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Taking Aim at the System, But Firing Blanks
The U.S. Patent and Trademark Office rejected John D. Smith’s patent application for plastic storm shutters that he fashioned from over-the-counter materials.
Based on this experience, the self-proclaimed successful inventor has written a book telling you why, in his belief, you should never, ever but never file for a patent.
The tens of thousands of dollars used to secure a patent, according to Smith, can be better spent speeding your product to market by yourself.
In Don’t File a Patent, Smith painstakingly dissects the experience he had with his patent examiner and former patent attorney in trying to obtain a utility patent on his Storm Stoppers window protectors. In fact, he devotes more than 20 pages of his 199-page book to a photocopied, redacted text of the patent examiner’s rejection letter.
If part of an author’s mission is to distill the complex into the compelling, Smith fails on this count. The transcript makes for turgid reading and comes across as padding.
Smith has some sound, if not profound or original, advice sprinkled in his jihad against patents, not the least of which is doing rigorous market research and profit number-crunching before commercializing your invention.
He also breaks no new ground when he tells you that when it comes to patent infringement, court litigation is costly and may deliver you no better than a Pyrrhic victory at best.
To be sure, not every invention needs patent protection. If obtaining a patent will cost more than what your product will generate in profit, then being first to market without intellectual property protection makes more financial sense. Yet there are many instances when obtaining a patent is in an inventor’s best interest, including when seeking licensing deals, establishing a novel technology or product that challenges established orthodoxy or when building a business that relies on a stout patent portfolio.
Smith is at his most interesting when he discusses the judgment calls patent examiners can employ when ruling on an invention’s “nonobviousness.” Too bad he fails to explore this most interesting and wholly subjective area of the patent system with examples other than his own singular rejection experience.
In other areas, Smith also is helpful in discussing the merits of trade secrets and procuring trademarks.
But like the well-intentioned neighbor who knows just enough about computers to mess yours up, the weight of Don’t File a Patent carries more ill advice than good.
Smith asserts with absolute certainty, although quite erroneously, “The Patent Office wants your money, not your invention.”
The USPTO wants both, but nuance is not one of Smith’s strengths. He paints the USPTO as a money-grubbing cash cow, yet ignores the fact that in 2010, the USPTO had been facing a $200 million budget shortfall. His hyperbolic generalizations cloud what otherwise could have been a legitimately provocative book.
“At the initial Office Action on your patent application,” he says, “all (emphasis mine) your patent claims will be rejected by the Patent Examiner.”
Did this happen with Smith’s two previous patents, which the USPTO granted for his plastic, college-themed wheel covers fashioned from over-the-counter materials? We don’t know. Smith glosses over this part of his patent narrative.
Smith is slippery with facts. He says, correctly, patent owners have to pay maintenance fees, and he lists them – for large-entity filers. Large entities, for example, are required to pay $980 after 3.5 years. Yet small entities or independent inventors pay about half that of large entities. Smith chooses not to mention this.
Smith also relies on Wikipedia as a source for some of his facts. And his selection of facts often boomerang on his central argument that you should never file for a patent.
In retelling the shopworn anecdote of Michael Dell starting his computer empire from his dorm room, Smith notes, “In all the news articles about Dell Computer’s early years, there are no mention of Dell’s waiting for patent protection before selling their product.”
Likewise, he lauds Microsoft co-founder Bill Gates for building the iconic software corporation for the long term, rather than selling out early.
Smith fails to mention both of these companies are heavy users of the patent system: Dell Products L.P. holds more than 1,230 patents; Microsoft has more than 16,620.
A more meaningful and worthwhile book would have acknowledged the importance of a patent when licensing inventions to companies. Indeed, Smith fails to fully recognize licensing as a legitimate route to commercializing inventions and that companies nearly always require some sort of intellectual property protection.
Smith is passionate. Smith is entrepreneurial. Smith is committed to the American ideal of building a lasting wealth legacy for his family. Cue applause.
As an author of a book about patents, however, Smith seems a bit out of his depth. His single experience in a patent denial episode is the angry inspiration for a book that condemns wholesale the patent system.
In the end, his sweeping indictment against patents is simplistic and he comes off as a guy with an ax to grind, and grind and grind.
Editor’s note: This article appears in the March 2011 print edition.
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