Knife Patents: Worth The Paper They're Printed On?

[Kevin Wilkins]

When I was in law school and I was taking my intellectual property courses, the very first thing my professor would say to every class was "don't believe anything that you read on the internet about IP because 99% of it is wrong."

Those people here who are not registered patent agents or patent attorneys should take all of the above with a very large grain of salt because much of what has been said is completely inaccurate.

A trademark is better than a patent? Really, you do know that they are totally different? A trade secret is unenforceable? Really? I've got a casebook 3 inches thick of trade secret and unfair competition cases on my desk.

A patent that is an improvement of a previous patented invention infringes on that previous patent? Huh????

Some patents are commercially viable and are worth quite a bit. Some are not. Some patents are prosecuted to close out an area to competitors for a time.

It is very easy for some people on the internet to get righteously indignant over "copying" other people. This indignation seems inversely proportionally to the formal education of the person complaining. There is a whole lot of fingerpointing of "unethical" practices by people who read somewhere on the internet that someone once said that someone "riped off" someone else. What there is not is any actual comparision of the actual patent application, the prior art, etc...

In general, inventors are not going to spend $10-15K to patent something that they do not think is commercially viable. They will also use due diligence to protect their rights. IP law is a multi-million dollar business, if not billions of dollars every year. What you guys have to realize is that the knife industry, even the largest makers, are not a major player in the economy. The makers really don't come close to the profits of even small software companies, let alone major computer, electrical, medical, and drug companies.

Thank you for one of the best posts I've read in a long long time!

People needing legal advice should seek out an appropriate attorney.

 

[digitalrebelttu]

Thank you for one of the best posts I've read in a long long time!

People needing legal advice should seek out an appropriate attorney.

Thank you, I've decided to do a fairly long post about this, so if any one does actually care, please listen up because this will be the only time that I will do this.

My background coming at this is from the large law firm (as in over 500 lawyers) and a corporate perspective.

Do not ask legal advice on the internet. You have no idea who you are talking to. You have no idea if I am a licensed attorney and registered to practice before the PTO or not. I'm not going to use my real name b/c I don't want it turning up on internet searches or the like.

I'm also not going to give specific legal advice and here is why I think that you should be very weary of any "attorney" that does. First, the internet is obviously interstate and international. I am licensed in a specific state and that is where I can legally practice law (along with a very specialized federal court). Ok, when someone from another state asks me a specific legal question, I can't give a specific legal opinion for a couple of reasons. First, it establishes an attorney-client relationship and that is bad for several reasons. One, practicing in a state in which I am not licensed is unethical, opens me to a malpractice claim and possible disbarment, and in most places is a crime. Two, establishing the A-C relationship brings up the ever-present problem of conflict of interest. All big law firms do extensive conflict of interest checks so they don't commit malpractice and more importantly, don't piss off a major corporate client and lose thousands (perhaps millions) of dollars of billable hours. It is hard to do a check when I don't even know who I am talking to. Now, most small law firms and solo practicioners don't do that because they do bread and butter stuff with individual clients and that problem doesn't arise.

Two, I don't need small clients, its not what I do. I will post very rarely on non law subjects and when people say something that is just so wrong that I can't help myself (which I am stopping actually).

So here is some advice. If you have questions, look for a local lawyer. You can google martindale hubbell and find local lawyers. You can call the state bar association, search their site, or call a local bar association. For patent lawyers and agents, google the PTO's Office of Enrollment and Discipline and do a search for a registered agent or lawyer in your area. Please don't ask internet lawyers for advice and put yourself and them in a difficult position. Go to a regular lawyer, even many big lawyers will do free consultations. You'll get specific advice for your situation and you will establish a confidential relationship which the vast majority of lawyers will not break. One of the bars to receiving a patent is prior publication, do you want to lose out b/c you effectively disclosed your invention over the internet or to a scam ad on tv?

