It’s taken me 30 years of practice to realize it, but most of what I do is help clients manage decision making in an uncertain world. Getting comfortable with uncertainty, and managing it wisely are keys to success.
The Covid-19 pandemic is a good example. At the outset, it looked like it might be very bad. I’m talking about ambulances hauling away dead neighbors on my cul-de-sac. The kind of bad that makes you glad you stayed home from the beginning and sanitized the mail and groceries before touching them. That was one scenario among many milder ones, not necessarily the most likely, but worth being prepared for. I’m not saying that the pandemic wasn’t “bad,” but it could have been orders of magnitude far worse.
After being an early voice alerting friends to the potential risks, I’m now comfortable that it’s about burned itself out, and will be nearly forgotten (except for the political exploitation) after election day. The shift in my attitude from then to now wasn’t because I changed my mind, or my way of thinking, or because I got smarter (or dumber). It’s because I have more information. Less uncertainty. The same principles apply when making business decisions, including those my clients make when determining their patent strategy.
New Invention Uncertainty
When a client has a new invention, there are always a bunch of questions. Will it work? Will it sell? Will it get regulatory approval? Can it be protected?
In our first-to-file patent system, the law no longer cares who actually invented something first, which means there is a rush to file patent applications to get the earliest possible filing date. This is important not just when competitors might be working on the same concept (maybe in conjunction with a big military contract, or a new California regulation the invention overcomes) but also in ordinary cases when some prior art might crop up before a delayed filing date, and is used to reject the patent application.
So we always consider an early, informal Provisional Application for Patent. It’s an uncertainty management tool, and a powerful one. As I say a dozen times a month when explaining to newcomers: “The good news is that it’s cheap*. The bad news is that you get to do most of the work.” I have a Drafting Guide with templates that help the inventor put together a good detailed technical description that will provide a foundation for potential future patent protection. I review and give feedback as needed, maybe requesting an additional section view to clarify, or a paragraph explaining something about how it works, and my team formats and files it.
The provisional buys a year in which much of the uncertainty is reduced or resolved.
It’s not just about delaying the major investment in a full patent application. It’s about deferring that investment decision until later, when we all will be “smarter.”
You’ll have a much better idea if the invention actually works, whether it will get ATF approval, whether customers or reviewers were impressed, even whether it’s selling.
You might also learn if it’s a pain to manufacture, or if there are new improvements that make it better. You might even learn it’s a waste of time and you have a better invention to invest in. The key is that buying time reduces your uncertainty, and enables you to make a more confident, better investment decision.
I have this strange business model that goes like this: help your clients make good investment decisions they won’t regret and make them successful. Result: I’m representing successful companies, not struggling ones.
Reducing uncertainty about making the big investment in a patent application by deferring the decision is the first key.
But You Can’t Extend a Provisional! (Or Can You?)
When the end of the provisional year approaches, it’s fish or cut bait time. Or it used to be until I figured out a way to extend a provisional application and defer that important patent application investment for more than a year for not much more than the cost of a provisional. We have to meet a few more requirements, and do a little more work, but it’s still “below the radar” on costs, and can be an inexpensive way to “kick the can” until there’s less uncertainty and more confidence. Incidentally, sometimes the big happy result is in finding out before spending much that the idea really stank, and you’re glad you didn’t waste any more money on it.
I nicknamed this trick a “Lifeboat” patent application because it keeps your rights and early filing date afloat until the full patent application “rescue ship” arrives. Caution: Lifeboats are great but note that we never stretch more than a year beyond the first commercial activity or offer for sale, because that prevents us from adding good content to a full attorney-drafted patent application. More time means more certainty and better decisions. A better decision means you save money and invest more wisely.
Patent searching is a great way to reduce the uncertainty about whether an invention can even be patented. A good search only reduces the uncertainty. I’d guess we’re lucky if a search cuts the risk of rejection based on unknown killer prior art by half. But if you can cut half your risk, that itself can be a good investment.
It turns out that no one is ever mad at me for suggesting a patent search. It’s either “Good news, we didn’t find anything that will limit your potential rights and patent holes!” or “Good news, we found killer prior art – aren’t you glad you invested in a search instead of a full patent application!?”
