Friday, April 29, 2011

My first book published on Amazon Kindle

The Provisional Patent Fallacy and why its all good news

The provisional patent Fallacy.. and why it’s all good news is my first published book on Amazon.

I’d love to hand out some discount coupons to many of you so you can have a look without the full retail expense of USD$9.99 but Amazon doesn't cater to that service unlike iTunes unfortunately.

What’s the book about?

Basically it addresses what I feel is the fallacy that you have to pay for what amounts to a full patent application just to get patent protection while you explore the invention and its opportunities. The whole idea of the provisional patent was for you to find out if you have a commercially viable idea BEFORE you have the full expense of a patent… but somehow this wonderful provision by the patent office has been completely nullified by the practise of submitting provisional patents that have taken as much work as full applications to produce… this is bunkum!

As a taster I have included the first chapter here for you to read if you think you may like to download the full book which casn be found here:

xxxxxxx Start of Chapter 1 xxxxxxxx

Chapter 1: The problem

Why is one of Australia’s largest University’s, with hundreds of millions of dollars in annual investment in research, only applying for one or two dozen patents per year?...

…for the same reason that hundreds, if not thousands, of budding inventors, don’t patent their inventions.

Because of the fallacy that a provisional patent will cost as much as a full patent. At $8-$12k this is too much of a burden for most people…



The following definition is supplied for a US provisional patent at:

“Although a claim[1] is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date.

Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application.

There is no requirement that the written description and any drawings filed in a provisional application and a later-filed non-provisional application be identical, however, the later-filed non-provisional application is only entitled to the benefit of the common subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional application filing date.

Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention.”

Note the following:

  • Does this description of an invention need legally binding language? No.
  • Does it require that claims be included? No.
  • Does the provisional even need to be filed in the traditional patent format of background, description, operation and alternative embodiments? No.
  • Do the drawings need to be identical? No.

No. No. No.

In essence the only limitation is your sense of risk. Risk that what you submit as a provisional does not adequately cover and relate to what you file in your full patent application[2]. Proof of this will be supplied later in the book, but believe me, I was surprised at how simple a provisional can be that still captures the legal and practical essence of the invention you want to patent.

All you need is drawings and a description that can be reasonably linked to the full application you submit within 12 months of filing your provisional. In fact, although I have not tested this yet, my gut instinct is saying that most University white papers would easily qualify as the basis of a provisional patent application!

You may ask “even if the requirement for a provisional patent is technically much less demanding in terms of legal language and form, why wouldn’t you file something as close to a full application as possible? You have to do the work anyway… don’t you?...

Why keep provisional filings simple?

… Well no. You don’t. That’s the whole point. To file a provisional takes $100. With slight modifications, most white papers could qualify as a provisional filing. So why engage lawyers and commit to thousands of dollars in legal expense when:

  • You don’t know if someone will buy your invention
  • You may not have had time or the resources to complete a thorough prior art search.
  • You don’t even know if you have come up with the best approach to your invention. You may go another month and find a better even more valuable way to solve the problem that is the basis of your invention.

These are just three of a hundred reasons I can think of showing why a $100 provisional filing and your best effort at an invention description are by far the best first step in protecting your invention.

So why do people tend to file provisional’s that are pretty much a full application?

Probably fear.

Fear that the provisional filing is not good enough.

Fear that you will get five years into your patent term, be in court with an infringer who has your case thrown out because your provisional didn’t stand up to scrutiny.

Are such fears groundless? Yes and no. But more yes than no.

I can’t be a hypocrite and say that there is no basis for caution. For my first five or six patents I had a lawyer check my provisional’s before filing, but pretty quickly I worked out that:

  1. The changes my lawyer wanted to make were frequently of a legal language nature;
  2. Or that they were of a form related nature; ie what goes where in what order, and;
  3. That the real decision as to the value of your provisional is with the patent examiner as it is their job to argue that your provisional doesn’t adequately cover the description in the full application.

Points one and two are more about a lawyer justifying their existence than actually protecting your legal rights, and point three is a win win for you.


Because if your provisional doesn’t cover what you submitted as a full application, then it can’t be used as prior art against you. It also means that your full application is a stand alone patent filing… you see. You win even if you lose!

On top of this, remember. The examiner is the one who makes the decision about the value of your provisional. If he or she gives it the green light, then you are in the clear.

If someone (ie an infringer) questions this decision in the future, it is an argument to be made between them and the patent office… not between you and them. And any judge and jury is going to think seriously about questioning an examiner about their decisions relating to a granted patent.

xxxxxxx End of Chapter 1 xxxxxxxxx

See the following to buy the full book: Kindle viewers are available for Mac, PC, Kindle iPad and iPhone


[1] This refers to the fact that there is no need for a set of claims to be provided with a provisional patent.

[2] In the US a full patent application is called a non-provisional patent application.

Innovation Festival–My privilege to help kick-off


Just now I got back from doing the keynote speech for the Innovation Festival that will run over the next month in the North Coast area of New South Wales.

As usual I tried to make the talk about the audience and not just Ric pushing one of his pet agenda’s and it seemed to work well. We explored two areas around innovation:

  1. Answering the question “What is innovation?” and;
  2. For maximum innovation how important it is to do what you do best and find team mates and partners who compliment your strengths to bring maximum impact to your innovations.

