Don’t Get A Patent? Plainly Ridiculous!

Increasingly on the Internet invention advertising is taking an odd and seemingly inexplicable turn toward advising independent inventors to not seek patent protection, which is undeniably bad advice that will undoubtedly cause much disappointment and heart break for those who actually follow it.  But why is it that you are starting to see more and more advertisements that say it is unnecessary to get a patent and you should simply forego that step?

The reason you are seeing more and more bad advice aimed at steering inventors away from the patent system is likely because effective September 15, 2008, new rules of practice went into effect at the Patent Office that require a patent attorney or patent agent to be 100% in charge of the creation of any documents filed at the United States Patent Office.  This is important because the way invention promotion companies would typically operate would be to work with inventors and do most if not all of the drafting of the patent application.  They would then send the application to a patent attorney who would finalize the document and file the document.  In many situations inventors would pay between $8,000 and $12,000 for the filing of a patent application, with as little as $200 of that fee going to the patent attorney or patent agent.  This obviously was fraudulent because inventors would anticipate that most, if not all, of the fee they paid went to the patent attorney or agent, and that was not the case.  So inventors would think they had competent representation by a trained professional and all they were receiving was less than 1 hour of patent attorney or agent time.

The only way that you can obtain any form of protection for your invention in the absence of a patent is to get individuals who learn about your invention to sign a confidentiality agreement.  The agreement is a contract that says they will not disclose your invention as long as it remains a secret and not generally known.  Typically these contracts will end the secrecy obligation once your invention is no longer kept confidential, so at best they provide only limited protection for your invention during the early days when you have not disclosed information publicly and you have not sold your invention.

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Trade secrets can provide protection, but only so long as the invention is secret and once you start distributing your invention the secret is lost.  If you sell your invention or otherwise distribute your invention you have lost all trade secret rights that are associated with your invention because others will be able to see your invention, take it apart, learn about it and copy it if they want.  So for anyone to suggest that trade secrets meaningfully protect inventions is misleading.  Trade secrets protect information, not inventions, so do not expect that you will be able to maintain any exclusive rights to your invention once you put it into the stream of commerce if all you have is a trade secret.  To be sure, trade secrets may be helpful to hide what I will call exotic information, such as knowledge that a certain brand of component works best, but trade secrets are not going to prevent anyone from copying and distributing your invention once your invention is on the market.

There is really no satisfying way to protect an invention in the absence of a patent.  Moreover, many inventors want to obtain a patent and then try and negotiate either a sale of the patent or a licensing deal whereby the inventor obtains royalty payments moving forward.  You can sell your patent, or even your patent application, or license your patent or your patent application because there is an identifiable asset that has been created.  There is simply no way that you are going to be able to sell or license your invention without having at a minimum filed a patent application.  You simply do not have an asset that anyone is going to be willing to pay for if you do not have some kind of exclusive right or at least the prospect of an exclusive right.  People and companies just do not pay for ideas, no matter how good the idea may seem to you.  You will receive payment, if at all, for the transfer or rights or the transfer of any potential rights that may well develop into exclusive rights.  Absent a patent application you have nothing to offer in a negotiation.

Worse still, if you decide not to at least file a patent application and you start offering your invention for sale or you put together brochures to explain your invention in hopes of obtaining interest, you are creating a situation where you soon will lose all rights to file a patent application.  So the decision to not pursue a patent application can and does prevent inventors from going back and changing their mind and ultimately filing a patent application.  You need to be extremely careful with your invention.  Not every invention is one that a patent is appropriate for because patents are expensive, but if you think you have an invention that could be lucrative you are really crazy not to file a patent application.

Patents do not always need to be expensive, at least not at the time you chose to file an application.  Since 1995 the US Patent Office has allowed for the filing of what are called provisional patent applications.  A provisional patent application is much less expensive to file because there are no required formalitites that need to be observed, other than including at least one drawing of some kind and including a cover sheet, which is a form that the USPTO provides on its website.  Provisional patent applications currently cost $110 for independent inventors and small businesses, and if you want help from an attorney you can probably find an attorney who would be willing to draft a solid invention disclosure that you can file as a provisional patent application for on the order of $1,500 to $2,500, which is a far cry from the $7,000 to $10,000 most patent attorneys would want to file a nonprovisional patent application.  So you can start the patent process in a cost conscious way.

The benefit of a provisional patent application is that you get 12 months within which to decide whether it still makes sense to pursue a patent.  If the answer is no then you are out the $1,500 to $2,500 you paid the patent attorney, or the $110 you paid the Patent Office if you created your own provisional patent application.  Many times after 12 months people will realize there just wasn’t enough interest to move forward.  Many times inventors will realize there is great interest and they need to move forward.  The point is that you don’t have to spend a fortune to be able to get a “patent pending” and on your way to exclusive rights.  If the invention goes no where you have reserved funds for the next attempt.  Yes, the next attempt.  Inventors are creative people and rarely will you have only one invention, but if you waste all your money right out of the block on one invention then you might not have the resources to pursue the next one.  Being conservative, setting a budget and moving forward is prudent business and the way that inventors succeed.

So the moral of the story is be careful.  Those who tell you that you don’t need a patent and should start the commercialization process without at least filing a patent application probably have their own agenda; an agenda that likely does not match up with what is in your best interests.

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5 comments so far.

