Below is a question that we received recently, which is one that many folks likely have. Thus, I thought it might make a good article, particularly given that there is no “right” answer.
Question (in edited form):
Should I file a patent application and obtain a patent before I submit my invention to a company like Lambert & Lambert for their review?
You ask an age old question, which is really the patent/invention equivalent of the chicken or the egg. Moving forward with a patent doesn’t make a lot of sense if the invention is not likely to be marketable. I always tell folks that the best invention to patent is one you will make money with regardless of having a patent, so I do believe there needs to be market considerations factored into the analysis. After all, the goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent. Having said that, without a patent pending you have absolutely no protection, at least unless you obtain a signed confidentiality agreement and even then the protection will be applicable only to those who have signed the agreement.
A provisional patent application does not give you any rights other than to say you have a patent pending, it defines your invention by disclosing the parameters of the invention and allows you to do certain things without fear of losing the right to obtain a patent later. Under 35 USC 102(b), for example, if you publicly use your invention or offer it for sale more than 12 months before a patent application is filed you cannot obtain a patent. Similarly, if others who may be working on the invention unknown to you publicly use or offer for sale the invention more than 12 months before you file a patent application you cannot obtain a patent. This is why it is typically viewed as best to file at least a provisional patent application as early in the process as possible.
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Assuming you are the only one working on things and doing it behind closed doors unknown to anyone else can and does from time to time to lead to what is called a 102(b) bar. That is why patent attorneys frequently suggest at least a provisional patent application as early as possible. In my case, at first I didn’t think the invention warranted a patent application because I didn’t view it as having enough value initially to warrant a patent application. In such a situation keeping a trade secret is an appropriate way to proceed, and a choice that companies and individuals make all the time. But then as I continued work on the invention and saw the full potential I filed an application. Hindsight is always 20-20, and no one is perfect. On some level whether to keep a trade secret, pursue a patent or file a patent application immediately is a business judgment.
In any event, this personal story is an illustration of why I am a fan of at least filing a provisional patent application as early in the process as possible. Then you limit your exposure and prevent, to at least some extent, others from cutting your rights off. You also prevent yourself from doing things that unknowingly could lead to no patent ever being able to issue. You can also typically talk more openly about the invention, you can start to sell it and use it publicly. It would still be best to get a confidentiality agreement in place, that way if you ultimately do not proceed all the way to a patent you still have a trade secret.
Unfortunately, many times those you most want to share the invention with will not sign a confidentiality agreement, such as potential investors. Engineering firms and licensing firms typically will sign a confidentiality agreement, but investors get proposals from many people and if they sign a confidentiality agreement with you and another who has a similar idea that could lead to liability on their part where there was no liability present absent them signing an agreement. Essentially, those who see a lot of ideas and inventions are justifiably reluctant to sign confidentiality agreements. Thus, if you want to show someone your invention you have to weigh the pros and cons. If you at least have a provisional patent application pending you have defined your invention and memorialized with a filing date a date upon which you were in possession of the invention described. Thus, if you need to prove when you invented you have a solid date backed up by a United States Patent filing.
So the decision is really not hard and fast one way or another. What you can do is ask yourself whether you would pursue the invention even if you get a negative review from Lambert & Lambert or another licensing firm. If the answer is yes, then there is no reason not to at least file a provisional patent application and a number of benefits in so doing. If on the other hand you will abandon the invention if you get a negative review you may wish to get a confidentiality agreement in place and then if you get some positive feedback pursue a patent application, perhaps a provisional patent application.
One thing is for sure though, I would recommend that you have some reason for believing there is a market for the invention prior to filing a non-provisional patent application. That is when things really start to get expensive. You can do a patent search to see what the likelihood of obtaining a patent is and file a provisional patent application. This is a more economical way to proceed, which still preserving rights and positioning yourself as best you can for the next phase, which will need to be a non-provisional patent application, assuming you ultimately wish to obtain a patent.
When we do a provisional patent application we always assume a nonprovisional patent application will follow, and we can pick up where we leave off so there is no duplication in legal work. Thus, a provisional patent application can be used as part of a good overall strategy to start to secure rights, cut off the dreaded 102(b) problems and move forward investing sums in a piecemeal, step-by-step way. That way if the project ceases to make sense at some point you can walk away having taken responsible steps but without putting all your money down on the table and at risk immediately.
I hope this helps.