4 TIPS FOR INVENTORS, STARTUPS, AND SMALL BUSINESSES TO CONSIDER BEFORE APPLYING FOR A PATENT
A patent for an invention is a property right granted by the United States government (specifically, the United States Patent & Trademark Office), which gives the patent owner the right “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time, in exchange for the public disclosure of the invention. The limited time—or patent term—is 20 years, which is calculated based on the filing date of the application. [i]
The subject matter eligible for a patentable invention is extremely diverse. In fact, Congress intended patentable subject matter to “include anything under the sun that is made by man.” [ii] A few of the more common technical areas include chemical inventions (e.g., pharmaceuticals, coatings, OLED, etc.), mechanical inventions (e.g., automotive vehicles and components, tools, fishing and boating equipment, pet products, etc.), and computer-implemented software inventions (e.g., SaaS, Fintech, wearable devices, mobile applications, etc.).
This article encourages inventors, start-ups, and small businesses to consider the following general tips before filing for a patent, regardless of the specific type of subject matter.
1. Don’t wait to file your patent application
Starting and operating a new business is obviously difficult and it leaves little time for owners and managers to consider peripheral goals. As a result, filing a patent application can sometimes be an afterthought. But, as explained below, there are important reasons why filing a patent application should be a forethought.
First, with the passage of the Leahy-Smith America Invents Act (AIA) in 2011, the United States transitioned from a first-to-invent to a first-to-file patent system. This means if two inventors independently invent essentially the same invention, then the first inventor to file her patent application may be able to obtain IP rights and the second inventor to file her patent application may have to settle for nothing. Because the new first-to-file system creates a race to the Patent Office, there may be no time to wait.
Second, it is not uncommon for inventors, start-ups, and small businesses to lack significant revenue; therefore, it is not uncommon for cash-strapped inventors and companies to wait for a surge in revenue before investing in the patent process. But if the anticipated revenue is based on a product or service that would be encompassed by such a later filed patent application, then waiting can backfire. United States law bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public [more than one year prior to] the effective filing date of the claimed invention.” [iii] Public disclosures and offers for sale are common pitfalls for those unfamiliar with patent laws.
Public disclosures include displaying the invention in at a trade show, presenting the invention at a conference, and publishing a description of the invention on a website. The “on-sale bar” has been broadly interpreted to cover a sale or an offer for sale that was never made public, and without regard to whether the offer discloses each detail of the invention. [iv] Accordingly, a “secret” sale or offer for sale to a third party who is required to keep the invention confidential may still qualify as “on sale” in the context of the on-sale bar. A valid patent cannot be granted for an application covering public disclosures or offers for sale that occur more than one year prior to the filing of a patent application.
Third, a public disclosure may prevent you from filing the application in foreign country. Although you have a year to file a patent application in the United States from the date of public disclosure, other countries are not so lenient. In China, for example, the public disclosure of an invention at an academic or technological meeting can be prior art if it occurs more than six months before the filing date in the China’s Patent Office. The “grace period” for such a public disclosure in each foreign country should be considered.
In summary, the risk of waiting is often too great, and waiting may prevent you from ever obtaining a patent.
2. Decide where your invention will be practiced or marketed
Preparing and filing a patent application with the U.S. Patent Office can be an expensive and demanding process. So, once your application has been filed, you can breathe easy, right? Unfortunately, the answer is no. If your business strategy includes foreign countries as target markets or manufacturing locations, then you should consider whether to file a patent application in one or more of those foreign countries. Foreign filing is an expensive venture because you will have to pay for the official Patent Office fees and attorney fees in each country. Typically, only large entities can afford to pursue patents in a wide array of countries around the world. Smaller and start-up companies must make tough choices on how to invest their money, and it is important that those choices are made before starting the process. Furthermore, as discussed above, each country has its own patent laws, which can be relatively lenient or strict with respect to when an application can be filed. In view of all this, inventors and patent applicants are encouraged to request from their patent attorney: (1) cost estimates for filing a patent application in specific foreign countries; and (2) the deadlines for filing a patent application in those specific countries.
