Should I File a Patent Application Before Licensing the Invention?

By Gene Quinn
August 12, 2017

I am frequently asked by inventors whether they should file a patent application before seeking to license their invention. Some even ask whether they should first obtain a patent before they submit the invention to a licensing company like Lambert & Lambert, for example. This is an age-old question invention question, which is really the patent/invention equivalent of 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, but moving forward with marketing and commercialization doesn’t make a lot of sense (at least in some cases) if the invention isn’t likely to be protectable with a patent.

I always tell inventors and entrepreneurs that the best invention to patent is one you will make money with regardless of whether you ultimately obtain a patent. After all, if there is not a market for the invention why would you ever consider spending the time and money to obtain a patent? The goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent. So I do absolutely believe there needs to be market considerations factored into the analysis. Having said that, without at least a patent pending you have absolutely no protection unless you obtain a signed confidentiality agreement, which is not always easy to do for a variety of reasons. But even if you do obtain a signed confidentiality agreement that contract will only protect you with respect to those who have signed the confidentiality agreement, not members of the general public.

Without a patent pending you also don’t have anything to license other than an idea that lacks tangible boundaries. While that is not always an impediment to moving forward, the licensing of an idea alone can scare companies. In fact, listening to an idea without tangible boundaries as defined in at least a provisional patent application can scare companies to the point where some, perhaps many, won’t want to do it. Moreover, the further you can develop your idea the better and more valuable. The more tangible the more valuable. So an idea is worth something to some people, but an idea that has taken more shape and is really an invention is worth even more. An invention that has been defined in a provisional patent application is worth more. Prominent inventor coach Stephen Key talks about a filed provisional patent application creating “perceived ownership,” and he recommends his inventor students seriously take the time and energy to define their ideas in tangible ways to create those perceived rights with a provisional filing. See Sell Your Ideas Without a Patent


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But now we are getting a little ahead of ourselves. The business of inventing needs to be considered a marathon — not a sprint. Take things one step at a time, proceed deliberately and invest little by little and only so long as it makes financial sense. See The Business Responsible Approach to Patents and Inventing. That is why starting with a provisional patent application is frequently the best thing to do. I couldn’t agree with Stephen Key more, a thoughtfully and thoroughly prepared provisional patent application is an excellent starting point.

A provisional patent application does not give you any rights other than to say you have a patent pending, it defines 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, under the new first to file laws if you publicly use your invention or offer it for sale before you file a patent application it will be extremely difficult, if not completely impossible, to obtain a patent in the United States. Yes, there is still a 12 month grace period in certain rare circumstances, but it is extraordinarily limited and should never be relied upon. See Brave New Patent World: First to File Becomes Reality. First to file really must be interpreted as “file first.”  If for some reason  you do not file a patent application first perhaps you can take advantage of the exceptions, but do yourself a favor and never assume you have a grace period. Treat things as if the U.S. were an absolute first to file nation; that is the best and safest advice. In other words, since the U.S. moved to first to file on March 16, 2013, provisional patent applications are only more important! With all this in mind, it is preferable to file at least a provisional patent application as early as possible.

On a patent application where I was the inventor there was another who publicly used what could be characterized as a crude version of my invention more than 12 months before I filed my first provisional patent application. Initially I didn’t think I was going to file a patent application, but then I started making money with the invention so I figured I would give it a shot and see. This delay cost me the ability to seek the most broad claims. The fact that I invented it before that public use by another is of no importance because I did not file a patent application soon enough. I was prevented from obtaining a patent on that broad aspect of the invention. This can and does happen with more frequency than you might expect. Because the activities of unknown third-parties can and do create a bar to obtaining a patent the best advice is to move forward as quickly as possible.

This is why patent attorneys frequently suggest that inventors at least file a provisional patent application as early as possible. 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. 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.

In any event, I am a fan of at least filing a provisional patent application as early in the process as possible. Then you limit your exposure and prevent 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 if possible, that way if you ultimately do not proceed all the way to a patent you still have a trade secret. But if you cannot obtain a confidentiality agreement at least you can know that you have a provisional patent application on file that has established your priority with respect to the invention.

