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IP, Patent

Don’t File A Patent: Second Edition

My first endorsement

Why would a patent analyst recommend a book advising against filing patent applications? Well, I would be lying if I said I agreed with John Smith’s advice lock, stock and barrel.  That said, there are important, fundamental truths behind his story the demonstrate the importance of counseling inventors on realistic expectations of the costs and uses of the patent system.

I was delighted to write the Foreword to the Second Edition of John Smith’s book, Don’t File A Patent, which appears in its entirety after the break

Foreword

I work with patent attorneys on a daily basis, leveraging my experience writing and enforcing patents.  Taking a unique idea and turning it into a real product is what the patent system is supposed to encourage. So when a successful inventor writes an open letter to the whole world, and says “DON’T File a Patent!” I pay attention, and so should you.

John D. Smith is an inventor who clearly isn’t motivated by the U.S. patent system. For John, the Patent Office symbolizes a series of broken promises. Until researching his book, John was probably largely ignorant of the patent office bureaucracy that most patent attorneys take for granted. John knows what he created, and knows how and why.  I’ve written before that attorneys need to be more acutely aware of how the practice of law actually affects their clients, especially when things don’t go as planned. DON’T File a Patent! offers a rare look at exactly that.

Take advantage of John’s experience to understand what your client will be going through if your mission to obtain a patent fails. Read his reaction to the section 103(a) USPTO form paragraph. Recognize his frustration with an examiner combining 6 different prior art references to reconstruct John’s invention with the benefit of hindsight, with him powerless to do anything about it.

Many patent attorneys convince clients to file patent applications to “protect” their products.  This “protection” is very misleading, and John has figured that out.  DON’T File a Patent! discusses the fact that patents are, at their core, an invitation to file a lawsuit. He writes for the benefit of other inventors, how it is the inventor’s responsibility to enforce his patent.  Read about John’s experience with Trademark litigation. Take note of how familiar John is with the delay and expense of the legal system. Realize the difficulty that collecting judgments presents to your clients who had to dip into their own pocket in the first place.

Read the book, and become a better lawyer because of it.

Patrick Anderson, former patent attorney & Director,  www.patentcalls.com

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Discussion

4 thoughts on “Don’t File A Patent: Second Edition

  1. You have many good points, but a patent is not just an invitation to file a lawsuit anymore than title to your house is just an invitation to file a trespass suit. A patent is best understood a barrier to entry and/or a lock. Most business file a patent to create a barrier to entry for their competitors. A barrier to entry is rarely absolute. However, if the barrier to entry increases your competitor’s costs and time to market, it was a barrier. The next question is will a patent create a significant enough barrier to entry to justify the patent owner’s time and expense.

    Other reasons for obtaining a patent include: 1) increasing the valuation of your company, 2) defensive in case you are sued for infringement, 3) protecting you IP from key employees leaving the company, 4) potential licensing revenue. For more information see http://hallingblog.com/2009/06/03/reasons-for-obtaining-a-patent/

    Posted by Dale B. Halling | March 14, 2011, 12:42 pm
    • “A patent is best understood a barrier to entry”
      Speaking from a market perspective, I agree.

      From a property perspective, a patent may be more analogous to a quit-claim deed than a warranty deed, where government issuance is the equivalent of saying, “If I have the authority to grant a right to exclude to the product, process or composition claimed, I grant such right to [INVENTOR]” while not carrying any covenants or promises as to the authority to make such grant in the first place…

      I am interested in John’s story primarily because it is a reminder that inventors often do not appreciate how, when and why patents are useful, and patent attorneys typically do a poor job of educating them.

      Posted by Patrick | March 14, 2011, 1:28 pm

Trackbacks/Pingbacks

  1. Pingback: Finding A Patent Attorney Takes Time, But How Much Will You Have? « Gametime IP - March 15, 2011

  2. Pingback: Top Infringers Agree – Patents Waste (Y)our Money! « Gametime IP - March 22, 2011

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