Transcript Is it worth Patenting and Where? Isaak Murshak “For an idea that does not at first seem insane, there is no hope.” - Albert Einstein.

Is it worth Patenting and
Where?
Isaak Murshak
“For an idea that does not
at first seem insane, there
is no hope.”
- Albert Einstein
OVERVEIW
• Is it worth Patenting?
• Inventions (Good and Bad)
• Small Companies- Considerations
• Large Companies- Considerations
• Where to Foreign File?
•
•
•
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Small Companies- Considerations
Large Companies- Considerations
Cost of Filling
Timeline
Warnings for Foreign Filling
Is it worth Patenting?
Fewer than one out of ten patented inventions
make any money for their owners
Commercial Feasibility Evaluation
What benefit do you get?
1. Salability (Licensing)
2. Exclude others (IPOD wheel)
3. Industry Protection (Friendly Arena)
4. Pride ( Venture Capitalists)
"It is to be remembered, that the pursuit of wealth by means of new inventions is a
very precarious and uncertain one; a lottery where there are many thousand tickets
for each prize.”
-Eli Whitney
Profitable Inventions
Edison light bulb, 1886
Thomas Edison patented more than a
thousand electrical and mechanical
inventions. This light bulb features a
bamboo filament and was donated to the
Smithsonian by Princeton's engineering
department in 1961.
Samuel Morse's telegraph register, 1849
Morse began experimenting with electromagnetic telegraphy in the 1830s
but did not achieve practical success until 1844, when he transmitted a
coded message along a wire from Baltimore to Washington, D.C.
Non-Profitable Inventions
•Male chastity device (US Patent 587994, 1897)
•Device held in toes to prevent sunburn to your inner thighs
(US Patent 3712271 3712271, 1973)
•Goggles for chickens (US Patent 620832,
1902)
Small Inventors
Low Tech
• Market !!!
• Patent Significance
• Cost of Patent vs.
Possible Profit
High Tech
• Market !!!
• Funding Opportunities
• Patent Position
Large Inventors
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•
•
•
Low Tech
Patent Significance
Create More Barriers
Marketing
Cross-Licensing
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•
•
•
High Tech
Patent Significance
Publications
Patent Position
Pride
DECISION:
Small Inventors
• Do they need a patent?
• Protection
• Investment
• marketing
• Do they wont a patent?
• Pride
• Can they afford a Patent?
• Price (related to quality)
DECISION:
Large Inventors
• Patent Advisory Boards (Portfolio Managers)
– Do they need a patent?
– Protection
– Keep pace with Industry
– Marketing
– Do they wont a patent?
– Prestige
– Publication
– Quality of Patents?
– Price
– Protection
Where to Foreign File?
Why to file in a Foreign Country:
• International Market
(Protection)
• International Competitor
(Cross Patenting)
Why NOT to File in a Foreign
Country:
• Uncertain of commercial
potential
• Gargantuan Cost!!!
• Different Law may not allow for
a patent
CHOOSING THE IMPORTANT
COUNTRIES
U.S.
EUROPEAN
JAPAN
CHINA (ASIA)
INDIA
CANADA
AUSTRALIA
KOREA
ISRAEL
SMALL COMPANIES:
PROTECTING PATENTS
Typical Emerging Company:
– Limited resources
– Uncertain Market for Product
– Product in Early Stages of Development
– Efficacy of Product May be Uncertain
Most companies do not want to spend large
amount of money researching prior art,
patentability or global marketability of product at
the early stages when patent protection must
be sought
SMALL COMPANY: BASIC STRATEGY
Defer costs of patent
filing and prosecution
for as long as possible
to allow company:
– To raise money to
support invention
– To determine whether
invention is marketable
– To determine where the
market will be for the
product
LARGE COMPANIES:
PROTECTING PATENTS
Typical Large Company:
– Large resources
– Certain Market for Product
– Knowledge of International Competitors
Most companies determine where to file when
they make the decision of whether to file.
These decisions are often made by a separate
group that does not include the inventor.
LARGE COMPANY: BASIC
STRATEGY
Large Companies Strategy is often
determined in-house by a Patent Advisory
Board that consist of:
• People familiar with the Art
• Business Strategists
• Legal Department
COST
The costs of obtaining patent protection Internationally
–
Costs can escalate exponentially as prosecution progresses
Filing Fees for Various Stages
of International Patent Prosecution:
U.S. Provisional Application
(small entity)
U.S. Utility Application
PCT International Application
National Stage Application
(per country)
European Validation
(all countries)
$80
$395
$1,000-2,000
$500-5,000
$50,000 -500,000
Estimates do not include fees for professional legal services or translation fee
which can be up to $20,000
TIMELINE
1. Invention
a)
Provisional U.S. Patent Application
b)
Fill in any Country that does not recognize the US filling date
2. “Conversion” at 1 Year Anniversary of Provisional
(a) Regular U.S. Utility Application
(b) PCT International Application
(c) Direct National Applications in Selected non-PCT countries
3. PCT National Phase
a)
30 months from Provisional filing- Regular Applications in all
Desired PCT countries, depending on projected markets
Warning
•
Some European countries may not uphold
priority to Provisional Applications that do not
have claims.
•
Non-U.S. countries often require more literal
support for claims than U.S., especially Asian
countries
•
If filling in a country that does not recognize the
US filling date one can NOT release the
invention publicly until it is filled in that country.
•
Countries have different Laws with different
things that can be patented.
QUESTIONS