One of the coolest things about being a patent lawyer is talking to people about protecting their ideas.
I used to receive phone calls, quite frequently, asking me about the procedure for preparing and filing a patent application. I enjoyed giving appellants the big picture, although I knew from experience that most couldn’t afford to go through the patenting process with me.
But I kept my faith that most patent-worthy innovations eventually found the support they needed to support the patenting process and gain patent protection. You know: the good old days.
Today, I no longer receive these calls. There could be a number of reasons. One of them could certainly be that my practice has evolved over the years to focus more on contentious issues. As a result, I spent less time on the front lines of patent litigation.
But I suspect the main reason is that inventors are giving up on the expectation that patent protection is worth it. And I understand. If I were to get a call these days, I couldn’t paint a rosy picture for future patentees.
In the past, such a visitor would launch into an enthusiastic account of the development of an invention. No matter if I thought it was patentable right away, it was generally a high-energy, interesting, and fun conversation.
But these days, I’m afraid the conversation will take on a different tone. It might look more like this:
“Hi. Thanks for calling. I’d love to talk with you more. But first, let me introduce you to a few things to consider. Hang in with me here.
“Without you telling me anything confidential about your invention, does she implement any software?” Is that done? To pull. Trying to get a patent may not be the best route for you.
“Yes, yes, I understand. I know everything contains software. But you can no longer count on the courts to recognize these types of inventions. Even if you receive a patent, you will have a hard time enforcing it.
“And, keep in mind that by filing a patent application in the first place, you are disclosing your precious invention to your competition. Maybe consider the protection of trade secrets?
“Still interested? Are you sure? Okay, so hang on to your seat cushion, because you’ve gone for a bumpy ride.”
“Here is the process. …
[Here I describe the process of drafting, filing, examining, and possibly issuing a patent].
“Now this is all going to cost you about $ 25,000. It doesn’t look like much, I guess, in the grand scheme of things. And you could end up with a patent.
[Short pause—while the potential client reflects on whether to take out a home-equity loan or sell the second Subaru.]
“Really? Do you want to continue? Okay.
“Did you say you identified offenders?” Who are they so that I can manage conflicts.? Oh, okay: Apple, Facebook, Twitter, Google… yeah, the usual suspects. Of course we can erase all from these.
“And, you want to file in the Eastern District of Texas. Yes, it was a good forum if you were a patent holder. But there was a Supreme Court ruling recently, in a case called TC Heartland. Do you know this one? No? Well the ruling means you probably can’t file in the Eastern District.
“With these defendants, you could file in the Northern District of California, but I wouldn’t recommend it. It’s the most hostile neighborhood in the country, I can’t imagine why. Let’s see, where are your business operations? Ah, Alabama? Okay, well, today is a Great place to file a patent litigation, at least against Apple.
“Please keep in mind, however, that once you file your complaint, it will likely take you another two years before you can prosecute offenders.
“Why? Well, first you will have to survive a petition filed by an infringer to dismiss your case on pleadings because your patent is allegedly abstract.
“Yes, abstract. Have you ever heard of Alice? No, not the book, but a similar genre. Another case before the Supreme Court. Alice Corp. vs. CLS Bank, dealing with abstraction in patents. If your patent turns out to be abstract, the claims consist of parts that are not eligible for patent protection.
“It works like that. A defendant files a petition making an analogy between your invention and something it is not. You know, like comparing the swingarm speed of a commercial dishwasher to that of an airplane propeller. Or like comparing a database sorting system to putting books on the shelves in the library. Or, comparing a new arrangement of computer RAM to a barista tracking coffee orders. Something stupid and totally unrelated like that.
“Then, based on the finite patent knowledge of the generalist district court, the court reviews your pleadings and agrees with the defendants. For whatever reason. For example, the court had a headache that day, or got up on the wrong side of the bed and hit his toe. Or maybe think you are a troll. No matter.
“The court therefore considers that the elements of your patent claim are not new and that, when considered together, the court did not find an ‘inventive concept’.
“No, that there is a patented ‘inventive concept’ is not a question of fact. According to the Federal Circuit, this is something that any generalist judge is capable of determining on pleadings.
“So the court declares your patent invalid. And, you think, well, okay: the judge was wrong, but I can appeal.
