“Other than in the marketplace itself, the IP arena seems to be the only place, and certainly the only area of law, that is designed and intended for the Davids and Goliaths to do battle directly.”

I have often thought of the patent process as being like the car wash near my house – where you pull up to the entrance, to the point where an attendant shouts “neutral!”, and your car is then magically pulled through a defined series of stations until it comes out clean at the other end. The key difference being – the car wash takes five minutes, costs six bucks, and requires no effort. Not so with patents.

In a way, the patent system can be seen as a far more rigorous 20-year car wash – beginning from the moment you pull into the patent office by filing your first application, thereby obtaining that all important Filing Date. You are then led along an arduous path of decisions, deadlines, and stages – all with corresponding costs. No matter when and where you might actually obtain a patent along that path, assuming you do at all, you are out the door (i.e., those patents will expire) generally 20 years to the day after you first heard “neutral!”.

Those stages typically begin with the actual filing of a provisional or non-provisional application, often leading a year later to an international application, then 30 or so months later to whatever “national stage” filings you might make around the world, eventually to examination of each filed application, and hopefully to allowance (assuming you persist), together with the inevitable periodic fees (maintenance or annuities) incurred along the way, all around the world. Each of which tend to require significant effort and benefit from coordination among the inventor, attorney, management and others. And, typically, with severe risks of failing to meet deadlines that might apply.

Davids and Goliaths

While we’re into analogies, I have also often thought of individuals, corporations, and institutions that are involved in IP as falling somewhere along the spectrum between the Davids and Goliaths. Regardless of where they might find themselves, they should all realize that the system is designed for them to potentially go toe-to-toe with each other, on the basis of their respective IP and/or commercial activities. In fact, other than in the marketplace itself, the IP arena seems to be the only other place, and certainly the only area of law, that is designed and intended for the Davids and Goliaths to do battle directly.

As you might expect, in this scenario, the Goliaths tend to be those corporations and institutions (i.e., hardly ever individuals) that tend to file many applications and issue many patents. In turn, they generally have in-house teams of people and well-designed systems for handling the various stages of these processes. These teams can often include in-house IP attorneys, paralegals, administrative assistants, and docket clerks together with computerized systems and integrated databases. The Goliaths also often have pockets that are deep enough to not only engage and train these people, but to also take whatever actions they may find necessary along the way, whether in the patent office or courts or marketplace – including to persist well beyond points where the Davids may waver. That ability should not be taken lightly, considering that even a cookie-cutter lawsuit in the IP world these days can easily cost each side upwards of several million dollars. Regardless of what the relative merits, or potential benefits or risks, may be, that’s a lot of money.

The Davids, by contrast, most likely do not have similar resources in terms of in-house people or systems, and even if they have the financial resources, are typically less familiar with the processes and not as eager to use them. In this scenario, the Davids are those individuals, and generally smaller or less IP-active companies or institutions that tend to file fewer applications, and in turn, quite often have only a single employee, if that, who is designated to manage the entire process, often by serving as the gatekeeper working with outside counsel. And that person generally has no particular training or experience for doing so, if only because there are no particular qualifications that define such a person, and resources that are geared toward people in that role do not seem to exist, or if they do, are difficult to find.

Instead, the best they can do is to arm themselves with the most accurate slingshot they can find, and the company can afford, hope that they don’t encounter a Goliath (or for that matter, another David), and if they do, hope that they then have good aim, and a bit of luck. At most, and as their saving grace, the in-house IP manager has access to the resources (e.g., advice and docketing system) of their outside IP counsel – relying largely on that as their slingshot into the IP world.

Infrastructure and Culture

But it doesn’t end there. The differences between the Davids and Goliaths of the IP world apply not only to whatever progress or interactions may occur in the car wash itself, but they also tend to apply to every aspect of the corporate or institutional infrastructure and culture in which their IP exists. Most notably, this includes the entire period leading up to the car wash, beginning with employment agreements and including whatever policies and procedures they may have (if any) relating to such things as assignment and ownership, record-keeping, spotting inventions, and transactional matters such as license, collaboration, and non-disclosure agreements.

It also includes the periods both during and beyond the car wash, when their infrastructure and culture can impact such things as their ability to continually monitor their competitors’ activity (as by current awareness searches), with regard to their competitors’ IP filings and their potential infringement. In short, having an effective IP infrastructure and culture has the potential to make or break the Davids’ success – in the IP arena and in the marketplace – every bit as much as their success in the car wash itself.

Yet, it is often unlikely that the Davids of the world will be aware of this bigger picture, or if they are, that they will be able to identify, afford, or cost-effectively find, engage, and coordinate the outside resources that might be able to address them. Especially when those outside resources are themselves likely to cover a similar and broad spectrum, in terms of their own resources and abilities – particularly with respect to anything that occurs beyond the walls of the car wash itself.

Long Felt Need

We might close by borrowing from the patent jargon that often provides a lead in to the “Summary of the Invention” section of an application, which is generally along the lines of “what is clearly needed here.” In this case, what is clearly needed are the resources by which the Davids of the world can more evenly compete with other Davids and with the Goliaths in the IP arena. And as with patents themselves, the path toward finding these resources can, at times, begin with simply recognizing the fact that a “long felt need” does indeed exist.

And by taking some comfort in the fact that David did indeed defeat Goliath, because he had both the resources and the desire to do so.

Image Source: David and Goliath

James Tissot.

Copyrighted 1904.