Pipped to the Post

pippedBy nature of my work I meet a fair number of private inventors. Where there appears to be a possibility of obtaining a patent, I explain the process, costs and options. I stress the importance on not waiting for the patent application to issue before trying to raise funds and move the project forward.

Whether or not it is advisable for the client to do a patentability search very much depends on the technology, how well the client is aware of the market, and the client’s business plan.

Frequently an application, perhaps US provisional, perhaps Israel Application, regular US application is filed and a year goes by and the Paris Deadline comes up. Often the client is not in a position to file regular applications around the globe and goes the PCT route.  Not infrequently, 18 months later, even with a positive search report that indicates that the claimed invention is patentable, the money has run out and the client forgoes national stage entry, or merely files in the US.

I rarely get enthusiastic about a new idea to the extent that I’d consider investing in it, but occasionally clients manage to launch successful products and establish companies.

A year or so back, I drafted an application for a client that had an idea that, on searching the Internet and patent databases, seemed to be patentable. When we filed a PCT application we got a fairly positive search report, that cited some art that had not published when I did my original search. Rather later than I had advised, the client started looking for investment. In this instance, a consultant did a new search and found a competing product on the market. With details of the product I could find design and pending patent applications and was relieved to see that nothing had published when I did my search. They managed to file an application and then develop and market a product which, from their website, it is clear to me that they are aware that there is room for improvement. My client is an expert in her field and her husband has complementary expertise. As I team, I thought they’d succeed. We can probably obtain a patent for their product despite the competing product on the market, but if and when they launch they will have to compete with an existing solution that itself shows many of the advantages of their product over earlier art.

History is full of examples of scientists and inventors that discover or invent something about the time that a competitor makes a similar discovery or invention. It happened to Darwin, Newton, Alexander Graham Bell, Tesla and others. It has now happened to a client of mine. It happens.

Even the best of searches won’t uncover something that has not published, even if a patent has been filed. In this instance, the client can continue to develop her product with its assumed improvements but it is not unlikely that the competitor has already filed a patent application for the improvements as well. Even if the client’s product is superior, it will be considered a copy of the first product to be launched.

In this instance, the client could and should, in my opinion, have moved faster, but raising funds, setting up a company, prototying, etc. does take time. Inventors have to realize that even if they do everything correct someone else may beat them to the finishing line with a similar product or with a very different one that supplies the same market need.

All sorts of problems can arise in bringing a product to market, including safety issues, manufacturing issues, regulatory issues, unforseen problems that result in the developing of a workable solution taking much longer than expected or in the budget running out. entrepreneurship is not for the faint-hearted.

Even when enthusiastic about a new invention I try and curb that enthusiasm. I can usually tell if a product will work from a scientific / technology angle and whether it is patentable from a legal angle. That is what I am trained to do. Bringing a product to market and understanding whether the market will be willing to pay for the product is something else entirely. I don’t think betting on horses is a good analogy, but entrepeneurship is a risky business. I can and do observe from the side, and get tremendous satisfaction when breakthrough products are successful and clients makes a go of it.

Categories: Opinion, Uncategorized

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