Wednesday, December 14, 2011

Deciding What to Patent - Avoiding The Tarzan Trap

Patenting is too expensive unless an invention has real commercial value. Of course, the marketplace will tell us where there is commercial value, but the law often prevents us from hearing it before we must decide whether to file. For example, currently you must file a US patent application within one year from your first offer for sale or public use of the invention or you are barred from getting a valid patent. It appears likely the American Invents Act will not provide a grace period for a pre-filing offer for sale or public use if the US patent application has an effective filing date on or after March 16, 2013. Foreign patenting typical provides no grace period for commercialization before you file.

Given the information gap, how can you know what to protect and what to let go? There are a number of factors, but I suggest you consider the generality of the invention. After all, if the invention is too specific in how it solves a problem, competitors can provide another solution without infringing the patent. You also should consider who has this problem, and the likely time frame of the problem.

To understand these principles, imagine you are a painter, and that your task (which has never been done) is to paint a floor without getting paint on your shoes. But before you can start one of your competitors begins. Not knowing better you decide to watch him. He begins quickly, but somehow paints himself into a corner. He is trapped ...what now? In a blaze of understanding he conceives his invention:
A method of painting a floor without getting paint on shoes, comprising:
painting the floor; and
if trapped in a corner grabbing a rope anchored to the ceiling to traverse from the trapped corner to the exit door.
Gee, you say, I wouldn't have thought of that-- does that make the invention non-obvious? Maybe, but who would want to use this? ... Tarzan. Yes, he would want to do this at the end of each job. How about the scope of the patent? It has the Tarzans of the world on the "ropes."

Well having seen all of this you pick up the brush, think about it, and come up with your invention:
A method of painting a floor without getting paint on shoes, comprising:
painting the floor so unpainted floor is maintained as a path for the painter to an exit door.
This invention is general in its terms because it solves a problem that many will need to solve for the forseeable future. Forget my examples, they are silly, but don't forget the principle-- generality. It can speak before the marketplace can clear its voice.

Copyright © 2011 Robert Moll. All rights reserved.