Determining whether filing a patent is the right choice for your business
Before going through the patent process, there are a few elements to understand and consider.
As someone who has gone through this process three times, I understand the time, value and importance of securing a patent. I also appreciate that a patent may not be advisable for every invention or business.
In certain industries, it is more common than others to file a patent. Understanding your business goals and the value of a patent for your business are critical. Remember that patents do not last a lifetime and most are valid for 20 years or less. This helps promote continuous invention and innovation, in addition to allowing for generic products to decrease consumer costs.
In my 15 years in the water filtration industry, I believe my patents have given me an edge over the competition. But before calling up a patent attorney, here are three questions to ask yourself to determine whether you are moving in the right direction.
1. Is a Patent Worth the Investment? Obtaining a patent will allow you to protect your product, design or ideas from infringement. However, it will be up to you to police the marketplace and aggressively pursue infringers, which can be expensive.
Anticipate which entities might find your patent threatening to their business or existing patent. Be prepared mentally and financially to take legal action if needed. Failure to adequately prepare can result in loss of rights or financial hardship.
The perception of credibility that comes with a patent can make a measurable difference in the marketplace. It can be the difference that turns shoppers into buyers. A properly crafted marketing campaign should be used to display the patent as evidence that the novelty and innovation found in your invention is of a higher order than the competition and worthy of a premium price.
Reflect on all the factors associated with obtaining a patent—its advantages, responsibilities and liabilities—and confirm that it will support your overall business goals.
2. Is My Utility, Purpose or Design Unique? There are more than 9 million U.S. patents. Even if your product seems unique, it is always a good idea to triple check that it has not already been patented, or that your idea is not merely an obvious evolution. The U.S. Patent and Trademark Office (USPTO) has search capabilities that allow inventors and lawyers to look for similar designs or products based on keywords.
Search for common keywords associated with your product. For example, when I was looking to patent my reverse osmosis remineralization system, I started by searching “remineralization” and “reverse osmosis.” A thorough preliminary search is the best next step, and a guided tutorial can be found in the video section of the USPTO website. Your search, or one conducted by an attorney on your behalf, also should include a general internet search for similar products.
3. Does My Invention Meet the Requirements? As you might imagine, filing for a patent is no simple task. It entails many specific requirements and guidelines that must be followed. First, make sure you meet the requirements for the type of patent for which you are applying and be sure to have all the supporting information gathered before beginning the process.
For example, if you are applying for a non-provisional utility patent, you must include the following:
- A transmittal letter or formal cover letter with context related to the entire document;
- The necessary fees for application filing, search and examinations;
- A data sheet specifying your application type and detailing the subject matter;
- Specifications describing the invention and the process of making and using the invention that must conclude with one or more claims;
- Drawings of the application necessary to understand the subject matter;
- An executed oath or declaration from the inventor;
- Amino acid sequence or nucleotide sequence listings, if they are appropriate and necessary for your filing; and
- Computer listings of any mathematical or chemical formulae used in the making of the product or process being filed.
Each of the items listed above has its own list of specifications, and it is crucial to provide as much detail as possible. Do not forget to pay close attention to the formatting requirements listed on the USPTO website. Simple details, like adding a decorative border box to your drawing, may result in them being rejected and requiring a revision.
Expect that the USPTO will reject your patent’s claims at least once, but do not get discouraged. Often, revising the language or narrowing the claims in your submission is all that is needed for approval. Patent attorneys typically will write broad claims to provide you with the greatest protection, and then will narrow the claims in response to the patent examiner’s rejection and accompanying explanation. In your patent’s description, it is important to note any similarities with previous inventions in anticipation of rejection and to explain why your filing is novel and non-obvious.
Hiring an Intellectual Property Attorney
Though advisable, you do not always need an intellectual property (IP) attorney to file for patents. The USPTO provides plenty of how-to lists and samples on its website. It is up to you to fill in the blanks with an organized, cohesive description that is understandable for the patent examiner.
Filing for a patent requires extreme detail, extensive explanation and thorough technical drawings. However, you are allowed to ask the examiner for help and he or she will provide assistance, especially if you make it known that you are not using counsel. Some inventors will write the patent themselves and then use an IP attorney to write the claims, complete the forms and edit for admissibility.
Using an IP attorney in some capacity during the process is almost inevitable if your business is on a growth curve. I suggest having two IP attorneys. One should be from a small practice, so you are able to build a close relationship and expect reasonable billing. Typically, his or her service scope will not include a litigator, which will bring you to the second, larger firm. Use the larger firm judiciously, as its hourly rate likely will be much greater.
Treat the search for an IP attorney with the same seriousness as selecting a physician. Perform a preliminary search of registered U.S. patent attorneys, ask a mentor or respected community member for a referral, and check professional review websites. Ask the attorney about his or her education, direct experience and success rate. Gather an understanding of basic costs like hourly rates for principal, associate and clerical staff, the retainer amount, and a quote for your project. In your first meeting with the attorney, set boundaries and clear expectations to stay on track and within budget.
Be bold, but consider the consequences of both action and inaction. Check your capabilities and resources against your overall business goals. Is the a patent going to move the needle for your business or help beat out the competition? If you have determined this is a crucial next step in the success of your company, be sure to do your research.