In one interesting section of the talk I asked the audience to tell us about the top two problems they have in their business… I was really surprised to find that many of the answers showed that people were really actively solving problems for their businesses and most were really clued in on how to get solutions.

One lady taught health and safety using mannequins to simulate CPR as she travelled around Australia and her biggest issue was the size and bulkiness of the mannequins. The audience actually shared in solving her problem by exploring ways to break mannequins down into a small a package as possible and making them portable… I think we even invented something on the spot!

That's just one example of the open, free thinking environment that was shared at the event.

Tuesday, April 26, 2011

A new patent licensing model – SELL A BOOK!


Traditional patent licensing is a pretty complicated and long winded affair.  Some big hearted souls even go through the cost, expense and work of a patent only to end up making it public domain… good for them but not really the point of getting patent protection.

So what can be done to make money from your invention that fills the space between full commercial licenses and giving away licences. Here is my idea:

Include a licence with the cost of purchasing a book.

Wha? Yes, include the cost of a patent licence when you sell a book about your invention.

Still confused?  Think about this. Besides the few dozen companies that may ultimately pay  a decent royalty for your invention there may be literally thousands of people who may want to use your idea for their own project. How do you give them a relatively cheap way to licence your patent AND give them all the info they need to understand and implement your patent?

The answer is obvious when you think about it. An eBook.

A vehicle that covers your basic costs, shows the value of your invention AND gives the buyer what they need to get value from what you invented… a reasonably priced limited license.

How about this for an example. I invented a simple system for detecting when a tire is flat. It is so simple anyone can make the invention with a kids noise maker and a band of aluminium. But how do I share this idea without it costing me money and without losing any real opportunity to make a decent royalty fr4om it later?

If I publish a book including a limited license I can reach all those home users and small business users who would love to try out and use my idea. Even the big targets like the Goodyear Tyre Company or Repco could buy the book and get a limited licence to try out and evaluate the idea. The book could even have guidelines of licensing terms as well as well thought out conditions of use to allow small business users and individuals to freely use the invention.

I have quite a few projects that could benefit from this approach:

  • The Reputation Based Social Network – a concept that has so many applications, it makes more sense to explain all the possibilities and let people run with it than try to lock it down to a single model.
  • The flat tire detector – because its simple and a lot of people may find it really helpful, but I also need a vehicle to explain it to big licensee prospects.
  • Kalvin Ernst’s Cloud computing scripts – Kalvin’s ideas are truly elegant in their simplicity and a real temptation to people to just use them and not pay Kalvin a dime. But this model enables all the little guys to fully understand his concepts and implementations and pay appropriately for their use of his idea.

Looking back it feels like nearly everything I invent should have a mini book written about it even if all it means is that people get to use it and I have the impetus to fully explain how the invention works. Even if I end up not doing a full patent for an idea, most of the time I have come up with inventions to solve problems for people, and the least I could do is outline how people could solve the problem for themselves using my invention outlined in a book that others can benefit from.

Collaberative Location finding for mobile devices

Over a week ago a gentleman approached me about his idea of an application to help people collaborate and share information and a common phone based experience while sharing the same event or location. The idea really needed a way of using a combination of location data to refine how each device determines its location.

The result of that session was a collaborative location finding system that I am in the middle of doing a provisional filing for... its one of those things that you think would be pretty obvious but no one seems to have done.

I will supply more details once the business paperwork and prov patent filing are complete, but it's really exciting.

Tuesday, April 5, 2011

LESANZ dinner guest speaker

LESANZ is the License Executives Association of Australia and New Zealand, but as the world chairman of the Society agreed with me, it’s more likely Society of Professionals who make a living from Intellectual Property…

I had no idea who was going to be in the room when I came to speak. During the day leading up to speaking I found out that Judge Randall Rader (from the Uniloc appeal court hearing) was going to be in the audience as was going to be most of Sydney’s IP elite.

The location was just spectacular. With the backdrop of the City’s Woolloomooloo district and surrounded by excellent art I waffled on about some of the stories from my Uniloc days, some recent work with Fortescue Metals and some ideas about how to capitalize on Australia’s heritage as a nation of tinkerers and how rosy the future is when we have to rely on the collective Australian brain when our back yard of minerals starts to run out or lose it’s attractiveness.

What a great night.

My mate Matt–Entrepreneur of the year

Last Thursday, after running late to be a panel member at the SydStart conference in Sydney, I sat down next to monster entrepreneur Matt Barrie (on stage), only to find his face looking up at me from the panel table. What a great achievement... good on you Matt.

Matt and I started our friendship/ rivalry back in 2010 at the Funding Connect event in the Quay in Sydney... a good natured argument broke out about how Aussies are not aware of their strengths because our culture teaches us to think of ourselves as the same as everybody else... Matt's argument was "everyone can do what he did... it's easy". The audience sided with me that “no... sorry we are not all super proactive leader types”... and “no... most of us need to partner with guys like Matt to make something really happen...”… since then a lot of others have sided with my side of the argument to the amusement of most people that know Matt and I.

As a result Matt wrote this little ditty on the copy of the magazine that he gave… its too small to see but it says “To Ric, My #1 PR team. Keep up the [Matt] bashing… Matt”.

Matt is CEO of online jobbing site

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