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PROTECTING A BRAINSTORM; NOW THAT YOU HAVE THAT MILLION-DOLLAR IDEA, BE PREPARED TO SPEND A FORTUNE IN TIME, EFFORT AND MONEY TO DEFEND IT.

Series: FROM IDEA TO MARKET Sun Sentinel; Fort Lauderdale; Nov 9, 1998; MARCIA HEROUX POUNDS Staff Writer;

Abstract:
"I had to restructure it so much it got too restricted. It was not worth it. That's one of the things happening today. The patent office has some 5 million patents in it," [James C.] Hobbs said. The inventor, who often does patent searches in Washington, D.C., describes the U.S. Patent & Trademark file room as longer than a football field, with stacks of files 7 feet high. "You can barely walk through the stacks."

To be considered for a patent, an inventor has to show patent examiners that his idea is new and not obvious, said Robert C. Kain, who has practiced patent, trademark, copyright and trade secret law for 15 years in Fort Lauderdale.

To stem off competitors or copiers, inventors can apply for a provisional patent. For $75, the provisional patent gives the inventor one year to prepare his patent application. It offers no protection except to record your invention with the patent office.

Full Text:
Copyright Sun-Sentinel Co. Nov 9, 1998

Second in a series Informational box at end of text.

James C. Hobbs II is an accomplished inventor. He has more than 75 patents to his name including complicated medical devices for heart surgery. But after spending several thousand dollars seeking a patent on one of his simpler inventions, a sun shade to wear at a football game, he gave up.

"I had to restructure it so much it got too restricted. It was not worth it. That's one of the things happening today. The patent office has some 5 million patents in it," Hobbs said. The inventor, who often does patent searches in Washington, D.C., describes the U.S. Patent & Trademark file room as longer than a football field, with stacks of files 7 feet high. "You can barely walk through the stacks."

That's why, Hobbs said, it is best not to invent to make money. "If you make the product right the money will come in. But for every one you do, you probably disregard 1,000 ideas. I do it for the challenge."

An inventor may think he has the best idea in the world, but he has to survive many layers of examination and costly fees before he can hold a patent certificate with the blue seal and ribbon in his hand.

To be considered for a patent, an inventor has to show patent examiners that his idea is new and not obvious, said Robert C. Kain, who has practiced patent, trademark, copyright and trade secret law for 15 years in Fort Lauderdale.

Obtaining a patent is a costly venture. Although it only costs $10 to file a two-year disclosure document that gets the time of your invention on record, the costs keep going up from there.

Total patents can cost $5,000 to $10,000 and often take at least two years to process, patent lawyers say. That cost may include a patent search, with legal fees, government filing fees and amendments. There is no assurance in the end that the inventor will receive a patent for the money spent.

Why apply for a patent? Because if your product is a success, it gives you the right to stop other people from manufacturing, using or selling your invention.

To stem off competitors or copiers, inventors can apply for a provisional patent. For $75, the provisional patent gives the inventor one year to prepare his patent application. It offers no protection except to record your invention with the patent office.

"It is a decent barrier to somebody filing his own patent on your invention," said Rick Martin, a former IBM staffer from Boca Raton who now is a patent lawyer in Colorado.

While a patent is pending in the U.S. Patent Office, no one can pull it up on a computer screen and find out about your invention. Full disclosure is made only after a patent is awarded. After that, anyone -- including people outside the United States -- can look up your patent information, which may include a description, claims, drawings and formulas.

A patent pending "wards off other potential manufacturers who are looking to come out with the product," said Pamela H. Riddle, chief executive of Innovative Product Technologies in Gainesville. "They don't know when that patent pending is going to turn into} a patent," Riddle said. Under infringement laws, the violator can be liable for triple patent-law damages.

Another common complaint among inventors is the high cost of defending a patent.

"Patents are only good if the underlying product is successful as a business," Kain said. "It can cost $150,000 to $1 million to defend it. The average is $750,000."

The cost may be higher without a patent: If your product does take off in the marketplace and it is not patented, anyone can replicate it.

Sometimes, it only takes a letter from your law firm instead of a court battle to ward off copy-cats.

Once you can clearly defend your patented invention, it becomes more valuable in the marketplace. The economic premise is if you have a patent covering the product you're making, you can charge more for the product and keep competitors from making the same thing, Kain said. "It's a government-approved monopoly for 20 years."

The patent process

Inventors need to follow a patent process that includes:

Documenting the invention. Write in a book your notes and considerations in your invention's creation. Sign each page and have it countersigned by someone who also signs a confidentiality agreement not to disclose the information.

Talking with a lawyer specializing in patents who is willing to testify on your behalf about your documentation.

In selecting a patent lawyer, Kain recommends the inventor ask whether the lawyer have experience in patents and trademarks, find out whether that experience fits with his business goals and whether he has the technological, engineering or scientific know-how to understand what the inventor is pursuing.

"You select a patent attorney like you select a doctor. Get recommendations," Kain said.

Doing a patent search via the Internet at www.uspto.gov and requesting a search from a patent lawyer or other consultants that have experience. The Small Business Development Centers at Florida Atlantic University and Florida International University help inventors with patent searches. But Kain warns that computerized searches only go as far back as the 1970s and the Web site is not easily searchable by the inexperienced.

Martin said it is best to retain a patent lawyer who can do a manual patent search at the patent office in Washington, D.C.

Kain said there are two basic requirements for the Patent Office to award a patent: The idea or design has to be new -- different in some way from everything else patented. It also has to be non- obvious: something that is more than a simple engineering change.

There are two types of patents to apply for, depending on your invention and how much protection is warranted:

Utility patent: This is the most valuable type of patent and most difficult to obtain. Certain pharmaceuticals and pacemakers have utility patents. Under a utility patent, an inventor also can patent a process.

Kain said a recent federal appellate court ruling has made it much easier to receive a patent on computer software.

Design patent: This protects the way a product looks. Designers of portable telephones and sneakers might seek such a patent. Most experts say design patents are fairly useless in the marketplace because someone can mildly alter a design and copy your idea.

Foreign patents costly

Martin said one of the first strategies is deciding whether the product is marketable in a U.S. or international market. For most South Florida inventors, the U.S. market "is plenty big," he said.

Global patents are even more costly. A European patent costs $60,000 to $100,000 including searches, legal fees, amendments and other process fees; it takes about five years to get, Kain said.

"In almost all foreign countries, the government believes patents are filed by companies and companies can pay much higher fees," Kain said. That's why there has been greater innovation in the United States compared with other countries, he said. "The U.S. is the cheapest and quickest place to get a patent."

Inventors can ease their way into the world market by joining the Patent Cooperation Treaty, which represents most of the industrialized nations of the world. If the inventor has filed for a U.S. patent and has followed non-disclosure rules, he can join the Patent Cooperation Treaty, which gives the inventor 1 1/2 years to file his patent application in each country that belongs. The total cost is about $5,000.

"In the long run, it is the hope that the treaty} will form the basis for a worldwide patent," Kain said.

A patent also must be maintained. For a U.S. patent, fees are paid three times over the 20-year life of the patent. Still, that patent is always open for challenge and review by patent office examiners.

Hobbs, the inventor, said he engages a patent lawyer to determine how a patent could be broken before it ever happens. "There are 23 ways to break a patent," he said. That research can come in handy to scare off challengers.

Says Martin: "A patent is like a marriage between you and the government. It can be divorced at any time."

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