Bad Patent Advice from the Wall Street Journal

In order to stay atop of what is happening in the patent world I subscribe to a Google news service that will send me an e-mail whenever there is a new post relative to patents indexed with Google News.  Most of what crosses through Google News in terms of patent news are short news stories about whatever giant corporation has recently settled a patent lawsuit, filed a patent lawsuit or licensed a patent portfolio.  Today, however, one particular news story caught my attention because it was in the Wall Street Journal.  It was not really a “news” item, but rather a question and answer column where folks write in questions to Alexandra Levit, who then answers a handful in a weekly column.  While most business people believe they can give competent patent advise without knowing anything about patents, the danger is that advise from those who are not familiar with patent law is often wrong, sometimes to the point where if it is followed rights would be instantly lost forever.  Unfortunately, that is exactly what would happen if anyone were to follow the advise Ms. Levit gave in her column today.

To set the stage, here is the question asked and the answer give by Ms. Levit:

Q: I am a retired executive for a Fortune 500 company and have an idea that would change the lives of many people. Two of my children are lawyers and have put me in touch with patent attorneys, but I cannot afford to engage them. I am looking for a wealthy person or company that I could partner up with and share the ultimate profits based upon their participation. Any thoughts or suggestions?

A: Congratulations on your business idea. I do think, though, that it’s going to be hard to solicit help from a wealthy benefactor unless you happen to know one in your personal life. You’re right to do some work on your own before shelling out lots of money to a patent attorney, though. As a first step, you should make sure someone hasn’t thought of your idea already. Go online and look for products similar to your idea in indexes such as ThomasNet and note the various manufacturers in your area. If you find that your idea is in fact unique, don’t use an invention promotion company that advertises on TV or online. Instead, go back to ThomasNet and contact a VP of marketing or research and development at each company. In your call or e-mail, ask where you can send a short proposal about your idea.

First, before I get into the substance of the advice provided, it is important to realize that practically every patent attorney and patent agent gets inquiries like this on a weekly, if not daily, basis.  If I had a dollar for every time I received an e-mail from someone saying that they have a life-changing invention, or world-saving invention, I would be able to retire.  The story goes, as in this case, my invention is critical, essential, life-altering and I know without a doubt that it will succeed.  These messages then ALWAYS go on to say, I just don’t have the money, but those with money would get a great deal if they would partner with me and fund my invention.  Sometimes it even goes further and implies that anyone who is wealthy would be lucky to get such a great opportunity.  I try and preach to inventors that if they want to be taken seriously they need to keep it real, and this is an enormous red-flag and serious people will flee from you with this story.  The truth is ideas and inventions are everywhere, and if you are not willing to put up your own money that says you don’t believe in your own invention enough, so why should I?  Finally, inventors without “skin in the game” invariably walk away because they have nothing invested.  This story is not taken seriously by anyone in the industry and if you are serious and have an invention you cannot lead with this type of pitch.

Now, to be fair, there is some good advice provided by Ms. Levit, but lets start with what is incorrect and potentially very dangerous.  Ms. Levit explains that it is appropriate to engage in research prior to going to a patent attorney, which is indeed sound advice, but then never suggests taking steps to secure rights prior to disclosing the invention.  If anyone follows this advise they will instantaneously lose any and all foreign patent rights that may otherwise be available.  This is perhaps the single largest mistake that is made by those with only vague familiarity with the patent system.  It is well known by many that you can engage in certain activities in the United States prior to filing a patent and without risking the loss of rights, provided that a patent application is filed within the allowed time, typically 12 months from the happening of certain disclosures.  It is then assumed that this is also the law throughout the world, which is incorrect.  The United States is the only country where you can disclose first and patent later.  Everywhere else the law is what is referred to as “absolute novelty,” which means that you must file a patent application before disclosure.  Do it in the wrong order and you lose any patent rights you might have otherwise been entitled to receive.

Another problem with Ms. Levit’s advice is that no serious and reputable company will engage in any discussions relating to an idea.  In fact, I will go so far as to say that if you find an individual or company willing to discuss your idea or invention prior to  you having filed a patent application you are speaking with someone who is either unknowledgeable or unreputable.  Those who are knowledgeable and reputable know that it is in their own best interests only to talk to those who have filed a patent application.  Filing a patent application means you are serious, proceeding in an appropriate business manner and most importantly that you have defined your invention.  Companies work on inventing in-house, and some will accept outside submissions.  The nightmare scenario for a company is to hear an idea from someone only to realize they are already working on that in-house or licensing in the technology.  If they hear your idea and do not proceed with you they are opening themselves up to liability because if they do not do business with you it will seem as if they stole your idea.  The theft of ideas is extraordinarily rare, but if you tell someone your idea and they come out with it after your disclosure it looks suspicious.  Therefore, reputable people and companies absolutely require that you have a patent application filed so they can evaluate what you have sworn is your invention, and so they can appreciate the full scope of what you have invented.  This allows them to rationally determine whether your invention has merit, and whether they need to deal with you.

What Ms. Levit did get right is that it makes sense to at least try and do your own search first, but searching online for similar products is only a very small first step.  I hear every week from inventors who do this, don’t find their invention and think it is smooth sailing because their invention is so great if it existed it would already be on the market.  This may seem logical, but history and experience proves that it is faulty reasoning.  There are many different reasons why a product doesn’t make it to market, and once an inventor has received a patent and then doesn’t follow through for one reason or another, many companies simply have no interest in pursuing the product.  This is because the invention has fallen into the public domain and if the product becomes popular then anyone and everyone could make it, which does not make for a good business strategy.

It is also important to understand that if you are going to do your own patent search you are certainly going to miss patents that could be found by a patent attorney or skilled patent searcher.  Nevertheless, if you can spend some time looking and find inventions that are to close for comfort then you have saved money and only lost some time.  For those who want to try and do the best patent search they can first I strongly recommend reading US Patent Searching 101, which is a patent search tutorial aimed at inventors, and also law students I teach.

Undeniably, the best and most correct thing Ms. Levit said was that you should not work with invention promotion companies.  How and why anyone works with invention promotion companies today is something of a mystery.  The top invention promotion companies have repeatedly been charged with violations of law by the US government, and in some cases have had hundreds of complaints filed against them.  Those who want to avoid invention scams can if only they would do a simple Google or Yahoo search to investigate whether a company is a known scam.  Nevertheless, many inventors sign without doing any research to see if the company is reputable.  Over time I have become convinced that those who fall prey to invention promotion companies do so because they want to believe the path to riches is easy, and someone will do all the hard work for them because their idea is so good.  First, ideas are not patentable.  Second, money without hard work only happens in fairy tales!

Happy inventing!