Patents... anybody ever done it?

[GomiGirl]

Going to start the process very soon for something that I could tell you about but then I would have to shoot you all...

If anybody has been through it or has some sage words of wisdom, I would be pleased to hear them.

Any laywer recommendations would be welcome as well.

[cstaylor]

Did one in the United States, but my employer handled all of the legal paperwork (I only needed to provide the technical descriptions).

Patents issued in the United States are automatically granted in Japan IIRC, so you may want to have your patent issued there.

I have a lawyer that I use for some contract reviews that I could recommend. We have a mutual friend who uses his firm for all corporate legal work.

[Socratesabroad]

Apologies if this is too vague - I thought about filing a patent as a patent translator but I gave up when I couldn't think of a truly novel idea

First off, where exactly will you be filing?

On Japanese patents
http://www.shinjyu.com/articles/01Japanese_Patent/Japanese_Patent.html#english

Overview of the system
http://www.technology.gov/Reports/JapanPatent/pages.pdf

As far as US patents go, filing is considerably easier and cheaper, so I'm sure there are tons of guides or whatnot on the Net. If you truly wanted to get deeply involved, then take a look at the Manual of Patent Examining Procedure, i.e. the Patent Examiner's Manual:
http://www.uspto.gov/web/offices/pac/mpep/index.html

A good thing to do might be to take a look at several previously approved patents in the field of your model/invention. The Tokyo Patent Office and US Patent Trademark Office both make copies of patents available on the Web, so you might take a look at their sites.

http://www.jpo.go.jp/ (oooh, they're redone the site and the English ver.)
http://www.jpo.go.jp/indexj.htm
[to look at existing patents, http://www.ipdl.ncipi.go.jp/homepg.ipdl ]

http://www.uspto.gov/

[yakinoumiso]

Yeah, cribbing from other published, similar patents is definitely the way to go. You can also search and download patents through Lexis-Nexis. It's very convenient if you have access to that service.

I've worked on two and did the major writing on one of them, but probably the only suggestion I can give is to think carefully about how your claims match the type of patent your filing. Of course I know that's the most banal and obvious thing anyone can suggest, but it's probably good to get used to banal if you're writing a patent. [/code]

[yakinoumiso]

Going to start the process very soon for something that I could tell you about but then I would have to shoot you all...

Shooting probably wouldn't help at that point, since disposing doesn't make up for disclosing.

[kamome]

I'd also consider where you want patent protection first. If you are more concerned about protection in Japan, you should hire a benrishi (Japanese patent attorney) to administer the patent. If you are more concerned about protection in the U.S., there are dozens of good intellectual property firms in the United States that you could take your work to. Check out firms in the San Francisco/Palo Alto areas of California.

I believe that Japan and the United States are both signatories to the various international intellectual property conventions, including the one pertaining to patents (the name of which I can't recall right now). But the first issue is where to start your filing so that you get the earliest filing date possible in that country.

And yakinoumiso is right: disclosure is a bad thing. You could even lose the right to claim patent protection if you disclose your idea to anyone.

[cstaylor]

And yakinoumiso is right: disclosure is a bad thing. You could even lose the right to claim patent protection if you disclose your idea to anyone.

I believe if the person is under NDA with a company, then it is permissible to disclose the information.

[GomiGirl]

And yakinoumiso is right: disclosure is a bad thing. You could even lose the right to claim patent protection if you disclose your idea to anyone.

I believe if the person is under NDA with a company, then it is permissible to disclose the information.

Yes this is all very true from both my learned friends.

CS, Given that I think we have an NDA there is some stuff that I would like to talk with you about. Plus I know that you would get it. But not right now.... too much to do first.

[yakinoumiso]

I believe that Japan and the United States are both signatories to the various international intellectual property conventions, including the one pertaining to patents (the name of which I can't recall right now). But the first issue is where to start your filing so that you get the earliest filing date possible in that country.

US, Japan, the EU, and a raft of other countries are party to the PCT, so yes I think that applying for a patent under the PCT does cover you under all of the signitory countries. However, my understanding is that since Patent laws do vary from country to country, my last company would file US, JP and EU patents separately from the PCT.

http://www.wipo.int/pct/en/

And yakinoumiso is right: disclosure is a bad thing. You could even lose the right to claim patent protection if you disclose your idea to anyone.

Yeah, but not necessarily. (again, my understanding is) You may lose PCT rights to patent your invention if you disclose it at a meeting or in a paper. However, under US law, you have one year from the initial disclosure to file for the patent. I think the priority date becomes the initial disclosure. I don't know about the specifics of JP or EU patents on this issue.

CS Taylor is right that an NDA makes a person 'safe', in the sense that if he spills the beans and causes you to lose certain IP rights, you can sue the hell out of him.

