When to Patent
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When to Patent
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When to Patent - When and Why:
This section was added to the Product Development Process article years after it was originally published because of the many questions we receive.
This is a rather important topic in the process, especially for the individual inventor or start-up company. It should be noted that
this is NOT legal advice, it is our opinion based on experience.
Please let us know if you have additional questions or comments.
Why Use Patents?
Isn't it obvious? So no one else "Steals" your idea.
Well, no. A patent won't keep others from "Stealing" your idea, but it does provide some legal leverage for going after someone who infringes.
That said, one key thing to remember -- A patent is only as good as your pockets are deep.
It's an unfortunate part of the legal aspects of patents specifically, and intellectual property generally.
From my point of view, Patents provide 4 good things, and 3 not so good things:
First, the Good:
Second, the Unfortunate Side Effects:
- Patents provide a method of demonstrating a legal right to exclusive use of an idea - for a period of time.
- If infringement occurs (intentionally or accidentally) a patent provides legal teeth for defining a remedy.
- For companies with integrity, Patents provide a road map of areas to avoid.
- If the intellectual property (the idea) is to be sold or licensed, a patent adds substance, and therefore value.
- When a patent is issued, it is published to the world, and you tell the world exactly what you are doing.
That can often stimulate other ideas that can compete directly against yours.
- When an application is made, the clock starts ticking. Patents offer legal protection for a limited time, so using that time appropriately can become an important issue.
- The way a patent is written can limit itself. The patent not only tells the world what you are doing, but also tell the world the limits of what you are doing.
That immediately opens the gates to "designing around the patent." (Something we, at Synthesis, are asked to do fairly often.)
So, Why Patent? Here are the rules of thumb I use:
- Use patents when the ideas can be discovered by someone (like the competition) who sees or purchases the product.
- Don't use patents when it is not obvious or cannot be discovered by an examination of the product. This is often referred to as "trade secrets".
||Product 1 contains a new technology that can easily be discovered by taking it apart and examining how it works. Patent this technology.
Product 2 is created using a new kind of machine. The product could be created using an old method that is much slower and more expensive. Don't patent this. Keep it as a trade secret.
Basically, if the idea is really good and you tell the world, someone will want to copy it, or mutate the idea into something else.
- Finally, Use patents to give substance to the ideas or to a venture. If the concepts (or company holding the intellectual property) are to be sold, patents are a good method of assigning value.
(Incidentally, this is one of two times I would recommend patenting an idea prior to being ready for production. See below.)
When to Patent:
In reality the patent protects the ideas when they are in production. Unless someone else is working on the same idea at the same time (risk), the best time to apply
for a patent is the day before the product goes into production.
Now I say that a little tongue in cheek, but the concept is to maximize time of protection afforded by the patent. As a nice side effect, this will usually avoid
telling the competition what you are doing in advance of actually doing it.
A Personal Note: I have seen many an inventor spend thousands to get a patent, then, after several years, when the product is finally ready for production,
they find the ideas have evolved such that they are no longer completely covered by the original patent. They end up going through all the expense again for a new patent or CIP.
"Use a Non-Disclosure (NDA) instead of a patent
in the beginning stages of development.
It's cheaper, faster, and more flexible."
My advice: Think carefully about the timing. Use "Non-Disclosure" or "Invention Disclosure" forms to protect your idea when working with vendors to develop the ideas.
These offer reasonable legal protection for very cheap, and it is very common in industry.
What kind of Patent:
There are several avenues for legal protection of intellectual property -- Patent, Trademark, Copyright, etc.. For physical things, like products, patents are usually the choice.
The basis for obtaining a patent is the idea must meet several criteria. I'm not the one to elaborate, but in general,
it must be a physical item, machine, or method, which is new, useful, and unique (usually they use the word "novel"); and it must not be obvious to one skilled in the field.
There are 2 kinds of patents -- Design Patents and Utility Patents:
Sometimes people classify a 3rd patent type:
- Design Patents are generally used to protect the artistic nature of a product. For example, for one customer, we design decorative accessories for cars.
These are covered by design patents which keep the competition from directly replicating the artwork or "design".
One limitation of design patents is they cover only the exact artwork -- not variations (embodiments) of the same.
- Utility Patents are generally used to cover the way things work. These are really the ones with teeth. They cover a lot more (like variations or embodiments
that are very similar in function and/or extensions of the same), but they also cost a lot more.
- Provisional Patents are not really "patents" in the classic sense. They're more like place holders that allow time to file the full patent. These are good, in my unofficial opinion, only in rare cases of extreme time constraint as they are VERY limiting, and usually start the clock ticking prematurely.
Consult with a patent attorney carefully before going this route.
For more in depth information, read the Patent Law FAQ available from Gould & Whitley -- an excellent overview, from a good patent attorney.
One Final Comment About Patents:
Patents can be very expensive. Perhaps you'll drop $15,000 on the initial patent application, then you'll have more in
attorney's fees to prosecute and answer USPTO office actions -- till (hopefully) it gets approved and the patent issues. (If not, you've wasted the money.)
Then, there are maintenance fees (basically more cost, whatever they call them). They keep coming till the patent finally expires.
Why so sarcastic? For inventors -- I've seen so much money flushed away chasing patents -- money that should never have been spent.
I'm not against chasing dreams -- quite the opposite! Just plan appropriately, and don't gamble your life savings on a hope that your widget will make you rich.
Instead, plan carefully and realistically -- chase the dream with your feet on the ground -- then you'll probably achieve it.
I am an inventor. I understand the emotion. I understand the dream.
My advice: Cautiously address getting patents, and be sure your business plan supports the return on investment for patent(s).
Don't force it. Walk away if it doesn't pan out.
* For more on patents, and for specifics about your particular project, please see a patent attorney. They are the only ones to give proper legal advice about patents.
* For assistance with designing or developing your product, please give us a call.
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