The United States patent system is in disarray. The latest international patent rankings from the U.S. Chamber of Commerce shows that the U.S. patent system has fallen out of the top 1o in the world and into a tie for 12th place. Just recently, during a webinar discussing the Chamber patent rankings and global patent landscape, I inquired of our panelists whether this was due to other countries moving up and providing better protection or because the U.S. is objectively moving backwards. The answer from Kelly Anderson, Senior Manager of International Intellectual Property at the Chamber’s Global IP Center said the answer is a little bit of both, but that the U.S. is definitely moving in the wrong direction and away from its historic ranking as the top jurisdiction in the world for patent protection.
Increasingly inventors are asking whether they should even seek a patent in the U.S. The question is understandable, but those who come to the conclusion that not seeking a patent is somehow in their best interests are mistaken, at least in my opinion. Indeed, those giving the advice that patents should not be applied for are giving bad advice that will undoubtedly cause much disappointment and heart break for those who actually follow it. Most industry insiders believe the Patent Office under the direction of recently confirmed Director Andrei Iancu will be forging a new path far more friendly to innovators than the path followed over the last 5 years. So now is not the right time to despair.
First, a patent application will remain pending at the United States Patent and Trademark Office for years, at least several, before any patent could ever issue. If your invention relates to anything that could be characterized as high-tech or cutting edge technology, your patent application will likely remain pending at the Patent Office for upwards of 4 years, sometimes a good deal longer. This is significant because even in the hardest hit areas of technology, which most would likely agree are the software arts, over the past 40 years the law has changed to the point where patent attorneys have had to give substantially different advice to inventors every 2.5 to 3 years. So even if your invention relates to software, you are virtually guaranteed to see at least one, perhaps two shifts in the law applicable to your invention between the time you file and the time any patent might issue.
Put simply, the only thing anyone can advise you with certainty is that if you do not apply for a patent you will not get a patent. So is it worth putting all your eggs into one basket — so to speak — or does it still remain a wise step in the commercialization process to apply for a patent? Given that the U.S. is a first to file country and much damage to the ability to ever obtain a patent can be done if a patent is not applied for as early as possible, it seems to me that at least filing a patent application — at least a provisional patent application — makes as much sense now as it ever has.
I’m not alone in thinking that at least a provisional patent application is extremely important. Stephen Key, the preeminent inventor coach in the United States, advises all his students to at a minimum file a provisional patent application on their inventions in order to establish what he calls “perceived rights.” Key’s strategy, which has been successfully followed by hundreds of his students who do find licensing deals, is to place that marker in the sand and define an invention with a provisional patent application.
Following Key’s advice is absolutely crucial. A provisional patent application provides many benefits. There are some companies, perhaps even many, that will simply not deal with an inventor who appears with only an idea. Ideas are not protectable in and of themselves, although every invention must necessarily start with an idea. Inventions are protectable, and the way the industry distinguishes between an invention and an idea is with respect to concreteness. The further you are along the path to develop your idea the more valuable it is. Eventually it will become so developed that the inventor crosses what I refer to as the idea-invention boundary. Prototypes, even crude prototypes that prove the concept are important. Before you get there, however, high quality drawings and a thorough description of what has been invented are extremely valuable. Even more valuable when the thorough description and high quality drawings are filed in a provisional patent application.
Provisional patent applications are so important because when you file a patent application, any patent application, you have announced to the reader the boundaries of your invention. They can then evaluate your invention, rather than an potentially incomplete and ill-formed idea.
Think of it this way. If you go to someone who might be interested in licensing an invention and they accept a vague description of an idea it is entirely possible that they have heard that idea before, or that they may be working with someone on something similar to that idea. Furthermore, it is also possible that the idea is not well developed enough and eventually someone will come forward with a tangible manifestation of that idea. Without a concrete definition of your invention in a provisional patent application that defines the contours and boundaries of an invention it might be quite easy for the idea person to believe that the financier or potential licensee simply took the idea without compensation.
Taking an idea without compensation does not violate the law, but it does open the very people an inventor needs to talk with to at least some liability. That is why the people an inventor will most often want to speak with the most will not talk about idea or accept idea submissions. This is why it is essential to plant a flag and say what your invention really is, which is done in a patent application of some kind. For inventors it is most frequently started with a provisional patent application.