“Oops. The Federal Circuit is currently operating at an assertion rate of over 90% for cases appealed from a dismissal on abstract pleadings. So: patent killed.
[Lots of inventor explanation on how his invention is not abstract.]
“Yeah sure. I get it. Convinced it’s awesome? Okay. As long as you think it will survive being compared to a barista’s methods of tracking coffee orders or maybe a toy. dinosaur with a red dot for identification.Then you have to consider the next moves of the alleged offenders.
“Assuming you survive Alice, the defendants will then ask between the parties examination by the Patent Trial and Appeal Board of the Patent Office. It’s a fantastic new tribunal established by Congress basically to spray bullets and kill as many patents as possible. That’s what it does — destroys the patents.
“And your opponent will then ask the district court to stay the infringement case pending the determination of one or more IPRs filed with the Patent Office.
“Remember: these IPR procedures were developed under the America Invents Act, but not to promote Americans who invent, mind you. Instead, they allow the PTAB to take a “second look” at your patent. It’s the language of patents to spray bullets.
“Each of your defendants will file a separate intellectual property rights petition explaining why they believe your patent is invalid. Of course, there is no presumption that the Patent Office got its decision to grant the patent right the first time. So do not look for any presumption of validity to help you.
“And each of those little IPRs will cost you around $ 300,000.
[Muffled coughing, throat-clearing, a sniffle possibly. Even crying]
“Sorry, okay. Yeah, are you okay? Still with me here? Do you want me to continue?
“Of course, yes, I understand that you could possibly afford to go through the Patent Office and spend $ 25,000 to get the patent. But the patent you get would not have been tested. Patents that have not been tested by the PTAB are no longer really patents. So, to test it, the cost is $ 300,000. By DPI. Oh, plus your initial $ 25,000.
“Is it still in your budget?” Consider this then. If your patent survives the IPR – or all of it – then you can go back to the district court to pursue your patent infringement litigation. But the statistics for surviving DPI are grim. North of 90% of all patents subject to IPRs are either removed entirely or have claims invalidated. And, as with the requests for inadmissibility, the Federal Circuit confirms more than 90% of the decisions of the PTAB.
“But, let’s just assume that your patent also survives this PTAB test. Back in district court, the same defendants who filed the IPRs will now pursue other disability defenses, but at least you can pursue your infringement case in tandem.
“So back to the viability of getting a patent on your invention. It can be great. It may be a valid topic. It may be revolutionary. But the real issue here is whether you can afford the application fee, the PTAB confirmation fee, and the fee to complete an infringement dispute.
“At this point, litigation alone will cost you around $ 2 million to go to trial. We can discuss the appeal after that. What if you lose? Competitors continue to use the invention you originally disclosed to them in your patent application. Free.
“So for full disclosure of your invention to your competition as part of filing a patent, this is what you get:
- A paper document that says US Patent, and that provides a roadmap for your competition on how to make your invention. Cost to you? $ 25,000.
- The right to file and pursue a patent infringement action. Cost to you? About $ 2 million in total. Out of the door, maybe $ 400,000 in the first two years, due to stay. And yes, it’s going to take you a long time.
- The fun opportunity to try and persuade a disinterested court with no patent expertise, let alone experience in your technology, to uphold the validity of your patent against a silly analogy – for example, comparing your invention to a barista of coffee. Cost to you? About $ 50,000.
- The delicious opportunity to build muscle and defend several between the parties exams at the Patent Trial and Appeal Board, which has a sign above Dante’s Door to Hell: “Lose all hope, you who walk in here.” Cost for this fun? $ 300,000. Each.
- The dubious right to appeal any unfavorable rulings on district court eligibility or the validity of the PTAB to the federal circuit, a court that now upholds these types of rulings more than 90% of the time. But what is it: it’s only $ 250,000 more, isn’t it?
Meanwhile, what are your competitors getting? The roadmap of your invention, delivered directly to their computer screen from www.uspto.gov. Now it is “effective offense”.
“So for just $ 2,625,000 you can disclose your most important innovation to your competition, and they can use it and make sure you really don’t have any rights to it.
“Does that sound like a good deal to you?” . . . . No, I’m sorry, I can’t take this matter urgently.
[Click. Beep, beep, beep, beeeeeeeeep … .]