  • [Avatar for bperez]
    bperez
    January 24, 2011 12:27 pm

    Hello Everyone, I’m new to IPWatchdog. I just read your Article on “Don’t get a patent”. I found this Article to be very informative. I am a new Inventor and this article has given me the direction i need to go with my invention idea. I hope to read more Articles from IPWatchdog.
    B.

  • [Avatar for Etaoin Shrdlu]
    Etaoin Shrdlu
    June 18, 2010 09:26 pm

    Interestingly, I just ran into a case last week where an inventor with a popular product had chosen not to file a patent application because it “cost too much” — and that decision has now cost him a large chunk of his market. A well-known retailer (within his field) requested a sample and quantity pricing from him, he supplied these, and six months later the retailer has gone into production on its own.

    A quick search of unfair competition law turned up the Supreme Court’s 1964 Sears-CompCo cases, which hold that if a company does not file for patent protection, then its product’s functional design features cannot be protected under state-level unfair competition laws. (The holding has been partially overturned with respect to copyright, and possibly also trade dress and ornamental design.) Although the inventor may have other remedies that I am unaware of, so far it looks like the outright theft of his highly-regarded product design is going to stand.

    His invention is one of those trivially simple ones for which a solid patent application could be drafted in a day or two at most. He probably could have even done it himself (with a few hours’ help on the claims — I’ve been thinking about how to claim it, and it’s one of the easiest I’ve seen to claim well). However, he’s long past the on-sale statutory bar.

    The saddest part is that a lot of people are telling him that patents require $10,000 to $15,000 just to file, thousands more to prosecute, and zillions to defend, and that they’re not worth it. This, when having a halfway decent pro-se application on file (total cost $600) probably would have caused the pirate to avoid the theft in the first place.

  • [Avatar for mberger1969]
    mberger1969
    January 13, 2009 09:21 am

    wildcatcarlos,
    There are several things you should know before undertaking this endeavor. Few patents make money (1/100), even fewer make you rich (1/1000), but they do stop people from copying you and they do let you market and license your invention, even a provisional application.

    Have you filed a provisional yet? No, then file a provisional on your own dime.
    Go to http://patft.uspto.gov and http://ep.espacenet.com/advancedSearch, search for patents in your area. You will not find all of the patents that a professional would find, but you may get a feel for the field. The fewer and more specific the words the better. Review the related patents, because VERY few patents are created entirely on their own.

    Draft a provisional using the style and terminology of patents in your field. The more work you do, the less the patent attorney/agent will charge. Once you have a draft application, figures, and a good idea of what is unique about your patent, contact a patent agent/attorney. Ask them their area of expertise, hourly rate, and if they are open to your help. You are not a patent agent/attorney and they do have experience in these matters. Listen to them and help them. Do not argue with them. They will have to ask a LOT of questions to figure out your invention. They will still have to review and revise your draft application and may expand certain areas. They SHOULD do another search, although not all will. This is money well spent (~$1,000-2,000). By preparing ahead of time, you may dramatically reduce the cost of your patent. By writing ahead of time you will reduce the cost of your patent. Your understanding of the field will reduce the cost of your invention.

    File the provisional application. The provisional application is cheap and is not examined, besides examiner’s are not allowed to “take your invention.” And it doesn’t happen. They see thousands of inventions a year and do not have time to pursue your invention. You may seek licensing and/or marketing for your invention to pay for the next step. In one year you SHOULD file a non-provisional application. This will be less expensive if you prepare a good provisional. You MAY refile your provisional if you haven’t made progress in that year. You LOSE your priority date, but if you need another year… DISCUSS THIS WITH A PATENT AGENT/ATTORNEY only as a last resort.

    In one year you may file a US non-provisional and/or an International (PCT) application. This should be discussed with a patent agent/attorney at the time.

    Beginning the patent process can be expensive, but you can reduce the cost by putting your time into it. You NEED competent patent guidance before you file any application, shop around for a good patent agent/attorney. Very few patents will make someone rich, but they do allow you to protect and promote your invention. No one in this process, patent agent/attorney or examiner, will steal your invention. Others might but your agent/attorney has a duty not to disclose your invention and they WILL lose their registration and/or bar if they steal your invention.

    Good luck with the patent application.
    M

  • [Avatar for wildcatcarlos]
    wildcatcarlos
    November 26, 2008 03:51 pm

    I have been ‘lamenting’ over this 12 month grace period for a provisional patent for some time. I know I need a non provisional patent out of the gate. I believe my invention will be extremely expensive to prototype and will revolutionize most industries, especially military. By the ip watchdog estimates my invention will cost at least $15000.00+ to patent (non provisional). Money i dont have and have no way of being sure to have in 12 months. My biggest fear is that i will capitulate and go for the provisional patent, then not be able to market the idea effectively enough to secure investment for nonprovisional. Once my invention is seen by patent examiners and others, the cat is out of the bag and nothing is stopping someone else with greater resources from simply copying my art and obtaining a patent. I think i would have a stroke if i saw someone else being hailed for my invention and becoming fabulously wealthy simply because i ran out of time and my art was seen by someone else. I have had this idea and have been doing research and making drawings for years now so another fear is waiting too long to make a decision and seeing someone else come up with the idea independently. My final fear is that this invention will never come to fruition and i take it to my grave. Im just tired of being afraid of an inefficient and unfair patent system.

  • [Avatar for ProductCoach]
    ProductCoach
    November 24, 2008 12:25 am

    This article is a great summary of the need for patents especially when licensing or selling an invention.

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