Why File a Patent Application?

ApplicationThe first question a person has to ask himself or herself after the “Eureka” moment is why file a patent application at all.  This is not an idle question.  Many of us have ideas for new products or services, some of them may even be “the real thing”, but the question still has to be asked why file a patent application.  80-90% of patent applications filed with the US Patent and Trademark Office (USPTO) are rejected.  Of those that do get through, maybe 10% represent money-making inventions, while the rest oftentimes are remainders of ideas that did not pan out, get funded, or got left behind for something else.  And while only a small percentage of filed patent applications in the end represent money-making inventions, patent application preparation and filing and further prosecution and upkeep all cost thousands of dollars; if one goes for coverage beyond the US, say through a Patent Cooperation Treaty (PCT) filing, the expenditures can run into the tens of thousands of dollars—or more.  So why file?

Before a person converts an idea into a patent application, an inventor should ask himself/herself a couple of questions:

  • Does my invention make a real improvement?  Patents demand an improvement over that which is known. There are additional requirements such non-obviousness and enablement. One can file a “prophetic” patent application on things not yet done, but the embodiments must be fully described, and the science must make sense.
  • Does my invention exist?  This is not an easy question to answer, as the “exact” invention may or may not exist.  www.google.com/patents and www.uspto.gov are good places for an inventor to start looking for their inventions. Oftentimes, one has to be creative in looking for “prior art”.  You may see a diagnostic device, but others who have filed before you may have called it a detector.  Also, for patent purposes (discussed in a later blog), the lack of existence of your specific invention does not guarantee patentability, as an examiner may combine several pieces of art to arrive at your functional device and thus reject the claims of your application.  Prior art searches often are performed by experts in IP law.
  • How long will it take to develop my product and how much will it cost?  Patent applications come with built-in timers.  Once you file, you can make use of your filing date generally for 12 months to claim that date on future filings such as PCT applications.  If your invention is nearly complete, then what you file today may truly represent the invention.  If there are many stages of development with lots of unanswered questions ahead, one might think twice about filing now; claims more closely representing the invention may only be available in the future when technical issues are clarified and the true invention is better defined.
  • Do I need to file a patent application to raise money? Many investors, both angels and VC’s, want to see an active IP program before they invest.  They want to feel that there are reasonable protections for their monies and oftentimes investors file patent applications—at least initially—to allow for easier discussions with investors and/or possible strategic partners.

If you decide to file a patent application to cover a new invention, then your next big decision is with whom to file.  The two most important traits for any patent attorney or patent agent are honesty and knowledge within the field.  The first quality, while it might seem obvious, is critical.  Patent work and associated costs are fungible.  You may need to file in multiple jurisdictions and/or you may need more or less claims.  You want an honest patent preparer so that you are confident that whatever expenses you incur are real expenses. You do not want to be filing unnecessarily or filing bloated applications simply to help pay for the staff of the office which you use.  You also want someone who can tell you that prior art exists and/or there are significant risks in getting the patent that you are sure that you deserve.

As to the second quality, one of the greatest challenges is finding a patent preparer who understands the subject matter almost as well as the inventor himself/herself. You have been spending months, maybe even years, on this topic and you know the literature inside out; you also may be the only expert in your particular invention anywhere in the world.  While one may not expect a patent attorney or the like to be such an expert, that person must be well-enough versed in your invention to allow him/her to understand the invention, compare it to the art, and write cogently claims and the full application.  If the patent preparer does not fully understand the invention, then he/she may simply write a somewhat vacuous application that does not fully develop the concepts and embodiments of the invention.  If a person does not understand a client’s invention, then he/she should suggest someone else to write the application.

The costs can range significantly but reliable low-cost services for professional patent writing do exist. One of the best services available is www.PatentTank.com, a virtual Think Tank for Patents. The Company offers a free prior art search and free advice on how to strengthen the claims to increase the likelihood of an issuance, followed by a one-time fee of $5500 for the full patent writing including all claims, figures and assistance with filing to make sure the application forms are properly completed and submitted. The one-time fee also covers the response to the first office action which typically addresses issues of obviousness. For more information and a sample of work, visit www.PatentTank.com

*Disclaimer*: Harvard Business Services, Inc. is neither a law firm nor an accounting firm and, even in cases where the author is an attorney, or a tax professional, nothing in this article constitutes legal or tax advice. This article provides general commentary on, and analysis of, the subject addressed. We strongly advise that you consult an attorney or tax professional to receive legal or tax guidance tailored to your specific circumstances. Any action taken or not taken based on this article is at your own risk. If an article cites or provides a link to third-party sources or websites, Harvard Business Services, Inc. is not responsible for and makes no representations regarding such source’s content or accuracy. Opinions expressed in this article do not necessarily reflect those of Harvard Business Services, Inc.

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