Product in Development – Time for A Patent Application?

Business owners may ask their business attorneys whether a utility patent is appropriate for a new good or service (product). As even business-savvy attorneys often know little about the patent process, let me share some introductory information that I share time and time again in my initial telephone calls from businesses interested in a patent.

An 800 word article is not a substitute for specific advice from a patent attorney, but some information about the patent process helps provide orientation on when and why your clients should consult a patent attorney.

Patent Claims Are Barriers

The best use of a patent is to help protect market share and margin for an innovative product. The patent helps prevent competitors from selling a product that incorporates the patented feature. Patent claims only prohibit others from having a product that has legal equivalents of all elements in a claim. If a competitor omits one element (noun or verb in the claim) completely, the claim cannot stop the competitor.

As it may take two to five years to get a patent, a patent is only worthwhile for a product to be sold at least that long.

Novelty or Hard Work Are Not Enough

Many people think novelty is sufficient for a patent. Novelty is just the start. The battle to obtain patent claims is over obviousness. Obviousness is a judgment call by a patent examiner at the U.S. Patent & Trademark Office (USPTO) on whether a person having ordinary skill in the art (PHOSITA) would be able to solve the problem addressed by the claimed invention using a mix of anything previously done in the relevant industry or done to solve an analogous problem in another industry. An invention is deemed obvious if the examiner believes PHOSITA can fit together pieces from the prior art to form the new product without an inventive leap.

Many businesses bundle several known pieces together to form a new product. These bundles, while new, are unlikely to be patentable if each of the known pieces just does the expected task in the expected way. On the other hand, if the product’s bundle of pieces allows some new functionality, then the product might be patentable. The product needs to be more than the sum of the parts.

Some companies do the hard work of assembling together all that is known on a given topic and then use software to harness this assembled information. Mere hard work is not rewarded with a patent, as a claim needs an inventive step. Likewise, automating a manual process is generally not enough, unless there is an invention to make the automation possible.

Review Relevant Patents

Getting a patent is a significant expenditure of time and money. A good first step is to review issued patents for similar inventions to understand the format and level of detail provided. Google Patents has both issued patents and published patent applications from a number of patent systems. I suggest limiting initial searches to just United States issued patents. The USPTO has suggestions for patent searches at www.uspto.gov/patents/process/search/index.jsp.

Finding relevant patents and being able to articulate how the invention differs from the prior art will streamline the first meeting with a patent attorney.

Costs

The costs to obtain a patent vary depending on the type of invention, the number of innovative aspects, the number of examples, the amount of resistance from the examiner, and a range of other factors. The costs to obtain a patent are often in the range of $25,000 over three to four years. These costs are primarily a mix of government fees and the charges for the time for the patent attorney to draft both the detailed patent application and rebuttals to the examiner’s objections.

There is no guarantee of a useful patent claim. There is a risk that the process will end without obtaining a patent at all or a patent with only narrow claims. Narrow claims offer opportunities to sell slightly different products without infringement as there is a lack of one or more required claim elements.

Must File Before Public Uses, Sales Or Sales Offers

After March 2013, uses, offers for sale or sales that are public – made outside of a nondisclosure agreement (NDA) – terminate the option to seek a patent. Under an NDA, these same actions are harmless.

A U.S. patent application can be filed within a year of a public disclosure such as an article or web posting. However, for many reasons, it is best to avoid any public disclosures until after filing a patent application.

Rules outside the United States can be stricter, so consult with a patent attorney before making any type of disclosure, sale, offer for sale or use.

Experienced patent attorneys can augment this very brief primer with relevant guidance for a particular inventive product and fact pattern.

- By Kevin Flynn