Timeless Patent Law Advice to Inventors
In 1883 J. McC. Perkins (“counsellor at law and solicitor for patents and claims”) published a short work (24 pages) with a long title: “Letters-Patent for Inventions: Why They are so Often Worthless; How to Obtain Valuable Patents; and How to Avoid the Losses and Disappointments Which Befall Most Inventors and Patentees.” Given the subject matter, it is worth a brief examination of his advice to see how much of it is still good today.
First, Perkins correctly observes that the quality of the patent claims matter. The claims of a patent set out what the patentee has the right to exclude others from making, using, selling, and offering for sale. Perkins cautions against employing practitioners who will “obtain a patent with some sort of claim, no matter what it may be.” As he states, the “right to sue has no real value until there is an infringer,” and no one “will assume the unprofitable trouble of infringing a worthless patent.”
A patent is a business tool. Its primary value is to be able to prevent competitors or potential competitors from doing (making, using, selling, etc.) something that otherwise it would be profitable to do. If the claims in a patent are so narrow that a competitor can get around the claims by excluding some minor feature, or by making a trivial change, the claims are essentially useless for their main purpose (although the issuance of a patent may still have advertising value for a business).
Perkins also rightly identifies the on-sale and public use bars that can defeat patentability if the application is filed too late, although the grace period for pre-filing activities has been reduced from two years to one year since 1883. However, it is important that most countries outside the U.S. now have an absolutely novelty standard, with no grace period at all. In other aspects, patent standards have been mostly harmonized among the various national systems. It is certainly not the case now that foreign patents are, as Perkins opined, “as a general rule, granted to any one who will pay for them, whether he is the inventor or not.”
Another thing that has changed since Perkins’s book is the timing of patent prosecution. Perkins wrote that “the inventor’s interest, as a general rule, will be best served by allowing his application to remain in the Patent Office until he has got his invention introduced, and proved its value, and until the infringer begins his travels.” This made sense in Perkins’s time, when the patent term was 17 years from the grant of the patent. But in 1995 the patent term changed to 20 years from the effective filing date of the application. Thus, for applications filed now, the longer they are bottled up in prosecution at the USPTO, the shorter the term of the issued patent. There can be circumstances where it makes sense to delay issuance, or to file chains of applications claiming different inventive aspects, but the advice of Perkins no longer holds as a general matter in this realm of practice.
Finally, Perkins quotes an 1869 Supreme Court case, Merrill v. Yeomans, 94 US 568, about the need for care in the preparation and prosecution of patents, that there should be “accuracy, precision, and care in the preparation of all the papers on which the patent is founded.” Given that need for precision and for knowledge of the system, it is important to get qualified legal representation from the start. As Perkins writes, “how much better it is to buy the best legal advice and work at the beginning” of the process, “no matter what the cost may be.”
At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. Our attorneys are knowledgeable on a wide range of domestic and international IP issues, and we partner with Firms around the world to better serve our clients.
Someone from the Renner Otto team would be happy to discuss this topic or any related Intellectual Property matters.