Are Patents Really Worth It?

I genuinely enjoy all the folks I’ve come to meet in this industry. In the dozen years I’ve been at the SHOT Show, I’ve met the whole spectrum: The superstars who have the respect of the entire industry, including their competitors; the quiet geniuses who work behind the scenes to provide some of the greatest innovations; the tough guys who love a fight (even in court – even if they’re bound to lose); the grumps who thoroughly conceal the fact that they love their work; the geeks who wouldn’t dream of working in any other industry, and one of my favorites:

The Curmudgeon

I had a long phone call with one of these guys, which I wanted to tell you about. After all, if he’s gonna get free legal advice, why shouldn’t you? Incidentally, he told me that he enjoys reading my newsletter and articles, so I’ll have a little fun needling, knowing he’ll be reading this as well.

These “curmudgeon” guys (it’s invariably guys) are kind of a combination of all of the above. I usually encounter them in conversations about legal matters, especially patents. They are smart as whips (they aren’t afraid to admit that they learn from sources like this newsletter, and boldly call up when they want to learn something more). They usually have their own inventions, and often have their own patents, but they really aren’t fans of patents and will tell you (me) why.

I remember a few years ago, meeting the Curmudgeon at SHOT. 
An interesting guy with a very interesting history as an inventor in the industry. But with a tight schedule of meetings, I didn’t have time to hear all his thoughts about why he doesn’t believe in patents. I recently heard the rest of the story, and his appreciation for some subtleties of the law made me glad I took the time to hear him out.

Those who know me well know I don’t push hard to “sell” the benefits of patents. That’s because I don’t have to. Even those who are the greatest patent skeptics will still change their minds when a big new invention has them awake at 3AM, thinking: “Oh jeez, I have to patent this one!”

Lots of these guys will tell me “a patent is just a ticket to sue somebody.” And they’re right. All a patent does is let you sue somebody. But that power is like carrying a big stick, in that even if you speak softly, people are likely to listen. Sure, the small patent owner probably can’t afford the hundreds of thousands of dollars it takes to pursue a patent infringement lawsuit. But neither can the other guy. And the difference between the owner of a (good) patent and the infringer is that the infringer’s lawyer is going tell him it will cost him a fortune to lose, and the patent owner’s lawyer will tell him that it will cost a fortune to win. And if the other side is a big company, they are even more likely to follow their lawyers’ advice to surrender or pay a royalty (unless the patent is questionable, in which case they will invest far more in putting holes through it than you ever invested in getting it).

Other curmudgeons will complain that “a clever lawyer can get around any patent.” Speaking as a “clever lawyer” I sometimes wish that were true, but time and again my client will have (or be accused of infringing) a patent that is perfectly solid, and the only proper advice to the accused infringer is to surrender. Of course, some patents are weak, and these are the most “expensive” for the owners, because they are of doubtful enforceability. And “doubt” means two teams of lawyers fighting to the end at great expense. Which is why I focus on getting solid patents that the infringer’s lawyer will tell his client to respect.

Anyway, The Curmudgeon didn’t call to rag on my stock in trade. No, he actually called me with some clever questions about getting the benefits of patents.

The Defensive Publication

The first question was a pretty good one: “Even if I don’t care about getting a patent, can I use a Provisional Application to prevent others from getting a patent?” This is all about the idea of a “defensive publication.” It’s not about protecting your invention to stop others. It’s about making sure that others can’t pretend to be the inventor, and stop you. You might not care about getting your own patent because you don’t think the invention is big enough to justify the investment (which is usually the case, only the best minority of inventions will pay back the patent costs). Or you might have some kind of technical advantage that gives you an advantage over others, without a patent.

A defensive publication is about creating “prior art” that makes it impossible for your competitor to patent the invention. Or, it’s about creating the prior art that you can wave in the face of the competitor when he threatens to sue you for patent infringement. You give him the choice of: A. Suing you (expensively) and losing the lawsuit and the patent (when the judge invalidates it), and B. Going away, keeping his questionable patent, and maybe even keeping the royalty stream he might already be enjoying from others.

The Curious Curmudgeon is a frugal fellow who had been reading what I had been writing lately about those “almost free” provisional applications I call “Caveman Patents.” That’s where my client does the write-up and drawings, I review it for adequacy, and my staff formats and files it. All but $130 of the $1000 fee is credited toward future non-provisional patent applications, so it truly is almost free.

What the Curmudgeon wondered is whether a provisional filing might get him another benefit that I haven’t revealed before (as if that critical first-to-file benefit wasn’t worth the price of admission). He wondered whether a provisional might be the perfect cheapskate defensive publication.

Great question, but sadly, the answer is NO.

A “provisional application for patent” (as it’s properly called) is not published unless a non-provisional application is filed, based on the provisional application. It’s just a legal tool to hold your place on the calendar as the first filer. If you don’t file the non-provisional within a year, it’s as if you never filed the provisional.

