OT; Provisional patent v selling and pocketing money

Some advice please.

A while ago a friend/ colleague , Jim, asked me to solve a problem. I came up with an idea and, between us, bashed out a product ptototype .

Now Jim's found a potential buyer (in US) who wants to purchase outright and apply for a patent.

All fine by me, but the I'm not sure if I'm happy about a patent in anyone but in Jim's and my name (not money, pure vanity ;-))

So, do we apply for Uk provisional patent ? cost? any recommendations for patent author?

Bill

The patent can only be given to the actual inventor, you and him. If they want to patent it, it will still be in your name. You will then assign the patent to them, normally for some amount of money.

Bill, ...be prepared to spend a lot of money getting patents in this country, it's a legal nightmare with every bugger taking their skim, .........IMO;- unless it's something that's going to make you 100s of 000's plus, take the money and run.

Something else to consider, .....once it's patented, an invention is in the public domain, there fore open to copying, and it's YOU who has to pay to defend it.

Unless you've a great deal of money, clout and a team of lawyers to back you up, a patent or even design copyright is not worth the paper it's written on.

FYI http://www.dehns.com/site/information/information_sheets/the_cost_of_a_patent/

My 2€..
Forget the patent as vanity..
Since it needs to be assigned to You guys ... charge n x £ / hr, to get any patent stuff done, to the buyers.

Sign away patent assignments to the buyer, sure, why not, ...
since You wont make any money on the patent anyway, ever.
Best gig there is.

The new bloke pays for it, pays You guys for Your time, and You have zero liability/risk ..

Patent stuff takes 10-100x longer, and 10-100 x more money, than You think.
Get the other guys to pay for it .. fantastic !

Whatever You were told re:patents by the blokes in the rip-off industry is basically bollocks.
There is == zero relationship between quality/results in patent guys/firms, and == 0 relationship in quality/responsibility.

No matter what, the guys looking for patents will always be hit for more money, with zero guarantees, and surprising fees/hours/extra work of great cost popping up all the time.

Bill? .Bill mate, hello, ..........you alright mate - it's gone very quite

I'm in the US and I have learned, a patent is only as good as your ability (money$$$) to defend it.

If they want it patented and you sell it to them, be sure that they pay ALL costs of getting that patent.

Wild West said:

I'm in the US and I have learned, a patent is only as good as your ability (money$$$) to defend it.

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I hate to call bullshit but I am going to call bullshit here.

I was one of the co-founders of two companies that sold for a combined $18,000,000 for their 12 patents. Yes they cost $$$ but if you have a valuable enough product they are worth a lot. It really depends on the product.

Calling Bullshit here.

Dan

Billtodd said:

Now Jim's found a potential buyer (in US) who wants to purchase outright and apply for a patent.

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The buyer's intentions should have absolutely no affect on your decisions of whether to sell and whether to patent.

In other words, don't patent this product just because this "potential" buyer wants to patent it. Only patent it if you intended to make a business out of it all along.

Techguy said:

I hate to call bullshit but I am going to call bullshit here.

I was one of the co-founders of two companies that sold for a combined $18,000,000 for their 12 patents. Yes they cost $$$ but if you have a valuable enough product they are worth a lot. It really depends on the product.

Calling Bullshit here.

Dan

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Well, you're both right.

A lot of people have no intention of selling their businesses. Then there are people want to sell their business, but can't, because it's in an industry with low investor appeal. For these folks, Wild West's post is true.

On the flip side, a company in a hot industry can get a significant boost in value by having a healthy patent portfolio.

You gotta ask.... "Can you GET a patent now?"

The guy who wants to buy, if you have "disclosed" to him without an NDA in place, can get a patent on it and tell you to kiss off.

And, such disclosure can keep you from getting a patent, depending. In this case he likely wants the patent and it's not a problem, but he might still cut you out of the deal.

Techguy said:

I hate to call bullshit but I am going to call bullshit here.

I was one of the co-founders of two companies that sold for a combined $18,000,000 for their 12 patents. Yes they cost $$$ but if you have a valuable enough product they are worth a lot. It really depends on the product.

Calling Bullshit here.

Dan

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Did you even read my short post?? With your vast experience please explain how you would defend an infringement on one of your patients without an ass load of money to pay attorney's? Are you thinking they take these case on a contingency? Try again. If you're a little guy with a patent and somebody decides to copy your idea and go to market with it you HAVE to defend it to keep it, patent law says so. That involves money and lots of it depending on the complexity of the patent in question. This, unless you want to be your own attorney.

Wild West said:

Did you even read my short post?? With your vast experience please explain how you would defend an infringement on one of your patients without an ass load of money to pay attorney's? Are you thinking they take these case on a contingency? Try again. If you're a little guy with a patent and somebody decides to copy your idea and go to market with it you HAVE to defend it to keep it, patent law says so. That involves money and lots of it depending on the complexity of the patent in question. This, unless you want to be your own attorney.

