I'm pretty mixed on patents. I understand that if a company invests huge resources into discovering something, it is unfair for someone else to simply piggyback and copy it (but I think companies should make money from execution and service, not ideas). I understand there is societal benefit to sharing inventions (but I think the current system doesn't accomplish that since it's impossible to keep up with the multitude of patents granted and in-progress).
I believe that many of the lawsuits around software patents are frivolous (and many of the duplicating/overlapping patents shouldn't have been granted in the first place), so the whole situation is a mess.
Too many people still pay attention to "patent portfolios" (with quantity often more important than quality), and that attitude causes difficulties for entrepreneurs wondering if they should spend their time and money collecting [often useless] patents simply to show off.
Also, the recent law change that gives priority for patentability to those who file first instead of those who invent first requires filing patents immediately upon thinking of an idea, which is costly and sort of ridiculous/impossible for everyday people or entrepreneurs to do (and incentivizes patent trolls).
I heard an interesting session last week at UCLA Anderson by an accomplished patent attorney, Todd Miller. It was generally on tips for entrepreneurs (and less on controversial issues like should there be patents or how the system should be reformed). Below are my main notes and takeaways. What do you guys think about the issues I've raised above?
Tip 1: Work backwards.
- First figure out your business goals and strategy.
- Then think about if/how IP fits into that.
- Most money spent on IP is inappropriate.
- You will have to pivot your business.
- Smart while being lean: Use an omnibus patent application (put all ideas in one application to save money and time).
- Many patents not valuable because protection is too limited.
- Patent infringement requires each element listed in a claim.
- Use Google Scholar and Google Patents to check before you file.
- Trade secrets protect business info.
- Trademarks protect source of idea.
- Patents protect idea.
- Copyright protects expression of idea.
- Requirements for patent: novelty, usefulness, non-obviousness
- Claims at end are the actual protection.
- Use the USPTO website.
- In trademark, define description of goods as broadly as possible.
- Trick: File patent in Korea (if green tech, it's expedited to 6 months); then file in US and bypass the line.
- Another good search engine: prior-ip.com
- Search for your idea and find clusters of other patents and ideas
- Public dissemination (and discussion with anyone or public release in talk or website) kills patentability in most of world besides US (like Europe)
- Prior employer: invention might belong technically to prior employer (check your employment contract)
- Licensing terms: don't license out all IP early at bad terms; avoid "most favored nation" clauses in licenses if you can
- Chain of title: anyone who works for you must sign agreement that IP belongs to you