Simple answer, end of call. Except that the Curious Curmudgeon was just getting started:

“What if I filed a provisional, then 11 months later, filed another one, and kept doing that to keep my first filing position without having to invest in a full patent application?”

Sorry, but it doesn’t work that way. A full patent can be treated as if it has an earlier filing date only if there is a provisional filed within the previous 12 months. The law ignores everything older than 12 months, so all the links of the daisy chain are meaningless if they are more than a year before the non-provisional’s filing date.

“Aha! So, what if I filed a provisional application, say, every month? I mean the same provisional application. Then, when I get around to having to write you a check to file the non-provisional, maybe much more than a year later, I at least get 11-12 months of filing date advantage over my real filing date. Would that work?

I had to scratch my head for a moment, but admitted that his scheme would work. I made sure he understood that you can never use a provisional to stretch back the first to file date more than 12 months, but this could work.

It’s not very practical, because even if he wanted to learn the ropes of the filing system, he’d be paying $130 per monthly filing for the filing fee itself. If he let us handle it, It would cost $1000 per month, which would give over $10,000 credit toward to the non-provisional (yes, you can apply as many provisional credits to a single application as you wish). But it would probably be smarter just to file the non-provisional and do it right.

Still, I’ve had clients who have me file a provisional on a new invention that isn’t quite “ready for prime time,” then a few months later come up with a significant advancement. We simply file a new provisional, and then (within a year of the first provisional) file our full non-provisional patent application claiming benefit of both provisionals. If we delayed, we might file within a year of the second provisional, and lose out only if there was a competing application filed after the first provisional but before the second.

The key point is that under the current “first to file” law, the rule is: “When in doubt, file a provisional NOW.”

Like one client who had a trade show the next week, and wanted to show the new invention. I told them that they were legally safe, because they had a year after offering it for sale to get a patent application filed (same as always). But the new risk is that someone spots the invention, files their own patent application as the first to file (before we file), and we can’t prove they got the idea from my client. That is usually a low risk, but my client wasn’t willing to take that risk. There wasn’t time to file a full non-provisional (or at least not time to do it smoothly and well, without some all- nighters). So we cranked out a provisional, so it could be filed within a few days. A “quick and dirty” insurance policy against fast competing filers was all that was needed, and our full patent application can be filed with care, taking our time to get it right to make sure it is the kind of patent that gets respect from potential infringers.

Curmudgeons on Trademarks

Now that we had exhausted all the legal theories on patents, the Curmudgeon made a shift to trademarks. He had long relied on common-law trademarks to protect his brands. None of them were registered, not even his company name that had gone on every product he has sold in the last 20 years! He knew that without spending a penny on legal fees, he could enjoy the right to sue any infringer for infringing his common law rights.

He also knew that unlike patents, you can take as many years as you wanted to get around to registering your trademark rights.

But what had changed in recent years came from his reading in this newsletter about the benefits of trademark registration. It means that the trademark examiner is rejecting conflicting trademark applications because she’s aware of your registered mark. They are policing your rights, at no cost to you. Plus, a registered trademark is much easier to enforce. Both judges and infringers give a lot more respect to the stamp of approval from the Trademark Office than to someone who didn’t invest a penny to protect a valuable asset.

But the Clever Curmudgeon had the idea that he might save some legal fees by protecting a whole range of products with a single registration. This is where he really got it right.

He has a great branding strategy. Even with a dozen different products in the catalog, he had given each of them a common prefix. Let’s say they were “XYZ Econo”, “XYZ Super”, “XYZ Covert” etc. I told him to think like a car company: “FORD Mustang”, “FORD Focus”, “FORD Escape.” Of course, Ford protects every model name with its own trademark, but I told the Curmudgeon that that he could in fact register “FORD” and let common law protect the model names. That would give a lot of bang for the buck, and he could always come back later and register the individual brands that were becoming valuable enough to justify the small investment.

Incidentally, it’s a great idea to have a “family” of trademarks. When all your products are names of raptors, Turkish generals, or minerals, your release of a new product in the same category will tell the market that it’s yours, increasing the strength of your brand without added advertising expense.

Lessons From a Curmudgeon

What we can all take away from today’s Curmudgeon call is that it’s smart to ask the clever questions. Fully understand the legal issues every business faces, do not be afraid to think of ways to save money, but do not hesitate to change the old views when new information makes a new strategy more sensible.

Keep the questions coming!

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About the Author: Ben Langlotz

Ben Langlotz is the nation’s leading firearms patent and trademark attorney, and the author of Bulletproof Firearms Business: The Legal Guide to Success Under Fire. He is trusted by more firearms industry companies than any other lawyer or law firm in the nation, and is consistently ranked at the top of all attorneys in securing gun patents and gun trademarks.