Of course, this strategy requires filing a complete, thorough and sound provisional patent application. The only benefit in filing a “garbage provisional” that doesn’t completely describe the invention is to be able to use the term “patent pending” without committing fraud. If, however, you really want to do things right and use the provisional patent application as an important tool that can support the issuance of a patent later you absolutely MUST describe the invention to the greatest extent possible, completely, with all variations, alternatives and permutations.

Having some kind of strategy to deal with the lack of a confidentiality agreement is likely going to be critical at one point or another during your journey from invention to successful commercialization. This is because many times those you most want to share the invention with will simply not sign a confidentiality agreement. 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, investors 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, you have a solid priority date backed up by a United States Patent filing.

Of course, the provisional patent application is only as good as what it contains so definitely take the time to fully and completely describe your invention. For more information about fully and completely describing an invention please see visit our Patent Drafting Basics Archive. I recommend you start with these 10 articles:

  1. The Basics of Describing Your Invention in a Patent Application
  2. Patent Drawings: An Economical Way to Expand a Disclosure
  3. Working with Drawings to Create a Complete Disclosure
  4. Beware Background Pitfalls When Drafting a Patent
  5. Defining the Full Glory of Your Invention in a Patent Application
  6. Patent Drafting: Describing What is Unique Without Puffing
  7. Tips & Tricks for Describing an Invention in a Patent Application
  8. The Key to Drafting an Excellent Patent: Alternatives
  9. Patent Drafting: Drilling Down on Variations in a Patent Application
  10. Patent Illustrations and Drawings, What Do You Need?
 

So the decision is really not hard and fast one way or another with respect to whether  you file a patent application first or seek licensing assistance. What you can do is ask yourself whether you would pursue the invention even if you get a negative review from Lambert & Lambert or another licensing firm. If the answer is yes, then there is no reason not to at least file a provisional patent application and a 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 starting with a provisional patent application.

For more information on this topic please see Inventing 101: Protecting Your Invention When You Need Help and The Benefits of a Provisional Patent Application.

Happy inventing!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 27 Comments comments. Join the discussion.

  1. Tesia Thomas August 12, 2017 1:53 pm

    Yeah, but under these laws and terrible IP times, I wouldn’t disclose anything without filing a nonprovisional.

    I filed provisionals just to cover anything I potentially shared under confidentiality agreements.

    So, signed NDA and showed a drawing->filed provisional including that drawing.
    Sent in grant proposal (confidential SBIR)->filed provisional of grant proposal. And, I marked the whole proposal confidential because…who really trusts the government?

    I wouldn’t disclose anything without an NDA. And, then after disclosure, I’d file a provisional of what was disclosed under NDA.

    Also, archive everything you do disclose after the non-provisional is filed. I’ve heard lore about companies creating prior art.

    Never can be too paranoid of an inventor…

  2. Julie Brown August 13, 2017 5:36 am

    After I was issued with my US design patent I went to Lambert & Lambert;
    they are devils and money grabbers; they did not do anything, apart from take my money. Others who have attended inventor support groups have also had a bad experience with them.

    I filed my US utility patent pending application; every office action has received either a CIP or an RCE for the last 5 years. The same USPTO Examiner after 5 years keeps on watering down my claims and making submarines out of a totally different concept. Still going round and round in circles; I am now at provisional patent pending application. What’s the solution?

  3. John Fetter August 13, 2017 7:02 am

    I have patented more than ten different inventions over a period of forty years. I started up my own company with the second patent, after finding out my first idea was not new. My second idea worked, my company was successful and this emboldened me to continue creating new products.

    I found that it wasn’t difficult to create new products. I tried to sell some of the new patents and discovered that it was very easy to “connect” with corporations. They wanted samples, they wanted to run all kinds of tests and they were happy to sign NDAs.

    I obliged and then I waited. And waited. And nothing happened. So I contacted them. Five of them. Oh, they said, we’re still busy. I managed to finally get a response from four. They gave me copies of test results. I was surprised to find ALL FOUR had encountered problems related to test equipment and testing procedure, and had not restarted their testing, but had simply continued testing.

    Your idea does not work, they insisted. Well no not when something goes wrong with their testing and they carry on testing. One had experienced frequent power failures. Another one ran out of water and cooked some of the equipment. Another used the wrong mixture of chemicals. And the fourth had run the wrong kind of test altogether.

