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:
- The Basics of Describing Your Invention in a Patent Application
- Patent Drawings: An Economical Way to Expand a Disclosure
- Working with Drawings to Create a Complete Disclosure
- Beware Background Pitfalls When Drafting a Patent
- Defining the Full Glory of Your Invention in a Patent Application
- Patent Drafting: Describing What is Unique Without Puffing
- Tips & Tricks for Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent: Alternatives
- Patent Drafting: Drilling Down on Variations in a Patent Application
- 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.