[cstaylor]

CS, Given that I think we have an NDA there is some stuff that I would like to talk with you about. Plus I know that you would get it. But not right now.... too much to do first.

When my patent was filed, there's an important rule that I would suggest following during competitve patent research (looking for existing patents that may conflict with the one you want to file): don't send any email to anyone based on what you've found. If you need to talk with gomiboy or your patent attourney, schedule a phone interview and handle the matter over the phone or in person. The courts can issue a subpena for your email.

[omae mona]

]When my patent was filed, there's an important rule that I would suggest following during competitve patent research (looking for existing patents that may conflict with the one you want to file): don't send any email to anyone based on what you've found. If you need to talk with gomiboy or your patent attourney, schedule a phone interview and handle the matter over the phone or in person. The courts can issue a subpena for your email.

Ditto CS here for the most part, though deleting email after the fact seems to be OK. Last time I did this, upon filing the patent application, the attorneys were quite explicit that they wanted paper shredded and email deleted, if it contained earlier drafts of the application. If I remember correctly, they don't want the USPTO fishing around for any material that might suggest prior art, other than what we decided was applicable in the final draft.

Strongly recommend putting the money into hiring an IP lawyer if you actually want to end up with something enforceable that will let you protect your invention. If you just want to be able to say you have a patent for marketing purposes, though, don't bother. At least in the U.S., the USPTO will approve *anything*.

[cstaylor]

Ditto CS here for the most part, though deleting email after the fact seems to be OK.

Ah, but you're forgetting backups. Most companies automatically backup their email systems daily, so even if you delete the email the following day, it was still captured on tape the previous night.

Tapes are usually recycled on a monthly basis, so there's a good chance the data will be overwritten eventually, but why take that risk? In the course of an investigation, backup media will also be requested by the court, so you don't want some email saying, "Hey Jim, I think FlyByNight.com's triple-click purchase feature may conflict with our patent claim" to show up in court, especially if you're claiming that you were ignorant of their prior art.

As someone who's had to testify before a grand jury on a similar situation, the best defense is to not commit anything to disk that you wouldn't want the opposing table to admit as evidence.

[kurohinge1]

Going to start the process very soon for something that I could tell you about but then I would have to shoot you all...

Too late, GG, someone's already got it -



That's what you were thinking of, right?

My only serious tip would be to use someone experienced - it's worth the money to avoid potential grief.

But the beer hat is already taken.

[omae mona]

Ditto CS here for the most part, though deleting email after the fact seems to be OK.

Ah, but you're forgetting backups. Most companies automatically backup their email systems daily, so even if you delete the email the following day, it was still captured on tape the previous night.

The solution is simple: make sure the guys running the backups work for you. Worked great for me

Every attorney I've worked with likes to charge lots and lots for faxes and any physical document mail / courier / whatever. I would have been bankrupt if I couldn't use email.

[cstaylor]

The solution is simple: make sure the guys running the backups work for you. Worked great for me

Never been raided by the FBI, huh?

[kamome]

And yakinoumiso is right: disclosure is a bad thing. You could even lose the right to claim patent protection if you disclose your idea to anyone.

Yeah, but not necessarily. (again, my understanding is) You may lose PCT rights to patent your invention if you disclose it at a meeting or in a paper. However, under US law, you have one year from the initial disclosure to file for the patent. I think the priority date becomes the initial disclosure. I don't know about the specifics of JP or EU patents on this issue.

CS Taylor is right that an NDA makes a person 'safe', in the sense that if he spills the beans and causes you to lose certain IP rights, you can sue the hell out of him.

As I understand it, even with an NDA, you shouldn't disclose the details of the invention to a third party until the patent process has been initiated. This is because the NDA provides limited recourse for the disclosure only, by allowing you to sue under the provisions of that NDA. But the greater value is the patentability of the invention, which you could still lose if you have made a disclosure before initiating the patent filing. I believe in the U.S. there is some kind of provisional filing for patents (and trademarks as well) that will allow you to establish a priority date without disclosing all of the elements of the invention. You can then go out to investors, etc., and make presentations about the product once the provisional filing has occurred. You then have something like one year to file the actual patent.

GG, when you talk to a patent attorney in the US (if that's where you want to start your filing regime), ask about the provisional filing to establish an early filing date.

[ramchop]

Working for Comapany A, had an idea. Shared it with Collaborator who works for University O. He tested it - it worked - and shared it (carefully) with Mr T (from Japan). After some intense negotiation with busininess manager from Universtiy O, a deal was set. Mr T pays all costs, University O gets 5% of all sales, Company A gets 5% of all sales.

So what happens to all the royalties?

Universtiy O splits its 5% in the following way:
33% profit
33% to Collaborator's research
33% to Collaborator's bank account

Company A splits its 5% in the following way:
100% profit.

Bastards!

[GuyJean]

Bastards!

Hello my Rammy, Hello my Honey...

