Month: June 2020

“Searching for prior art is the number one function of an examiner,” Najee-Ullah told me recently in a phone interview. “They are not there to scuttle hopes and dreams.”

For an invention to be patentable, it must be new, meaning it has not been made public. Essentially, prior art is evidence to the contrary. It includes patents as well as commercial uses of the invention, published articles and other public disclosures.

Patent applications that have value include variations. Searching for prior art will help you come up with variations. In fact, it’s an essential component of studying the market, which is the first step I recommend to anyone who has an idea. Use what you discover in prior art to help you hone in on your invention’s point of difference, which is a fantastic selling tool.

When searching for prior art, you must adopt the mindset of detective. It’s all about peeling back the layers. Moving forward, I will be writing about how to search for prior art specifically, as well as when to let prior art stop you from moving forward.

6 Tips To Get The Most Out Of The Patenting Process

1. Teach yourself how to search for prior art. Even if you end up deciding to hire someone to help you, every inventor and entrepreneur should develop their own basic understanding. When I had my first ‘big’ idea, the two non-provisional patent applications I had my attorneys file right away turned out to be worthless. Why? Because the Washington D.C. firm I had paid to do a prior art search had failed to find two patents that described my invention exactly.

My attorneys told me to move on, but I poured over those patents because I couldn’t let it go. Eventually, I realized they did not include a method of manufacturing, which I could — and did — patent. Take your fate into your own hands.

2. But don’t obsess about finding every bit of prior art, because you won’t. It isn’t a good use of your time. Even when Najee-Ullah visits the USPTO facilities in person to use their software for prior art searching, he said the examiner often finds something he did not.

“That’s their job. That’s how they protect the public,” he stressed.

Here’s some additional food for thought. My longtime patent attorney John Ferrell (who primarily advises technology startup companies) told me that he discourages founders who have big ideas from spending much time researching prior art. The risk being, if they find something, they might give up.

3. Provide your attorney with the best information possible. Najee-Ullah and I agree: Your representative will only be as effective as the information you provide him or her with. You must be the expert. What is your plan for commercialization? Are you truly able and ready to start and grow a company? Have you considered licensing? Other forms of intellectual property might serve your goals better.

4. Take the time to identify the right patent practitioner. Finding someone who is going to be honest with you is best, Najee-Ullah said. Before you begin working with a practitioner, do your research. Get referrals. Read patents the practitioner has written. My student Diana Hertel showed me a great tip.

Visit USPTO.gov and click the green box on the upper right side of the page labeled “Quick links.” Under the column Patents, click PatFT. Then enter the practitioner’s last name in Term 1 and select “Attorney or Agent” in Field 1.

That way, you can find out how recently the practitioner has had a patent issue. You can also assess their experience. When you read a patent, do you understand what is being claimed? It’s important that you do.

Najee-Ullah encourages people to go one step further, and try to determine whether the technology in question was commercialized. How so?

You should also do your due diligence and confirm the practitioner is in good standing with the USPTO.

5. Seek out a representative (be it a patent attorney or a patent agent) who plays well with others. There were times when Najee-Ullah can remember being screamed at by a practitioner for an hour during an interview. Needless to say, the issues at hand were not addressed, let alone resolved. Make sure the individual you hire has the right temperament to get the job done. Your practitioner must be able to dialogue with the examiner.

“Respect the rules and the process,” Najee-Ullah advises. It’s not that examiners want to be tough. If they miss something, and someone else catches it later on, they’ll face consequences, he explained. They’re expected to be very thorough.

6. Take advantage of the resources the USPTO offers — there are many. For example, Najee-Ullah encourages inventors to schedule a meeting with their examiners. Look at the experience as an opportunity to negotiate, not attack.

“Examiners will help you,” he said. “During your interview, give them something to look at. Ask them, ‘What do you think of these features?’”

The USPTO offers free legal assistance to under-sourced inventors as well as classes, events, and trainings.

