You’ve invented Thing 1,
Or a method for Thing 2.
So what, you then wonder,
Is an inventor to do?
Yes — file a patent!
And once it issues,
You’ll simply sit back,
As the royalty accrues!
But a lawyer will tell you,
And tell you quite true:
A patent’s not a process
Always worth going through . . .
As an innovator with a new invention, we understand you want to protect your discovery. Once you learn that filing a patent can cost up to $10,000 (or more), can take one to three years (or more) to go through the application process, and there’s no guarantee that the USPTO will issue you a patent, and if they do, there’s no guarantee your invention will yield a single dime of income, you may wonder, “Is a patent worth the investment?”
Do You Need a Patent?
Start by asking yourself these preliminary questions based on your knowledge of the industry and its marketplace:
- Is my invention something new or unique in the marketplace? If it is simply a variation on other available options, a patent is likely not worth it.
- Does my invention have potential for profit? Novelty alone does not transform an invention from a dud to a diamond.
- Do I want to sell or license my invention? A pending patent makes the invention far more marketable – and some companies won’t consider your invention without one.
- What is the life cycle of my invention? If your invention will be obsolete in a year or two (less than the time it takes for a patent to issue), you may consider protecting your idea with non-disclosure agreements and potentially copyrights instead.
- Can I find potential infringers? If your invention is a product that will be sold in the commercial marketplace, probably yes. But if your invention is a process that will be practiced privately, it will be difficult to find infringers and enforce your patent.
If you answer these questions positively, it is usually worth the cost to do a patent search – determining what similar inventions already exist – to determine if your patent application is worth pursuing.
What Kind of Patent Application Should You File?
If the search is favorable, the question becomes whether to file a provisional or a non-provisional patent application. In the U.S., you must file your non-provisional (or “real”) within a year of disclosing the invention to the public or a year of filing a provisional application. If you can afford it and your invention is in near-final form, a non-provisional application is the best option.
The provisional application, by contrast, is akin to a placeholder, filed to protect your status as “first to invent” while your invention is finalized or while it is marketed for sale or license during the tweaking process. It allows you to claim that your invention is “patent pending”.
Cost-wise, the expense is about the same whether you file a provisional patent application followed by a non-provisional application (since a non-provisional takes the provisional language and both adds to and refines it), or just file a non-provisional patent application with the USPTO. The cost to file a provisional application is about half the cost of a non-provisional one. So if experimentation or marketing research reveals that your invention is not viable, you will have saved half the cost of a non-provisional filing.
Thus, if you have a limited budget or you want to spend more time perfecting the invention, investigating whether a real patent is worth the investment, disclosing the invention to others before it is fully completed (i.e., for sale, license, or manufacturing) a provisional application may be the best option. While a nondisclosure agreement may be useful in these situations, it usually will not provide as much protection as a provisional patent application.
These are only some of the considerations. Every legal situation is different and needs to be evaluated on its merits. If you need help with your patent or licensing needs, please send us a message. We have lawyers licensed in Arizona, New York, and Connecticut and we can handle federal intellectual property matters in any U.S. state as well as assist with international matters. For even more information, sure to connect with us on Facebook.
Post by patent attorney Wendy Akbar, edited by social media attorney Ruth Carter.