CHANEY LAW FIRM BLOG

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So Long, Farewell

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Today marks my last day at the Chaney Law Firm. I've accepted a position at the University of Arkansas for Medical Sciences (UAMS) in Little Rock. I'll be working in the Biomedical Research facility in the Office of Research Regulatory Affairs, which assists the UAMS research community.

I'm very excited — I've long been interested in the convergence of law, medicine, and technology. My favorite class at W&L School of Law was Professor Timothy Jost's Medical Technology and the Law. It's the only class where I actually referred to my law school notes while handling a case. Here at the Chaney Law Firm we focus on medical technology tools (see the sidebar at right/bottom) that help our clients get well and prove the extent of their injuries. I hope this move will allow me to continue helping even more Arkansans receive the very best of medical treatment.

With my move, the Chaney Law Firm will no longer be handling patent and trademark matters. If that's why you've come to our site, give the firm a call and we can steer you to someone who can help meet your needs.

Thanks to Dad, Mom, Hilary, Taylor, and all our wonderful staff for making the last 6+ years great. It's been a joy to be able to walk to work and see my folks on a daily basis, and I appreciate their support as I move towards a new chapter. Maybe they'll even let me come back and guest post every once in a while.

One love.

Benefits and consequences of provisional patent applications

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Many times when clients come to me for assistance, they've either seen or actually used an online invention help company. From my perspective, all these guys ever seem to do is file provisional patent applications. I rarely see the quality of work I'd expect from a  practicing patent lawyer from these online outfits. This is why the USPTO has a "Scam Prevention" page targeted towards invention promotion firms.

Given the bad rap for provisional applications, some patent attorneys flatly refuse to file them. In my experience, however, a provisional application can be a useful tool. This is especially so when the inventor hasn't developed a full plan for how the product will be made on a production scale. Here are the things I explain to my clients about the provisional process:

Provisional Patent Application Option: If your inventive concept is not yet complete, or information turned up in the patent search requires you to design around prior art, you may elect to file a provisional patent application. This application is not examined on the merits by the PTO. Rather, it establishes an early filing date for your inventive concept. The provisional patent application is good for one year, after which you must either file a regular utility patent application or abandon the invention.

Benefits of a Provisional Patent Application: The provisional application gives you a year in which to develop your inventive concept into a marketable or near marketable form. If your invention is already marketable, a provisional application gives you the option to explore market viability for a year before filing a regular utility application. Some of the requirements of a utility application are not present for provisional applications, so provisional applications are somewhat less expensive than utility applications. 

Consequences of a Provisional Patent Application: New inventive concepts developed in the one-year interim period after filing a provisional application many not receive the benefit of the provisional application’s filing date. For this reason, the provisional application needs to be as detailed as possible when filed. A utility application will require significant additional work beyond that performed for a provisional application. The provisional application may also delay the examination of a utility patent application.

In my view, the inventor must weigh the pros and cons of a provisional patent before electing to pursue one. A client must always give informed consent for attorney decisions, and filing a provisional application for every client takes that choice away from the client. This is why invention promotion firms are wrong to use a cookie cutter approach. Likewise, attorneys that refuse to provisionals for any client may also be doing their clients a disservice.

What do you think are the correct circumstances for using a provisional application? 

How long will my patent application take?

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A couple of patent law professors run a great patent law blog called Patently-O, and they recently came up with a great chart showing how long it takes to get a patent issued once it's been filed — an average of 34 months. If you're interested in patents, you should check out Patently-O — it's got great commentary on most of the important patent cases from the last several years.

You can also check out the USPTO's Patent Dashboard, which I reported on a couple of years ago here. It has lots of information, updated monthly, on pendency statistics for patent applications. An excerpt appears below:

Picasso vs. patents: Good artists copy, but can great artists steal?

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Steve Jobs, Apple's late CEO, loved the Picasso quote: "Good artists copy, but great artists steal." According to Jobs' biography, the famous Apple computer of the early 1980's that came with a mouse and graphics used technology that was actually developed by Xerox. Yet, Jobs became furious when Microsoft quickly adopted the same interface.

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New design elements can be patented. For instance, the "pull-to-refresh" gesture was originally developed for an app named Tweetie, a client for the social media application Twitter. It took so long to get the patent, however, that virtually everyone adopted the gesture in other apps. The inventor claims he obtained the patent "for defensive purposes only", which means that he patented the concept not to sue others, but to ensure that someone else couldn't patent the idea and make him stop using it.

It takes the U.S. Patent Office over two years, on average, to examine a patent application after it is filed. Many applicants take advantage of a "provisional" application process that further extends the time out to 3+ years. Think about the user interface for mobile devices and social media sites from three years ago. They'd seem awfully clunky now, wouldn't they?  

Patents are one way to keep others from stealing your ideas down the road, once you've invested time and money in developing a product, but it takes a concentrated effort to keep up with advances in technology. It takes but a simple glance at the business section of the newspaper to see the patent litigation wars between Apple, Samsung, and Google — these tech giants are duking it out using huge patent portfolios. Oftentimes, these cases result in settlements where the parties cross-license patents to one another to the benefit of all concerned.

So, good artists may copy. But whether they can steal depends on how many patents they have, how soon they were issued, and how much the technology has developed (and moved on) between the time the application was filed and when it issued. (Don't forget that when someone gets caught stealing, they usually have to pay restitution — and some patent damages awards are in the billions of dollars!)

Because patents can take so long to develop, I typically recommend that my clients try to envision where their business will be in 5-8 years. If you have a unique product or service, try to figure out what changes and improvements you'd like to make over time, and include those in the patent application. Later patent applications (called continuations) can further develop more general ideas into concrete, patentable inventions that freeze out competitors.

Please let us know if we can help with your patent needs.