June 21, 2010

An interview with Todd R. Miller, IP trial attorney; Part I: the ins and outs of filing for patents

As my readers recall, in the past I’ve written about the benefits of patents for small companies, and ways to protect your intellectual properties with audits. Today’s blog is part one of an interview I conducted with Todd R. Miller, a partner at Jones Day, a full service international law firm. Todd is a trial attorney in intellectual property disputes, a very specialized field in IP law. I recently met him through some of my clean tech activities, and found him to be a brilliant and passionate attorney in his field. We had so many discussions about patents and patent protection, I decided an interview was in order.

In today’s blog, we discuss the ins and outs of applying for patent protection, when to apply, how to apply, and what to expect. In part two (to be published later in the week), Todd will dig deeper into patent disputes and litigation. Make sure to come back and read part two.

NOTE: Todd has agreed to respond to the readers’ questions as part three of this series, so if you have any questions, please discuss them very clearly in the comment section. I’ll compile all the questions and we’ll publish them with the corresponding responses within 10 days. Please note that I will not publish any advice on individual cases.

If an inventor comes up with a great new idea, should the inventor file a patent application or keep it as a trade secret?

It depends. Both patents and trade secrets have their advantages and disadvantages. When filing for a patent, the application must contain a written description sufficient to allow those skilled in the field of the invention to make and use it. In return for disclosing this information to the public and thereby foregoing trade secret protection, should the application issue into a patent, the patentee is granted the exclusive right to work that invention in the U.S. for 20 years from the first filing date.

For start-ups and other emerging companies, patents are sometimes the most important assets and are often necessary before venture capitalists or others invest in a new company. Obtaining a patent typically takes a few years in the U.S. Patent and Trademark Office, so if the invention is one that has a short life span and not easily reverse engineered, a trade secret may be more appropriate. Moreover, unlike patent rights that are of finite duration, a trade secret can be kept indefinitely as long as the information is kept confidential. Coca Cola’s secret formula is one of the best-known trade secrets. Had the formula been disclosed in a patent application, any patent rights obtained would have long expired.

Assuming an inventor decides to file a patent application, where should protection be sought?

Patent protection is territorial. In other words, a patent must be obtained in each country. As worldwide patent protection is extremely expensive, those with limited funds should pick countries that will have significant markets for production and a need for the patented invention.

What is the typical cost to prepare and file a patent application in the U.S.?

The cost will depend on the type of application being filed, the subject matter, and the complexity. For example, the preparation and filing of a utility patent application of minimal complexity typically ran around $7,500 in 2008, according to the AIPLA Report of the Economic Survey 2009, and a relatively complex biotech/chemical patent application ran around $12,500.

If speed is an issue, are there certain countries that may issue a patent quicker than others?

In the U.S., an applicant can file a petition to expedite the patent process for a number of reasons including health of the applicant and possible patent infringement. The U.S. also an accelerated examination program in which the applicant is required to provide specific information to enable review of the application to proceed rapidly and accurately. A detailed article on the subject of the accelerated examination program can be found attached to my bio.

In addition, certain countries are offering special programs for clean technologies. As of December 8, 2009, the United States implemented a Green Technology Pilot Program to last for twelve months for the first 3,000 pending new applications that relate to green technologies. Applications that are accepted under this program will save approximately one year off the normal four-year examination time.

South Korea has implemented an expedited examination program called “Superspeed” for green technologies. Examination for applications accepted under the program is estimated to take thirty days or less. First-time applicants may then be able to seek expedited examination in other countries with which Korea has negotiated Patent Prosecution Highway Agreements. The United Kingdom also has a program in which examination for clean technologies may take as little as nine months.

Do you have any practical tips for any of my readers who are inventors?

If money is an issue, remember that the U.S. Patent and Trademark Office is a government agency paid for in part by taxpayer dollars. The PTO is there to help you. Their website, http://www.uspto.gov/, is terrific. For over a year, I taught a class on the fundamentals of intellectual property to business executives and used this website regularly as part of the instruction process.

Inventors should also consider contacting the Inventors Assistance Center with the PTO. The IAC is staffed by former Supervisory Patent Examiners and experienced Primary Examiners who answer general questions concerning patent examining policy and procedure.

Anything else?

The best advice that I can give here is for an inventor to do their best to “work backwards.” In other words, before spending any money or time investing in what it undoubtedly a terrific invention, ask yourself who would buy the product or process and why.

Todd R. Miller is a trial attorney who represents clients in high-stakes, complex intellectual property disputes. He has particular experience in patent litigation arising in the electronics, computer, semiconductor, and software industries. Having tried and won matters before jurors, judges, and arbitrators, Todd is a seasoned litigator who efficiently and effectively advocates the case to obtain client goals. More at: http://www.jonesday.com/trmiller/

The answers provided reflect only the present considerations and views of Mr. Miller, and should not be attributed to Jones Day, or to any of his or its former or present clients.


  1. Hi Todd,

    Will you accept infringement litigation on 100% contingency base, if not do you know any reputable firm to do that I have a very strong and high profile case.

  2. I really liked this interview, I never understood the pros and cons of writing a patent for a software, I would like this hear more about it in the future.