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Learning About Information Protection the Hard Way

By Jason Wolfe | Published March 19, 2013 | Google+

In 1995 I created the Internet’s first coupon website. I spent months and months in the library (yes, back then we used libraries), researching patent filings. On my own, I filed a patent for online couponing. It was 1997 by then, and looking back at my work, it wasn’t bad for a 20-something year old. I also filed patents on pixel based tracking (1999) and wireless coupon delivery to cell phones (2001).

Getting Beat Down:

After filing the patents, I quickly learned about the process. This is where I got beat down and trampled upon the most. The United States Patent and Trademark Office (USPTO) issues something called an “office action” when it finds a problem with the application. The applicant typically has six months to respond to the office action or the application will be abandoned. If the response is insufficient, additional office actions may be issued. Because I was basically poor and had no help, I ultimately wore down and abandoned the patents, except for the Wireless coupon patent. I spent another two years answering office actions until I eventually abandoned that one as well.

I never lost site of the importance of information protection, however. I just needed to have the funds necessary to hire help as needed. Since then, I grew revenues and successfully filed and completed several patents. Now I have a full time patent lawyer sitting in the office adjacent to mine. But a few tips starting out might have saved me from that early disappointment.

Lessons Learned:

  • Use Provisional Patents – Filing a provisional patent application enables you to write a short description to get started, buying time for you to explore the idea further en route to filling a complete patent. Provisional patents cost about 300 dollars and can be done without a lawyer.
  • Use Prior Art – If you have materials, drawings or submissions to the USPTO and you are working in the business that your invention is in, you can use your art work and filing (even if you never get issued the patents) as prior art—meaning you had the idea first AND did something about it. Establishing prior art means no one else can be issued a patent off of your idea. This is important if you are like I was starting out: full of good ideas but low on cash. Trust me, I have found several patent infringement cases over the years and have been able to successfully ward off competitors because of prior art and other tactics.
  • Don’t be Afraid – Early on, I invented several things that became very popular and were used by millions. Online coupons, pixel tracking, and wireless coupons among them. Because of my fear of office actions, I abandoned the patents. Had I not been afraid (and broke), I probably would have been issued patents that would be worth tens of millions today, if not more.
  • Hire Lawyers You Trust – It’s a long haul. From filings, to office actions, to maybe even defending the patents. You need trusted, bright people with you every step of the way. If your lawyer doesn’t have your best interest, you may end up wasting a lot of time and money. Be diligent. Find good people.
  • Don’t Be an Extortionist – Once you are issued a patent, exercise your patent, use it, build a better business, be creative. But don’t sit on the patent and wait to pounce on someone just to profit from a lawsuit. Use the patent to protect yourself in what you invented from bigger bullies, but don’t be a troll who stifles creativity in the world.

Navigating the information protection path successfully can be a challenge. But using this advice, hopefully new inventors will be able to get started and have the fortitude to follow through as I eventually learned to do.

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