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It worked out well, I rest my case.

Both of the companies were started with the intent of selling the developed technologies. We spent about $20,000 per patent.

As to defending them, we never had to in part because they were very well written. We would have defended them if needed. The value is in selling the rights before you have competition.

If you don't have a valuable design that can't be easily knocked off I would suggest a provisional patent application since they cost almost nothing. They tend to scare away competitors from copying since they don't know what claims have been made until they are published.

But what the hell do I know?

Dan

Techguy said:

As to defending them, we never had to in part because they were very well written. We would have defended them if needed. The value is in selling the rights before you have competition.

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So you answered my question; you never had to defend one of you patents. But, for the little guy, such as myself, that makes the bills every month but little more, if someone knocked off my IP there is no way I can defend it which was the original reason for my post and there are many small companies that do not have the resources to put up a defense. Patent law, as you know requires you defend it, if not it goes public domain. If one of your IP's required $1M+ to defend it would you have the money? Last person I talked to who defended his patent the attorney required $50K up front to get started and he ended up spending over $250K until he had to give up. It ain't cheap

BTW, is this your company?

WW is correct.

Our patent attorney told us that the average cost for defending or attacking a patent is a couple million dollars. That was defending against a claim that it was invalid, but it's likely similar for a standard infringement, if it gets nasty.

If it gets nasty, you end up having to defend and prove infringement of the relevant claims, one by one, against claims that they did not infringe. Time and money. Then, they may attack the whole patent and claim it is invalid, in which case you have to defend everything. Even MORE time and money. The winners are the lawyers.

Depends on the company that infringes, and on the economics. We had the 2 mil, but opted to let it ride and pay the royalties to the holder of the worthless patent that was not new and novel (which we could prove) simply because we could not make back the costs plus profits etc in a reasonable time on the product.

There was also a problem with an unfriendly court district, in that case, which was biased in favor of patent holders.

So, if you can make back the money, you need to defend the patent. If not, it may be necessary to let it go into the public domain just on economic grounds. harsh, but true.

BUT, if the company that infringes is smaller, then you just have your attorney write and tell them to cease and desist, and pay back-royalties. You can end up waiving the back-royalties to stay out of court, but a smaller opponent may be able to be scared out of continuing, and may even pay up. It pays to look tough and act tough, as if you were willing to go after them in court.

Techguy said:

It worked out well, I rest my case.

Both of the companies were started with the intent of selling the developed technologies. We spent about $20,000 per patent.

As to defending them, we never had to in part because they were very well written. We would have defended them if needed. The value is in selling the rights before you have competition.

If you don't have a valuable design that can't be easily knocked off I would suggest a provisional patent application since they cost almost nothing. They tend to scare away competitors from copying since they don't know what claims have been made until they are published.

But what the hell do I know?

Dan

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WOW! $20k mightn't be a lot of money to you, .......but it's a small fortune to me.

Plus I've a strong suspicion the OP is an individual and not a company.

Limy Sami said:

Bill? .Bill mate, hello, ..........you alright mate - it's gone very quite

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Sorry, had to sleep ;-)

Plus I've a strong suspicion the OP is an individual and not a company

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A company of two ;-)



Perhaps I have phrased the question incorrectly; What we really want is to stop ourselves being ripped off , as soon as we disclose the details. Maybe an NDA is all we need ? How easy/expensive would that be to defend in the US (from the UK)?

Hi
One of the major flaws of US law is that in cases I am aware of, the defendant pays costs, win or lose. In UK, Australia, New Zealand and other places with a civilized legal system, the loser pays the winners costs plus awarded damages. It is one of the key reasons why the USA is so litigious compared to other court systems. The US system is great for the legal industry and the wealthy, but not good for justice and the small guy.

I have been on the receiving end of frivolous litigation by a USA company designed to make the defending cost so high (over $USD2m) that they hoped they would get $$ for an out of court settlement without them actually going to court. They terminated their court action when they were barred from submitting tenders for work they wanted.

Here is a rough guide to the UK patent process which includes a note on allocation of costs.

ewlsey said:

The patent can only be given to the actual inventor, you and him. If they want to patent it, it will still be in your name. You will then assign the patent to them, normally for some amount of money.

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That would be fine, but i think Jim's concerns are about securing IP prior to disclosure , because it is a simple idea and could easily be copied .

Techguy said:

I was one of the co-founders of two companies that sold for a combined $18,000,000 for their 12 patents. Yes they cost $$$ but if you have a valuable enough product they are worth a lot. It really depends on the product.

Dan

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Nice :-)

Sadly our invention is probably only worth a few thousands. It is unlikely to be the 'new wheel'