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Patenting after being sued for patent infringement

ATMAC Nov 13 2015

Do you need to build a patent portfolio?

If so, retain a patent agent with a history of success.

True story:

Two companies were sued for patent infringement in the later part of 2009. They were very much alike, these two companies. Both were selling similar products and services. Both were successful with loyal customers, both were sued by the same patent owner for allegedly infringing the same patents. Just five years later, both companies’ products are still on the market. But there is one difference. One company is thriving. The other went bankrupt and is no longer in business. One of the last actions of the company that went bankrupt was to sell all its assets including its name and product suite to the company that is now thriving. These two companies started off at equal positions. In the face of challenge, one got stronger, the other collapsed. It took just a few short years.

What made the difference?

Have you ever wondered, as I have, what makes this kind of difference in a corporation’s fate? It isn’t always native intelligence or dedication or persistence. It isn’t that one company “wants” success and the other doesn’t.

The difference lies in the effectiveness of each company’s leadership to recognize and overcome threats to the company’s very existence.

Make your own luck.

The winning company in the above story had no patent portfolio and had no patent strategy at the time they were sued. Frankly, they had no interest in patents and were “winging it” in terms of their intellectual property.

Being sued for patent infringement was a wakeup call, big time. That company’s leadership realized the importance of patents and recognized the risk if they did not up their game.

They hired me.

In less than five years I took them from zero patents and applications to over eighty issued patents and published applications in Canada and the US.

I built them their own arsenal.

The losing company in the above story did not hire someone like me and did not aggressively build their own patent portfolio. In less than five years they were dead.

United States patent agent

There is simply no question that US patents are valuable. The more you have the higher your company’s value. Since the US is likely to be your main market, aggressively obtain as many US patents as you can.

Canada patent agent.

Another way to boost your portfolio is to file the same application in multiple countries.

Are you aware that most technological products protected by US patent(s) are also sold in Canada? To further boost your portfolio, I suggest you consider filing a patent application in Canada for every application you file in the US.

Easy allowance in Canada.

It’s possible your Canadian application will sail through to allowance without any rejections.

It’s highly likely it will encounter fewer rejections than your corresponding US application.

In fact, you may get a patent in Canada on claims that will never be allowed in the US. Why? Because the prior art available to examiners in Canada is less than that available to examiners in the United States. Canadian patent examiners cannot reject your application in view of unpublished US prior art, but the US examiners can.

Simply put, it’s easier to get a patent in Canada than it is in the US. Why not take advantage of this fact to bulk up your portfolio?

Strength in numbers.

When corporate disputes erupt into all out war, an often utilized weapon is the patent. Stock up now. You’ll be in good company. Just look at how many patents these global leaders were issued in 2014 alone:

  Patents issued in 2014 Patents issued in 2014
Company Canada United States
Airbus Operations SAS 171


Baker Hughes Incorporated 128 422
BlackBerry/Research In Motion 642 1390
General Electric Company 170 1882
Google Inc. 55 2663
Halliburton Energy Services, Inc. 143 433
Honda Motor Co., Ltd. 90 1483
LG Electronics Inc. 153 2447
Microsoft Corporation 139 3165
Mitsubishi 113 1735
Qualcomm Incorporated 292 2698
Samsung Electronics Co., Ltd. 92 5800
Sony Corp. 49 3566
Toshiba 49 2975
Toyota 51 2033
Xerox Corporation 61 980

(Source: CIPO Canadian Patents Database and USPTO Patents Database)

Many of the above listed companies collect patents like they are poker chips. There is good reason for this.

The more patents you have, the harder it will be for a competitor to knock them down. A competitor might be able to invalidate or prove non-infringement for a single patent. But let them try invalidating or proving non-infringement of ten or even thirty patents all at once. Their costs in legal fees alone will be enormous.

Be like the old Soviet Union stockpiling nuclear missiles. When push comes to shove, you’ll want as many patents as you can lined up and ready to fire.

Not just weapons.

Don’t think you’ll get into a patent law suit? Patents are still valuable.

At some point you may need to borrow money, maybe for expansion. Consider things from a lender’s perspective. You can use your patent portfolio as collateral on the loan, and the larger your portfolio the better. Banks, private lenders, angel investors all love to see a large patent portfolio.

How much is this going to cost?

The costs may be more affordable than you think.

Over the twenty-year life, the average yearly costs for a small entity filing patents on an invention in Canada and the US, including all government fees and my firm’s service fees, will be in the range of:

Average US+CAD patent family costs:
$1500 to $2000 USD/year. (i.e., only $125-170 / month)

Much of the “heavy lifting” for filing a patent application comes for the initial agent costs for drafting the new application. Once this is done for the first country (e.g., Canada) the same description can then be filed with only minor costs in a second country (e.g., the United States).

After the initial filing costs are paid there is generally a period of two to three years where there will be no payments required by you whatsoever.

As for Office actions, any prior art rejections that may need to be overcome in Canada can likely leverage work to overcome similar rejections in the US, or vice versa.

Long term, it may be more expensive to not invest in patents.

Over a decade of patent experience.

Okay, now I have to brag a little bit. It’s necessary to prove that engaging my firm to draft and prosecute your patent applications is a smart move.

Back in 1999 I was recruited to work in Silicon Valley for an upstart hardware engineering firm. I designed and brought to market several controller boards and associated firmware for various communication systems and products. Here is what the CEO of that company said about me when I decided to leave:

He is without a doubt, one of the finest young engineers I have ever worked with. I have given him an open offer to return to any company I am involved with whenever he wants.
CEO name and full reference letter available upon request.

I then entered the world of patents. I started by working for the largest patent firm in Taiwan where I helped some of the world’s most well-known high tech companies obtain patents. After I left in 2009 my manager reported:

After Andrew left we actually had clients threaten to leave the firm. They said they were clients because of the high quality of his work. We had to give them discounts to stay.
Manager name available upon request.

I returned to Canada to work for the winning company in the story that began this letter. Here’s what the CTO of that company wrote in my first performance report about two years after I joined:

Outstanding. Exceptional knowledge of patent creation and understanding. Very detailed and fantastic initiative to tackle tasks and potential upcoming issues. Always in tune with what is going on in the patent world. Your performance has been beyond exceptional. I struggle to find room for improvement.
CTO name and full performance report available upon request.

At the time of writing this article (2015), in total I have over sixteen years industry experience in high technology of which the most recent eleven years have been focused entirely on patent prosecution.

I’ll give you some more numbers. I have personally drafted over two-hundred new patent applications. I’ve replied to over three-hundred responses to Office actions on the merits. Plus I’ve prepared pre-appeal brief conference requests, reissues, divisionals, continuations, translated Chinese patents into English and provided technical support for infringement cases. And I have significant experience assisting patent attorneys with patent litigation, licensing, ex parte reexamination, invalidity opinions, non-infringement opinions, mediation, and patent design-arounds.

Registrations at both CIPO and the USPTO.

In March of 2014, I founded ATMAC Patent Services Ltd.

You can confirm that both ATMAC and myself are registered patent agents in Canada on the Canadian Intellectual Property Office (CIPO) website here:

Likewise, you can see my US patent agent registration details on the United States Patent and Trademark Office website here:

I am only accepting a limited number of new clients for ATMAC. Let me help you like I’ve helped so many others. Feel free to email me at Or contact me via this website:

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Andrew T. MacMillan

ATMAC Patent Services Ltd.