BlueIron's Patent Myth Podcast

How BlueIron uses the techniques in this book for investing in startups.

Assignments and provenance Good patents are easy to read References cited Invention rating checklist

How to manage the patent process, from picking the right invention to getting the patent through examination.

Investing in Patents Chapter 2 How Startups Use Patents  

Chapter 1 of Investing In Patents, Making the Business Case for Patents

Introduction to "Investing in Patents"

Webinar from 9 Apr 2020. How do you manage an IP portfolio? You need tools. Here are two simple questions to ask: 1. Can you tell if someone infringed your patent? 2. Can someone design around your patent? Armed with these two tools, you can manage most of your patent portfolio.

Patent examiners are widely maligned by applicants and patent attorneys, but they are actually the most underutilized resources that make sure you get good patent assets. Examiners have an immense amount of knowledge and experience, which a good applicant can put to use - if they know how.

Patent searches can be *harmful* or helpful. Big companies have legitimate reasons why they do not do patent searches, but these reasons are not as important to startups. Startup companies can err by deluding themselves that "nothing is out there" when, in fact, the only thing we can tell is that we have not found the prior art - yet.

Non Disclosure Agreements and Proprietary Information and Inventions Agreements are far more important than people realize - especially for startup companies. Some entrepreneurs worry about people "stealing" their ideas, but that fear is misplaced. The real issue with whether your company actually owns the IP that it creates.

Many entrepreneurs treat patent inventorship as an award system.  It is a free, painless way to reward someone on your team by adding them to a patent. Improper inventorship is one of the easiest way to completely invalidate your patent. Treat inventorship with respect, and make sure you list every inventor, but also make sure you do not include anyone who does not fit the legal definition.

What is the worst symbol for an invention?  It is the light bulb.  Edison did 1000 experiments to get to the light bulb.  It was a long, methodical, painful process - then the "light bulb" moment. Good invention - and good entrepreneurship - comes from the same methodical processes, not some flash of light. Come to think of it, the light bulb actually does make a good metaphor for inventing.

Don't ask the barber if you need a haircut. The conflict of interest between the client and the attorney is huge. We look at an example of an inventor who thought he was getting a "good" patent but it turns out that the patent attorney was only responsible getting "a" patent.  The client was disappointed when his invention was "ripped off" and he learned it was his attorney's fault. The bottom line: it is the client's responsibility to make sure you get a valuable patent.

Inventors - and virtually everyone in the patent process - have huge blind spots. We look at Tropicana's patents on the single greatest invention in their industry in half a century, and see how at every level nobody would do the math to see if a patent was the right strategy. It turns out that Tropicana gave away at least two year's head start and completely botched their advantage in a multi-billion dollar market.

Patent valuation is really slippery, and completely depends on the context. Patents can be thought of as call options on technology.  They are a time-limited bet that the market will adopt a technology. At the beginning, the patent is an out-of-the-money call option and has only potential value.  Once infringement occurs, the patent turns into an in-the-money call option, since we now have some basis to recover licensing fees. Sky-high valuation numbers that come with many patents are terribly unreliable. The only valuation that is trustworthy is one where someone is writing a check.  Anything else is pure speculation.

Customer feedback is essential to know if a patent is worth the expense - but some people think their idea will be "stolen" if they talk to customers. What should they do? Two answers: One, if you need to tell people about your invention when doing customer discover, you are doing it wrong. Two, there is almost 100% certainty that you will change your product, marketing message, customer pain point, solution, etc. as the company goes through the product-market fit stage, so why bother patenting something we know will change? When we finance patents, we are very conscious of the one-year grace period in the US, and we would rather wait to have data to support an investment, that to plow money into an asset that is likely to be bad. The best patents are yet to come.

Most startups worry about being able to use their patents, since they do not have a war chest to assert the patents. Other than getting patent enforcement insurance, startups use patents in many different ways.  Mostly, they use patents to negotiate deals with competitors, start joint ventures, cross license to get access to technology, and many other uses. Patent enforcement insurance is essential for any startups that have patents, otherwise these assets will never have real value if they are infringed.

Voting in Chicago?  Yes, that should be "early and often."  Patents?  Not so much.  Filing lots and lots of patents without the data to support the investment is not a good idea. The best patents come later in the process. As an investor, I will not finance the first patent for a startup because it represents the highest risk.  I am comfortable to wait until we have more customer input, more product development, and more knowledge of the market. You are much better off waiting to get a patent, than spend your money when 95% of the patents are worthless.

It is common advice to put as much material as possible in your patent application.  This advice used to be brilliant and appropriate, but the laws changed 20 years ago and it is no longer good advice. After Jerome Lemelson and the barcode reader patents, Congress changed the laws at the end of the 1990's so that every word in a patent application hurts you. We look at the tradeoffs of the patent process and put a different spin on the best advice for anyone thinking of a patent - especially startup companies and their investors.

  Startups are routinely told to get a provisional patent application. There is absolutely NO business reason why a startup should EVER do a provisional, and we pick apart every argument.  (The only reason why startups file provisional patent applications is to placate unsophisticated investors.) Provisional Patent Applications are not the ugly stepchild of Non-Provisional Patent Applications.  They should be given your full attention. Many people make the sin of omission: not putting enough information in their patent applications. Other people make the sin of commission: putting way too much information in their patent applications.  Both of these errors hurt you dramatically. Join Russ as he looks at provisional patent applications in a way you have never seen before.