Patent Protection | Arlen Olsen

Episode Transcript of: Patent Protection | Arlen Olsen

 

Alan
Welcome to America Dreams right here on AM 1220 kdow, we got a great show coming up today the first segment we’re going to be having Arlen Olsen. He’s a patent attorney and talking about patent law. And you know 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 will devote to corporate governance. We have an attorney with remote Law Group coming on Douglas Park, he teaches strategy at Stanford University. And Dr. Park is a Harvard law graduate and devotes his time 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 of time should somebody come and seek you out.

Arlen
The best time to do it is before you’ve disclosed your idea or your invention to third parties. Right now we’re under also we’re in a hurry, hurry up type situation for patenting inventions. On March 16, the AIA or American invent sack passed, which converted us to a 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 patented, and you may be stepping on other people’s territory, going to a patent attorney early on. It also helps with your investment capital. Getting a patent portfolio set up helps you attract investors, we just recently had a multimillion dollar injection of capital based upon a patent portfolio that we issued.

Alan
Now, if you have if you have a patent in process, at what point of time does a 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. It’s not a property right granted to you 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 a enforceable document walk me through the process for a patent? I’ve heard, I’ve heard a lot of people and entrepreneurs in Silicon Valley say, you know, 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 you would do a patent search to determine whether or not somebody else out there has had or patented the invention. The second step is once you come up with a patentability opinion by your attorney, he’s done his search, then you would actually prepare a patent application, there’s a couple of ways that you can do it. First is 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 provisional, then the next step is to file what’s called a non provisional patent, you have a year to file your non provisional if you if you sit back and wait, and you just let the technology move ahead of you. You could be in a situation where somebody else files a 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. Stakes your claim in the ground that this is my property, right.

Alan
How do you advise clients said the entrepreneurs once you get a patent, 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’d 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 to go after other people to stop other people from infringing your technology.

Alan
In other words, something in the past called patent trolls. Do they still exist today?

Arlen
Oh, yes, they’re very live today.

Alan
What is a patent troll?

Arlen
The first patent troll i that I’m aware of is a guy named Jerome Lemelson. He filed his patents back in the 1950s. And he never actually proud act as his patent, 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 1950s. 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 and Velcro. He had ideas in just a wide variety of things, early semiconductor processing, and he would get these patents and go after companies and sue them. And then about 1015 years, it became very popular for companies to go out and buy up 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, the the with the new laws coming down, they’re they’re 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, can gain benefit off of

Alan
it. And it’s interesting, you brought foreign countries that because if I have a patent in the US, is it enforceable in another country? No. And so how do you how do you help to protect that technology to your for your clients, that you just got a US patent issue where, you know, how do you enforce and 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 a PCT application, Patent Cooperation Treaty application. And that gives you a time delay between 30 to 31 months before you have to file your foreign patents. It’s 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 to file in. So they can go in directly. But for a startup, I’d recommend filing a PCT application.

Alan
And where does the PCT application go to?

Arlen
It’sactually 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, for example, the US has one, Europe has one, Japan has one, Korea has one, China. And if you want to get your search done in a foreign country, you can also designate a cert. So if your technology is really hot in Europe, or Japan, you may want to designate those as your countries to do their search. But the actual place that the PCT is received depends on where you file it in your receiving office, typically, in the US, you would file it in the US receiving office,

Alan
You know, all the patents still are issued by the same agency in the US. It’s in the patent offices out of Washington, DC. Correct. 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 patents issued very quickly to get venture capital in and they were a 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 patent through quicker. If you have health issues, you can get the patent through quicker. If the patents potentially in litigation, there’s ways to get it through quicker. A lot of different ways that you can get your patent through quicker and it you should be aware of this, especially if you’re startup and you need to get patent protection quicker. The average patent takes about 18 months before it’s issues.

Alan
Arlen I understand you used to be a patent attorney also. Yes, but 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 in. But you get to see a lot of different inventions coming through quickly. When you’re an examiner you’re you’re assigned to a specific area or technology and I worked in in thing is dealing with earth and hydraulic engineering. So I do these wave pools that they do in amusement parks, scuba diving equipment, tunneling machines, snow removal equipment, a lot of different areas, but you’re specialized in an area. And you get to meet a lot of really neat people as an examiner.

Alan
Yeah, I understand you also are a collector of unusual patents. Yes. And we talk

Arlen
about that there are quite a few funny patents out there. There’s a patent on a method for walking a snake with a stick. You there’s also ones that are kind of crazy. There’s a device out there that you had put onto a carburetor that would save gas based upon the phases of a moon. Now the patent office found out about this particular invention. And they went through and did what’s called a reexamination and invalidated the entire pattern because it just didn’t work on basic scientific principles. In Japan, they have 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 floor. It’s a dual purpose invention, great for young mothers that don’t want to clean the floor. And yet their kids get the round a lot. So it’s a great idea.

Alan
When are we going 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 when you burn the toast. You there’s a rock paper scissors card game that you can get. And then there’s this very unusual out of the ordinary crazy inventions on like a greenhouse helmet where you had run with the helmet over your head that has little cactus plants inside of it that create oxygen so you can breathe better.

Alan
Oh, man. Well, Arlen, how does a person contact you?

Arlen
My website is www.iplawusa.com. And my phone number is 518-220-1850.

Alan
It’s Arlen Olsen, patent attorney with Schmeiser Olsen Watts. Arlen, appreciate you being on today’s show.

Arlen
Thank you very much.

Alan
We’ll be right back after these messages.

 

 

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These transcripts may not represent exactly what was said, as they are software generated and occasionally edited for concision and clarity.

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Alan L. Olsen, CPA, Wikipedia Bio

 

 

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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.