The fear that “someone might STEAL MY IDEA!” drives many first-time inventors to rush to file a patent application. There is sufficient urban legend fodder to reinforce this unwise behavior. The reverse of this is the tinker inventor who has been “perfecting” his/her invention for waaaaaay too many years and the market window has closed. The cushion on which Tonight Show host Johnny Carson sat had a message embroidered on it that Johnny read every night prior to sitting down: “It’s all in the timing!”

This may sound strange coming from one who feeds his family by crafting, filing and prosecuting patent applications, but I encourage you to resist the temptation to file a patent application prematurely. Yes, I know that your invention is “the best thing since sliced bread”, that “everyone will want one”, and that there are other inventors who are about to beat you to the Patent Office with the same solution to the same problem. Even if all this is actually true, there are questions that you should ask prior to filing.

How long do you expect your product to sell?

If the answer is 3 years or less, understand that the probability of getting a Utility Patent within those 3 years is remote.

How much do you expect to earn from the sales of your product?

If that number is less than the cost of getting an issued patent (or not substantially greater than that) then this is a no-brainer for not filing.

What is the projected investment required to commercialize your innovation, versus the expected profit?

Whether you plan to form your own company, to pursue a license agreement, or to secure funding from investors, a realistic business case should show that the commercialization of the innovation makes good business sense and provides a better return on investment (ROI) than other options.

Has your invention already been patented?

There are several free patent search web sites available that you can utilize to determine if getting a patent is not in the cards. You can also visit a Patent Depository Library and the librarian will assist you in conducting a search. A professional search that includes both U.S. and Foreign patent documents can then be conducted to supplement your informal search. Just because you do not see your innovation in the marketplace does not mean that it has not been patented. For a variety of reasons, patented innovations are not commercialized.

Is a patent for your innovation prohibited by law?

If more than 1 year has passed since you sold, attempted to sell, used in public or disclosed in public how to make and use the claimed invention, then it is game-over before filing.

What is the expected level of patent protection?

A patentability opinion by a Patent Agent/Attorney can save major heartache down the road. If the best case scenario is very narrow patent protection then an issued patent will have virtually no commercial value and will be easy for competitors to design-around so that they do not infringe.

Are there better options than patenting?

A utility patent expires 20 years from the filing of the application; a design patent expires 14 years from the issuance of the patent; a trade secret, however, has the potential to be maintained forever. A Trademark may be better than a patent in certain circumstances, and can also be maintained indefinitely. First-mover-advantage can be more valuable than patenting in certain cases. Leveraging the market-power of an established industry player might negate the need for a patent due to massive advertising/distribution (“but wait, there is more, order now and we will double the offer…”).

As you can tell by the above questions, business strategy comes first ; the role of intellectual property strategy (patents, trademarks, copyrights, trade secrets) is to support the business strategy. First chart the course of your innovation from introduction and beyond; then determine the role, if any, of patents in that journey.

If after reviewing all the above questions the answer is YES patenting is important to protect the innovation , then the types of patent applications to file, the number of patent applications to file, the number and scope of claims to include in each filing, the timing of the filings, etc. need to be considered. We will explore that set of questions in a future article.

Ron Reardon
Registered Patent Agent

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