thin air.
>... bought and paid for by the corporations, what could possibly go wrong?
OK so I am part of a conspiracy. Just where do I join up?
Realistically, big corps have less need for patents since they can apply a lot more energy money and resources to whatever interests them. That is how Microsoft could smother Stacker. Patents are the means for the smaller guys to stand up against the bigger actors in the market. If you were to check the patent blogs like, say, Patently-O you wold see many comments that big corps are trying to weaken the US patent system.
OK, time for point 4 on the list of questions.
Provisional patent applications are used to get an early priority date and is not a replacement fro trade secret. You have to start by asking yourself if you want to keep the invention protected as a trade secret or as a patent. If the invention is a process you do in house it can be a trade secret with good chances of keeping it as a secret (ref. Coca Cola production is a good example). If it is something in a product that is sold it will be hard though counter examples exist. I know of components that are trade secrets that have been in use for more tan 20 years and still working well.
If you land on trade secret you still need to protect it well and there are many rules to follow, it is far from as straight forward as many still believe. Also you need to keep a fallback position for prior use defence.
If you go for a provisional and you want to file with the European Patent Office you need to make sure the provisional patent application complies with sufficiency requirements. Otherwise you end up with "self collision" and a rejection decision.
I think you need good legal advice early on, someone who can give you good advice on patenting but also trade secret handling. Otherwise you risk the secret being revealed with no protection and that genie cannot be put back into the bottle.
Sure I am not entirely impartial but I like to think too I have some experience in working with startups. As I wrote earlier do ask several patent law firms and get a good quote and someone you will like to work with. A good patent attorney should serve you.
Not OP but if you want to live a longer better life you will need better medicine and to do that the big pharma will want to know they can recoup their 15+ years investment in development which in turn requires patent protection.
Now we have the patent cliff (look it up) and big pharma is losing confidence and fires scientists by the thousands. Sandoz fired 2000 a while ago. That means lesser chance of finding new compounds.
The risk is that big pharma goes for generics only and massive marketing.
Sure one could think up alternatives to patenting but so far all I have heard of is hot air.