Without at least a patent application filed the only way that to obtain any form of protection for an invention is to get individuals who learn about your invention to sign a confidentiality agreement. The agreement is a contract that says receiver of information relating to your invention will not disclose your invention as long as it remains a secret and not generally known. While it is best to seek confidentiality whenever possible, and absolutely necessary with anyone other than a patent attorney or patent agent prior to filing a patent application, the business people inventors most need to speak with (i.e., financiers and licensees) often will not sign confidentiality agreements. This isn’t because they want to steal your invention, but rather because they are in the business of hearing lots of ideas and inventions and signing an agreement opens them up to at least some liability potentially. But in a first to file world that is the U.S. patent system disclosing without a patent application pending can and almost certainly will end in disaster, with no patent ever obtainable. Yet another reason why at least provisional patent applications are essential to protect inventors and preserve the right to later obtain a patent if the invention proves to be lucrative enough to do so.
Trade secrets can provide protection, but only so long as the invention is secret and once you start disclosing your invention the secret is lost, at least absent a confidentiality agreement 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 or start disclosing details. 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 disclosed or on the market.
Having said that, maintaining information about your invention as a trade secret prior to filing a patent application is an absolute prerequisite. So it isn’t that trade secrets are bad, it is that they are ineffective after a certain point of development.
Unfortunately, there is really no satisfying way to protect an invention in the absence of a patent, and those who forgo filing a patent application will never be able to obtain a patent.
Patents do not always need to be expensive, at least not at the time you chose to file an application. Since 1995 the U.S. Patent Office has allowed for the filing of 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 (although you should have many more) and including a cover sheet, which is a form that the USPTO provides on its website. Provisional patent applications currently cost $130 for most independent inventors and small businesses, half that if you qualify as a micro-entity.
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 perhaps $1,500 to $2,500 if you hired a patent attorney, or the $130 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. And as Stephen Key always says that patent pending gives you perceived rights, which can and do allow licensing deals to happen if you have developed an interesting, worthwhile invention that has a potential market.
So the moral of the story is be careful. Those who tell you that you shouldn’t file a patent application and should start the commercialization process may be bitter about their own struggles, or might have their own agenda.
For more information on this and related topics please see:
- Invention to Patent: Everything You Need to Know to Get Started
- 10 Critical Pieces of Advice for Inventors
- Good, Bad & Ugly: Truth About Provisional Patent Applications
- Patent Search 101: Why US Patent Searches are Critically Important
- Do It Yourself Provisional Patent Filing Made Easy
Image Source 123rf.com
Image ID: 43380786
Join the Discussion
27 comments so far.
Derek DewittJuly 19, 2018 09:50 am
My brother has this great idea for an invention, but he isn’t sure what to do next. I like your point about how a patent can help protect your idea even if it doesn’t work the first time. I can see why getting the idea patented would prevent another company from stealing and improving upon your idea.
AnonymousJune 18, 2018 02:12 pm
No human being could eat the menu that you have prescribed. You realize that steaks already come with sides like vegetables, potato etc., right?? Your menu is like 15,000 calories and if that’s what you are eating you should be staying home and eating a salad.
Geoffrey BarnesApril 19, 2018 10:19 pm
Thanks for putting together this post on why filing a patent application is still a smart decision for inventors.It is a great read. I particularly find your thoughts about 10 Critical Pieces of Advice for Inventors interesting.
Keep up these insightful posts.
angry dudeMarch 25, 2018 09:20 pm
Paul Morinville @19
“Nothing that corrupt can survive”
:):):) Sure it can !!!
With all due respect, you never worked for federal government so don’t know what you are talking about
The swamp is deeper and deeper by the day – trust me on this
angry dudeMarch 25, 2018 09:13 pm
Night [email protected]
“Or destroyed, but it seems so much in flux that it is worth filing the application in case it goes towards stronger patents”
It is worth filing a provisional patent application for much less than a cost of a dinner for two at Outback Steakhouse, then waiting for a year to see what happens with this mess called “US Patent System”
I think we might have a consensus here 🙂 No ?
