Filing a patent application is still a smart decision for inventors

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.

Stephen Key

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

Happy inventing!

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