While Robert Goddard’s liquid rocket helped bring man 240,000 miles to the Moon, he didn’t have to travel very far to have his world-changing invention patented.
Thanks to earlier innovators, including Ichabod Washburn, a pioneer of iron wire production, by the time Goddard patented his multi-stage and liquid-fueled rockets in 1914, Worcester already had a litany of attorneys who were there to help, said Charles Slatkin, founder of The Goddard Project and The Wonder Mission, two initiatives formed to honor Goddard’s legacy.
“The idea was that Worcester, at its time, was kind of the Silicon Valley of the Industrial Revolution,” Slatkin said. “There were 14 patent attorneys on Main Street, and people were here inventing all the tools and technologies that would fuel the Industrial Revolution.”
Goddard turned to Southgate & Southgate, a Worcester-based firm, to secure those two first rocket-related patents, according to documents he submitted to the U.S. Patent Office, two of 214 patents Goddard would file in his lifetime.
While Southgate & Southgate closed up shop decades ago, Central Massachusetts is still full of attorneys and patent practitioners helping modern innovators protect and profit off their ideas.
“The more valuable your idea is, the more I'd say to do your homework, because there’ll be people very interested in your idea, too,” said Frank Gleason, an attorney at Worcester-based firm Mirick.
Establishing a patent
When it comes to patents, the first step is establishing ownership, said Donald Muirhead of Westborough IP Group, one of the 246 patent practitioners in Central Massachusetts registered with the U.S. Patent and Trademark Office.
“Sometimes somebody will say ‘I've got this great technology idea. I think I want to start my own company and get a patent,’” Muirhead said. “But you need to first establish that their prior employer doesn't have rights to it. If you're a professor in a university and you've signed an employment agreement, they're required to assign all your patents to the university. You can't just file your own patent and start a company, without at least a waiver.”
After ownership is established, the next step is for Muirhead to wrap his head around what the invention actually does.
“Most inventions are solutions to a problem,” he said. “I ask them to tell me what existed before their invention and then how their invention solves that problem. Those are kind of the pieces that we try to put into the patent application that we present to the patent office.”
Even with a carefully-filed patent application to USPTO, the odds are low it will be accepted on the first attempt, Muirhead said.
Donald Muirhead of Westborough IP Group
“They look for what's called prior art, which are things that are like what you're trying to patent,” he said. “Then they typically reject about 98% of the first round with the patent office.”
This typically kicks off negotiations, where Muirhead goes back and forth with the reviewer, aiming to find a sweet spot where the patent can be approved without being narrowed down too much to be of little value.
Since Muirhead first passed the bar in 1989, the biggest non-technological changes in the patent field have come from evolving policies at the USPTO, he said.
“The thing that makes it harder or easier is kind of what's going on at the patent office,” he said. “There was a stretch about 15 years ago, where they introduced a quality control department. The problem was examiners would get in trouble if they allowed a case, and the quality control people said they shouldn't have. The number of allowed patents for a few years dipped appreciably until they addressed it.”
Protecting assets
Even when an entrepreneur or inventor has a legitimate claim to intellectual property, that doesn’t mean it's going to lead to a short or easy legal battle, said Gleason of Mirick.
A retired Marine and University of Connecticut School of Law graduate, Gleason ran his own firm alongside his wife Jo Ann Jorge, a career path allowing the two to create their own schedule and not miss their kids’ important moments. With his kids now college-aged or older, Gleason and Jo Ann joined Mirick, allowing access to the resources a large firm provides.
Fights over IP often become a battle of resources, necessitating the consideration of how much a battle over is going to cost, and what could actually be won, he said.
Trials over IP disputes are rare, Gleason said. Settlements are typical, as court cases can drag on for so long, the amount of money and time spent on them can lead to a pyrrhic victory.
“You may get a judgment, but is it collectible?” he said. “Then there are appeals. So you go on and on and on, and you might forget why you even started.”
Catherine Rajwani from Harbor Law in Northborough
Regardless of the details of a particular situation, compromise is often the wisest and most cost-effective option, said Catherine Rajwani, an IP lawyer and patent attorney at Harbor Law in Northborough.
“Patent litigation is very expensive. It's very document intensive,” Rajwani said. “You need to hire experts. You're usually talking about as far as attorneys fees, like hundreds of thousands of dollars. Most clients are sort of always weighing, how valuable is the product? What's the risk? What could potential damages be? Does it make sense to go through litigation? Most cases settle.”
Even if they are in the right, smaller businesses need to proceed with caution, she said.
“A lot of my clients, when they're small to midsize companies, the decisions whether or not to enforce or how to enforce are informed not only by the patents and the infringing product, but also just by how much it's going to cost to enforce their patent rights,” she said.
Big businesses can use the process to their advantage, as litigation can take years, Rajwani said.
“You might be selling your product, and then a competitor swoops in and they start undercutting you, and you think, ‘They can't do that, because I have this patent,’” she said. “Unfortunately, you then have to go through litigation. Sometimes larger companies just use that as a tactic. They are looking to drive the smaller company out of business.”
When an entrepreneur or inventor feels they’ve come up with the next big idea, it’s easy to want to rush to turn it to reality. This can lead to disaster for startups, Gleason said.
“Don't let yourself get into a rush state of mind where you think there's a pot of gold at the end of the rainbow,” he said. “I would just urge people to make inquiries, ask lawyers about intellectual property, and what they can do. A lot of time just a short consultation can help get the right documents in place.”
Eric Casey is the managing editor at Worcester Business Journal, who primarily covers the real estate and banking & finance industries.
Thanks to earlier innovators, including Ichabod Washburn, a pioneer of iron wire production, by the time Goddard patented his multi-stage and liquid-fueled rockets in 1914, Worcester already had a litany of attorneys who were there to help, said Charles Slatkin, founder of The Goddard Project and The Wonder Mission, two initiatives formed to honor Goddard’s legacy.
“The idea was that Worcester, at its time, was kind of the Silicon Valley of the Industrial Revolution,” Slatkin said. “There were 14 patent attorneys on Main Street, and people were here inventing all the tools and technologies that would fuel the Industrial Revolution.”
Goddard turned to Southgate & Southgate, a Worcester-based firm, to secure those two first rocket-related patents, according to documents he submitted to the U.S. Patent Office, two of 214 patents Goddard would file in his lifetime.
While Southgate & Southgate closed up shop decades ago, Central Massachusetts is still full of attorneys and patent practitioners helping modern innovators protect and profit off their ideas.
“The more valuable your idea is, the more I'd say to do your homework, because there’ll be people very interested in your idea, too,” said Frank Gleason, an attorney at Worcester-based firm Mirick.