Invention RightsMarch 25, 2018 08:30 pm
Oil States is our only hope. If PTAB survives, then the giant corporations will continue to steal whatever technology they want. Iancu has not stopped them from taking sovereign immunity from Native Americans. Anti-patent David Ruschke and Nathan Kelley are still in power. Even if Iancu does clean house and rein in the PTAB, Google and Apple will have him removed by (if not before) the next Presidential election.
Night WriterMarch 25, 2018 05:57 pm
@20 Gene >I agree, by the time anyone who files today gets a patent the system will be much more balanced.
Or destroyed, but it seems so much in flux that it is worth filing the application in case it goes towards stronger patents.
Gene QuinnMarch 25, 2018 05:12 pm
I don’t know that I think the PTAB will be eliminated by Oil States (I hope) but the prevailing thought is that those claims challenged and not instituted will need to be subject to a written decision with estoppel attaching (i.e., SAS Institute). I also feel certain that the USPTO under Director Iancu is going to administratively curtail the power of the PTAB even if the Supremes let the Board stand. Better days seem to be on the horizon.
I agree, by the time anyone who files today gets a patent the system will be much more balanced.
Paul MorinvillrMarch 25, 2018 05:05 pm
The patent system appears to be swinging back so inventors and startups may have a chance again. The PTAB will likely be eliminated by Oil States. If it is not, it will be forced to reform by Congress or public pressure. Nothing that corrupt can survive.
The FederalCirciut is closing the abstract idea, albeit slowly and incrementally. This will get fixed soon as well.
By the time you get a patent filed now, my bet is the system will be much more balanced.
angry dudeMarch 25, 2018 04:55 pm
Oh, i filed provisional myself back in the days…
Followed by bad decision to pursue
US patent on something i could keep a trade secret up to now and possibly for the rest of my life
Night WriterMarch 25, 2018 04:53 pm
Plus, good patent applications usually help investors understand what you are doing and add a level of credibility as in you are capable of putting your ideas down and working with attorneys and getting good patents. That is no mean feat.
Night WriterMarch 25, 2018 04:52 pm
@12 the last time I wrote a bunch of applications for a start-up was about 4 years ago. I wrote some applications for start-ups in the last 4 years, but not like a portfolio builder.
I agree that provisionals are a good idea. They are cheap, but you have to realize that you are only entitled to the priority date for that which complies with 112 and EU is harder on this.
I still would advise for patent applications. But, I agree that trade secrets are becoming very interesting, but are probably limited to things where it is very hard to figure out how to do it even when you can see the input and output.
Gene QuinnMarch 25, 2018 04:21 pm
angry dude @12:
You ask: “would you give this advice to your clent startup: to disclose their tech in patents if they can keep at least some of it as trade secret for a little while?”
You do realize that provisional patent applications never publish and remain confidential? So if inventors actually follow my advice here they have 12 months to decide. If they follow your advice the only thing that is clear is they will never receive a patent ever.
Those that follow the bad advice of angry dude will regret it.
Gene QuinnMarch 25, 2018 04:19 pm
angry dude @1-
As the article explains, the smart decision is to at a minimum file a provisional patent application.
As the article also explains, those (like you) who tell others not to seek a patent are giving very bad advice.
It is hardly shocking that you don’t think inventors should seek a patent. You are bitter, blinded and wrong about virtually everything you post.
AnonMarch 25, 2018 01:26 pm
There is no doubt that a discussion with clients “tips more” now-a-days towards Trade Secret protection.
There is no doubt that at the same time that patents have been weakened, that Trade Secrets (and even the “submarine” nature of the Sui Generis “right” of Prior User Rights) have made not sharing into a viable alternative that counsel should discuss with clients in order to obtain any decisions made by clients with informed consent.
This, however, nowhere rises to the level of your animosity towards patents as revealed by your “just walk away” mantra.
angry dudeMarch 25, 2018 11:48 am
Night writer @11
How long ago was that?
Old habits die hard
But in todays environment would you give this advice to your clent startup: to disclose their tech in patents if they can keep at least some of it as trade secret for a little while?
