fwd from the site :
http://www.edn.com/article/CA6449495.html?industryid=47048
You have a new invention and are considering filing a patent. The question is, does it make sense to file? You need to weigh several complicated factors to make a good decision.
By Jay Sandvos, Bromberg & Sunstein LLP -- Electronic Business, 6/20/2007
Bill Clinton was maybe the smartest US president in living memory—a Rhodes scholar and Yale Law School graduate, to name just two of his academic accomplishments. Yet he nearly lost his presidency because of an incredibly stupid relationship with an office intern. Among other things, that relationship demonstrated the difference between intelligence and good judgment.
Being smart is not the same as having good judgment. The inventors of fabulous new inventions are very likely very smart. And hopefully their patent attorneys are smart in their own way about patent things. But between them somewhere, good judgment needs to come into play.
What is good judgment? I think it means making good decisions. A good decision demonstrates and is an act of good judgment. Over the life of a patent, a "plurality of decisions" arises.
First things first
The first opportunity to demonstrate good judgment is in deciding whether and when to file a patent application in the first place. That simple question can involve numerous factors, and you need to consider and give each its own level of importance to make a good decision and demonstrate good judgment. The issue really is not about how smart the inventor is—that can be accepted as a given, based on the existence of this brilliant new invention. Instead, the question is, Does it make sense to seek a patent for the invention?
You need to answer several questions to make this determination. How new is the invention? If it is not new enough, everyone would be wasting time and money on a patent. What is a reasonable guess about the potential value of a patent on the new invention? Would the patent be directed at blocking competition or at creating licensing revenues? How hard is it going to be to prepare claims, a description, and drawings for a patent application? Is there an appropriate budget for such an exercise? Unless the answers to these questions are reasonable, seeking a patent may be just an expensive waste of time and money.
Another test of judgment at around this time is in figuring out where to get a patent. Should you file only in the United States? How about Europe and Japan? What about Canada and Australia? China? Fortunately, the United States, Europe, and most other countries are members of the Patent Cooperation Treaty, which permits a single patent application to serve as the basis for a patent in the member countries. But it is a long, expensive process and it quickly costs several thousand dollars in fees just to file a treaty application. Moreover, once the treaty application enters into the various national patent offices, foreign patent attorneys need to become involved, and that means more fees.
So the question is, what is your best judgment about the potential value of a patent on a given new invention? Is it worth increasing your costs many times over to get patent protection outside the United States? If you believe that the invention is really valuable, it makes it easier to swallow those foreign filing costs. But often the potential value of a patent for a new invention is hard to know early on. Preparing and filing a U.S. patent application can be a reasonable cost option under those circumstances, but is it really worthwhile to commit to all those foreign costs? If the invention turns out to be really valuable, you'll be wishing you had protection in Europe and Japan (and maybe elsewhere too). But if it turns out that the invention never really amounted to much, you'll be regretting those foreign costs a lot. It's a tough call. There are no simple rules of thumb, but whatever decision you make reflects your best judgment at the time and you are stuck with the consequences.
The point is that this whole process is not really about intelligence as much as about judgment—the ability to make good decisions about whether, when, and how to file and pursue a patent application. So dealing with patents intelligently is about more than being intelligent, about more than understanding complicated new technology. It is also about weighing many complicated and interrelated factors to make good decisions that reflect good judgment.
Jay Sandvos is a partner with Bromberg & Sunstein LLP, a Boston law firm focusing on intellectual property and business litigation.
Labels: patent application