Patents are the most talked about intellectual property among the tech and startup communities. Many inventors, entrepreneurs, and businesses aspire to obtain a patent. Even the big banks, traditionally known for using trade secrets, are shifting their attention to patents. All this attention directed to patents is understandable. After all, a patent essentially grants a limited monopoly – it gives you the right to exclude others from making, using, selling, and importing into the U.S. your invention for 20 years.
But in my estimation, entrepreneurs put way too much stock in patents. The patent process could eat up a lot of time, money, and effort, so it is essential to understand the complexities of patents before jumping in. Here are six questions you should ask yourself before filing for a patent.
Is your invention patent-eligible?
You can’t patent laws of nature, physical phenomena, or abstract ideas. Although this limitations might seem simple enough, it is actually pretty darn complicated. The courts have been trying to work this issue out for the past seven or so years without too much clarity. Your best best in trying to understand this complicated question is to discuss it with an intellectual property attorney.
If your invention is patent-eligible, do you really need a patent?
Depending on your invention, your resources, and what benefits you want from your invention, trade secrets might be an alternative option. You can learn more about the pros and cons of each form of protection in my prior post about the differences between patents and trade secrets. In many cases, getting a patent will be an expensive and difficult process. You have to make sure the juice is worth the squeeze.
If you do need a patent, which type of patent should you get?
There are various patents, the most common being utility patents. Utility patents cover an invention’s structure and function – how something works or how something is performed. Unlike utility patents, design patents cover the appearance of an item. Think of Apple v. Samsung, which involves Apple’s design patents for its iPhone. Plant patents are less common and covers new and distinct varieties of plants.
Is there already a patent out there covering your invention?
A prior art search will help you find out whether someone else already has the idea patented. This can be a somewhat difficult task for entrepreneurs to complete without help, but an intellectual property attorney can hire companies (relatively cheaply) to run a search to find out if there is “prior art” that is likely to block you from obtaining a patent.
Do you know how to apply for a patent?
There are provisional patent applications, which do not grant a patent itself but can establish a “priority date” – or placeholder – for your subsequent, non-provisional application. A non-provisional patent application begins the legal process in obtaining your patent. You can learn more about the process for obtaining a patent by reviewing our discussion of Patent Basics.
What plans do you have after obtaining a patent?
I’m guessing you probably think that getting a patent is a recipe for success. Most inventors (and entrepreneurs) believe that patents are exceptionally valuable. The fact is that most patents aren’t valuable at all. In fact, by some estimates, 97% of patents never make any money.
Before you go through the patent process, you should be thinking about how you will try to money with your patent. For example, do you want to license your patent to obtain royalties? Do you want to enforce your patent rights in court? Do you know the risks and advantages involved?
Getting a patent for an invention is a long, expensive process. Have a plan before jumping into the patent process. My suggestion is always to consult with an intellectual property attorney other than the person who will actually file your patent application to get an honest assessment of whether it is worth the cost.