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.
The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes into vision with enough detail to cross what I call the idea / invention boundary. To have a protectable invention you have to be able to describe it with enough detail so that someone of skill in the relevant technical field can understand how to both make and use the invention. Once you can do that, or once the patent attorney or patent agent you hire can, you are ready to file a patent application. If you are struggling at the idea phase please see Turning Your Idea into an Invention and Moving from Idea to Patent.
The first step in the patent process should really be a patent search. Doing a patent search is the only way to get a realistic idea about whether the invention is likely able to be protected. There is nothing wrong with inventors doing their own preliminary search, and in fact that is very useful task. SeePatent Searching 101. At some point as your project proceeds you should have a professional patent search done. Only with a professional patent search will you really discover everything that can be found. Just like a novice in your field would make mistakes, as a novice patent searcher won’t find everything that can be found, including many things that really need to be considered during the drafting stage of a patent application. After all, the whole point of a patent application is to articulate how the invention is unique. How can you do that without a comprehensive knowledge of what exists in the prior art?
In many cases, if not most cases, a patent search will suggest that at patent could be obtained. The critical question, however, is not whether a patent can be obtained, but rather whether a useful patent can be obtained. If you layer on enough specifics to any invention you will cross the point where the patent examiner will say your invention is new and non-obvious. But a patent that has such narrow claims is hardly useful for anything other than framing and hanging on the wall.
Unfortunately, despite what you may have heard from late night television, satellite radio commercials or snake oil salesmen, there is no effective way to protect an idea. Copyrights protect expression and patents protects inventions, and neither protect ideas. In both cases the idea is the first critical step, but without some identifiable embodiment of the idea there can be no intellectual property protection obtained and no exclusive rights will flow unto you. This does not mean that you should give up when you only have an idea, but it does mean that you will need to proceed to flesh out your idea to the point where it is concrete enough to be more than what the law would call a “mere idea.” The moral of the story is that ideas alone cannot be protected, so you need to think in terms of invention. Inventions can be patented. You just have to get from idea to invention.
On your journey from idea to invention to patent and ultimately, hopefully riches, please stop thinking that you will get rich by selling your idea to industry and sit back and collect royalty checks for doing nothing. If inventing were that easy everyone would be a filthy rich inventor! Ideas are a dime a dozen. What is valuable is not the idea that it would be wonderful to have this or that functionality, but rather the valuable piece to the puzzle is how to specifically provide that functionality you identify.
If you get stuck in the idea phase don’t just throw in the towel. Many good many inventors will become stuck in the idea phase from time to time, so if that is where you are you are not alone. It may surprise you to learn that you just think you are stuck in the idea phase and you might actually have an invention without even knowing it yet. United States patent laws do not require you to have a prototype in order to apply for a patent, all that is required is that you be able to describe the invention so that others could both make and use it. So while you do need to have some kind of identifiable embodiment you can start by proving your concept on paper.
EDITORIAL NOTE: The following article has been posted as an online petition you may sign by visiting IndependentInventorsofAmerica.org. On Friday the United States Senate held additional hearings and seem poised to act relatively quickly on the Senate version of patent reform. For information about how to directly contact your U.S. Senators please see Senators of the 113th Congress.
We represent independent inventors and small patent-based businesses across the country and we are against any patent legislation that includes provisions of the Innovation Act (H.R. 3309) and the many variations and additions under consideration in the Senate. This legislation will levy grave harm upon independent inventors and small patent-based businesses, as well as the investors we need to help commercialize new technologies and to protect our inventions.
The American patent system is a trade between an inventor and society. An inventor discloses an invention for all to see and build upon, and the government grants and protects for the inventor an exclusive right to the invention for a short period. The American patent system was intended to enable anyone, regardless of economic status, race or gender, to profit from the invention of something new and valuable. This system has worked as intended for over 200 years, fueling the creation of the greatest economy in the world.
Obtaining a patent can be the best decision you could possibly make, and may even be the best business move you could make. On other hand, the patent path may wind up costing you time, energy and a lot of money. The investment placed into getting a patent may be wise, but it is important to realize the no one is simply going to show up on your doorstep with a money dump truck and unload lottery like winnings onto your stoop. The road to riches in the invention world is hazardous, has many detours and seldom goes as planned. That is why the first question you absolutely must ask yourself before you rush off to your friendly neighborhood patent attorney is this: why do you want to get a patent?
