To Patent or Not to Patent? Weighing the Expense of Obtaining a Patent Against the Risk of Losing Your Invention

Inventors have many choices to make regarding their inventions. For first time inventors in particular, these choices can be confusing. After developing a new invention, many believe (or are advised by friends) that the next step is to patent the invention. While this may be common wisdom, it is not commonly understood. Why patent a new invention? What does a patent really do for you?

Do you need a patent?

An inventor does not need a patent in order to practice the invention. “Practicing” an invention means making, selling (or offering to sell), importing, or using the invention. An inventor can do all these things without obtaining a patent. Getting a patent does not protect an inventor from being sued for patent infringement by another inventor. For example, an inventor may obtain a patent for his invention, but that invention may still infringe upon another’s patent. An infringer is someone who practices an invention without permission from the patent holder.

So why even bother with a patent? A patent is sometimes described as a negative right. Rather than giving the inventor the affirmative right to practice the invention, a patent allows the inventor to stop others from practicing the invention. In other words, a patent gives the inventor the ability to stop another party for making, using, selling, or importing the invention in the United States for a period of time. The patent term is generally 20 years for utility patents. Patents are enforced through civil legal actions. So in essence, a patent is a license to pursue legal action against infringers. More simply, a patent is a tool to prevent competitors from practicing your invention. If your invention is not patented, you cannot prevent others from practicing it in the United States.

What does an inventor give up by obtaining a patent? Other than the time and expense of the patent application process, the patentee gives up secrecy. Patent applications are generally published within eighteen months of filing. In its most basic terms, a patent is a bargain the inventor makes with the United States Government. The inventor discloses to the public how to practice the invention, and in exchange, the government gives the inventor the right to exclude others from practicing the invention during the term of the patent.

Not all patents are created equal.

Getting a patent is not always difficult. However, an issued patent that is poorly drafted may not adequately protect the invention. The application includes various “claims” as to the features of the invention. If the invention is useful, new, and not obvious, and the patent application claims the invention particularly down to each dimension, nut and bolt, the United States Patent and Trademark Office (USPTO) may issue a patent with few objections. But such a patent may not be very useful. That is because such a narrowly claimed invention may be avoided by a competitor who makes a small change to the patented invention. Change that bolt to a nail. Make that cover round instead of square. Narrowly claimed patents are easy to avoid. So it is important to claim an invention more broadly. A patent application with broader claims is harder for your competitors to avoid.

On the other hand, it is harder to obtain allowance from the USPTO for a more broadly claimed invention. USPTO examiners can more easily find examples of existing inventions (called “prior art”) for broadly claimed inventions. If an invention has been described in prior art, a patent on that invention may not be allowed, and even if allowed, it may be invalid. An invalid patent is one that should never have been issued in the first place. Therefore, even if the USPTO allows an over-broadly claimed application, such a patent may be vulnerable to being challenged as being invalid. So a well drafted patent application must (1) be narrow enough to convince the USPTO that the invention is novel and non-obvious, (2) be broad enough to protect against competitors making minor variations to avoid the patent, but (3) not be overly broad. Striking this balance can be difficult, and contributes to the time and expense of the prosecution process (the process obtaining a patent from the USPTO). Again, it is not hard to get a patent. But it can be more involved and require more experience to get a patent that will actually protect your invention.

Is it worth it?

Prosecuting a patent application represents a significant investment of time and money. For some, this investment may not see significant returns. For example, an inventor making and selling a small number of products may find patent prosecution expenses outweigh the potential profits. Others may not have the means to enforce a patent, even if the patent issues. Patents are enforced by cease and desist letters and infringement lawsuits. The legal costs for these actions can be substantial. If an inventor is unable or unwilling to protect their patents through legal action, then why invest in the patent at all? On the other hand, by itself, obtaining a patent and properly marking patented inventions may be sufficient to discourage competitors from infringing.

For some businesses, obtaining a patent is crucial, particularly if the invention represents the core of the business. Many inventors do not manufacture and sell products based on their inventions, but instead sell or license their inventions to third parties. For these people, obtaining a patent is also essential. In order to sell or license their invention, the inventor must secure the rights to the invention with a patent or at least a patent application. Savvy investors will only invest in a product with an issued or pending patent. After all, why would anyone license or invest in an invention that is not protected?

Many first time inventors feel squeezed between wanting to protect their invention while seeking investors or manufacturing/distributing partners, but having limited funding early in the product development cycle. For some in this position, a provisional patent application can be a good option. Provisional patent applications generally cost significantly less to prepare and file, and filing such an application lets the inventor mark the invention as “patent pending” for up to one year before filing a non-provisional patent application.

Why is this important? “Patent Pending” means a patent application has been filed for the invention with the USPTO. It puts potential competitors on notice that, if a patent is issued, they may be forced to stop practicing the invention without permission (e.g., a license) from the patent holder. Marking all inventions and literature about the invention as “patent pending” may discourage potential competitors from practicing the invention. On the other hand, if a competitor ignores the “patent pending” notice and practices the invention anyway, the competitor may be subject to additional penalties for “willful infringement” if and when the patent issues.

An inventor can (and should) mark sample products and literature regarding the invention as “patent pending” as soon as a patent application (including a provisional patent application) is filed with the USPTO. Similarly, if the patent application is abandoned or does not issue, the applicant should cease marking the invention as patent pending.

In sum, there are many factors to consider when deciding whether to seek patent protection. Perhaps the most important is timing. There is a limited window to apply for a patent. For example, once an inventor publishes, publicly uses, sells or offers to sell the invention, or otherwise makes the invention available to the public, the inventor only has one year to file a patent application with the USPTO. Further, to obtain patent protection in a foreign country, the inventor must file a United States or foreign patent application before publishing, making public, or selling the invention. Once that window has passed, the opportunity to obtain a patent is lost forever.