Rammy's back!

GJ

[GuyJean]

OK, back on topic.

It looks like everyone's got things pretty well covered, but I found this site interesting:

http://freshpatents.com/

FreshPatents.com: the latest published US patent applications each week BEFORE(!?) the USPTO decision to grant/deny. New applications are published Monday. Dates listed are for the previous Thursday's official USPTO publication date.

GJ

[kamome]

Bastards!

Yeah, the whole work-for-hire thing sucks. But I thought that an employee who's invention is used by his own company for profit is entitled to the royalties on that invention??

[cstaylor]

Bastards!

Yeah, the whole work-for-hire thing sucks. But I thought that an employee who's invention is used by his own company for profit is entitled to the royalties on that invention??

I would think it depends on the jurisdiction of the received patent.

If Ramchop's invention pulled in several billion dollars, and no thank you cash heads his way, I'd suggest taking it to court.

[omae mona]

Bastards!

Yeah, the whole work-for-hire thing sucks. But I thought that an employee who's invention is used by his own company for profit is entitled to the royalties on that invention??

OK, IANAL, blah, blah, blah, but here's how I think it works in the U.S. I have been on the "bastard" end of the equation (and also the "screwed" end). The inventor of a patent is entirely different than the "Assignee" of a patent. If a patent is not assigned to somebody else, then the inventors have full control over usage of the invention. If the inventors assign the patent (to other individuals, or a company), then they give up those rights and transfer them to the assignee.

So what many companies do is, upon hiring you, have you sign a contract which basically says you are obliged to assign to them all patents you invent. If that's all the contract says, then the company doesn't owe the inventor a cent - they own the invention despite the fact you invented it, and you signed a contract to give it to them for free. Cf course, that doesn't mean it wouldn't be nice if they compensated you.

Japan may be a different story. Nichia Chemical had to pay out 20 billion yen to the employee who invented blue LEDs. Looks like Japanese patent law requires "reasonable" compensation, and I am guessing that trumps any contract that says the company owns the whole shebang.

Now, especially since Kamome is involved in this thread I will make this disclaimer: ignore everything I said above and ask a real intellectual property lawyer if this issue is important!

[kamome]

Now, especially since Kamome is involved in this thread I will make this disclaimer: ignore everything I said above and ask a real intellectual property lawyer if this issue is important!

Thanks, but that would exclude me, too. I've dabbled in IP, but I'm no patent lawyer.

However, I do know that Japan does require companies to compensate employees who invent something for their employers. It's a good question whether employers can contract their way around this.

[NeoNecroNomiCron]

Now, especially since Kamome is involved in this thread I will make this disclaimer: ignore everything I said above and ask a real intellectual property lawyer if this issue is important!

Thanks, but that would exclude me, too. I've dabbled in IP, but I'm no patent lawyer.

However, I do know that Japan does require companies to compensate employees who invent something for their employers. It's a good question whether employers can contract their way around this.

A famous case of this is Shuji Nakamura he invented the blue laser which some large company made a fortune. He suid and one.

[cstaylor]

A famous case of this is Shuji Nakamura he invented the blue laser which some large company made a fortune. He suid and one.

Is that because he r00td their email server with his 733t skillz?

[omae mona]

A famous case of this is Shuji Nakamura. He invented the blue laser, which made some large company a fortune. He sued and won.

Nichia Chemical had to pay out 20 billion yen to the employee who invented blue LEDs.

Yes, these are the same case FYI.

[NeoNecroNomiCron]

Ok ok I submit, ye all won ! America is #1. Please give me democracy by shooting my family.

[cstaylor]

Ok ok I submit, ye all won ! America is #1. Please give me democracy by shooting my family.

Don't get grumpy. This might come in handy:

[ramchop]

If Ramchop's invention pulled in several billion dollars, and no thank you cash heads his way, I'd suggest taking it to court.

It's quite a few zeroes from hitting that milestone. The question I'm mulling over at the moment (when I should be relaxing on the beach) is do I give my job the finger, and skip over to Company B who will give 10% of any IP related income to the inventor. Or stick it out at Company A where there's an exisiting income stream associated with my name and chance of a change in policy?

[Mulboyne]

US Embassy in Japan: U.S., Japan Patent Offices To Launch Accelerated Review Process

The U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office will launch the Patent Prosecution Highway (PPH) July 3, an initiative intended to speed review of many patent applications submitted to both countries. Under the current international patent system, inventors must apply separately for patents from each country in which they desire recognition and protection of their intellectual property rights regarding a machine, process, design or other innovation...The PPH would permit an applicant whose invention has received patentability from either the United States or Japan to inform the other country's patent office of this status. The process would expedite the work of the second office by enabling it to use the patent and public disclosure or sale search results from the first office and thereby enable applicants who have made submissions to both countries to receive patents more quickly...more...