    Different – yet amounting to the same thing. I realized they had done it deliberately. To get rid of me under a watertight pretext. They had run parallel testing and had set me up. I gave up trying to sell my patents and have been selling patented products ever since.

  4. Tesia Thomas August 13, 2017 7:49 am

    @John Fetter,

    Yep.

    That’s why you need certified testing before you go to them.
    Everyone has ‘not invented here’ syndrome…even those companies who appear as champions of open innovation.

    They hate buying stuff. It’s the worst feeling when you’ve bought multi-million dollar facilities and talent and some nobody invents what you wanted.

    Never underestimate envy.

  5. John Fetter August 13, 2017 8:26 am

    Tesia @ 3. Ever been there? Ever done that? I doubt it. They all knew about my previous success. I could have brought them fifty test certificates from fifty different laboratories and they would still have insisted in running their own tests anyhow. This is how they operate. They have learned to do this over many, many years of practice. Yes, they are envious. No, they don’t suffer from the not-invented-here syndrome. They are thieves. This is one of the methods these thieves use to get past the most carefully written contracts. There are many thieves out there.

  6. Tesia Thomas August 13, 2017 8:35 am

    @John Fetter,

    Yes I have but frankly I wasn’t dumb enough to give my product away for testing.

    I meant to do that because then you would then have evidence before you gave them samples that your samples performed.
    But, you’re right. They would’ve disqualified the samples somehow. Yes, they’re thieves. Why do they steal? Because they didn’t invent it. Hence, Not Invented Here Syndrome!!

  7. John Fetter August 13, 2017 8:48 am

    Tesia @ 5. Would you like to explain how, by withholding your product, you achieved your success.

  8. Tesia Thomas August 13, 2017 8:49 am

    @John Fetter,

    They’re still talking to me. And, it’s possible they will test my product while I’m right beside them. And, then I’ll leave with said product.

  9. John Fetter August 13, 2017 8:58 am

    Tesia @ 7. A self-proclaimed expert before even having started on the journey of discovery.

  10. Tesia Thomas August 13, 2017 9:00 am

    @John Fetter,

    Yep. Your hindsight is my foresight.
    🙂

  11. John Fetter August 13, 2017 9:08 am

    Is this your invention?

    A zipper slider system (10), characterized by:
    a zipper tape (14) having a profile (11) including at least a first strip (14a), the at least a first strip (14a) being compri sed of at least one material selected from the group comprising materials that are rigid, semi-rigid, flexible, and semi-flexible.

  12. Tesia Thomas August 13, 2017 9:11 am

    @John Fetter,

    That is a claim of my published PCT app.

  13. John Fetter August 13, 2017 9:20 am

    Tesia @ 11. And you are talking to ILC Dover ?

  14. Tesia Thomas August 13, 2017 9:24 am

    @John Fetter,

    Haha. Did you see that interview I did?
    There’s a lot online about me…because I put it there.

  15. Tesia Thomas August 13, 2017 9:31 am

    @John Fetter,

    We’re all in this together. I’m sorry you got screwed. I’m a bit more paranoid than most and am pretty investigative…but I’ll 99.9% still end up screwed.

    It’s hopeless for inventors.
    And this whole talk about licensing still even being a great possibility is weird coming from Gene especially.
    When granted patents have little to no value and are easily invalidated, then provisional patent apps and PCT apps that designate USA have about negative value.

  16. John Fetter August 13, 2017 9:43 am

    You appear to have been talking about chickens you expect will be hatched. The eggs from which your chickens must hatch are your patent claims. There are many thousands of different fastener patents. Your success depends not on keeping an eye on who is doing the testing but on the people who are tasked to help you get those claims through examination.

  17. John Fetter August 13, 2017 9:55 am

    Tesia @ 14. I wrote about my experience. Some manufacturers did try to outflank me. They did not get the better of me. I asked my lawyer to send a polite letter to each to remind them of the fact that I was holding a valid patent.

