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.

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