And let me tell you a little about the legal profession- it is a business. There is a wide divide between a contingency fee lawyer taking any case that has a chance of making a profit and corporate lawyers who bill by the hour. Contigency fees are generally done by Plantiff's lawyers in personal injury cases, not in business law. PI lawyers take a lot of cases on contigency fees (which vary from maybe a third to a half), they take on all your car accidents, slip and fall, medmal, etc... What the lawyers know is that over 95% of lawsuits are settled out of court. PI cases are very straight forward, the lawyer sends a demand letter to the defendant, who sends it to his (or more likely his insurance company's) lawyer. The insurance company argues a bit, checks the policy to see what the coverage is, looks at the facts, fires off counteroffers, etc... What is going to happen is that the plantiff's lawyer has his paralegal fill in the blanks on a form demand letter, does maybe a few hours work, and the defendant settles for a few thousand or maybe a hundred thousand, which the plantiff, who many times doesn't make a whole lot of money, thinks is hitting the lottery jackpot. The plantiff's lawyer makes a pretty good profit for very little work, the defendant law firm, which bills by the hour, makes a decent amount on what is essential by the numbers type work and everyone is happy.

There is a huge leap between that and business and corporate law. Big law firms have big corporate clients that sue and are sued by other corporations. It is very, very expensive (have a look at the Blackberry patent suits) because there is a whole lot of corporate profit at stake. So patent law is in this realm. Most patents are done by major companies. These companies will have their own legal department with their own patent lawyers and agents who do the general slavery of patent prosecution. They hire outside counsel to do the heavy litigation. At this level, the companies have large R&D departments that spend a whole lot of money doing research in the hopes of making a profit from it, they pay their own set of researchers to do this.

Patent lawyers- it is something like 1.5% of all lawyers who are registered before the PTO. It takes a technical degree to be eligible and most lawyers are liberal arts majors. Usually these lawyers do very well in law school, are in at least the top 25% of their class, law review, great clerkships etc... Starting salaries at the major law firms start at $135,000 plus a bunch of bonuses and stuff to hit about $150K. Generally, these are very, very smart people who are very, very good at what they do.

So, in this light, while there are a lot of individuals who patent an invention, but there is a leap from doing that and either successfully marketing that invention yourself or selling it to a company. I am into entertainment law as well. Have a look at how many copyright lawsuits there are in New York and California by would be screenwriters and the major movie studios and tv networks. There are thousands of people who send scripts out unsolicited, but guess what? The studios have mailrooms full of people who very carefully slit open mail to see if it has an unsolicited script and will immediately send it back. They don't want to take the chance of an infringement suit. Companies are the same way, they pay their own scientists to invent and they don't want to take the chance of independently inventing something and having someone else sue them b/c that person sent them the invention unsolicited.

So, yes, you can sometimes be successful as a small private inventor, but you need money and connections, you need to get lucky and maybe find a small business or form your own, that will market your invention.

To the comment on doing prior art checks, you are right, while it is not a requirement to do so, a prudent lawyer or agent is going to do that for the reason you said, malpractice. Better to bill a thousand dollars of research time than $20K and 2 years of answering office actions and not getting the patent and getting sued. I would be very suspicious of someone who doesn't do that.


For the question about is it worth it- I can't answer that, is it worth it to you to be an inventor and have the certificate of the patent even if it isn't commercially viable? But there is this, to patent your inventions they need to be reduced to practice, you need a working invention, not just drawings. Find a patent lawyer and talk to him in person.

On the overall question of the thread- of course knife patents are worth it. I did a quick search on spyderco, I think it was 60 or more design and utility patents already issued. Do you think Mr. Glessar would spend that kind of money if it wasn't commercially worth it? Would he still be in business if not? Granted there are no publicly traded knife companies but if you do a cursory search you can find industry articles about how dealers are looking at 50% markups and profits on knife sales- the makers are probably looking at that kind of markup on dealer sales, so I would venture to guess that the major makers like Gerber, Leatherman, Benchmade, Cold Steel, Spyderco, etc... are probably making profits at least in the tens of millions of dollars. Hell, I've seen mom and pop bakeries and food related stores with one location that are grossing more than a million, even though the profit margins are much smaller.

So look at it this way- everyone had heard the adage that you have to spend money to make money. So, if you are serious, spend the time and money to hire a good lawyer to have a look at the process. You may spend $1000 but that is worth it when you consider the possibilities.

That is my opinion, probably disjointed because it is too early in the morning, but everyone may agree, disagree, or ignore me as they see fit.

 

[Kevin Wilkins]

I've seen mom and pop bakeries and food related stores with one location that are grossing more than a million,

Time to head out into the kitchen and start "heat treating" me a batch of cookies!! forget about those knives!!


but seriously folks... thanks for another very informative post.

 

[Odulus]

digitalrebelttu is correct, do not expect to get specific legal advice from someone here, and if you do, don't trust it without confirming it. Another way of saying it is you get what you pay for.