  18. Tesia Thomas August 13, 2017 9:56 am

    @John Fetter,

    Yes. I have paid for 3 different attorneys to go through my app.
    The ISA also uncovered some things we forgot (like numbering) in our haste.
    And, overall the ISA was sh*t.
    But, I have a ton of prior art found from all over the world. Everyday, I dedicate hours to prior art searching.

    The thing about the prior art is that they’re 99% iterations of the toothed fastener or the zip track fastener. Different shaped teeth, different shaped track profile, add adhesive, add ridges, etc.

    I swear if any competitor attacks my IP in PTAB (pending issuance) then I will put myself in serious debt to invalidate all their useless iterations.
    This is the newest thing in zippers in over half a century. It is the third kind of zipper, after the toothed fastener and zip track.
    https://twitter.com/ZiprShift/status/888176194474188806

    Alas, examination hasn’t started yet but meeting with potential licensees and customers has.
    The best I can do is carefully select my attorneys and find all the prior art.

  19. Tesia Thomas August 13, 2017 9:58 am

    @John Fetter

    Well that’s great! I’m happy for you.

    When any inventor wins, it’s a win for us all.

  20. John Fetter August 13, 2017 10:40 am

    PCT will give you a written opinion soon. If it includes many “X”s, chances are you are cooked. One or two, and you can probably rewrite the claims. Until then, I would have kept a low profile.

  21. Jeffrey Sheldon August 13, 2017 10:46 am

    Another reason for fling to document the invention is sometimes the licensee improves the invention and contends to be a co-owner/c-inventor with the right to practice the invention without compensating the original inventor. With a provisional on file, there is a clear line of demarcation between the original invention and anything the licensee may have contributed.

  22. Tesia Thomas August 13, 2017 11:18 am

    @John Fetter,

    I already got the ISR. That’s what I meant…not ‘ISA.’
    It looked pretty good except for the poor prior art search.
    All in all, ISR = worthless.
    It wasn’t nearly as thorough as it should have been but I wasn’t expecting much due to my own search being thorough. I just needed to pay for something, anything. And, I went for the cheapest (and not Russia) if I remember correctly. Yay micro-entity distinction. Haha

    I don’t really think there’s any ‘prior art’ for my technology, even with all that I’ll cite as prior art, because it is the third kind of zipper.
    I think it should be given/make a new class.

    Though my first claim especially is pretty broad (on purpose).

  23. Tesia Thomas August 13, 2017 11:21 am

    @Jeff Fetter,

    Also, I didn’t keep a low profile so I could defensively publish before anyone knew my claims.
    I think that was the more appropriate strategy.

  24. Tesia Thomas August 13, 2017 11:29 am

    @John* Fetter

    Sorry. I was going through a patent with an inventor named John. Haha

    But, yeah. My patent could’ve literally been crap on a stick- unreadable, worthless.
    At least with publishing images and whatnot of my invention after I’ve filed, I’ve made it so no one else gets any sort of patent on what I’ve disclosed whether my IP covers it or not.

    I also published all of my iterations and research up to getting to what I patented.
    All the failure before the success.
    It’s going to be prior art to them but not to me.

  25. Tesia Thomas August 13, 2017 11:29 am

    Inventor named Jeff* lol.

  26. SoftwareForTheWin August 14, 2017 2:52 pm

    To answer the question “Should I File a Patent Application Before Licensing the Invention?” – the answer is a big fat NO!

    Do not bother fooling yourself that you’ll have any protection from copycats. You’ll spend substantial money on what you will later discover requires endless money in keeping your patent valid. Patents are no longer an asset but rather a liability because you need to pay (I’m not talking about maintenance fees) to fight endless PTAB’s. Save your money and don’t bother with patents.

  27. John Fetter August 14, 2017 9:14 pm

    Let’s imagine the invention is not patented, and the inventor keeps it secret. The inventor manages to convince a corporation to license the patent. They draw up what the inventor believes is a watertight agreement. Both parties sign, the inventor discloses his invention and – surprise – another corporation with a separate legal identity goes ahead and uses the invention for free. Obviously prearranged but the inventor does not have the resources to prove it. The corporation that signed accuses the inventor of double crossing and commences legal action. At this point the inventor realizes that he is headed for serious financial difficulties. Merely an example. The exact details will vary, but the inventor will end up in serious trouble.

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