Should I file a patent application and obtain a patent before I submit my invention or before I seek outside assistance from a development company? This question is one that I receive with great frequency. Unfortunately, as with most questions in the patent/innovation space, the answer is not as simple or direct as you might expect.
This is an age old question that is really the patent/invention equivalent of which came first, the chicken or the egg. Moving forward with a patent doesn’t make a lot of sense if the invention is not likely to be marketable. I always tell folks that the best invention to patent is one you will make money with regardless of having a patent, so I do believe there needs to be market considerations factored into the analysis. After all, the goal is to make money. Investing in a business, or investing to obtain a patent only makes sense if there is a reason to believe more money will be made than spent. Having said that, without a patent pending you have absolutely no protection, at least unless you obtain a signed confidentiality agreement and even then the protection will be applicable only to those who have signed the agreement.
Of course, now that the U.S. is a first to file system, filing sooner rather than later is not only extremely beneficial, but really a requirement. You absolutely want to file before you do anything publicly, like offer your invention for sale or disclosure your invention at a trade show. But still, it is critical to constantly remember that this is a business pursuit, which means you want to move forward in a business responsible manner. For many the right approach is to have a patent search done to see if it makes sense to move forward, and if after the professional search it seems like moving forward is likely to lead to a patent then many will choose to start the process with a provisional patent application.
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A provisional patent application does not give you any rights other than to say you have a “patent pending.” A provisional patent application will define your invention by disclosing the parameters of the invention and allows you to do certain things without fear of losing the right to obtain a patent later. For example, if you publicly use your invention or offer it for sale more than 12 months before a patent application is filed you cannot obtain a patent. Similarly, if others who may be working on the invention unknown to you publicly use or offer for sale the invention more than 12 months before you file a patent application you cannot obtain a patent. In reality, however, it is not only possible but extremely likely that if you publicly use or offer the invention for sale prior to filing even a provisional patent application you will never be able to obtain a U.S. patent. This is because the America Invents Act (AIA) dramatically cut back on the so-called grace period. It is true to say if you wait more than 12 months you can’t get a patent, but it would be better for inventors to think that if you disclose in any way prior to filing you very well may be unable to ever get a patent. Thus, the reality of the first to file system we now have in the U.S. has changed the calculus a little. Filing sooner rather than later really needs to be viewed as an imperative. This is why provisional patent applications filed as early in the process as possible are the new normal.
Allow me to elaborate. I say it is preferable to file at least a provisional patent application as early as possible based on personal experience as well as professional experience. Many years ago, on a patent application where I was the inventor there was another who publicly used at least a variation before I filed my first provisional patent application. The fact that I invented it before that public use by another is of no importance. I am prevented from obtaining a patent on that aspect of the invention. This can and does happen with more frequency than you might expect, even to those like me who are familiar with the law.
So how did I let this happen? In my case, at first I didn’t think the invention warranted a patent application because I didn’t view it as having enough value initially to warrant a patent application. In such a situation keeping a trade secret is an appropriate way to proceed, and a choice that companies and individuals make all the time. But then as I continued work on the invention and saw the full potential I filed an application. Hindsight is always 20-20, and no one is perfect. On some level whether to keep a trade secret, pursue a patent or file a patent application immediately is a business judgment. Sometimes your business decisions work out, and sometimes they don’t. In this case it didn’t work out on the patent front for me, but I continue to this day to make money on the invention.
In any event, this personal story is an illustration of why I am a fan of at least filing a provisional patent application as early in the process as possible. By the time you become completely comfortable and realize you need to move forward it may be too late. This is particularly true now that the U.S. has moved to a first to file system, which went into effect on March 16, 2013. By filing a provisional patent application as soon as possible you limit your exposure and prevent, to at least some extent, others from cutting your rights off. You also prevent yourself from doing things that unknowingly could lead to no patent ever being able to issue. You can also typically talk more openly about the invention, you can start to sell it and use it publicly. It would still be best to get a confidentiality agreement in place, that way if you ultimately do not proceed all the way to a patent you still have a trade secret.
Unfortunately, many times those you most want to share the invention with will not sign a confidentiality agreement, such as potential investors. Engineering firms and licensing firms typically will sign a confidentiality agreement, but investors get proposals from many people and if they sign a confidentiality agreement with you and another who has a similar idea that could lead to liability on their part where there was no liability present absent them signing an agreement. Essentially, those who see a lot of ideas and inventions are justifiably reluctant to sign confidentiality agreements. Thus, if you want to show someone your invention you have to weigh the pros and cons. If you at least have a provisional patent application pending you have defined your invention and memorialized with a filing date a date upon which you were in possession of the invention described. Thus, if you need to prove when you invented you have a solid date backed up by a United States Patent filing.
So the decision is really not hard and fast one way or another. What you can do is ask yourself whether you would pursue the invention even if you get a negative review a licensing firm. If the answer is yes, then there is no reason not to at least file a provisional patent application and there are a significant number of benefits in so doing. If on the other hand you will abandon the invention if you get a negative review you may wish to get a confidentiality agreement in place and then if you get some positive feedback pursue a patent application, perhaps a provisional patent application.
One thing is for sure though, I would recommend that you have some reason for believing there is a market for the invention prior to filing a non-provisional patent application.
For more on this topic please see:
- Should I File a Provisional Patent Application Before Licensing?
- When Should a Do-it-Yourself Inventor Seek Professional Assistance?
- Keep Your Money in Your Wallet Until Proof of Concept
- Financially Responsible Inventing: Prototype Basics
- The Good, Bad & Ugly: Truth About Provisional Patent Applications
- An Overview of the U.S. Patent Process