Should you get a patent on your invention? Seriously, patents are expensive and the process seems to take forever. Once you have one, it’s not like there are any patent police. So you have to go after infringers yourself. Is it really worth the trouble?
Honestly? Not always.
Reasons to Consider Avoiding the Patent Route
There are many situations in which patents don’t make sense, or where the cost-benefit analysis comes down on the side of avoiding the patent route. We can’t cover all of them here, but you should consider these five topics:
1. You don’t have anything worth patenting.
Clearly, the first question to ask is whether you have an invention you could patent in the first place. That’s not always as obvious as it sounds.
- Some things are impossible or very difficult to patent, even if they’re a great idea for your business. Certain software, business methods, etc., may simply be off the table.
- Sometimes you may think you invented something, but it’s actually not new. Products are often invented and even patented, only to be abandoned or ignored. Don’t assume something’s inventive just because you don’t see it being sold. (You might consider a patentability search.)
- Sometimes you already missed your chance. Once you’ve made your invention public (e.g., through sales, demonstrating it at a trade show, etc.), you must file a US patent application within 12 months or you’re barred from doing so. In most other countries, you’re barred immediately.
- Some products don’t make your company enough money to be worth protecting. If you’re planning to sell 150 widgets a year for 99 cents a piece, it may be hard to justify much investment in IP protection. (Unless you could license or sell the IP to a bigger player).
- Sometimes your product is protectable under one of the other types of IP protection, but not suitable for patenting.
2. You can keep your invention secret.
Patents last 20 years, and can be difficult to obtain. On the other hand, trade secret protection is free, and lasts as long as you can keep the thing secret.
So, if you have some special manufacturing method or secret algorithm that can’t be reverse engineered, consider simply putting measures in place to maintain that as a trade secret.
3. Your timeframe is too short.
Although you might be able to speed up the process, obtaining a patent can take three to five years. If your product’s life cycle is more on the order of a few months, consider spending your money on getting to market ahead of everyone else.
4. You don’t have the budget.
There are lower-cost ways to get the process rolling, but you should never assume you can file or obtain patents cheaply. You’re probably going to spend somewhere in the neighborhood of $8K to $15K to file a US application, and another $5K to $10K to finish the process. Is that a lot of money? It depends on what you’re comparing it to. As an important business expense that can secure your place in the market and increase the value of your company, it seems like a reasonable amount of money to include in your company’s budget.
However, especially for startup companies and independent inventors, it’s completely understandable that you may not have the resources available. If that’s the case, you should consider first whether a lower-cost provisional patent application is advisable. You should discuss the situation with a patent attorney. Many of us have free initial consultations, so why not at least discuss your options?
In most cases, you’ll be able to figure something out that works for you. Another thing to consider is whether you might qualify for the Patent Pro Bono program. You can check that out here.
5. You plan to go open source or make your invention publicly available.
If you want to dedicate your product to the public, or contribute it to an open source project, then obtaining a patent may not make any sense. However, there are some scenarios where a patent might still be a valuable first step. Talk to your attorney about what’s right for you.
Reasons to Consider Filing a Patent Application
On the other hand, there are also many reasons to file a patent application (or several). You should consider these five, at the very least:
1. You have a competitor in this space.
Patents can provide a strong “scarecrow” effect, deterring your competition (or potential competition).
2. Your product would be easy to copy.
If your valuable invention could be easily copied by a competitor or a “big player” in your space, you should consider obtaining patent protection. It may be the only chance you have to prevent knock-offs and copycats.
3. You want to get licensing revenue.
Patents can be licensed to others in exchange for money, typically in the form of a royalty. For some companies and universities, this can be a significant source of revenue. Additionally, companies will sometimes cross-license each other’s patents, as an alternative to litigation. Patents function like property, so you can also sell them if you wish.
4. You want to increase the value of your company.
Often, intellectual property is the most valuable asset of a company. A startup, for example, may not yet have a marketable product, but they do have a patent portfolio. This can be a major consideration in obtaining funding and attracting investors. Even mature companies can improve their value by developing a strong patent portfolio.
5. You want to improve your negotiating and market position.
In addition to the deterrence effect toward would-be infringers and the prestige your company may acquire from having a robust patent portfolio, patents can improve your company’s bargaining power. For example, you may be able to cross license with someone interested in your technology. Sometimes, you can fend off a lawsuit when another company thinks you’re infringing, by pointing out that they may actually be infringing your patent.
These are just a few of the many things to consider when developing your company’s patent portfolio. You’ll need to talk to your patent attorney to determine whether a patent application is right for the situation you’re in. As always, feel free to get in touch if you’d like to discuss any of this.
Blog Post © 2018 Kolitch Romano LLP
Photo © 2018 Dave Bourgeau (Oceanside, Oregon)
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.