I don't want to give specific legal advice either, but rather tried to recite general legal principles, but like him I find it hard to keep quiet sometimes when I see people making broad statements about rip-offs and patents when they do not appear to have all the facts or the appropriate knowledge, in this case legal. An occupational hazard of too many lawyers (particularly those of us who have done trial work) is that we always want to correct people and "win" the argument. (Some would say we just can't shut up.)

As I also think we agree, much of this depends on your particular situation. I mentioned examples where even different patent lawyers may differ in approach, such as when to do a prior art search. As I said, most corporations I know of do not bother because they file so many applications that they are willing to take a risk that they are filing some on something that someone else already has. Individuals or very small companies may be a very different story because their entire budget is going to one or two applications.

You do need to be sure you have an attorney-client relationship before you rely on someone's legal advice. Many lawyers will give you a free consultation for say an hour, but even this does not generally make you a client. In my current firm, we do this to convince people to hire us, but we are very careful to not get far into their specific situation but rather give them the kind of general discussion you've seen here to a) help them decide whether it is really worth it to them to proceed and b) convince them to hire us. Only then do we give specific legal advice.

Yes, it is a business. So is making knives for companies that make them. Assume that they are acting in their own interest, whether they are designing new knives, patenting those knives, or copying someone elses knives. This is true of any industry with, I suppose, very few exceptions of people or companies who are truly altruistic. I know this is a knife forum, but I wonder how many people who nod knowingly when someone talks about "ripoffs" of knife designs would agree with the music and movie industries' complaints about illegal copying.

digitalrebelttu, I'm in California, Silicon Valley. I've been in large and medium law firms, and large companies and startups. FWIW, I would tell you to go to Austin over Houston, but that is probably because it struck me as less "Texan" when I was there.

I'll (try to) shut up now.

 

[digitalrebelttu]

digitalrebelttu is correct, do not expect to get specific legal advice from someone here, and if you do, don't trust it without confirming it. Another way of saying it is you get what you pay for.

I don't want to give specific legal advice either, but rather tried to recite general legal principles, but like him I find it hard to keep quiet sometimes when I see people making broad statements about rip-offs and patents when they do not appear to have all the facts or the appropriate knowledge, in this case legal. An occupational hazard of too many lawyers (particularly those of us who have done trial work) is that we always want to correct people and "win" the argument. (Some would say we just can't shut up.)

As I also think we agree, much of this depends on your particular situation. I mentioned examples where even different patent lawyers may differ in approach, such as when to do a prior art search. As I said, most corporations I know of do not bother because they file so many applications that they are willing to take a risk that they are filing some on something that someone else already has. Individuals or very small companies may be a very different story because their entire budget is going to one or two applications.

You do need to be sure you have an attorney-client relationship before you rely on someone's legal advice. Many lawyers will give you a free consultation for say an hour, but even this does not generally make you a client. In my current firm, we do this to convince people to hire us, but we are very careful to not get far into their specific situation but rather give them the kind of general discussion you've seen here to a) help them decide whether it is really worth it to them to proceed and b) convince them to hire us. Only then do we give specific legal advice.

Yes, it is a business. So is making knives for companies that make them. Assume that they are acting in their own interest, whether they are designing new knives, patenting those knives, or copying someone elses knives. This is true of any industry with, I suppose, very few exceptions of people or companies who are truly altruistic. I know this is a knife forum, but I wonder how many people who nod knowingly when someone talks about "ripoffs" of knife designs would agree with the music and movie industries' complaints about illegal copying.

digitalrebelttu, I'm in California, Silicon Valley. I've been in large and medium law firms, and large companies and startups. FWIW, I would tell you to go to Austin over Houston, but that is probably because it struck me as less "Texan" when I was there.

I'll (try to) shut up now.

No need to shut up, I know a lot of us can't help but chime in but every thread that I have seen where the lawyer chimes in, there is invariable someone else who will ask to either im or email the lawyer and that is the part where we as lawyers need to be very careful. Have a look at this law review article- http://www.law.duke.edu/journals/dlj/articles/dlj49p147.htm

So anyway, enough of boring civilians with lawyer talk. For everyone else, I hope that no one takes it as being nasty, but there are pretty good reasons why these types of legal threads are long on non-lawyers arguing and very few real lawyers chiming in and that was what I was refering to and trying to get across- if you have a legal question, by all means research the broad topic online but seek out specific legal advice from someone in your area; that is really to best course.

