In this post, I’ll share what I’ve learned regarding patents. Unlike trademarks, patents can’t be gained through use. Priority on patents are based on “first to file” thanks to the American Inventors Act of 2011.
So, my first word of advice is to be careful not to publicly disclose your idea without either (a) an NDA in place with whoever you are sharing it with, or (b) a provisional patent filed which gives you a “first to file” date stamp.
Provisional Patents. A provisional patent is a good, 'cheaper' way to initially protect your idea and satisfy the "first to file" requirement. It gives you a priority date... basically, it buys you time. A provisional will give you 12 months of time to bring it to market before filing the non-provisional and can run $300 - $2,000 depending on how much legal help you need. The provisional should focus on the same unique element(s) that you eventually file in the non-provisional.
A provisional patent will allow you to publicly show your idea (like at a trade show) with some protection. If you were – for example – to share your idea at a trade show or even with someone over email, and you didn’t have an NDA in place, you risk the entire patent if later someone disputes you and can provide the idea was public prior to your filing date. At the point your provisional is issued, you can and should indicate that it is ‘patent pending’. That said, a provisional is somewhat worthless, it just buys you time.
What is patentable? Ask yourself, “what feature can I not find anywhere on earth”? Ask, “Is it useful”… don’t ask “what is it used for”? It can also be abstract. One example might be a pen with scanner. A pen exists as does a scanner. Together, it becomes a new, useful, novel and non-obvious idea.
Is software patentable? I’m not an expert on this but my understanding is that software patents have serious limitations. This is mixed and I’m sure others have differing opinions, but the the Supreme Court recently said that any patent that "does no more than require a generic computer to perform generic computer functions" is not patent eligible. They also said there are plenty of software that this wouldn’t apply to but I can’t think of any. I believe your code could certainly be covered under copyright but that’s a different topic. Bottom line, if your hardware product includes software, the patent can (and should) reference the app or software to be safe. If it’s software alone, talk to a lawyer.
Do a quick patent search. Some people will say not to do a search at all! This way, you can say you weren’t aware if you end up infringing. I do think a quick Google Patent search is a good idea. I’ve also heard about doing a Wipo search. Firms can do formal searches for you but I would avoid this in the beginning. You can also find freelancers who do searches and filing. The USPTO will perform a full search when you file your non-provisional so you’ll find out at some point. They won’t do a full search on the provisional and note that you won’t find provisional patents in your search.
Non-provisional Patents. There are two types of patents: utility & design. Utility patents are stronger and based more on "functionality". Design patents are not as strong and more "ornamental in nature" (like the iphone home button). Filing either can run $5K - $15K and can take one and a half to two years to be granted. So, this is not cheap and should be carefully considered. You can file a non-provisional first, but a provisional gives you that time and protection without the higher price. Ultimately, you’ll need to file the non-provisional if you want any real protection.
Patents tend to be written in a narrative form and include background on the invention, summary of the invention, drawings/ figures, claims, patent citations and reference to things like “prior art” and prior citations.
A patent is only as good as your willingness to defend it. That’s one of the single best lines I’ve ever heard. A patent will probably keep 75% of people away from copying you. Another 15% may go away after sending a cease and desist letter. The remaining 5-10% of people are careless and will fight you to the death. They will make minor alterations to their version of your product and fight you until you are out of money.
But they have value.
Companies are bought and sold on patents alone. In summary, if you have something you think is patentable, take these steps:
- Don’t expose or share your idea without filing a provisional or having an NDA in place with whoever you are sharing it with (lawyers are ok under attorney-client privileges)
- File a provisional and start seeing if people actually want it
- If you have the money, file the non-provisional just before you start the manufacturing
- Get a good lawyer who regularly issues patent applications in your category and who has patents that have been successfully been defended in court
- Send cease and desist orders to manufacturers, retailers and anyone who is infringing on your patent
- Know when to stop fighting with legal bills and instead focus on innovating your next product