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Let's talk about Fidget Spinners and patents
May 12, 2017
So, a week or so ago, the news was full of stories about a woman who potentially missed out on a huge pay day, because she couldn't afford a $400 patent fee.
The woman is Catherine Hettinger, a US-based inventor, who is credited with inventing what appears to be this year's must-have toy craze - the 'fidgit spinner'.
It's not exactly clear where this story came from, and why it's being reported now, although the current popularity of the toy, combined with the standard compelling 'Corporate Goliath crushes the dreams of backyard shed inventor David', all coupled with a desire to fill column inches, probably has something to do with it.
Anyway, as usual, there is far more nuance to this story than the overly-simplisitic reporting lets on.
Some general background: The maximum lifespan of a patent for this type of mechanical apparatus is 20 years from the priority date (there are exceptions and extensions, but they aren't common, and are rarely for more than a few months, so the rule-of-thumb is 20 years). Priority dates are the first or earliest date from which the protection provided by a patent starts. A patent owner can potentially take action against a competitor doing something the same or similar to what is claimed in the patent, if the competitor started doing it after the priority date.
At the end of the 20-year lifespan of the patent, it lapses, and whatever is in the patent is free for the public to use unfettered. That's the general Quid Pro Quo of the patent system - you are given a monopoly on your invention by the Government for 20 years, in return of advancing the sum total of human knowledge by filing a patent that explains how to 'do' your invention. That's the theory, anyway.
Once a patent is granted, it is kept alive for it's maximum 20-year lifespan by way of renewal fees, which are paid to the Patent Offce at set intervals. If a payment isn't made, then the patent will lapse before the end of the 20-year period.
In this case, the $400 fee in question was a renewal fee for a granted US patent - US5591062. This patent claims a priority date of 1992. So, even if the fee has been paid, the patent would have lapsed in 2012, five years ago. A patent that expired in 2012 can't be used to stop a toy being sold in 2017.
There are one or two other things worth pointing out about this story:
Firstly, there is some debate over what exactly was claimed in the original patent, and whether this would cover the current toy. It's academic now, as the patent has expired. However, a patent will only provide protection for what is defined in the claims of the granted patent. If these claims don't 'read onto' an allegedly infringing prodict, then the patent isn't infringed. As this Blomberg article points out, two patent attorneys have looked at the claims, and are a bit dubious about whether they would actually cover the 2017 toy.
Secondly, patents are a regional or national right - a US patent is only valid and useable in the US, a UK patent in the UK, an Australian patent in Australia, and so on. It's possible to file equivalent applications in different countries that take advantage of an initial filing in a first country, as long as these overseas equivalents are filed within one year of the priority date. In this case, no equivalent applications were filed outside the US. The US is a big market, and many companies are happy to concetrate their efforts just on this market. However, it isn't global, and competitors could have completely legally sold similar devices in Europe, Canada, Australia and wherever, without infringing. Well, without infringing the same/equivalent patent rights as the US patent, anyway - there are other possible rights such as design rights, trade marks, passing off, etc. If a competor had blatantly copied every aspect of a US product, then they might still have been infringing something.
Thirdly, and lastly, a patent has worth as a deterrent, and as a legal weapon if deterrence fails. The existence of a patent will often be enough to warn off competitors and either prevent them from carrying out infringing actions, or bring them to the negotiating table. It's a weapon for those cases where the competitor goes ahead anyway. The government provides the monopoly, but it's up to the owner to wield the weapon. That costs money, and if the competitor fights back, it's usually a considerable amount of money. If an inventor can't find $400 to pay a renewal fee, it's unlikely that they're going to be able to find thousands for a court action. That's a harsh truth, but true - a patent will only be a string as the arm that wields it.
As always, if you want more infromation on any of this, get in touch: firstname.lastname@example.org