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SMALL BUSINESS | Mind To Maket: Developing Ideas Into
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Forking Over Money for a Patent May Mean Little

May 19, 1999|CYNDIA ZWAHLEN | SPECIAL TO THE TIMES

Getting a patent was a big waste of time and money as far as Forkchops inventor Donald BonAsia is concerned.

It took two years, cost about $7,500 and hasn't done him a bit of good, said the president of Forkchops Enterprises Inc. of West Hollywood. The Forkchops name and the East-West design--chopsticks on one end, a small knife and fork at the other--have been copied without BonAsia's permission, and the store buyers he has to woo couldn't care less if the $4 item is patented.

"We are getting knocked off left and right. It's ridiculous," said BonAsia, who manufactures the plastic flatware in Santa Monica and sells it in the upscale Fred Segal stores and museum gift shops, among other places. "I am not set up for million-dollar lawsuits."

BonAsia has learned the hard way that unless one can afford to defend patent rights, a patent may not offer all the protection many new inventors believe it will.

Inventors aren't the only ones who need to know what a patent can and can't do. Innovation is the engine driving almost every industry, and businesspeople, including investors, marketing executives and industry analysts, all have a need to understand patents.

Here's a brief look at three common areas of misunderstanding. (This column will explore additional misconceptions about patents in the future.)

* A patent will keep competitors from stealing your idea.

As BonAsia found out, this is true only if you can afford to defend your patent.

For some inventors, particularly if they don't plan to license the invention, a patent may not be worth the cost. That's the conclusion reached by inventor Peter L. Coye. Coye's company, which specializes in custom latex fabrication, a number of years ago was approached by a urological products firm looking for help with a faulty product. Coye said he solved the problem, then spent $15,000 to patent the process he had developed.

"I was so naive," said Coye, owner of California Latex Inc. of Pomona.

His client "stole the process and basically said, 'So sue us,' " Coye said. He turned to his patent attorney with the exhortation to "make the system work." The attorney, though sympathetic, was realistic, Coye said. "He said: 'Good idea, Peter. First thing I want you to do is write out a $250,000 check to me.' " After a three-to-five-year fight and much more money, he was told, he might win the battle.

"The patent system really is for the big boys," Coye said.

Or at least for those with deep pockets. The median cost to file and pursue a patent-infringement lawsuit through trial in California is $1.5 million, according to the American Intellectual Property Law Assn. in Arlington, Va. Of course, most are settled before trial, but that doesn't cut costs by much. The median cost up to the point of a trial is $999,000 in California, according to the attorneys group.

* A patent gives you the exclusive right to make your product.

Wrong. "Most client conference meetings start with 30 minutes" explaining patent rights, said Joseph Re, a litigation partner at the Newport Beach law firm Knobbe Martens Olson Bear, which has more than 100 lawyers who specialize in patent and other intellectual property law.

"Patents don't give you the right to do anything. . . . A patent merely gives you the right to stop other people from making a patented article," Re said.

He often uses the following example to explain the idea to those unfamiliar with the wording of patent law: There are two inventors. One invents a bucket, then obtains a patent on it. The other inventor patents a bucket with a handle. Inventor 2 can't manufacture the bucket with a handle because Inventor 1 has a patent on the bucket.

"Many people come with patents on improvements and are very frustrated that they are not able to make the basic item," Re said.

Coye agreed. "Just getting the patent is only part of the story. It doesn't guarantee you anything more than the right to defend it, the right to see if you really do have what you think you have."

* The first to file a patent wins.

Not in the United States. Unlike most foreign countries, the U.S. has a "first to invent" rule. It's harder to prove exactly when something was invented, compared with the clear-cut date of a patent filing. That's one reason inventors mail their ideas to themselves through certified mail. The idea of "first to invent" is supposed to give novice inventors a fair shake.

"Only the first inventor is entitled to the patent, so no one can steal your idea," said John Shepard Wiley Jr., who teaches intellectual property law at UCLA and lectures business groups and federal judges about patents.

Of course, going back to Lesson 1: If you don't have the money to defend the patent once you get it, you may be out of luck. And patents aren't cheap.

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