The unfortunately reality is that most patents do not make inventors money. When I first started out in the business estimates were that perhaps 2% of patented innovations made money. That estimate has grown over the years to anywhere from 2% to 10%, but this increase isn’t due to the fact that inventors have gotten so much better, but rather is a function of the massive portfolio licensing that goes on at the top of the industry. It is extremely difficult to know which patent or patents out of a 1,000+ patent portfolio are the ones worth acquiring rights for, but you likely don’t have to spend time wondering because if you want to license the valuable patents you probably have to take a license to the entire portfolio. So even by the bloated estimates you might hear today the underlying reality has not changed. No more than 2% of patents individually would be considered viable moneymaking propositions.
When attempting to determine whether an invention can be patented it is necessary to go through the patentability requirements in an effort to see whether patent claims can likely be obtained. Ideally you want patent claims that are meaningfully broad and commercially relevant, but at a minimum you must have claims that embody patent eligible subject matter, demonstrate a useful invention, cover a novel invention and which are non-obvious in light of the prior art. Obviousness is typically the real hurdle to patentability, and unfortunately the law of obviousness can be quite subjective and difficult to understand. At times obviousness determinations almost seems arbitrary.
The basic obviousness inquiry was set forth by the United States Supreme Court in Graham v. John Deere nearly 50 years ago, and remains good law even today. In order to determine whether an invention is obvious one must work through this analytical framework: (1) Determine the scope and content of the prior art; (2) Ascertain the differences between the claimed invention and the prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective indicia of non-obviousness (i.e., are there secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious). See Understanding Obviousness: John Deer and the Basics. While this seems easy enough, the application of these factors or considerations is exceptionally difficult.
Prior to the Supreme Court’s decision in KSR v. Teleflex obviousness was rather mechanical. With obviousness we are asking whether there is any combination of prior art references that when put together would be the invention in question. In other words, could an ordinary mechanic create your invention or was there some kind of non-obvious innovation. Defining the concept with using the concept is hardly illuminating, but that is the way the law of obviousness works. This is true because what is obvious to some large degree is in the eye of the beholder.
The United States Supreme Court is poised this term to decide CLS Bank v. Alice Corporation, which could make meaningful strides toward settling once and for all the patent eligibility of software. The Supreme Court is known to like to dodge the most important questions we all need answered, and that trend is almost certainly going to continue in any decision in CLS Bank. But the Supreme Court won’t be able to dodge the fundamental question about whether software is patent eligible. The will likely, and unfortunately, dodge the question about what specifically must be recited in patent claims in order to properly define a software, or computer implemented invention.
Software is now and will remain patentable in the United States even after the Supreme Court’s decision in CLS Bank. The Patent Act is replete with references to software and computer implemented inventions. In fact, in 2011 Congress essentially said that tax strategies could not be patented in and of themselves, but this exclusion relating to tax strategies does not render an otherwise patent eligible software program patent ineligible. Thus, Congress has spoken, and on this particular issue Congress will be the final word because there is no chance the Supreme Court will rule software patents unconstitutional. That issue is not even before the Court.
Congress clearly has stated that at least some software is patent eligible, and so will the Supreme Court. That being said, the real question is how do you describe a software related invention to satisfy the patent requirements? The short answer is that it takes quite a bit more disclosure than you might otherwise think. Long gone are the days of cheap, easy software patents.
The unfortunate truth is that many inventors and entrepreneurs have had their share of difficulty with the various invention promotion companies out there. You have probably seen them advertised on television, usually in the extreme late night or extreme early morning hours. They promise free information, and tell you that they will help you patent your idea, make your invention and/or market your product. Many inventors and entrepreneurs have learned the hard way that some of these companies talk big and perform little. Unfortunately, a lot of times even for those that offer few results the cost will be quite high.
I have had some people contact with what I can only characterize as horror stories. One particular inventor told me that he was interested in a design patent and was quoted $12,500. I don’t know the particulars around the quote, maybe there was a lot of product design work associated with this quote, but what I can tell you is that $12,500 for a design patent is outrageous — nearly 4 times what it would likely cost from start to finish.
It is true that inventing and pursuing a patent can be expensive, and usually is if you do it properly from start to finish, but inventors need to be particularly careful when there are those in the industry that price gouge. There is no substitute for arming yourself with information and being cautious. Finding valuable, legitimate services isn’t all that easy and unless you are dealing with a patent attorney or patent agent directly the invention services market is largely unregulated.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
Typically blog roll links are not helpful to a website's rank. To give some additional "link love" to those we think you might be interested in reading we have moved our blog roll and links to a dedicated page. Go to IPWatchdog Blog Roll & Links.