Are these patent truths really hard?

I recently read an article in Forbes titled “10 Hard Truths About Patents And The Patent System” written by Stephen Key. I thought I would provide my thoughts on these 10 truths. I am not going to copy much of the author’s reasoning. I encourage you to read the article and then return.

My first impression? Stephen would make a great client because he proactively thinks about important issues when working with a patent attorney. These a good points of discussion when you are considering filing for a patent and when talking to your patent attorney.

Truth 1: Patenting an invention doesn’t protect it from being “stolen.”

This is a hard truth that entrepreneurs should think about. There are many reasons that a patent might be a good fit for your business. The business may want protection, prestige, or an asset that can help raise capital. These are all valid reasons. For example, a recent European Patent Office report suggests that patents and trademarks can boost fundraising. The brutal truth is that patent infringement trials are expensive. According to The American Intellectual Property Association (AIPLA) Economic Survey for 2023, it costs $600,000 per patent to take that case through trial and appeal for legal claims that are less than $1 million. The higher the alleged damage, the higher the costs. This does not mean that entrepreneurs should not enforce their patents or should not get one because of the cost of enforcement; however, it does mean that this should be a consideration at the beginning of the patenting process. Patents introduce risk to your competitors. That risk must be viewed in context. How risk-tolerant is the industry? Make sure you research the industry and the attitudes about intellectual property within it.

Truth 2: Different people are going to interpret a patent differently at different times.

A patent has many audiences over its life. Some will be technical (e.g., your competitors, the patent examiner, patent attorneys, etc.). However, some readers will not be technical (e.g., judges, juries, some CEOs, etc.). A patent should both a) be drafted such that a person can pick it up and reasonably know what the invention is about and how it works, and b) provide the technical detail for the fictitious person of ordinary skill in the art to be able to practice the invention. The patent drafting process is the chance to help control and guide those interpretations.

Truth 3: Your patent attorney is only as capable as the information you provide them with — and we’re not giving them enough information.

I might be a little biased but this is true. It is better to provide your attorney with too much information than too little. As an attorney, I am constantly asking for more details. Document your invention! Seriously, stop reading this and go document your invention. Your successes and failures are important data points that can help craft a better application.

I am going to break a myth that I run into all the time with new inventors: Vagueness does not broaden patents. Specificity makes broader patents. “But James,” I hear you say, “won’t including more detail mean that I will get a narrower patent?” The short answer is “No.” The long answer is “Nooooooooooooooo!” Your patent will not be unnecessarily narrowed because you put details in the application. The more specificity and examples you provide, the easier it is for the attorney to argue that you are entitled to more.

Also, from a cost standpoint, the more detailed you provide, the more productive the patent drafting process will be.

Truth 4: Patent examiners will not find all of the prior art on an invention.

Inventors and their attorneys must provide relevant prior art that they are aware of to the Patent Office. However, inventors have no affirmative duty to search for relevant prior art before or during patent prosecution. Examiners perform searches while examining the applications. These searches may not find all the pertinent prior art. For example, in fields where terminology is more fluid or there are multiple ways to describe something, searching for relevant prior art can be difficult (sometimes referred to as the “indexability problem”). Relevant prior art not considered during patent prosecution may be discovered when a patentee tries to enforce that patent. While this risk exists, you can work with your patent professional to take steps to reduce the risk.

Truth 5: It is the responsibility of the inventor to be the expert on the invention, not the patent attorney or patent agent who is hired to draft the patent application.

I think this “truth” is a little too strong. It is the inventor that is the expert on the invention. Patent attorneys and agents rely on the technical expertise of the inventor to help craft the application. The patent attorney/agent is the expert in the patenting process and application drafting. They know the law and language necessary for a successful application process. Patent attorneys are also technical communicators that need to explain complex, and novel ideas, to a wide variety of audiences. More information about the invention and the technical environment helps this process. Both inventors and attorneys need to work together to create a good patent application.

Truth 6: The patent system is far from perfect for all of the reasons outlined above.

The patent system is not perfect. It takes too long and examiners are generally not given enough resources. This imperfection can cause stress and money. Be at peace with this unfortunate situation. Breath in. A patent should not be the ultimate cornerstone on which you pin the hopes and aspirations of your company. Breath out. Remember: a patent is not a substitute for a business plan or execution of that plan.

Truth 7: The party with the greatest access to capital is more likely to persevere in a patent infringement suit.

This is true of a lot of areas of the law. I have, given the budget, scoured the earth for prior art that allowed us to demonstrate to a patent owner that a patent lawsuit against my client would not be in their best interests. A patent litigation attorney can help come up with strategies to mitigate this monied advantage.

Truth 8: If your invention is commercially successful, copycats won’t be far behind, regardless of whether you have a patent or not.

Realistically, having a patent introduces risks to your competitors. However, the deterrent effect is different based on the industry norms, the competitor’s appetite for risk, the competitor’s inventor’s appetite for risk, and the different ways a problem can be solved. The original author gives a lot of great ideas on how to deal with this by suggesting things to add to your business plan to supplement your patent strategies.

Truth 9: Letting your emotions get the best of you results in poor business decisions.

Three emotions I see that negatively impact clients: anger, pride, and stubbornness. While decisions are ultimately yours, your attorney can give you advice to help through tough times in the process. Also, beware of the sunk cost fallacy.

Truth 10: Waiting for patent law to change before taking action isn’t pragmatic.

In my practice, I deal with subject matter eligibility frequently. This is an area of patent law that can be frustrating, arcane, and, confusing. Do not base your patent strategy or business plan on the idea that patent law will change. In my 12 years of experience, two major shockwave changes to the law have altered the patent landscape. These changes are always positive and cannot be counted on. Plan your strategies on the law of today.

Patents can have a place in your business plan. A patent professional can help shape your strategy to put yourself on your best foot for the challenges that you might face.