Alan: Welcome to American Dreams right here on AM 1220 KDOW. We got a great show coming up today, on the first segment we’ll be having Arlen Olsen, he's a patent attorney. We’re going to talk about patent law and why you should be thinking about patenting your products if you're in a startup company or if you're an inventor. The second segment we’ll devote to a corporate governance we have an attorney with Rimon Law Group coming on, Douglas Park, he teaches strategy at Stanford University. Dr. Park is a Harvard Law graduate and devotes his time to helping companies with their corporate governance and strategies. So with that, Arlen Olsen welcome to today’s show.
Arlen: Thank you Alan.
Alan: Now you’re a patent attorney and tell me exactly at what point in time should somebody come and seek you out.
Arlen: The best time to do it is before you disclosed your idea or your invention to third parties. Right now we’re in a hurry up type situation for patenting inventions on March 16, the AIA or American Invent Act pasted which converted us to first to file type system. So it's important to get to the patent attorney right away you may have a great idea but there may be somebody else out there that already has that idea that has it patented and you may be stepping on other people's territory. Going to patent attorney early on also helps with your investment capital getting a patent portfolio set up helps you attract investors. We just recently had multimillion dollar injection of capital based upon patent portfolio that we issued.
Alan: Now if you have a patent in process at what point in time does the patent belong to you.
Arlen: Well the patent belongs to you as soon as you file it. You can file an assignment on a pending patent but you can’t actually go out and enforce it, is not a property right granted to by the government until the patent actually issues. So you do not have an enforceable document until that point in time.
Alan: So what does it take to get an enforceable document? Walk me through the process for patent. I heard a lot of people and entrepreneurs in Silicon Valley say the technology changes so quickly why bother getting a patent because 18 months down the road this technology will be useless.
Arlen: Right, well the process is the first step you would take is to do a patent search to determine whether or not somebody else out there has had or patented the invention of the second step is once you come up with a patentability opinion by your attorney who’s done his search then you would actually prepare a patent application. There’s a couple ways others couple ways that you can do it, first as you could file a provisional application which is a really quick and dirty way to get your patent on record with the patent office. This is becoming more popular these days because of the first to file rules. You want to get your patent in very very quickly and when you file your professional than the next step is to file what's called a non-provisional patent, you have a year to file your non-provisional. If you sit back and wait and you just let the technology move ahead of you, you could be in a situation or somebody else files the technology first the patent first and then you're an infringement suit. So at the very least you should get a provisional patent or some patent on file with the patent office to put your marker in place that stakes your claim in the ground that this is my property right.
Alan: How do you advise clients, the entrepreneurs? Once you get patent and what's the next step?
Arlen: Once you get a patent the next step would be to, it depends on where you're at and what type of business model you have if you're trying to seek investment capital you would use your patent in your business plan to seek your investment capital you could use your patent as a defensive measure so that it would block other people from entering into your patent landscape or you could use your patent offensively of late to go after other people, to stop other people from infringing on your technology.
Alan: You know there was something in the past called patent trolls, do they still exist today?
Arlen: Oh yes, there are very live today.
Alan: And what is a patent troll?
Arlen: The first patent troll that I’m aware of is a guy named Jerome Lemelson, he filed his patents back in the 1950’s and he never actually practice his patents. A troll doesn't practice their invention, they just use a patent to go out and sue other people and to get licensing value out of it. So the laws have changed drastically since the 1950’s when Mr. Lemelson got his first patent. He made millions and millions off of it, he came up with ideas such as optical scanning in robotic production, he came up with ideas in Velcro, he had ideas in just a wide variety of things- early semiconductor processing. He would get these patents and go after companies and sue them and then about 10-15 years it became very popular for companies to go out and buy a patent portfolios and sue infringers and this became very difficult on the venture capitalists, people that were investing in startups it became very tentative, you have cases like the Rim case, the Blackberry case that were sued for hundreds of millions of dollars and right now with the with the new laws coming down, they are changing that, they're trying to get away from patent trolls being able to take advantage of the system. In a lot of foreign countries they require inventors to actually work their patents before they can gain benefit from it.
Alan: It’s interesting that you brought foreign countries up, because if I have a patent in the US, is it enforceable in another country?
Alan: How do you help to protect that technology for your clients? You just got a US patent issued, how do you enforce a patent internationally?
Arlen: Well I think the best step is if you don't know what your foreign markets are, is to file what's called the PCT application patent cooperation treaty application, and that gives you time delay between 30 to 31 months before you have to file your foreign patents is really not an enforceable document, but it gives you the time that it takes to see if your markets are viable in foreign countries. Most developed companies actually know where their markets are and they have a list of foreign countries that they want the file it, so they can going directly, but for startup I'd recommend filing a PCT application.
