6 Things Every Inventor Should Know About Patents

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by Mike Marks

Founder of Invention City

NOTE: The following is a business perspective on patents and should not be taken as legal advice.

"Meaningful patent" is a term we use a lot at Invention City. Getting a patent of some sort isn't especially hard. Having patent claims with real value is something else altogether. A great example of this is the Gator-Grip® universal socket invented by Joel Marks (my brother) of WorkTools, Inc. (I'm a partner). The Gator-Grip® is a 3/4" deep socket with a set of 54 spring loaded pins that grip a wide range of fasteners. Prior art patents covering the concept of spring loaded pins gripping fasteners went back to 1969. What Joel invented was the best way to manufacture a universal socket AND the best way for a universal socket to function. The key claim covered use of a resilient (plastic) plate that holds the spring loaded pins and a cut in the interior walls of the socket into which the pin plate was press-fitted. It sounds like a narrow claim and it is. But it’s a narrow claim that defines the lowest cost, highest quality method of making a universal socket that will function well for a long period of time. You can see one of the Gator-Grip patents here.

When Gator-Grip® proved successful and companies went to knock it off, they chose to manufacture the knock-offs with plastic plates that held the pins and fit into socket walls exactly as described in Joel’s patent claims. As a result, enforcing the patent was much easier than it would have been otherwise. Just as important as having strong patent claims was the personal communication we had with the companies that made and sold the knockoffs. We avoided court by making phone calls and explaining the problem in a business-like way. It worked out very well for us because the patent claims were precise and easy to interpret.

Unfortunately things don’t always work out so well and sometimes court cannot be avoided. We’ve had that experience too. In that instance the patent claims were more open to interpretation and the other side (I can say this now that the case has been settled) had a reasonable belief that they were not violating our patents. Fortunately a jury and appeals court upheld two of our three patents and we “won.” But we never saw any cash and our lawyers, who worked on contingency, never saw the $5 million+ in fees they’d anticipated. Nevertheless, two of our patents survived process and other potential knockoffs were scared out of the market. With those experiences setting the stage, here are six things every inventor should know about patents:

  1. A patent cannot be enforced until after it issues. “Patent Pending” is a warning that a patent may be issued in the future, it does nothing to prevent present-tense knockoffs.

  2. A Provisional Patent gives you the right to claim “Patent Pending”. See above. One year after application you need to file a Non-Provisional patent.

  3. Patent “claims” are the things you can enforce and they cover specific details that are unique to your invention. Broad claims are harder to get than narrow claims but they are also more open to challenge.

  4. Even after a patent issues it can be challenged in court and invalidated. You never really know how good your patent is until after it’s been challenged before a judge and jury.

  5. A patent can be filed on top of your patent. A knockoff company can add a useless doodad to your invention and patent it. They probably won’t even use the doodad themselves. You certainly won’t use it. But they have a patent on a product that looks like yours… because it is yours (minus the doodad). This trick is used by unethical inventors/companies who want to claim they have a patent on their knockoff so they can confuse people, especially retailers. When you tell a retailer they should stop selling the knockoff because it violates your patent the retailer says, “but they have a patent too. ” There's also the situation where you have a genuine improvement to an existing patent. You can patent your improvement and prevent others from using the improvement, but you do not have any rights to the underlying patent.

  6. You have to pay to enforce and defend your own patent. That could mean upwards of $5 million and five years if you win the trial and it goes to appeal. If you’re lucky you might find a law firm to take your case on contingency (even then you might need to pay hundreds of thousands in costs). And when it’s all done, even if you win, you may end up winning nothing. The good thing is that you might keep your patent strong.

Don't let all of this discourage you. Patents make it possible for little guys to play with big guys and most companies are ethical and will make honest efforts to avoid patent infringement.

- Mike Marks

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