The pricey path to patenting an idea
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.
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From IP, Salt Lake City, UT Before one discloses their product or idea, one should talk to a patent attorney. The patent attorney can help clients do their own searching and can also help them obtain a professional search. The patent attorney can help clients understand the costs of filing a patent application, prosecuting the patent application to issuance, and enforcing the issued patent. Understanding these costs is important so that the clients can intelligently weigh the costs versus the benefits and make a smart business decision.
The phrase "holds merit to pursue" is ambiguous. A product may be marketable, but may not be patentable. Also, a product may not be marketable, but may be patentable. Patent attorneys are specialists in patentability, not marketability.
From DR Cassidy Provo, Utah Many years ago my Dad learned a hard lesson about patents. Basically what he learned was that they are not worth anything unless you have the money to defend them in court. This process can take longer than the patententing process and cost many more dollars.
From John, H.B. Calif. I just had my design patent approved and it was nearly a 3 year process. There are always issues involved and things never go as smoothly as one would hope. I would also state that $10,000 is very conservative since attorney fees can double that amount very quickly.
From Bilegt Magsar, San Francisco, CA It should be understood that it is not attorney's job to determine if there is any merit in your invention. Even in case your invention is not patentable, it doesn't mean there's no commercial merit.
From Larry Maxwell, Atlanta, GA Doing your own patentability search is a great idea, even if you ultimately hire a lawyer to supplement it. If the invention relates to a specialized industry, the inventor is often the best person to know where to look for prior art information. For example, there may be industry trade journals that a standard attorney-directed search wouldn't find. Or the inventor may recall having seen something similar presented at a trade show or technical conference. The can ask a patent attorney to evaluate all of this information collectively and provide an opinion on patentability.
From Patented, Los Angeles, CA The patent process is much more expensive and time consuming than most people realize. $10,000 is a conservative estimate – you have to pay for preparation and initial filing (can range from $7-15k depending on complexity and billing rates), then wait 2-3 years until it is examined, and then probably be required to respond to one or multiple office actions or rejections (maybe 1,500 to 3,000 for for each response). Not to mention extension of time fees and other fees that are not well known (e.g. formal draftsman drawings, claim fees, IDS fees, RCE fees). These can add up quickly. After all this, if you are able to obtain a patent (hopefully it is somewhat valuable after this process…), you have to pay the issue fee. Thus, from beginning to end, it can easily cost 20k, not just 10k. Then, you have to pay fees every four years to maintain the patent. Plus, it can take years to go through this process, and you may never obtain a patent. Recent court decisions have made obtaining a patent more difficult. While doing your own web research may be beneficial, there are lots of independent professional searchers who can do it for 1,000 – 1,500 and who are much better and much more efficient than a person off the street. There are more than seven million patents now.
From Brian Javeline While obtaining a patent can be a competitive advantage, your company should also realize that it can cost a lot of money and time to defend against it. A company, especially with software technology, should realize that these differences can easily be replaced or superceded in a fast moving environment (didn't Netscape have a patent or two?). Innovation, speed and customer traction and loyalty can be much more important than a patent. Our early stage company http://www.MyOnlineToolbox.com does have a few patents that are pending, but we move on as if they are irrelevant from a customer perspective. Obviously this is not the case in other industries such as medicine.
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Yes, The patenting process can be made affordable. These days most of the companies are getting their novelty search done in india at a affordable cost the difference in the cost could be upto 40 to 50% here is a link to a company which specializes in Patent search