Once you’ve searched prior art, consider these choices for getting your invention to market
Many of the patent rules are subtle and cause amateurs (including me) to lose a large chunk of the patent’s strength and value if we prepare a patent on our own.
BY JACK LANDER
From time to time, I have written about the early steps for protecting our inventions. However, in re-reading some of that material, I see that I might add a few alternatives to filing for a utility patent.
The patenting process typically begins with a search of prior art—a search of inventions similar to yours to determine if your invention has any potentially novel features not already disclosed in issued patents or existing products. You will establish a confidential relationship with your searcher, who may or may not be a registered patent attorney.
Most patent attorneys delegate the process to a professional searcher. It usually follows that if the search results are promising, you will want to hire the patent attorney who advises you about the probability of getting a patent based on the results of the search.
Although the patent search is often begun by contacting a patent search service on your own, the searcher’s opinion may not be as thorough as that of a patent attorney. I prefer to start by contacting the patent attorney first.
Depending on the results from the search, these are your usual next-step options:
- File a regular utility patent application, using a registered patent attorney.
- File a PPA (provisional patent application).
- Produce and market on your own if patenting is not recommended.
- Create a trade secret and attempt to license or sell it as you would a patent.
- Create a unique, “ornamental” design of the product, and prepare and file your own design-patent application. At least you can honestly claim to have a patent, even if it cannot protect your invention’s utility claims.
(Although another patent classification exists, that of the plant patent, the above rules do not apply to it. Plant innovations rarely originate with typical inventors.)
Your patent options and alternatives:
1 File a regular utility patent application, using a registered patent attorney.
Many of the patent rules are subtle and cause amateurs (including me) to lose a large chunk of the patent’s strength and value if we prepare a patent on our own. If you feel strongly that you can master the subtleties of patent writing, practice on an invention that is of little or no value to you.
Practice especially the writing of claims. And don’t even begin until you have studied either James Yang’s book, “Navigating the Patent System” ($10.00 on Amazon) or Nolo Publishing’s book on writing patents.
I recommend Yang’s book because of the details he reveals, and he is not afraid to criticize the system when needed. He is a patent attorney and a self-publisher practicing in Orange County, California.
2 File a provisional patent application.
Caution: The PPA is good for only one year. You must follow up by filing a non-provisional (regular) patent application within one year, or you forfeit all future patent protection for the invention involved.
The main advantage of the PPA is that it proves your date of filing on the intellectual property you plan to protect in your ensuing non-provisional patent application.
Now, you may wonder: Why not file your non-provisional first, right?
The reason is that time will pass—probably a few months—before you will have your claims written broadly enough for the most licensable value, and you will also have your drawings done. During
this time-lag before any form of filing, another inventor may file on the same invention as yours and become the “first to invent,” according to patent law, unless you have filed either your PPA or your non-provisional (regular) application.
So, the PPA buys you time to perfect your claims and drawings, or enables you to get into the market quickly and claim “patent pending.”
3 Produce and market on your own without a patent.
Suppose your invention has a very limited market. Let’s say that only one-tenth of 1 percent of the U.S. population is your customer base. That’s about 330,000 persons.
If you intend to patent your invention and license your patent, you must ask yourself if you will find a licensee who is interested in marketing to this “small” market. If there is a profitable way to reach potential customers, you might think of producing and marketing your
invention on your own without a patent. Invest the $2,000.00, more or less, of patent expense in entering the market and securing your segment.
However, if you are first to enter the market, you eventually could have competition if a producer of several associated products decides he or she can make a profit by making and selling your invention even though the market is small.
Bad news? Not necessarily.
Such a competitor might popularize this otherwise unknown product, and you still capture a substantial share of sales due to the popularization even though your competitor may sell the lion’s share. Competition isn’t always bad news.
4 Create a trade secret and attempt to license or sell it as you would a patent.
First, it is very difficult to create a secret ingredient or method of manufacture. I should say that even if you create such a secret, its probable lifetime as a secret is most likely counted in months rather than years.
I believe the time of trade secrets as intellectual property has passed us by.
A chemist can detect an ingredient, and a manufacturing
engineer can either determine your manufacturing method or devise one that is as good as your secret method or better.
Second, your potential licensee may resent being asked to pay for an item that lacks the protection and acknowledged standing of a
patent.
Third, your potential licensee may consider your secret a challenge to be solved rather than simply agreeing to pay you to reveal your secret.
Finally, a typical royalty rate for a patent is around 5 percent. There is no typical rate for a trade secret, but my gut feeling is that 5 percent or more is fair considering that a trade secret’s life is
short. Your licensee may be more receptive to the deal if you asked for 10 percent for the first two years before revealing the secret.
5 Create a unique “ornamental” design of the product, and prepare and file your own design-patent application.
The design patent has only one claim: the drawings. It is therefore the only kind of patent that an amateur should attempt to prepare and file on his or her own without considerable claims writing experience.
Because of the lack of ordinary claims, only the appearance of the invention is protected. Of course, appearance alone is relatively easy to circumvent. And if we do find an appearance feature that doubles as a function, such function is not protected.
So, consider how a design patent can possibly protect your invention. Chances are that it can’t unless your design is uniquely attractive, such as an artistic pattern on dinnerware.
Examine several design patents and see for yourself the kind of items that are protected.
Pick and choose
The five options above are those I have seen inventors use over my many years in this field. And I’ve used some of them myself.
But I don’t want to leave you with the idea that these are equally popular and each worth a try. Trust your patent attorney to arrange for your patent search and then advise you as to the wisdom of filing a regular utility patent application, or a PPA followed by a regular (non-provisional) patent.
Patents are expensive. But if someday you discover your invention as a new product for sale in Walmart, you’ll regret not acting when the opportunity tempted you.