Bench Talk

One question that all innovators face is whether or not they should patent their invention. In some large corporations with big legal departments and lots of resources, filing for patents is a standard, routine step in their research and innovation process. For inventors and entrepreneurial engineers, filing a patent can be an expensive and time-consuming process. The decision to file for a patent depends a lot on what the patent will do for you.

So, what exactly is a patent? A patent is a document generated by the United States Patent and Trademark Office (USPTO) that gives you ownership of your invention. It protects the intellectual property contained in your invention. If you have a patent on a specific idea or design for an invention, then you control the use of that particular idea or design for a period of time. This means if a third-party wishes to use your idea or design, they would first need to either license it from you or buy it outright.

It is worth noting that it is not always advantageous to seek a patent for an invention. Only inventions that have great potential financial value should be patented. If you cannot determine market viability for your invention, going through the patent process may be an expensive and time-consuming endeavor that yields little to no financial benefit.

Obtaining patent protection is important if you plan to capitalize and profit from your invention. You should seek to patent a design or invention if the innovation is something of significant potential financial value, and you would like to start a business around it or plan to license that design or vision to another company. If you are starting a new company based on your innovation, investors like to see that you have pending or granted patents and that those patents are assigned to the new company.

If you decide to file for a patent, the first thing you should consider is the type of patent you need. The two most common types of patents are utility patents, which are granted for devices, machines, processes, chemicals, and other innovative things, and design patents, which cover the unique appearance of the physical design of an invention. Utility patents last for 20 years, and design patents last for 14 years. Design patents are fairly easy for competitors to get around by creating a design modification. Utility patents are more durable.

You must also decide if your innovation even qualifies for a patent. Several basic criteria determine if your invention is patentable:

• The invention is novel. This means the invention is different in significant ways from other similar inventions, and it has not been previously patented, used, or sold by another innovator for more than a year prior to your patent application.
• The invention is not obvious. This means an expert in the discipline in which your invention would be used would find the innovation surprising.
• The invention is useful. The invention must serve some useful purpose, and it must actually work. Any invention qualifying for a utility patent must be either a machine that does work, a process for manufacturing something, a process that changes the character of a material, a chemical compound, or a unique modification of one of these things.

Certain things cannot be patented. For example, you cannot patent a natural substance, laws of nature, or a mathematical formula, although you can patent a process that uses a mathematical formula.

To gain a patent for your invention, you must apply for the patent. The process usually begins with a patent search to make sure the innovation is not already covered by another patent. Then you fill out a patent application form along with complete documentation that describes your invention and explains what it does. This documentation typically includes written descriptions and explanations, drawings and schematics, photographs, and it can include video of your invention working. The biggest stumbling block to receiving a patent for an invention is if the invention was publicly disclosed or sold more than a year prior to submitting the application.

Many people use a patent attorney when applying for a patent. Although that’s not necessary, it’s a good idea because patent attorneys have experience and knowledge most engineers and investors don’t have unless they’ve been patenting inventions for many years. Also, a great patent attorney is incredibly helpful when dealing with and interviewing the patent examiner who is assigned to examine your patent. I myself have had to make several trips to Washington DC to the USPTO for in-person meetings with the patent examiner and supervisor. Having my patent attorney with me for these meetings made a huge difference, and I could not have imagined doing this without them. One piece of advice: When selecting a patent attorney, avoid conflicts of interest by making sure the law firm is not representing a competitor who is working in the same market space.

Applying for patents is expensive, and it takes a long time. The average for a non-provisional patent application is anywhere from $7,000-$10,000 US dollars. This sum does not include maintenance fees, nor does it include filing continuations or paying issue fees. It’s also a good idea to start as early as practically possible, which is usually as soon as you have all the technical details of your invention sorted out, and you can put together complete and accurate documentation. This way, you avoid missing anything important in your application. Expect the process to take a while. I have had some patents go through quickly, within a year or two. For others, it has taken several years just to get an examiner to look at the invention.

If your invention has significant value or is central to the business you are developing, it’s a good idea to file for a patent as early as possible.