The pricey path to patenting an idea

May 27, 2008: 9:05 AM ET

Patent protections can be essential - but they come at a steep cost.

Dean Brotherton, Milton, W.Va.
Is having a patent search done by an attorney the cheapest and most effective way to see if your product or idea holds enough merit to pursue?

By Paul Roberts, Fortune Small Business contributor
Dear Dean: If you have an idea that you think is novel and inventive, hiring a patent attorney to check it out is one way to see if what you've dreamed up is really new, but it almost certainly won't be the cheapest way to go. A couple of hours and some simple Web searching can save you hundreds or thousands of dollars in attorneys fees, says Monika Hussell, a partner at the law firm Dinsmore & Shohl LLP in Charleston, W.Va.

A patent application can cost you $10,000 from beginning to end – and, says Hussell, that's if everything goes exactly as planned, with the applicant doing most of the work drafting the technical aspects of the application and the attorneys adding on the various legal terminology and claims. More sophisticated patents that make broad claims or claim to cover novel business methods can cost much more and take two years to five years to win approval from the U.S. Patent and Trademark Office.

Individuals and companies have all kinds of motivations to seek a patent, from pride of invention to protection from larger competitors. Also, small startups may try to build a patent portfolio to interest potential investors, Hussell says. Given the cost of obtaining a patent, however, it's worthwhile to put your pride aside and determine what the granted patent would be worth to you or your business if you get it.

"It may not be worth it if it doesn't prohibit competitors from coming out with something similar," Hussell says.

Doing legwork on the Web

If you decide to go ahead, do the initial work of explaining your idea or project before turning the application over to the lawyers. If you're comfortable using the Web, the U.S. Government's Patent and Trademark Office (USPTO) has a wealth of information on granted and pending patent applications available online. The data is accessible with any Web-based search tool. This can help you make up your mind about whether what you've dreamed up is really new and different. Using the tools provided by the Patent Office, search the full text of patents and patent applications, and then search by the type of invention using the USPTO's detailed classification scheme to find closely related inventions that have already been granted patents.

If you prefer face-to-face interactions to the Internet, the Evansdale Library at West Virginia University has a Patent and Trademark Depository and staff there can help you with any problems or questions you have while researching your idea.

There are certain red flags when looking for what patent professionals term "prior art": that is, previously patented technologies or ideas that would invalidate your claim.

"If the novelty that you see in your invention is very closely related to something you see described in your research, then (your idea) is probably not patentable," Hussell says. "And, clearly, if you find something that exactly describes your idea, then yours is not going to be patentable."

If you've done your research and are satisfied that your idea still has merit, a patent attorney can help you determine if there's enough difference between your idea and others to patent. But be warned: the more subtle the distinction, the easier it will be for potential competitors to sidestep it, she says.

Recent rulings by the U.S. Supreme Court have made it easier for "obviousness claims," which try to strike down a patent grant by arguing that the patented idea is really just a combination of previous inventions, not something genuinely new. The Court reached back to patent rulings from the 19th century to reinforce the idea that patents should be granted for truly new inventions that show "sparks of genius," not incremental improvements on existing inventions.

Give us your advice: Check out recent "Ask & Answer" questions.

Related links:

Is your idea safe?: Mark Publicover expects to spend the next decade in court fighting rivals that allegedly ripped off his invention.

Can I patent someone else's work?

Patent vs. copyright: Protecting your creations

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