The motion picture projectionist (Nov 1931-Jan 1933)

30 Motion Picture Projectionist December, 1931 Patents: By Ray B. Whitman A series of instructive and interesting articles on how patents are obtained and sold. Note: In this series of articles Mr. Ray B. Whitman, practicing patent attorney of New York City, explains in understandable non-technical language, just what a patent is, how one is secured and how it may be sold. In addition, Mr. Whitman offers to the readers of this magazine personal advice without obligation on any subject connected with patents, trademarks, designs, or copyrights. All inquiries should be addressed to Mr. Whitman in care of this magazine. — Editor. Foreign Patents SOME time before the United States patent application is ready to issue, and within a year of its date of filing, and preferably immediately after the first office action is received, the inventor should give careful consideration to the question of protecting his invention abroad. For, unless this is done in time, he is prevented from later getting valid patent protection in most of the important foreign countries. This practice of taking out foreign patents is often seriously neglected, to the inventor's loss, and again often overdone, to his needless expense. A Practical Illustration As illustrative of the former practice may be cited the following reported incident: When the world's greatest inventor, Thomas A. Edison, somewhat late as usual, got around to taking out a patent on the moving picture machine perfected in his laboratories, he was advised to apply also for foreign patents. But he was cautious. "How much will it cost?" he asked. "Oh, about $150." "It isn't worth it," concluded the inventor. That was many years ago. One wonders what Edison thought when a few weeks ago, American receipts from motion picture royalties abroad were given as "at least $300,000,000 for the last six years." During one recent year alone these foreign royalties piled up to $75,000,000. On the other hand, as illustrative of the latter practice, it became so common years ago for certain advertising members of the patent profession to advise their clients to file foreign patent applications where the hope of a return was negligible that the Patent Office printed in one of their official bulletins, distributed free to the public, the following warning to inventors against filing foreign applications without due consideration of their probable value: "In general, an inventor should be satisfied that he can make a profit from foreign patents before applying for them. "Before arranging for foreign applications, it is generally desirable to wait an official statement by the United States Patent Office that a United States patent will probably be granted, since in most foreign countries an application for patent may be filed within 12 months of the date of filing in the United States with the same effect as if filed on the day the application is filed in the United States. "In most foreign countries there is a requirement that unless actual operation under the patent begins in the country issuing the patent within a predetermined period and is thereafter kept up, the patent will become void or be subject to the grant of compulsory license. That is to say, other persons may apply for a license to operate under the patent to be granted on terms to be determined by the government or a court of the country issuing the patent. "In most foreign countries in addition to the original patent fees, there are taxes paid annually or from time to time, increasing in amount, so that a foreign patent frequently becomes a heavy financial burden." Advice to Inventors The author's advice to inventors, and which is based upon what large corporations have learned is the most profitable policy regarding the filing of foreign patents, is this: It is usually advisable to take out a patent in Canada, since their market is practically a continuation of our own; and although Canada has only eight or nine million people, against our one hundred and eighteen million, their patent is almost a copy of ours, and so costs less to get; and thereafter, there are no complications, such as annuities to keep it in force throughout, its term, as there are with most other foreign patents. The other countries which should receive consideration, in most cases, are the following, perhaps in the order of their usual importance: Great Britain, Germany, France, Italy, Japan, Mexico, Brazil, Argentine. Of course, all depends upon the nature of the invention and its probable market. For instance, due to the great development of electrical .power in the Scandinavian countries, electrical inventions often find a ready market there. And the author once came across a peculiar case where a patent was all-important in the remote little country of Iceland. There are now over 50 foreign countries having patent laws which enable the inventor to protect his invention. To take out protection in all of these is to take out what is popularly known as a "world patent," which is thus merely a series of independent patents, instead of just one, as is commonly supposed. Such complete patenting is usually inadvisable, although sometimes it happens that the mere filing of many foreign applications actually aids an inventor in raising capital through a corporation, since he appears to be getting a wider and more valuable patent monopoly, and can therefore better trade with the corporation for a more equitable stock interest. Thus, it becomes a matter of business policy. Of all the foreign countries, Germany is about the only one besides our own which grants the inventor a patent containing, in itself, any substantial protection. For it, like a United States patent, is granted only after a thorough search in the prior art to determine its novelty. Such searches are either entirely absent in the other countries or are only nominal in character, so that the patents are more in the nature of registrations, similar to our trade marks. For this reason, the patents of such countries are not taken so seriously until after they have been through the courts and their novelty and scope determined. Sometimes of Great Value But there are often instances where patent protection abroad is of great value, even exceeding its value at home. In the absence of such special considerations, however, the inventor should be quite conservative in spending money to take out many foreign patents. He would better apply it to a more thorough patenting or marketing here, as by the filing of patents on improvements, or in employing expert assistance to exploit better the sale of his rights. Enough has been told to convince the inventor that he should here again follow the advice of some reputable attorney, who has had experience in the filing of foreign cases, and preferably also in their marketing. Most foreign patents are filed through a small group of "International Patent Attorneys," who carry on a wholesale business abroad, by correspondence, for all the other patent attorneys. They have associate attorneys residing in the various foreign capitals, who actually represent the inventor's interests abroad, being aided by the international attorney, who also understands foreign law and procedure. The inventor can either have his foreign patents filed through his own attorney, who will then transmit them to his international attorney, or he can, in some instances, deal direct with the international attorney himself. (Continued on page 36)