When Michael Alford came up with the idea for his Pool Leveling System in 2004, he knew it was a good one. After all, he’d been in the swimming pool industry for 36 years.
Certain that his invention would change the way aboveground pools were constructed, the owner of Mike’s Pools and Spas in Dyersburg, Tenn.,pursued a patent.
After spending nearly $30,000, receiving an initial rejection from the United States Patent and Trademark Office, and waiting patiently for almost seven years, he finally was awarded a patent in October 2011.
But if it weren’t for Terry Clark, Alford believes he’d still be waiting for that one-of-a-kind number.
Clark, an attorney with the Washington, D.C.-based firm of Bass, Berry & Sims, has practiced intellectual property law since 1984. And he has heard countless similar stories.
While many inventors don’t always have to wait seven years for a patent, the journey certainly can be grueling nonetheless. Here, Clark offers advice on what to expect when embarking on the patent application process.
1. Lawyer up
The Leahy-Smith America Invents Act will take effect on March 16, 2013, switching the USPTO filing process from a first-to-invent to a first-to-file system. The new legislation struck a nerve with some, but Clark believes most recognize that it adds more certainty.
“Now you have two hurdles to overcome if you are going to challenge someone’s right to a patent,” he says. “You [will] have to show that you filed before they did and show that you are an inventor that didn’t derive an idea from someone else’s idea.”
Even before President Obama signed the new legislation in September 2011, Clark stressed the importance of an inventor or small entity retaining competent counsel the moment an idea is conceived. In
fact, he or she should hire an attorney before disclosing details about the concept to anyone, even close family and friends. He especially warns against speaking with potential investors, because without filing, an individual does not have any enforceable rights protecting them from someone stealing the idea.
“You should get counsel even more quickly, because the first to file may be the person who gets the patent,” he warns. “You might be able to protect yourself through a non-disclosure agreement, but many private investors and companies may just refuse to see you if you require [one].”
An individual has a grace period of one year from the date on which a product is put into public use or offered for sale and the date of filing a patent before that patent is no longer attainable, according to the conditions of patentability defined by statute 35 U.S.C. 102.
“That’s kind of the deal the government has with inventors,” Clark says. “They say, ‘We want inventors to disclose their ideas to the public in order to advance technology.’ But we only get patents for new and non-obvious ideas or inventions. If something is out in the public domain and is old, you are not able to get a patent.”
Selecting an attorney may seem intimidating, but asking friends and colleagues for a recommendation is a good place to start. Although Clark doesn’t believe there is a set number of years’
experience a lawyer should have in the practice, he does suggest finding someone with an engineering background or experience in a field that relates to the product you’re hoping to patent.
“You wouldn’t want to go to a biology major with an electrical circuit,” he says.
2. Be prepared
Once counsel is retained, the next step is to form a reduction of practice (formulating the idea in a tangible way), which is required by statute 35 U.S.C. 112.
“You have to describe an idea and illustrate it in sufficient terms for enabling one of ordinary skill in the art to make and use whatever you are claiming,” Clark explains.
To do this, he typically asks a client to write out a memo detailing the idea or concept. This information will later be used to complete the formal application.
“Say, for example, you come up with the idea for a new method of making pools — you don’t have to make anything or perform any experiments. If you draw the idea, you have a reduction
to practice,” he says.
After reviewing the description, Clark recommends a patentability search, which is usually conducted by either a firm’s internal team or a third-party company. The process takes several weeks, but in the end, the results serve as a fairly reliable predictor of whether one would be prevented from obtaining a patent.
Although there are six types of patents, a pool and spa professional would most likely seek either a Utility Patent or a Design Patent. An attorney will help determine the right type of patent for the invention based on the reduction of practice.
3. Ante up
Filing for a patent isn’t cheap. So before he begins to prepare an application, Clark has a frank discussion with a client as to whether it makes financial sense to proceed.
“You need to make a commitment of time and capital,” he says. “People should know what they are getting into.”
In addition to the standard fees the USPTO charges, there are attorney’s fees, which can add up quickly. (See sidebar, The Facts on Fees.) A lawyer with a background in engineering is a unique combination, and the fee to retain specialized counsel is typically higher than it would be for a traditional lawyer. Clark says it’s possible to file an application without the help of an attorney, but he cautions that it’s not easy. An inventor is paying for a lawyer well-versed
in the art of relatively sophisticated technical writing that covers the nuances of the invention and understands the many requirements involved.
“It’s a very difficult process to interview the inventors and describe the concept in terms that would not only be applicable today but also 20 years from today, and describe these concepts in such a way that you can support claims that are going to be enforceable if someone tries to copy your idea,” he says.
In addition, almost everything done during the patent process is on paper. The USPTO has very specific federal requirements regarding the application, down to the spacing and font size used on documents.
“All those things make it a tedious document to prepare,” Clark says.
If finances are an issue but he believes the idea is patentable, Clark may suggest a client file for a provisional patent application, which is a lower-cost alternative to a full application. It also protects the idea if the inventor wishes to share it with potential investors, because under the provisional patent, doing so isn’t considered public disclosure.
4. Stay focused
When filing a patent application, it’s important to realize that it takes three- to five years from the time the application is filed to the date a patent is issued.
“I just argued an appeal on a patent that was pending for three years,” Clark says.
Because there are hundreds, if not thousands, of applications filed each year, and only a limited number of patent examiners to review them, there is a significant bottleneck. One can expedite the process through avenues such as the Patent Prosecution Highway, “fast track” prosecution, the Green Tech Pilot Program and others, all of which have advantages and disadvantages. Again, an attorney can advise a client on the best path.
Recently, the USPTO implemented what Clark refers to as “imaginative suggestions” on how to speed up the process. But none of them have altered the time involved in preparing and receiving a patent, he says.
Furthermore, even if an individual receives a patent after several years of waiting, it doesn’t necessarily mean instant success.
“Sometimes a good idea will flounder for a few years and then blossom,” he says.
But a good idea might be worth the wait.
“In my career, I have had clients who have had good ideas and not a lot of money that have become multi, multi-millionaires,” Clark notes.
5. Don’t assume
Receiving a patent provides an individual with the right to produce that product. A patent is an exclusionary right that lasts for 20 years from the filing date of the original application. Simply put,
it prevents others from infringing on your idea for 20 years, Clark says.
He offers the following example to illustrate this concept:
“If I invent a chair with four legs, a seat and a back, and I get a patent on it, and then you take my chair and think it would be really nice to put a cushion on it, and you go to the patent office and get a patent on a chair with a cushion on it, you can’t produce your chair because my patent covers your chair, even though you put a cushion on it,” he explains. “If you start producing a chair with a cushion on it, I can sue you for infringement.
“That’s a big surprise to a lot of people,” he says.
It’s also important to realize that each country has its own patent process, consisting of different laws, disclosure regulations, requirements and other rules.
“If you are thinking about making a million bucks by selling your idea in Japan, then you might want to consider filing abroad,” Clark advises.