A patent owner has a right to stop others from making, using or selling a patented invention. These rights may be enforced back-in-time to when a patent application claiming the invention was published, and made public. If the public is kept in the dark about the invention, a patent owner may not enforce back-in-time rights. I spoke with Eric Orlinsky, Chairman of Treble, LLC, who described their decision to keep the public in the dark about novel aspects of their Treble Network invention.
We talked about the genesis of the Treble Network invention. Eric, who is also a partner with Saul Ewing Arnstein & Lehr, LLP, investigated how to better develop business using social media. After considering available social media tools, Eric and his colleagues “took a step back.” Rather than start with an existing social media tool to drive a business development process, Eric identified the business development process to drive a new social media tool. “The primary way in which I develop business is by having created a trusted network of referral and introduction sources.” A trusted business network may comprise people you know, people you like to do business with, or people you like to help. With each positive interaction, you may develop goodwill with a business contact. This goodwill may lead a referral. The Treble Network uses real time business intelligence to track effective referrals and “take some of the serendipity out of networking.”
Treble, LLC filed a patent application to protect novel aspects of the Treble Network invention. Treble, LLC filed a Nonpublication Request with the patent application. A Nonpublication Request may keep the public in the dark about an invention, as the USPTO does not publish the patent application claiming the invention.
From Eric’s perspective, the Nonpublication Request provides a significant benefit –
FIRST MOVER ADVANTAGE.
“We thought [a patent application] would provide significant value to us just in terms of saying we had a patent pending, and that would make people think twice about competing against us in the same market.” Treble, LLC would then be first in their market. If potential competitors remained in the dark about the Treble Network invention and how to design around the invention, Treble, LLC could grow its market before anyone else went to market. Whether a patent ultimately issues or the application goes abandoned, “we hoped we would have such a first-mover advantage that it would be hard to compete with us on a purely business basis.” The first mover advantage justified giving up potential back-in-time patent rights.
Treble, LLC also gave up international patent rights when it filed its Nonpublication Request. A Nonpublication Request (USPTO Form PTO/SB/35) requires a patent applicant to certify that “the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of application 18 months after filling.” Eric is not worried. “The big market for us is the United States.” As Treble, LLC grows its market in the United States, “I think we will have first mover advantage in a lot of other places.” The benefits of filing the Nonpublication Request outweighed any benefits of filing a patent application internationally.
I want to thank Eric Orlinsky of Treble, LLC for sharing his patent application story. More often than not, the USPTO publishes a patent application. To avoid publication of the Treble Network patent application, Eric Orlinsky and Treble, LLC filed a Nonpublication Request. You may similarly find that a first mover advantage, or other advantage, may provide greater benefits to your business than a published patent application.
To learn more about the TREBLE networking tool or download the Treble app, please visit https://appadvice.com/app/treble-network/1239401698, or search for Treble Network on the Apple App Store or Google Play.
Hutchison Law, LLC has experience with patent applications. To learn more about how we prepare and file patent applications, please contact us at 410-978-7287 or info@hutchisonpatents.com.
© 2018 Hutchison Law, LLC. All Rights Reserved. Content provided herein is for informational purposes only and should not be construed as legal advice.