Night WriterMarch 25, 2018 11:41 am
I can tell you that I have written patent applications that turned into patents for start-ups and that they were funded with millions of dollars. Part of the due diligence was the patent applications I wrote. They wanted to see some patents. I don’t know how much longer that will continue if the patent system continues to be weakened.
AnonMarch 25, 2018 10:51 am
Midwest Outback dinner for two:
(not the most or least expensive – your tastes may vary)
Bloomin Onion – 8.99
Aussie Cheese Fries – 10.49
Cup (various) – 3.99
French Onion – 6.49
(Various): 2x – 2.99
Steamed Broccoli – 2.99
House Salad – 4.49
Center-Cut (9 oz) – 16.79
Filet Mignon (6 oz) – 22.49
Chocolate Thunder – 7.99
Triple Layer Carrot Cake – 6.99
Beverages (prices estimated – not listed)
Wine – 6.00
Beer – 5.00
Benny – do you really go out to a restaurant for only a steak (a la carte) and maybe a glass of water?
angry dudeMarch 25, 2018 10:20 am
More like 25 for NY strip or 29 for fillet mignon
Comes to 100 anyway
Maybe you consider Outback chain a high end ?
Applebees then for you
Youll get by at around the cost of provisional patent application- tip not included
Make sure you tip those servers well – thats their only pay
BennyMarch 25, 2018 09:53 am
I looked up the outback steakhouse menu because I don’t trust you. It’s 16 bucks for a 220 gram steak, which is about on par with a Lebanese restaurant in our patent jurisdiction.
angry dudeMarch 25, 2018 09:41 am
Maybe in middle east or you are really cheap
But every time i go to Outback steakhouse or si.milar place with female companion its minimum 100$ for 2 entrees maybe some appetizer or soup and 2 drinks per person – beer or mixed drinks
Tip not included
And this is in the middle of nowewhere
Same thing in Manhatten will be 200$ minimim
Provisional is just 70$
Bait and switch scam by pto – thats what it is
BennyMarch 25, 2018 05:24 am
Angry @ 1,
“if provisional patent application is never published…then there is no downside indeed in filing provisional”
Except that if you choose not to file a non-provisional later, then I can obtain a patent for virtually the same invention, since your disclosure will not be cited as prior art (definitely not outside the US, and not for 103 in the US).
“the cost is less than a dinner for two at a low end restaurant”
What exactly is your idea of a low-end restaurant? Or are you factoring in a $45 bottle of wine? Let me take you to a local, fill you with burger, sides, and a beer, and we will still have change from the micro-entity filing fee.
AnonMarch 24, 2018 02:33 pm
Your last question is answered already in my post at 3: request non-publication with your non-provisional application.
As to “Obviously I still “bother” if I post here on weekend” – that makes no sense given WHAT you post (on the weekend or otherwise). You continue to shill for the Efficient Infringers with the message of “don’t bother.”
If you were at all consistent with what you preach (and were NOT a shill), then you would not be posting your message at all – weekend or non-weekend.
angry dudeMarch 24, 2018 01:50 pm
Obviously I still “bother” if I post here on weekend
I don’t think we’ll see a lot of positive changes in just 12 months (lifetime of provisional app)
So… how much time does a US high-tech startup have to apply for a US patent(s) and still keep their tech under trade secrecy (assuming no products in the market) ???
AnonMarch 24, 2018 01:39 pm
Maybe stop being a shill for the Efficient Infringers and their message of “don’t bother”…
Also, one should take note that a non-provisional may be requested to be examined under a non-publication request. This is actually our preferred advice to clients, even those that may have their innovation be later subject to a withdrawal of such a request (for example, for actions occurring outside of the United States).
angry dudeMarch 24, 2018 12:30 pm
on a side note:
is this a disguised attempt to get some provisional patent application filing business going given the indisputable fact that the regular patent filings by independent inventors and small/midsize businesses have dried up ? 🙂
angry dudeMarch 24, 2018 12:20 pm
you are misplacing or hiding really important things:
it does not matter if and when you patent will issue,
it does matter when it’s published for the rest of the world to see (and reproduce)
if provisional patent application is never published (which is true) and is never looked at by USPTO personnel (which I doubt) then there is no downside indeed in filing provisional: the cost is less than a dinner for two at a low end restaurant