3. Hire a patent attorney to prepare, file, and prosecute your patent application
A patent attorney should have familiarity and experience with the patent examination process and the Patent Office. Establishing working relationships with patent examiners, carrying out examiner “interviews” to discuss the merits of a claim invention or rejection, focusing on the dispositive issues in a Patent Office rejection letter, and revising claim language to facilitate an allowance are a few examples of the skills and tools required for a successful patent attorney. The knowledge, skills, and experience required to be a successful patent attorney are not possessed by everyone, including the smartest inventors out there.
One way to think about why you need a patent attorney is to consider the success rate for applicants who prepare, file, and prosecute their own patent applications. Such do-it-yourselfers are referred to as “pro se applicants,” and the Patent Office recognizes their need for assistance and indeed offers assistance to pro se applicants. Nevertheless, the Patent Office employees are limited by ethical rules and can only do so much for a pro se applicant. Ultimately, the quality of the patent application will determine its fate, and patent applications drafted by experienced patent attorneys fare much better than those drafted by pro se applicants.
Although the Patent Office does not publicly release statistics specific to the success of pro se applicants, this data can be obtained via the Freedom of Information Act (FOIA), and such information has been obtained in the past. In an article analyzing data obtained from a FOIA request, the author found pro se applicants to have very low success rates compared to patent applications linked to a patent practitioner. For example, the author found that 76% of applications filed by pro se applicants go abandoned compared to 35% of applications filed by patent practitioners. [v] The data therefore highlights what should be obvious: working with a patent attorney will significantly improve your chances of earning a patent grant.
4. Request a professional prior art search
Inventors generally understand their target market and they often know whether there are products or services available on the market like their invention. But, as a rule of thumb, only about 10% of the products or services described in patents are actually commercialized and make it to the marketplace. What is available on the marketplace, therefore, is only the tip of the iceberg when it comes to the scope of prior art.
Publicly available Internet search engines like Google, Google Patents, and Google Scholar are very helpful, but those resources rely on a keyword search, and different words can be used to describe the same invention. For example, if you search for a device featuring a “piston” and there is a relevant prior art reference out there describing a similar device with a “moveable pin,” then you probably wouldn’t find it using a keyword search. Indeed, there are numerous ways to describe an item, and a keyword search will only find the prior art references that use the same language chosen as the search term.
Instead of relying on keywords alone, professional prior art searchers conduct a classification search. The invention claimed in every patent application filed with the U.S. Patent Office, and others around the world, is classified into one or more subclasses of one or more classes. Searching one or more class/subclass combinations will reveal prior art references regardless of the specific language used chosen to characterize the disclosed invention. These classification search results are more reliable than keyword searches for finding the prior art closest to your invention. If you want to understand the state of the art for your invention, then you should consider having a professional novelty search conducted, and the search should include the databases containing the relevant class/subclass for your invention. Other databases or keyword searches are supplemental and should be considered depending on the invention.
Armed with a proper prior art search, a patent attorney can draft your patent application in a manner that does not encompass the features in the prior art references discovered in the search. As such, a prior art search will often lead to a better attorney work product and the search can streamline the prosecution of your patent application because the claims can be drafted to exclude the prior art references. Moreover, a prior art search may reveal the unsatisfying fact that your invention has very little chance of earning a patent grant. Although disappointing, this news is certainly more welcome before investing thousands of dollars in a dead-end patent application.
[i] If an application is a continuing application, then the patent term is based on the filing date of the earliest filed patent application in the family.
[ii] Diamond v. Chakrabarty et al., 447 U.S. 303, 309 (1980) (referring to a Committee Report accompanying the Patent Act of 1952, S.Rep.No.1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep.No.1923, 82d Cong., 2d Sess., 6 (1952).
[iii] 35 U.S.C. § 102(a)(1).
[iv] Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17–1229, slip at 6 (Jan. 22, 2019).
Contact an Experienced IP Lawyer
If you have any questions about whether your invention is patentable or about the patent process generally, then schedule a free consultation with Nolan IP Law today!
Please visit the Attorney Profile page for information on our attorney’s experience.