Stepping up to strong patent protection
By Nick Brannen, Attorney
The first of many steps to take when seeking to protect an invention is to recognize the opportunity and generate the idea. Keep in mind though, that an idea, by itself, is not enough. There are many facets of the idea to consider, and you should keep a good journal of your progress. The act of making a prototype is most often helpful in proving the concept and improving on an initial design. You should keep the idea confidential in order to avoid loss of rights.
I would encourage you, as an invetor, to further engage in a marketability and financial analysis of your invention at an early stage. While such an analysis need not be formal, it is definitely a good idea to consider the business implications of proceeding with an idea. Several questions will need to be considered. For example, what is the size of your potential market? Who are your competitors? Would you try to compete with or license to the existing market players? What are the price points and what is the margin for each unit of product? Many other questions could be asked.
If a business case can be made that your invention has a chance to be profitable, then it is fair to consider whether it is protectable. Patents are proper to protect inventions that are new, useful and non-obvious. Patentable inventions can be new products or processes, and quite importantly also improvements to existing products and processes. The US patent right includes the rights to prevent others from making, using, selling and importing into the US anything that infringes upon the patent.
Patent searches are designed to provide inventors with confidence that an invention is patentable and does not infringe on any existing patents.
You will be well served by engaging in an internet and prior patent search if you feel that your invention is potentially patentable. The first place to look is on the internet by searching in a search engine. While this sounds simple (it is), the benefits can be enormous. You can support your marketability and financial projections with real market data, and also have a chance to determine whether any similar or identical products are readily available on the market.
Be aware, though, that just because your invention is not found does not mean that it is patentable. Many inventions are patented and not commercialized. After the search engine search, the next step is an informal or a formal patent search.
The patent search is typically a time when you first call on a patent attorney. Patent searches are designed to provide inventors with confidence that an invention is patentable and does not infringe on any existing patents. You may also discover ways to refine your invention after reviewing the patent search results. The patent attorney will be able to offer legal opinions as to whether your invention is patentable compared to references found in the search, and also to assess potential infringement risks associate with the references found in the search.
The next step is to file an application for a patent. There are a few options available, and of course money comes into play. It typically takes about two to three (or more) years to obtain a patent. It is a good idea to file an application for patent prior to disclosing inventions to a third party for review.
Some inventors start the process with a provisional patent application, which affords inventors a relatively inexpensive way to achieve patent pending status. It is reasonable to expect a provisional application to cost about one-third as much as the preparation and filing of a utility application. The downside is that provisional applications only remain pending for 12 months. As such, the use of provisional applications can be fairly said to be a cost-delaying strategy.
A utility patent application will need to be filed (either initially or within the 12 month pendency of the provisional application) in order for a patent to issue. It is common for most applications to be rejected initially, and there is a back and forth communication with the patent office. Amendments and legal arguments can be filed during this back and forth process. You can be offering the invention for sale or seek a license of your invention while the application is pending.
In summary, the first step is to recognize and develop an idea. Next, you should make the business case for the idea (either commercialization or licensing). Then, a patent search should be performed. Lastly, the patent application should be filed.
