This guide will generally examine some of the issues surrounding whether to file for a patent, and how to enforce it once it has issued.
Many patents are never used, if yours isn't, will it have been worth it?
Before you ever file for a patent, you should understand that over its history, the PTO has literally issues millions of patents. Only a relatively small percentage of those patents are ever used to make a commercial product or are licensed for such use. If you plan to use your patent as a source of income, before you spend the time, money and energy it takes to obtain a patent, you should generally have some sort of useful commercial purpose in mind. Some engineers or inventors obtain inventor status on issued patents as a result of their regular employment (in that case the company owns the patent and the engineer is listed as an inventor) or they file for and obtain a patent simply for the satisfaction of having done it. That is fine, but if your goal is income and you are banking on the patent to provide it for you, you need to be strategic about the type of patent you go for and how you seek to enforce it.
Design v. Utility Patents
A design patent covers the shape of devices. If you have a design patent on a blender and someone comes out with a blender that has a different shape, you cannot enforce your patent against them. Only when the shape of the accused product is substantially similar to the design in your patent will a design patent be enforced. Thus, while they are cheaper to get and don't take as long to issue as utility patents, because design patents are so easy to design around, their value to sole inventor may be questionable. Utility patents differ from design patents. 35 U.S.C. section 101 provides, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
Utility patents are usually at issue in patent litigation. Using the above blender example, if you obtained a utility patent for a blender and someone sought to make another blender that used your process, then you can enforce your patent rights on that person regardless of the shape of their blender. The remainder of this legal guide will focus on utility patents only.
Obtaining a patent is only the first step
So you thought up the next great thing. You went to a lawyer and obtained a utility patent. You probably spent a substantial amount of time, energy and money doing it and you want your payday. What are your options?
How do I get people to use or license my patent?
In practical application, the age old question of every inventor that wants to monetize his or her patent is "how can I get someone to either create a product based on my patent, or, how can I license my patent to them?" There is no easy answer. Unless you own your own manufacturing company, getting a company to invest in your patent by creating a new product is unlikely. It typically costs hundreds of thousands, if not millions of dollars to bring a new product to market. Companies are wary of taking risks with that kind of money and unless there is a substantial likelihood of it paying off, it will be difficult for them to invest in your idea and patent. Likewise, even if a company is employing your patented technology in their products, getting them to pay you a license fee will not be easy. You usually cannot just call them up, ask them to pay and have them fall in line. Companies like their money and are loathe to part with it. So how can you do it? If you are serious, I suggest four (4) steps.
Step 1: Get a lawyer
The first step is to retain a qualified patent litigator. This may be more difficult than you would think for patent matters. If there is not a clear connection between your patent and a successful product that has been announced or is already in commerce or at retail, many lawyers will not see the value in such a representation. If the representation is hourly (meaning you will pay them their fees by the hour as they spend time on your matter), then obtaining a lawyer is very easy. Be warned however, patent litigation usually costs in the millions for even the smallest patent cases. If you don't have millions lying around that you want to pay to your lawyers, then you need to get a lawyer to take the matter on a contingency fee basis (meaning they do not get paid their legal fees unless some type of award is achieved). This is good and bad.
It is good in that if the patent has merit, then a lawyer will usually recognize this fact and will probably take the case. It is bad in that if the technology set forth in the patent doesn't have legs or is not in wide use, it may be difficult to interest the attorney. In addition, you must understand that although attorneys may be willing to take their legal fees on a contingency fees basis, they generally will not go "out of pocket" to pay for hard costs, (e.g., buying samples, expert witness fees, attorney travel, depositions, etc.). These hard costs can add up to hundreds of thousands of dollars very quickly in a patent case.
Step 2: Create a claim's chart demonstrating how the target's products infringe your patent
Once you retain a qualified patent attorney, you or an engineer will work with your attorney to create what is known as a "claims chart." A claims chart compares the claims as set forth in your patent to the allegedly infringing product, process, etc., at issue. Through the use of detailed pictures and facts, you basically create a marketing presentation as to why the product, process, etc., at issue reads on the claims of your patent.
Once you create the chart, your lawyer will provide it to the company or individual at issue to put them on notice of their potential infringement (notice of infringement is an entire complex area of patent law and will not be covered here). The lawyer will follow up with the company and hopefully meet with them to explain why they have a problem (i.e., their product infringes your patent and they need to pay you to continue selling said product).
Step 3: Convince them to stop making and selling their products or enter into a license agreement
If they agree that their product reads on the valid claims of your patent without the need of litigation (a rare occurrence), then they will need to either stop making and selling their product, or enter into a license agreement with you and pay you royalties for the privilege of using your technology in their products. Like I mentioned earlier, this only happens if the case for infringement is very clear cut or if it makes more sense for the company to pay you rather than fight you. In some cases this is exactly what happens, as patent litigation routinely generates legal fees in the millions of dollars (not hundreds of thousands of dollars). However, many companies get hundreds of patent demand letters every year and will only take you seriously if you are prepared to litigate your claims in court or through administrative proceedings.
Step 4: Enforce your patent rights in court of via administrative procedure
If your targeted individual or company will not agree to license your patent, your only alternative is to use other means to compel them, such as filing a patent infringement lawsuit in federal district court or filing with the U.S. International Trade Commission and the U.S. Customs Service (the latter being a way to stop their goods from coming into the country based on a validly issued patent). Both of these alternatives can be very expensive in terms of attorney time and hard costs. It can also take years to get a final ruling depending on the court and/ or the judge.
Forewarned is forearmed
Now that you understand the general lay of the land with respect to patent law, you can make a more informed decision as to whether (i) you want to take the time, money and effort to file for a patent application in the first place or (ii) litigate a patent once it has been issued. This will depend on your long term goals with respect to the patent - whether you just want an issued patent to hang on your wall and put on your resume or whether you intend to enforce that patent and create an income stream.
Find the right attorney
If you decide to litigate, finding the right patent attorney is absolutely critical. If you don't have an unlimited patent litigation budget (which most people don't), finding an attorney who understands patent law and is able to apply that understanding in tailoring their representation to meet your goals and needs is critical to your success. Take the time necessary to interview and find the right patent attorney for you. Don't just take the first one that comes along. This is a huge decision and you want to make sure it is a good one. Good luck.
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