There are companies within any industry that are inventive and there are those that are not. Inventive companies value innovation as company treasure and will provide a means for its capture.  Inventive companies have protocols for the screening of new intellectual property and the decision to patent, retain as trade secret, or disclose an invention.

While it is possible to be smart about patenting, it is also possible to be quite foolish about it. It is very easy to expend large sums of money over the life of a patent to get it issued and to protect it from trolls and other challengers. If the patent covers technology that is the core of your business, then this is justified. But if the patent claims processes or compositions that provide only a minor uptick in value, the assignee needs to look inward and decide if the possible downstream opportunity costs outway the patent expense. The answer is rarely clear cut since it involves predicting the future. Accordingly, most choose to fail on the conservative side and elect to file a patent application.

Many companies will have a set of core technology patents around which they file “picket fence” patents to ward off outside innovators who may claim conditions or variations that were not thought of initially. Companies with large legal budgets can afford to do this.

When you invent something in a competitive field, there is immediate pressure to protect the invention. A monopoly on an enabling technology can rocket a company to a dominant position in it’s market. Likewise, loss of the right to practice can be a disaster.

There is something that I have come to call “patent sickness”. Someone afflicted with patent sickness will present symptoms of paranoia or mania. Patent sickness is like gold fever. Perfectly intelligent and well meaning people can succumb to it and become lost for months or years.

First, I’m not a patent lawyer or agent. But I do find myself strangely enchanted by the Byzantine ways of this league of office workers and their Masonic-like temple, the USPTO.  Just so there is no misunderstanding, there are many legitimate reasons to get a patent. I’m not against patenting. But I do believe that inventors and assignees need to be smarter about the patenting process and more circumspect about the need to patent.

It is possible to make bad choices from the very start. One of the worst things you can do after you realize that you have invented something is to run directly to a patent lawyer. When you are a hammer, everything looks like a nail. When you’re a patent lawyer, everything looks like an invention. OK, that is an exaggeration, but only slightly. Many attorneys do have your best interests at heart, but always remember that they are in the business of generating billable hours for the firm. That’s perfectly fine- it’s allowed. But when you retain a lawyer to prosecute your appln you need to remember that the assignee, not the inventor or the lawyer, is really driving the boat.  Too many people simply hand the disclosure documents to the attorney and say “do it”. And do it they will.

Fine. You don’t run off to a patent lawyer immediately. What should you do? First, stop and THINK.  What are you going to actually do with it? You have this 20 year monopoly over some set of processes and/or compositions. Is it a global or a local type of innovation? That is, does it offer a whole new way of doing something or does it just offer some incremental improvement? Will potential licensees have to drop some other established technology, change their manufacturing process, and face revalidation of their product with their customer just to adopt your invention? If so, what is the clear cost advantage? 

Will the patent be defensive in nature, i.e., is it meant to prevent others from inventing it independently and possibly shutting you out? Or, is it a technology that you plan to run with aggressively out in front of god and everyone? Will a trade secret suffice?  What about a defensive disclosure? Will it be enough to disclose it in an obscure publication and hide in plain site?  That way you bar others from claiming the technology, but in exchange you let others have an easy entry.

Your initial slide down the slippery slope of patent prosecution will seem completely reasonable.  Patent lawyers are officers of the court and they have many solemn liabilities that you are unaware of, but by nature they are inclined to “find a way” to get a patent appln allowed.  The patent lawyer should ask some basic questions- Who are the inventors? Has this been offered for sale? Has it been disclosed to the public? Has this already been invented? Who really owns the invention? etc. After these questions have been answered to the lawyers satisfaction, the inventor/assignee may be advised to submit a provisional or a regular appln.

It is at this point that the inventor may find him or herself in the early stages of patent disease.  Sitting there talking with the attorney, the dizzying realization of the invention’s potential washes over you like the first gasp of nitrous oxide at your ex-girlfriends party. As the attorney drones along, advising you of the application process and the fees, your mind reels through the business possibilities. You’re hooked.