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.

How patents can benefit small businesses (yes, yours too!)

Before I started working with Corporate America, I thought patents were exclusively reserved for mad scientists and geniuses, those who spend hours in a laboratory mixing chemicals, and blow up the lab and burn half their hair in the process. A patent workshop at Xerox, my first real employer out of college, was my first exposure to patents and patent protection. Xerox had good reasons to encourage its employee base to focus on patents. The company had grown fat off of its xerography patents for decades, and the year the main patents ran out, the Japanese had very competitive products sitting on the shelves all over US.

Point #1: Patents can protect your business from competition. That translates to revenues and profits for you, and more work for your competition.

Years after that workshop, I landed a marketing job at a small company with a handful of patents. There, I saw (and fully unleashed) the PR power of patents. Every sales presentation, press release, data sheet, and outbound communication was peppered with mentions of our patents and patent-pending technologies that we licensed to large corporate clients. Not only the patents firmed up a tight niche for our technologies by fending off competition, they also helped us present our smallish group as the innovative elites in the field: you really want our technologies, because we were the geniuses who came up with them first!

Point #2: Patents can be optimally used in marketing and PR because of the elite factor associated with them. Use this to your advantage!

Through various consulting and business ventures, I got more and more entrenched with companies developing intellectual properties (which eventually became a niche for my own services) – companies ranging from the third largest patent holder in the world at the time, to mad scientist outfits mixing chemicals day in and day out. I ended up with a few patents of my own. And here’s the kick – it all happened by accident. I wasn’t thinking about developing patents. I was developing a program that I thought was unique and clever, and the next thing I knew I was sitting across the table from patent attorneys filling out the documents.

Point #3: Patents are often the result of unplanned activities that are easily overlooked. Pay attention any time a new idea is put on the table and ask yourselves: can we patent this?

One of the small companies I worked with developed light conducting chemicals and LED patents. The founder of the company had many patents under his belt and continued to produce more. Despite the best efforts of those around him, the company eventually folded without a viable product or client base due to poor business execution.

Point #3: Patents protect your business but don’t build it. You still need to execute.

I’ve made a habit of asking potential clients about their patent portfolio – within the first 10 minutes. It makes a huge difference to me whether or not the client is cognizant of the power of their own innovation or what they can do with it. Not too long ago, I sat across the table from the CEO of a small software company who lamented lowered sales “because of the bad economy”. Or so he thought. Turns out they had developed very unique web technologies without patenting them. They had a good run until a couple of overseas outfits developed identical technologies and attacked their customer base with no licensing fees and very low royalties. Last I checked, a few of the top executives were connecting to recruiters on LinkedIn. OOPS!

Point #4: Read point #1 – over and over again.

Point #5: If you think securing patents is an expensive proposition, read point #4 – over and over again.

During the recent downturn, even as hordes of small companies are shutting down, those with patent portfolios have edged out those without. Although venture capital funding is down by 63% so far this year, the market for buying intellectual properties and patent portfolios is as hot as ever. Those money people don’t cease to realize the power of innovation and are actively purchasing intellectual properties and patent portfolios of distressed companies. So even in death, companies can realize the benefits of their patents.

I hate to end this blog post talking about the death of companies. So get to work, execute, and … read point #1 – over and over again.