So, since no one ever complains after their patent search, you’d assume I push them every time, right? I’m never wrong (like when I predict a 50-50 odds of success). But I often don’t push a patent search. Sometimes, it’s because my instinct is that it’s the type of invention that searches aren’t good at finding, or because it’s so inventive that we’re confident that a search won’t find anything. Often it’s because we know that even if prior art knocks out the broad concept, there are still valuable sub-features worth protection, and the odds are remote that all of them will also turn up in our patent search, so we’ll proceed without a search.
Why the “Most Important” Part of a Patent Application
Is Actually the Least Important
When drafting a full patent application (and when guiding the provisional patent drafting process), I might not seem to be as focused on protection strategy (“claims”) as some think I should be. Claims are the most important part of a patent because they define the scope of protection, whether it’s a narrow low-value patent that can easily be circumvented, or a broad and valuable patent that can be the cornerstone of the value of a business.
But I focus elsewhere. Even though I’ll often get a good idea of patent strategy, and that will guide us to put in all the details to support the strategy, it’s the details that count. There are some cases in which we really aren’t sure about what is really patentable, or what is even valuable about a new product. So, all we do is generate as good of a detailed disclosure as possible and cross our fingers that the insights that time brings will give us ideas about what strategies to pursue. It may be that the market loves one aspect of a product, and we then can shift our strategy and file new claims on that feature. It may be that courts rule certain types of concepts aren’t patent subject matter, and we shift away from those. We might well get a hint from a patent examiner about what he thinks is patentable, and we’ll follow that path of least resistance.
The principle is that the drawings, and detailed description we file is cast in stone and can’t be added to (except as a new patent application with a later filing date), while we can shift our protection strategy any time until a patent is granted. That’s why in some cases my clients wonder if I’m a little crazy when I suggest we just disclose everything, and sort it out later what might be patentable.
Often, I’m smart enough to come up with a good strategy at the beginning. But sometimes we can’t quite see the path ahead and proceed in the dark, knowing that the fog usually clears and we can later answer strategic questions. Sometimes, I hope that time will bring me the wisdom to “hack” the problem in a way that wasn’t apparent at the outset. More often, a competitor will show us how they intend to copy the invention, and that will tell us where to focus our strategy focusing on encompassing their version, as opposed to maximizing breadth.
Keep Hope Alive?
Often, we’ll get good results, and allowed claims that achieve our objectives of protecting a product line and all the contemplated potential competing versions. At that point we can let the patent be granted and pat ourselves on the back. But some critical uncertainty remains. What if we accuse an infringer and they come back with some prior art we didn’t know about and argue it invalidates the patent? That can stop a lawsuit in its tracks. But if we have filed a continuation patent application before the first one was granted, it’s pending. It’s ready for us to put that new prior art in front of the examiner and to submit appropriate claims to examine, and then anything we succeed in getting allowed is inoculated against the new prior art.
That continuation process can also let us pursue different strategies on the original invention, broader claims, or protection of a second invention that we now realize is valuable, and we’re glad the original application disclosed and illustrated. In most cases, we will aim high for very broad protection, and often get close when the examiner suggests only a mild narrowing or adjustment in terminology. We “take what they are giving us” and have every right to pursue broader protections in the next round, even as the first patent is granted and ready to enforce or license.
Litigation and More
The principles of managing uncertainty expand to how we manage the decisions when enforcing patents and conducting lawsuits. They extend to licensing, and just about every aspect of law and business. In 30 years of practice (I learned of passing the bar exam 30 years ago this week) I have grown wiser, realizing that it’s impossible to have perfect knowledge, but knowing that when possible, delaying and deferring decisions until one is a bit wiser can make your decisions better.
Prediction: The SHOT Show WILL Be Cancelled
I wrote this last month but ran out of room. For some reason I’m feeling more nervous about my prediction (but happy to be wrong). Maybe it’s the announcement of who will be sponsoring the 250,000 face masks that makes it seem more plausibly real. Should my firm sponsor the restroom signs that scold you to “wash your hands well, with soap”?
So, I imagined myself in the place of the NSSF board members. What would I do? How would I make that decision? Even though the NSSF Board includes leaders of several companies I represent, and I’ve recently represented the NSSF as well, I have no inside information. But here’s why I’m so confident:
The NRA cancelled late, costing exhibitors a lot of unnecessary booth shipping charges. Because the NSSF is led by its own exhibitors, we’re safe in assuming that a cancellation will be announced at the right time for companies to manage the change.
Unless something changes, which it usually does.
*Currently $1000 flat fee that credits forward to the next full patent application, even for a different invention.