Profile picture
Zach Smolinski @ZachSmolinski
, 25 tweets, 4 min read Read on Twitter
Three Patent Myths, a thread:
In addition to doing general counseling work, I’m a patent lawyer. And I’ve noticed there are a few common misconceptions about patents. In an attempt to address those, here’s a thread on patent myths.
I’ll focus on three Patent Myths: 1) That filing a patent application is one of the first things most tech companies should do; 2) That patents are, in themselves, fairly valuable assets; and 3) That patents provide a right to practice an invention.
Patent Myth 1: New Tech Companies Should File Patents Early
This might be the most costly of all patent myths. There is a concept, common among tech company founders, that filing a patent is one of the first legal steps they should take.
So founders and engineers end up engaging a patent attorney as one of their first tasks. Patent attorneys, usually glad to have the work, take their marching orders from the client and dutifully prepare and file a patent application.
There are a couple reasons this can be a problem. First, often these founders haven’t made sure they actually own the technology. The tech may have been developed under handshake agreements among 3 or more inventors.
Who owns the resulting patent? Founders and executives should tackle this question and enter into the proper employment and contractor agreements, apportioning these rights before they spend thousands of dollars filing a patent application…
…on something their company might not own. Second, patents are expensive, and tech development moves quickly. Often, the time and money spent preparing a patent application would be better spent improving the product. Or talking to customers.
New companies are often better off refining their technology than filing a patent quickly on their initial concepts. (Note that there are exceptions. If you need to go public with an idea, or disclose it without an NDA, you might want to get something on file.)
And, often, the “quick provisional application” will not help. While provisionals have lower requirements for drawing quality, don’t require claims, and have low filing fees, they have the exact same disclosure requirements as full applications.
And most of the cost of preparing a good application goes into that disclosure. Provisionals have their place, but the money and time savings they promise are largely illusory.
Patent Myth 2: Patents Are Particularly Valuable
The idea of this myth is that, whatever else happens with the technology, patents serve as valuable assets that can be liquidated when and if needed.
This is, generally, wrong. First, much of a patent’s value comes from it’s owner’s willingness and ability to sue (or threaten to sue) others for patent infringement. If you don’t have a way to bring them to court, people using your patented technology face little risk.
Second, there isn’t a robust market for the average patent. There are a few entities that will purchase patents from failing or defunct companies, but the prices on offer tend to be surprisingly low.
If you want to sell a car, you can put an ad on Craigslist. There is no “Craigslist for patents” that I know of that offers most patent holders anything of value. Unless they are tied to a willingness to sue, from a strict financial perspective patents are just nice certificates.
(There are other reasons patents usually aren’t worth a whole lot, individually. And there is a lot of nuance to valuation that I can’t address here. But I feel it remains true that the general concept of patent valuation is highly overinflated.)
Patent Myth 3: Patents Provide a Right to Practice
This one is just legally incorrect. But it’s so common that I feel it’s a top-three myth.
Bottom line: Patents do not give their holder a right to practice any technology.
What a patent owner really has is a right to sue others for infringing the patent’s claims. That’s it. And that’s not the same as giving an owner the right to practice the claims.
A law-school analogy is that a patent is like a right to exclude others from a piece of real property. If you can imagine that you can keep others out of a space, while someone else might also have the right to keep you out of that space, that’s similar to what a patent is.
It’s extremely common for new patents to be issued on technology that is a refinement or variation on already-patented technology. If the owner of the patent for the refinement or variation wants to practice the technology…
…then that owner should, separately, do some work to gain comfort that their use of the technology won’t land them as a defendant in an infringement lawsuit from the owners of those previous patents.
This is done via patent searching, infringement analysis, and maybe by attaining licenses or developing invalidity or noninfringement positions. That’s called “clearance” or “freedom to operate.” It is not done by filing a patent application. Those are two very different things.
In fact, a company releasing a new product (especially if it’s highly visible), or getting purchased by a bigger company (thereby increasing visibility), may well be better off putting resources into freedom-to-operate work than into filing a patent application.
If you understand these three myths, you’ll know more about patents than probably 99% of people. And you’ll have a strong basis to begin a conversation with a patent attorney, when the time really comes to talk patents.
Patents, properly acquired, maintained, and asserted, can provide substantial value to a business. But they are only one piece of the business-building puzzle, and that’s how they should be treated.
Finally, please note that much of this is my opinion. There are multiple viewpoints on these topics, and your mileage may vary. If you have serious questions about patents, talk to a good lawyer.
Missing some Tweet in this thread?
You can try to force a refresh.

Like this thread? Get email updates or save it to PDF!

Subscribe to Zach Smolinski
Profile picture

Get real-time email alerts when new unrolls are available from this author!

This content may be removed anytime!

Twitter may remove this content at anytime, convert it as a PDF, save and print for later use!

Try unrolling a thread yourself!

how to unroll video

1) Follow Thread Reader App on Twitter so you can easily mention us!

2) Go to a Twitter thread (series of Tweets by the same owner) and mention us with a keyword "unroll" @threadreaderapp unroll

You can practice here first or read more on our help page!

Did Thread Reader help you today?

Support us! We are indie developers!

This site is made by just three indie developers on a laptop doing marketing, support and development! Read more about the story.

Become a Premium Member and get exclusive features!

Premium member ($30.00/year)

Too expensive? Make a small donation by buying us coffee ($5) or help with server cost ($10)

Donate via Paypal Become our Patreon

Thank you for your support!