At the end of the day, you must take responsibility for learning about the patent process. No amount of money can replace education and insight.

and “I can’t wait to buy that!” The product clearly solves a long unmet need, and the world may, in fact, beat a path to the door of whomever successfully gets this product to market. But therein lies the rub: who and under what circumstances will this product get to the consumer?
To this end, the potential client, let’s call him “Bob,” has been a working professional in a particular building-related area for many years. His experience gives him unique insight into problems that exist for consumers in this space and, just as importantly, how to meet longstanding needs with functional product solutions. However, Bob has no desire to be in the product business. This means that in order to get the product to market, he must find someone who is willing to do the hard work of both developing the product and creating a market (i.e., finding customers) for the product.
In my experience, the latter is often the hardest aspect of successful product introduction, but both of these efforts require substantial risks to be taken, often with long-odds. If the product folks, let’s call them “Acme,” are successful in developing a strong customer base for an innovative product—which is the whole point of the risk-taking exercise of getting a product to market—invariably, competitors will want a piece of the action. Notably, these competitors would be required to take fewer risks, which means less investment to achieve as good, or even better, financial returns on their investment, if only because these competitors were effectively given a roadmap for success by Acme. The overall negative effects for Acme may even be worse because it may now be competing in a price eroding market, with these lower prices creating fewer profits. If Acme had realized at the start that its expected profit margins would not be achievable, it is possible that its management would not have even entered the market with Bob’s innovation.
Which now brings us back to Bob, his patent, and whether he can extract any value out of his efforts to date, given his lack of desire to be in the product business. We can use an analogy here that aligns with the understandable world of real estate.
Consider a house that is for sale that exhibits considerable flaws: it has a cracked foundation, the kitchen and bathrooms are outdated, and the roof leaks. If the house is in a desirable neighborhood, those problems may be irrelevant to a buyer because the neighborhood will drive a buyer’s decision. But, if the house is in a less desirable location, other factors will drive a buyer’s decision, for example, whether the flawed house can be renovated for a reasonable price to allow the house to drive a next purchaser’s buying decision or whether the neighborhood will be up and coming in the future such that it might make sense to buy the house and hold it for a market upturn. In either of these situations, the buyer’s tolerance for risk is different from that of the person buying in the desirable neighborhood. All things being the same, the latter will likely be willing to pay much more even for a house with significant flaws.
Much in the same way, a buyer of a patent is either “buying because of the neighborhood,” or “buying in anticipation of something good happening in the neighborhood.” In other words, if there is already value in the patent because there is an existing product with customers, the risk of buying that patent (and the attendant business) is markedly less than if there was only a patent that is not aligned with a business today. Moreover, if there is no product in the market to drive value, the “condition” of the patent (e.g., claim scope, attorney competence etc.) will be of more significance because that is what will drive the price paid today for that asset.
For Bob’s innovation, I could see that his concept was potentially a big deal for the relevant consumer but that the patent covered only a small aspect of the value brought to consumers by his concept. Also, unfortunately, the work done by the attorney to protect that aspect was not very competent. Thus, Bob’s patent was both too narrow and too flawed to drive value in a patent licensing or sale context at least because the risks for someone bringing a product to market that was aligned with that patent would be high, which would mean that a price for that patent would be set very low by a potential buyer. In short, I had to tell Bob that it made no sense to attempt to bring the patent to market.
This was tough information to give, but I am happy to say that Bob accepted my assessment with grace and with a learning attitude. The good news is that Bob’s innovative insights can still be leveraged to generate patent protection that is meaningful. This is possible because his patent did not disclose these innovative concepts. Ironically, this means that the weaknesses of Bob’s patent create business strength that can, in turn, be leveraged to generate valuable patent protection that aligns with that business strength.
After our call, Bob is no longer a “potential client,”– he is an actual client. We plan to generate a series of patent filings that allows him to protect the value obtainable from his innovative thinking. The focus of our patenting efforts will be on the unmet customer needs solved by his insights, as opposed to products that can be defined. Moreover, we will endeavor to hire competent patent people to execute on our patent strategy to make it more likely that Bob will obtain patent protection that will survive patent due diligence with value intact.
Bob and his team now understand that the goal is not to get a patent, but to get a patent that covers customer solutions that are embodied in functional products. This means that he and his team will also be working on generating customers for his innovative product concepts while the patents are being obtained on an accelerated basis. I look forward to reporting to you in a year or so that Bob has not only obtained broad patent protection, but that he is also in conversations with a licensee or buyer for his innovative and well-protected product(s) to which customers are flocking.