Alan: And where does the PCT application go to?
Arlen: It’s actually administered by a section of the United Nations called the world intellectual property organization, and that's out of Switzerland, but they also have receiving offices throughout the world. So you could file in any receiving office in the world of for example US has one, Europe has one, Japan is one, Korea has one, China and if you want to get your search done in a foreign country you can also designate search. So if your technology is really hot in Europe or Japan, you may want to designate those is your countries to do their search, but the actual place of the PCT's received depends on where you file it in your receiving office typically in the US you would file in the US receiving office.
Alan: You know all the patent still are issued by the same agency in the US, and the patent office is out of Washington DC?
Alan: So if I want to expedite a patent, is there a process to do that?
Arlen: Yes, there are certain rules that govern the expedition of patents for example last year we had a company that that was a startup that needed to get their patent issued very quickly to get venture capital and they were green tech company and there are petitions that you can file to expedite patents if it has an environmental value to the country. And so we’re able to issue these patents very quickly. If you're an older inventor, 65 years or older, you can get your patents quicker, if you have health issues you can get patents are quicker, if the patent is potentially in litigation there's wasted minutes are quicker. There’s a lot of different ways that you can get your patents through quicker and you should be aware of this especially, especially if you’re a startup and you need to get patent protection quicker. The average patent takes about 18 months before it issues.
Alan: Arlen, I understand that you used to be a patent attorney also.
Alan: What was it like working on the other side?
Arlen: It’s actually fascinating but you don't actually get to be hands-on with the real invention, you don't get to actually see it. You just have a piece of paper coming, but you get to see a lot of different inventions coming through quickly. When you're an examiner you're assigned to a specific area or technology and I worked in things dealing with earth and hydraulic engineering, so I would do these wave pools that they do in an amusement park, scuba diving equipment, tunneling machines, snow removal equipment, lot of different areas. You’re specialized in an area and you get to meet a lot of really neat people is an exam.
Alan: I understand you also are a collector of unusual patents, can we talk about that?
Arlen: There are quite a few funny patents out there. There's a patent on a method for walking a snake with the stick, there's also ones that are kind of crazy there is a device out there that you would put onto a carburetor that would save gas based upon the phases of the moon. Now the patent office found out about this particular invention and they went through and did what's called a re-examination and invalidated the entire patent because it just didn't work on basic scientific principles. In Japan they are patents on making square watermelons and also making a baby suit that has a mop head attached to it so as the baby crawls across the floor it actually mops up your floor and cleans your florets of dual-purpose invention, great for young mothers and who don't want to clean the floor and yet their kids get around a lot, it's a great idea-
Alan: When do we get to see that in the US?
Arlen: You may be able to get it now, I'm not sure if it's on the market or not. They also have crazy inventions on toasters that will make the face of Winnie the Pooh on your toast when you out when you burn the toast, there's a rock paper scissors card game that you can get, and then there's this very unusual out of the ordinary crazy invention like a greenhouse helmet where you would run with the helmet over your head that has little cactus plants inside of it that create oxygen so you can breathe better.
Alan: Arlen how does a person contact you?
Arlen: My website is www.IPLAWUSA.com and my phone number is 518-220-1850.
Alan: Arlen Olsen, patent attorney with Schmeiser, Olsen & Watts. Arlen we appreciate you being on today’s show.
Arlen: Thank you very much.
Alan: We’ll be right back after these messages
About Arlen Olsen
Arlen Olsen has over 20 years of experience in all aspects of intellectual law, including infringement litigation and appeals, transfer and enforcement, patent and trademark prosecution including oppositions, cancellations, interferences, reexaminations and other post grant proceedings. Mr. Olsen is a founding Partner of Schmeiser, Olsen & Watts LLP and a former United States Patent Examiner. Additional activities include teaching seminars and appearing as a guest lecturer on intellectual property matters for corporations and educational institutions and evaluating and consulting with clients regarding the scope, enforcement and protection of intellectual property rights. Named one of the top attorneys in business services (Intellectual Property) in the July/August 2010 Corporate Counsel Edition of Super Lawyers magazine and an AV rated attorney by his peers in Martindale-Hubbell. Mr. Olsen has been an adjunct professor of law at Albany Law School since 2005 where he teaches Patent Prosecution and Claim Drafting. Mr. Olsen graduated from George Mason University Law School in 1993 with distinction in Intellectual Property Law.