Small Business

When Do You Really Need a Patent?


So you've got an idea, a really good idea. It may not be as revolutionary as the light bulb, the airplane, or the microchip, but you're sure it could be the next big thing. Maybe it has been percolating in your mind for years, or perhaps it struck in a flash of inspiration just last night. Either way, it's yours, and you're determined to do it justice -- which is why you're planning to get it patented, post-haste.

But wait. While conventional wisdom says every new vision needs immediate protection, it's important to realize that seeing your idea through from conception to completion is a long, rigorous, and expensive process, and patenting should be one of the last steps you take. In fact, Bob Lougher, executive director of United Inventor's Assn., a Rochester (N.Y.)-based inventor's education nonprofit, says rushing to patent is the independent inventor's enemy No. 1.

"If you're consulting with somebody, and the first thing they say is, 'We should patent that right away,' my advice to you would be to run as fast as you can," he says.

IS IS FEASIBLE? The way he sees it, taking action on an idea that isn't yet fully developed is a sure way to botch the application or get patent protection that's too narrow in scope to be of much value. Considering that the vast majority of patents are never commercialized and that the entire patenting process can easily cost upwards of $25,000, without careful preparation it's an awful lot of cash to plunk down for some fairly crummy odds.

"People are overly concerned with protecting their idea," says Richard Stim, a San Francisco-based attorney who has written several intellectual property-related books geared toward independent inventors. "Protection isn't really the most important thing." What's most important, he says, is to find out if an idea is commercially viable, since there are plenty of ideas that are patentable, and yet pretty darn unmarketable.

That's why the savvy inventor's first step is to clearly document the idea in order to establish its date of conception, preferably by using a specially bound inventor's notebook or by filing a disclosure document with the U.S. Patent & Trademark Office (USPTO). Then it's time to disregard the stellar reviews from friends and family and invest in an uninterested third-party market-feasibility study, which will analyze factors such as investment costs, production feasibility, safety, and profitability. These studies typically cost a few hundred dollars, though some university-affiliated groups, such as the Wisconsin Innovation Service Center, offer high-quality, lower-cost services.

FRAUD FACTOR. But be careful, and be willing to really listen. A no-holds-barred critique of your concept may be hard to handle, but it can save you from sinking your life savings into a dead-end dud. Besides, the invention submission industry is flush with well-polished scam artists making a killing off overly enthusiastic inventors who refuse to hear anything but praise for their brainchild.

"These are the inventors that fraudulent firms prey on," says Lougher, who spent six years helping the Federal Trade Commission pull the plug on a number of fraudulent invention promotion companies in the '90s. "They'll tell you exactly what you want to hear." Since many of these shady outfits are slick -- and legal -- entities, experts suggest checking with the USPTO or with local inventors groups before shelling out any cash.

Once you've determined that your idea has commercial viability, Lougher recommends doing your own preliminary patent search. You'll definitely want to have a professional conduct a more thorough search later, but at this stage it'll not only give you some peace of mind but also a chance to read through related patents and get a better understanding of what the process entails. For most devices, this is also the time when you'll want to start working on a prototype, since that'll give you a chance to identify any pre-patent tweaks you still need to make.

TIME IT RIGHT. But a word of caution: While it's important not to let overenthusiasm send you filing for protection too soon, you also need to be careful not to wait too long. Under U.S. law, once you publicly disclose your invention (by, for example, selling it, displaying it at a trade show, or publishing details in a journal), a one-year time clock starts ticking.

"If you don't file within one year, you've basically lost the opportunity to file a patent," says Maria Swiatek, a Palo Alto (Calif.)-based partner at Dorsey & Whitney who has practiced intellectual property and patent law for more than 10 years.

One way to buy yourself a little more time to raise the money for patent fees or really test the waters to make sure your idea's got what it takes is to file a provisional patent application, which gives you another year before you have to file a regular patent application. Though this document can be more informal than a patent application, you'll want to make sure that it is as detailed as possible.

It's also important to know that just because something is patentable and marketable still doesn't mean that a patent is necessarily the best route to go. Swiatek says if your idea pertains to a method of designing or manufacturing that is not easily reverse-engineered, you could also consider keeping it a trade secret. And in some fast-moving industries, technology moves so quickly that a patent may not be that beneficial.

FILE AWAY. If, after all that, you and your invention are still in the game, proceed directly to your nearest patent attorney or agent. Though most experts don't recommend filing a patent on your own, to help defray costs Stim and Swiatek suggest writing a draft of the patent application and then turning it over to a professional to review and improve as needed.

Even then, you should be prepared to lay out anywhere from $3,000 to $15,000, depending on the complexity of the invention, just to get through the filing stage. After that you'll still need to cover filing fees and the cost of responding to any office actions issued by the USPTO.

"It's not an insignificant endeavor by any means," Swiatek says. But though it may be a long and winding road just to get that great idea patent pending, don't let that get you down. In the end, Stim says, it's perseverance -- not inspiration -- that ultimately distinguishes between successful and nonsuccessful inventors.


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