Chapter 15. Write and submit your patent application

The world of patents has changed over the last ten years. A decade ago, you spent time and money writing your patent, you filed it and shepherded it through the lengthy patent examination process in wherever country you needed it.

By the year 2006, I am hearing it said that “the patent process is broken”, in the United States, at least. Tell that to Microsoft who recently put together a legal team whose sole objective is to pursue as many patent application opportunities that can be found within the work Microsoft employees have already done or are doing. If the patent process is broken, someone ought to tell Bill Gates.

Certainly, it has changed. However, getting a patent granted is today more of a purely defensive maneuver than it used to be.

There is no such thing as an open-and-shut legal case.

- My dear mother

You never know how a legal battle in court is going to go. Companies are reluctant to sue others they feel are infringing on their patents. Even with ostensibly strong patents, a day in court can bring many surprises. If a defendant has what you might consider a much weaker patent, but has good legal representation on the day, the judge may see it their way instead of yours. You may end up with a stalemate or even a loss. Don’t go that far. The trick is to avoid ending up in court with no patent, in which case you have nothing that even can remotely work as a deterrent against your plaintiff.

Consider this: you have under your bed a 100-year-old gun. It’s got a single rusty old bullet in one of its chambers, or perhaps none. But it is a gun. A burglar breaks into your house and he sees you behind a chair at the top of the stairs with the rusty old gun in your hand. He can always take a chance the gun won’t work or that you have no bullets or even that it is not a real gun. Nevertheless, a hundred-year-old rusty bullet will kill you just as dead as a shiny new fancy one. Therefore, there is a real incentive for the burglar, especially if he is unarmed, to leave you alone. If, on the other hand, you are unarmed, and he is the one with the gun, any gun, guess who’s walking out with your wallet.

Patents are like that. Even a weak patent is more valuable than no patent at all. So, how can you put the minimum amount of work and money into getting a patent that will afford you this deterrent protection but allow you to refocus your efforts on building your product and business?

Nearly ten years ago, a colleague and I put together three patent applications without the help of an attorney. We worked out that it took on average 160 hours of labor per patent application, just to get the application into the mail. Hard work, I might add.

Those applications were for software, which is inherently more complex a task to patent than hardware is usually and that was nearly a decade ago.

Today (2006), there are several desktop products on the market that will guide you through creating a patent application. I used a product called PatentEase, but there are others out there you could look at. Because I had already worked on three other patent applications in the past, I did know better what to look for, but probably any of these new software tools will help you get your patent application completed. With this productivity tool, the one patent application I mail off to the PTO took about 50 intense hours to complete. Like I said, hardware patents are easier than software patents, and the process I am sure takes less time if you have written a patent before.

• Allow yourself about 80 intensive hours of work to complete a patent application using a patent creation package such as PatentEase or PatentPro.

Before you start, search the online database for a granted patent that is in your field. Find one as close as possible to your own product idea and print it off in its entirety. Take it home and read it from cover to cover. Completing that task will be another real test of your perseverance. You won’t understand everything of course, because patents are written in what I would call patent dialect. It looks like English, but there are some startling uses of English that have a specific purpose in the context of a patent application.

Pay particular attention to the Claims section towards the end of the patent you printed off. In fact, you might start reading the patent right there.

I hope you will find a couple of patents that frighten you a little. You will see patents that closely resemble what you are trying to achieve, but solve the problem in a different way.

• The existence of granted patents addressing the area your product idea addresses suggests that a market exists for your product.

Remember that a problem cannot be patented, but a means to solve it can. You can’t patent repetitive strain injury, but you might be able to patent a novel, corrugated plastic strap that one can wrap around their wrist to ease the problem. That means, even if there are 150 patents that address the problem of “wrist strain while using garden trowels”, a new way of solving the problem that you have come up might be patentable. As long as your product is a novel and unobvious means of solving the problem, you have a chance of getting your patent. Of course, if you find a granted patent that specifically solves the problem the way you do, you have a different problem. If that is the case, you may have to return to the drawing board to adjust your designs so they do not infringe on that existing patent. On the other hand, it might be enough to narrow the focus of your patent application so it covers a narrower interpretation of the problem.

In my Aqualocks experience, there were plenty of granted patents addressing the problem my product addressed and there were other patents using honeycomb structures as I did, but to address non-pond problems. No patent used a honeycomb in relation to pond problems.

• To have a chance of getting your patent granted, your product must be novel and non-obvious.

I’d have to say the two toughest technical challenges in the first eighteen months were (1) mastering CAD and (2) writing the patent. If you feel a bit discouraged during the patent creation stage, you might be making it bigger than it needs to be. A patent application with fewer claims is easier to get through the patent office than one with many claims. If you are feeling overwhelmed by the patent application creation process, simplify it to cover at least some of your product. The more comprehensive the patent application the better, obviously, but at a certain point, you need to get back to your business. Having a strong patent application but running out of time will bring to you a different kind of disaster.

At this point, my own lawyer, if I had one, would probably advise me to advise you to seek legal counsel before you embark on the potentially critical task of filing a patent. So, go do that. My lawyer said so.

For my part, I did the whole application without as much as a phone call with a patent attorney. My plan is, if my product somehow opens the floodgates of success, I will return to the issue of patents and get some big expensive help to strengthen my legal position then. For now, though, I have to focus on the business of creating a product, getting it into customers’ hands and being paid for it. After mailing the patent application off to the US PTO, I headed straight back to product issues.

Between the software and the patent application fee: $1,000.

Cost of this stage: $1,000. Costs so far: $77,800