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To Patent or Not to Patent – That is the Question
So you have a great idea for a new product. Are you confused about what your next step should be? One question that frequently surfaces for an entrepreneur is whether or not patent protection should be pursued on their new invention.
In making this decision, it is important to understand exactly what a patent can provide. A patent holder has the valuable right to exclude others from making, using, selling and even offering to sell the claimed invention in the United States. The term of the patent lasts for 20 years from the filing date of the patent application.
In order to be eligible for patent protection, the invention must be useful, novel and non-obvious. The usefulness requirement is usually met by most inventions. In order for an invention to be considered novel, it can not be known or used by others and can not be described in a printed publication. The non-obviousness requirement is often described in terms that the invention must not be obvious to an individual skilled in the field of the invention.
The following questions should be considered when making the decision as to whether to proceed with patent protection:
Is the invention valuable enough to competitors that they would pay a royalty to use the invention? If it is likely that royalties can be obtained from the invention, this favors filing for patent protection.
If someone else patented a similar invention, how would that affect your company? If another company filing for patent protection would harm your company, then filing for patent protection if favored.
How is the invention used? Will the invention only be used in one product or will it be used in multiple or future products as well. An invention that can be utilized for more than one product weighs in the favor of filing a patent application.
What is the expected life cycle of the invention? Typically patents don’t issue until 2 to 3 years from the filing date. Thus one should consider whether the product will provide a competitive advantage 5 or more years after the filing date. A longer life cycle favors filing for patent protection.
Other questions which are equally important can sometimes only be answered by conducting a patentability search. Such as, what is the degree of protection that can be obtained from a patent? Can someone easily design around any protection that can be obtained? Are there other non-infringing products available?
Typically a patent search is conducted through an attorney who is registered to practice before the U.S. Patent Office. A patent attorney can initiate the search, review the search results and provide you with his or her opinion as to whether your invention meets the patentability requirements of usefulness, novelty and non-obvious. A patent search can also help you determine exactly what aspect of your invention may be patentable, which helps you make the determination as the amount of protection that a patent may provide. A patent search will also provide you with valuable information on the availability of similar competing products and whether any patent you obtain could be easily designed around to produce a non-infringing product.
If an invention has many non-infringing competing products available or if the technology used in the invention can be easily replaced with similar technology, then these factors do not favor filing a patent application. However, if the invention has no competing products and it would be difficult to replicate the invention with similar technology, than filing a patent application is favored.
After a search is conducted and an opinion as to patentability is provided you can decide whether you wish to proceed with the filing of a patent application. In addition to answering these questions, a patent attorney can advise you about the different types of patent applications available and the one which best fits your needs.
Laura Hagan is an attorney practicing with the firm of Kerrick, Stivers, Coyle &Van Zant, with offices in Bowling Green and Elizabethtown. She is registered to practice before the U.S. Patent and Trademark Office and her practice involves assisting individuals with their intellectual property needs, such as patents, trademarks, trade secrets and copyrights. She can be reached through this website or (270) 782-8160.
This article was originally published in The Business Journal of Southern Kentucky, December 2008.
FAQs
Is an idea patentable?
There are five categories of patentable subject matter which includes:
- machines,
- manufacture;
- process;
- compilation of matter;
- improvement of an invention and
- any other of the above four.
An idea is not patentable in and of itself but rather the expression of an idea in the form of an invention or process maybe patentable.
What are the requirements to obtain a patent?
The patent must be novel and not obvious in light of the prior art which includes any references which can be identified by an examiner.
Who owns the patent on an invention created by an employee?
A patent application must be filed in the name of the actual inventor, even if the inventor developed the invention under the orders of his or her employer. It is typical, however, for an employer to contract with the employee to assign the patent to the employer once it is granted.
Do I need a patent to practice my invention?
A product does not need to have a patent before it can be practiced or sold. However, without a patent, you are unable to exclude others from making, using or selling your invention.
What types of patents are available?
Generally, there are three different types of patents available through the United States Patent and Trademark Office. These are:
- utility applications which generally protects the function of your invention by claiming structural elements;
- design application which protects the way your invention looks;
- plant patents which protect asexually reproducing plants.
There is also a provisional patent application which is a precursor to a utility application. It does not require all the formal elements included in a regular utility application. Also the filing fees are decreased for a provisional patent application. The provisional patent application receives a filing date and is valid for one year from the date of filing. In the one year time period, however, a utility application must be filed claiming the prior filing date of the provisional patent application. The provisional patent application allows the inventor to spend less money up front while giving him a year to explore the merits of his invention.
