An independent inventor 22806

April 6, 1998

4 Min Read
An independent inventor

April 6, 1998 Design News

An independent inventor

Ken Berner Lowe Hauptman Gopstein & Berner Alexandria, VA

Last October, one of America's most prolific inventors passed away. In his lifetime, Jerome H. Lemelson patented more than 500 inventions, the fourth largest patent portfolio in the nation's history.

Early years. Lemelson graduated from New York University in 1947 later earning master degrees from NYU in aeronautical and industrial engineering in 1949 and 1951. After graduating, he worked on the Navy's project "Squid" to develop rocket and pulse engines. Soon he went out on his own, and for many years, Lemelson had virtually no income. Yet he became one of the few who made a living solely from his inventions' royalties.

Lemelson invented high-tech mechanisms that translated into automated warehouses, industrial robots, cordless telephones, fax machines, videocassette recorders, camcorders- and the magnetic- tape drive used in Sony's Walkman tape players. He also invented some medical instruments, including a talking thermometer for the blind. Lemelson's machine-vision patents made him wealthy. He licensed these in the early 1990s to more than 70 companies.

'Submarine' controversy. As one of the masters of the so-called "submarine" patent, Lemelson was perhaps the most controversial inventor in American history. For example, one patent application he filed in 1954 was issued in 1994 and should expire in 2011 (U.S. Patent No. 5,283,641). An inventor can sometimes modify patent claims almost indefinitely and keep the patent application pending. Once he got his patents, Lemelson diligently enforced them, often collecting millions from manufacturing infringers.

Lemelson's patents were primarily "paper patents"--patents issued but not commercialized. Instead, he left commercialization to large corporations, from which he would extract royalties for his patented inventions. In doing so, he used the patent system to his fullest advantage.

Although Lemelson was a visionary, companies developed and commercialized products without the benefit of his patent disclosures. Instead, his patent applications were kept in secret in the U.S. Patent Office during the pendency of the application. Once the patent issued, he would sue the manufacturers who had no choice but to pay a royalty to keep factories open. Some say that Lemelson would keep his patent applications pending in the PTO until they were "ripe,"and companies were actively infringing his patent. Had his patent issued earlier, companies might have changed their plans and product to avoid infringing his patent.

Thus many argue that Lemelson's patents did not build industries so much as took money away from them with his lawsuits. Criticism of this tactic has led to issued legislation that has eliminated the submarine patent for patent applications filed after June 8, 1995. For patents filed before June 8, the patent term is either 17 years from date of issue or 20 years from date of filing, whichever is greater.

Lemelson was also one of the few independent inventors to reap the rewards of the patent system. High costs prevent many independent inventors from enforcing their patents against companies with the money to defend lawsuits.

Lemelson advocated for independent inventors. He donated to MIT, funded a professorship, 10 graduate research fellowships, and 8 undergraduate awards.

Reach Mr. Berner at [email protected]

Q: When can an inventor enforce his patent in court?

A: An inventor can enforce his patent after the patent application issues from the U.S. Patent and Trademark Office (PTO). During the pendency of the application in the Patent Office, others are free to make, use, and/or sell the invention disclosed in the patent application, so long as they did not steal the patentable idea from the inventor himself.

Q: Does the Patent Office enforce my patent?

A: Patents are not self-enforcing. That is, a patent only excludes others from making, using and/or selling the invention covered by the patent. The patent owner must sue in Federal District Court to prevent or stop an accused patent infringer from further infringement of the patent and for past damages.

The high cost of patent litigation might prevent a small inventor or a small company from enforcing the patent in court. However, many companies, particularly large companies, prefer to pay a royalty and respect patents instead of defending a patent lawsuit for the same reason. Patent litigation is expensive for both parties.

Q: When should I file a patent application?

A: A patent application should be placed on file in the U.S. PTO when the engineering design has been finalized, or is close to being finalized, and there appears to be some commercial value for the invention. It is best to keep careful records of the invention which should be signed by a witness. It should be filed before any public description or commercial development or public use of the invention.

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