 

[orthogonal1]

But you forgot to add "it depends" in there somewhere.

 

[Gollnick]

Gollnick, interesting post; I’m curious what your experience was, sounds like you had a bad one.

Oh, to the contrary.

Patents have been good for me.

I am a big believer in the patent system. It was not enshrined in the Constitution for no reason. The Founding Fathers -- including Franklin -- knew that a good system of patents encourages innovation. The USA, from its inception practically, has enjoyed an overall excellent patent system (you can always point to specific problems) and the USA has long been the most innovative nation in the world. Coincidence? I think not.

BTW, I AM a patent attorney.

I'm not a big fan of lawyers, but I like my patent attorneys and they are all good people too.

Last time I was in DC on a patent case, my attorney said we had to go to the other side's offices to see some late-arriving documents that didn't have their Bates numbers yet and so couldn't be copied. My attorney gave me a lecture on how we were going into enemy territory and I mustn't say anything except to authenticate the documents, etc. When we arrived, the other attorney met us in the lobby and explained that they hadn't checked the conference room for confidential stuff yet and so would we please wait in this side room. Sure. My attorneys were going on and on amonst themselves about attorney stuff, professional gossip and such and I interrupted and said, "I've got to say one thing."

"NO! You can't. Not here."

"I have to."

"What?"

"You guys have a lot better furniture than these guys do. I mean look at this apparently antique cabinet. It's got a plywood back. It's fake! This is just terrible. I don't know why anyone in this position would spend money on such junk and think they could fool people by displaying..."

"Excuse me, but we're ready for you in the conference room."

On the way, the other attorney walked up to mine and asked, "So, what's your client all upset about? Problem on your case? Anything important?"

"Your furniture! He says it's fake."

Later that day, my attorney said to me, "Flying engineer from Portland to DC? $10,000. Getting to insult the opposition's furniture? Priceless!"

We finished up with a few extra hours and so he took me to see the International Spy Museum. It was great. So, patent attorneys are great.

Most of the patent attorneys I've met over the years are genuinely-nice people (a contrast to lawyers in general). But, patent law is a different kind of law.

A number of years ago as part of discovery in a patent case my house literally got searched. The attorneys that flew out to do it were all nice people. The first to arrive was a young kid with a pony tail who just did not look like a lawyer at all. But, you can be that way when you're a patent attorney; they're a lot less "buttoned down." So, five lawyers helped me clean out my garage.

 

[JCaswell]

Gollnick,
I'm sure it's a long story, but I'd love to know why there were attorneys searching your garage for discovery in a patent case.

 

[Gollnick]

Gollnick,
I'm sure it's a long story, but I'd love to know why there were attorneys searching your garage for discovery in a patent case.

Because there were numerous references in other documents to a document I wrote, "The Complete, Authorative, Unabridged Compendium of all Spread-Spectrum Fixed-End Significa, Trivia, and Calisthenics," and yet nobody was able to find a single surviving copy of this 100+ page book. I made the unfortunate remark, "It's vaguely possible that I might still have a copy somewhere. I was rather proud of that document..." and so it became necessary to search my house. We did not find a copy. In the mean time, my friend's house was also searched for the same document. He lives on a farm that has been in his family for over a hundred years. He is a packrat and comes from a long line of pack rats (a hundred years of them). The family motto is, "Never throw anything away... just build another outbuilding." They did manage to find a copy of the missing document in his things.

 

[TLM]

While Prior Art (and no it's not art, it's science or technology) is very much forgotten , it gets even more fun when one starts to go through the "non-obviousness to a professional" part. Usually endless yes-no discussions follow.

There used to be a web site where one could publish inventions so "prior art" was established and it could no more be patented, haven't found it for a while, it was a good idea.

TLM

 

[shecky]

Speaking of prior art, I'd still like to know about Queen Cutlery's earlier mentioned 1972 patent d228545. What was that about?

 

[JCaswell]

"The Complete, Authorative, Unabridged Compendium of all Spread-Spectrum Fixed-End Significa, Trivia, and Calisthenics"

You've got to be kidding!

 

[orthogonal1]

goto http://www.uspto.gov/patft/index.html and put the number in.

That has to be a silly design patent, IMO.

Never seen it made

 

[Gollnick]

You've got to be kidding!

That was the name. I gave it that name because it was to long to fit on an IBM punch card.

The title sounds rather braggadocious today; but, at the time, it was only slightly braggadocious.