Today I decided to write about one of the most popular topics for inventors, especially new inventors: patenting.

The patent process may be the most polarizing topic for inventors. Some inventors posit that you should never bother with patenting: it takes too long, costs too much, and isn’t worth it in the end they say.

Others feel you must always patent or everyone will steal your product with impunity. The truth likely lies somewhere in the middle between these two polar opposite opinions.

Make sure to grab your free PDF – Patent Resources – Cheat Sheet .

Also, sign up to attend my free upcoming webinar – How to License Your Invention for Royalties. See if licensing is the right path for you.

My Thoughts About Patenting

 

Before you read through the list of Q & A’s I thought it would be helpful to give you my opinions so you could recognize where my biases lie on the issue.

I am generally a proponent of patenting your invention ideas – a patent maven, so to speak. Why?

While companies do license unpatented products – it is a much harder sale for you to make. If your invention is not patented, the company has no exclusivity: any and al of their competitors may freely manufacture and sell their own versions of your product. Neither you. nor your licensee will make a cent off all those others sales of your product. While you may save $5,000 in patent expenses, you may lose potentially millions of sales of your product. This seems an unwise tradeoff to me.

The counter-argument is that for product segments with short life cycles, like toys and many DRTV items (direct response TV), retail sales may fly, then die inside of two years. Your patent may take longer to issue than your product remains in the marketplace.

I do own 3 U.S. patents, but I am not a patent attorney – the below are my best opinions based on all I have learned over the years.

Patent Q & A’s

 

What is a Provisional Patent?

The provisional patent application (PPA) provides inventors with an initial filing date and the ability to claim they are patent-pending for 1 year after filing. It is never examined by the patent office and after 1 year, the PPA expires. As such, the PPA is not really a patent at all, just an “application.” In order retain the initial filing date, the inventor must file a utility patent within 1 year of filing the PPA.

What is the Benefit of Filing a PPA?

If you file your own PPA, it can cost as little as $60 (more if your attorney does so for you). It gives you up to 1 year to explore licensing and other options for your invention. If there is little interest in your product, this will save you the expense of filing for a utility patent, which may cost $5,000 or more to prosecute. It is an economical way to test market your product.

What is a Utility Patent?

A utility patent is the most commonly filed paten. It protects the “utility” or unique features of an invention.

A utility patent, unlike the PPA, is a true patent that is examined by the U.S. Patent Office (USPTO). The process to file a utility patent and prosecute it with your patent attorney may take up to 3 years from filing to issuance date. The utility patent is valid for 20 years from the initial filing date. There is no guarantee that the USPTO will grant or allow a patent to issue for your invention, but your patent attorney typically has a good sense as to the likelihood of your obtaining an allowance for your invention.

What is the Rush? Why Does the Filing Date Matter?

In 2011, the America Invents Act changed the U.S. from a “first to invent” to a “first to file” country.

So, if two inventors happen to file competing patents upon what is essentially the same product (this is rare, but it does happen), then only one may be issued a patent. The inventor with the earliest filing date would win the rights to the patent, should the USPTO choose to grant a patent.

Does My U.S. Patent Protect My Product Throughout the World?

No, your U.S. patent provides protection only for sales and distribution within the U.S.

If you want or need patent protection in Canada or within Europe or other countries, you must file separate patents into each of the appropriate countries. For Europe, you must file with accordance of the EPO (European Patent Office). Filing for patents in multiple countries is expensive and time-consuming. You must decide whether or not it is worth it to you. The U.S. is still likely to be the strongest market in the world for your invention.

Is it OK to Tell People About my Invention Before I File My Patent?

The short answer is: no. If you tell anyone about your invention prior to filing, you have “publicly disclosed” your invention.

You then immediately lose all rights to file for any international patents and you have only 1 year before you must file your U.S. patent (the utility patent). This is why it is best to keep it a secret – you will retain all patent rights and options in that way. My understanding of this “disclosure” is that if you only give a very general description of the essence of your invention – “a thin, flexible wallet” for instance – this is not sufficient information for anyone to discern what is truly unique about the invention.

You may freely disclose details, however, to a patent attorney or patent agent as they have a high ethical bar that compels them to not disclose proprietary information – this is not considered a public disclosure. Also, if you must disclose details to anyone else (like a prototyper), have them sign an NDA (non-disclosure agreement). If an NDA is signed between parties, it is not a public disclosure and you still retain all patent rights.

Please let me know if you like this Q & A format. If so, I may do some more Q & A blogs in the future.

Make sure to grab your free PDF – Patent Resources – Cheat Sheet .

Also, sign up to attend my free upcoming webinar – How to License Your Invention for Royalties. See if licensing is the right path for you.

Stay Tuned.