What does “patent pending” mean?
The term patent pending can be used to indicate a patent application has been filed with the Patent Office. The term is available for any type of patent application.
Should I use an Invention Submission Company?
Unfortunately there are many organizations which prey on individual’s lack of knowledge of the patent process. These entities typically advertise themselves as inventor submission companies. Before you send any money to one of these companies, read the brochure prepared by the Patent Office to help inventors determine the validity of these companies.
Additional References
- Fraud Prevention - www.uspto.gov/smallbusiness
- U.S. Patent and Trademark Office - www.uspto.gov
- Manual of Patent Examining Procedures - www.uspto.gov/web/offices/pac/mpep/mpep.htm
- U.S. Code - www.uspto.gov/web/patents/legis.htm
Patents and Associated Costs — (Costs indicated below are rough estimates of the costs associated with the specific service. Costs may vary depending on the invention.)
Professional patent search – Approximately $1,200 - $2,000 – although counterintuitive, this process is designed to offer some insurance, but not a guarantee, to the inventor regarding the patentability of his/her invention. The writing of a patent application constitutes the majority of the costs associated with the patent process. If it costs $6000 to write the initial application, only to find that prior art exists, the application cannot be unwritten.
Provisional patent application - Approximately $2,000 - $3,000 (foot-in-the-door or place keeper application before filing a utility application- the Patent Office has made a provision for inventors to file an application without having all the formal paperwork that is required for the utility – this benefits inventors because it holds their place a the Patent Office and gives them and earlier filing date, however, it is only valid for one year. After the one year, the applicant/inventor needs to pursue a utility application. Many people choose this route in order to explore the potential of their invention, with “Patent Pending” status, before moving to the utility patent. The provisional patent application is much less formal and technical than the more extensive utility patent mentioned below.
Utility patent application - Approximately $6,000 - $11,000 (A utility patent protects the function of your invention.) In order to be a complete application the information disclosed must be sufficient enough that someone “skilled in the art” could reproduce or practice the invention. The right to exclude others from making or selling your product comes with the stipulation that everything about the product is fully disclosed. The term of a patent is 20 years from the date of filing and requires maintenance fees to be paid prior to the 4th, 8th & 12th years. The cost of the patent will depend on the complexity of the invention. A better estimate will be given to the client upon disclosure of the invention.
Design patent application - Approximately $1,500 A design patent protects the way your invention looks. The term of a design patent is 14 years from the date of issuance and does not require maintenance fees.
Confidentiality Disclosure Agreement - Approximately $200 A confidentiality agreement is a contract which should be used when discussing your invention with another in the pursuit of marketing or development of your invention. This provides the inventor with a legal recourse in the event the contract is broken, even if a patent is never obtained.
Warnings to Inventors
Under certain conditions it is possible for an inventor to lose his/her rights to a patent. These conditions are known as statutory bars and lack of knowledge of their existence by the inventor is irrelevant. Therefore, it is important that you familiarize yourself with these basic conditions.
The Invention has been patented or described in a printed publication more than one year prior to filing an application in the United States or abroad
This refers to a printed description, released anywhere in the world, that fully discloses the invention. This does not have to be a scientific disclosure. A local magazine, newspaper article, website, or tradeshow description about the invention and with full disclosure would be sufficient. Additionally, a partial description can substantially narrow the scope of your patent. Once a publication as described is printed, the clock starts and you have one year to file a patent application before your invention becomes dedicated to the public.
Invention is in public use more than one year prior to filing an application
A single use of an invention by a person other than the inventor, absent any obligation of secrecy to the inventor, can be construed as public use. The exception is “experimental use”. The courts recognize that inventions require testing to determine optimum use and development of a product. This contingency can be vague and is often determined by the courts on a case by case basis, should the issue arise.
Invention is “on sale” in the United States more than one year prior to filing an application
When commercial offers are made of a product a statutory bar time clock is initiated. Advertisement a product not yet on the market, or pre-announcing a product, might not constitute an offer for sale within this definition. Close situations are determined on a case by case basis. Simple acceptance by one person, even in secret, of a product ready for patent can create this bar.
The patent process can be overwhelming for most independent inventors and I realize that this is a lot of information to process. However, we like to arm our clients with as much knowledge as possible to ensure that their rights are protected and that accidental disclosures do not hinder them. We appreciate your interest in our services and would be happy to answer any additional questions you might have. Please contact Laura Hagan through this website or (270) 782-8160.
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