Patent protection offers many benefits to entrepreneurs and innovators, allowing companies and people to profit from their novel ideas and providing incentive to develop more. But the process of applying for a patent can be time-consuming, expensive and confusing.
According to Tom Donovan, partner in the Chicago law firm Barnes & Thornburg, for small businesses, the key to successfully pursuing patent rights is to approach the patent process seriously and intelligently. A competent approach ensures that patents obtained will ultimately have competitive value to the company, meaning your money isn’t wasted on protecting inventions that will never make it to the marketplace.
Smart Business talked to Donovan about the steps involved in the patent application process.
When in the process of new product production should a business or entrepreneur look into getting a patent?
Patent applications should be filed, or at least considered, very early in the process of developing new products. It is always a good idea to file patent applications as soon as possible, because a delay in filing a patent application in the U.S. Patent and Trademark Office and foreign patent offices can result in a loss of patent rights.
Having said that, in cases where the product is far from completion and additional development work is anticipated, it may make economic sense to wait until the product is more developed. It also may make sense to file a provisional patent application if the invention is not yet completed.
But, again, it is important that any decision to delay in preparing the application is made with keen understanding of what could result in loss of patent rights.
How does the patent application process work?
There usually are two steps. The first step is to conduct a patentability search to obtain an understanding as to whether the invention might be patentable.
The second step, assuming that the patentability search comes up favorable, is to have your patent attorney prepare and file a patent application that covers the invention. The first step is optional, although in most instances it is a good idea.
Who should be involved in the patenting process?
Patent counsel and individuals associated with the company that can make informed decisions in connection with technical, budgetary and marketing issues.
The technical person may be either the inventor or someone responsible for the research and development or engineering staff. The budget person is someone that has the power to authorize the cost of filing and prosecuting patent applications and who also understands the company’s budget. The marketing person is someone responsible for trying to sell the invention.
At large companies, these individuals may all be different, but at smaller companies there may be one or two individuals who can consider all of these issues when making patent decisions.
How long does the process take?
In the U.S., once a patent application has been filed, it can take from about 18 months to three or more years for the patent to issue.
How much does the application typically cost?
It depends upon the technology. The total fees and costs to prepare and file a U.S. patent application usually range from about $5,000 to $10,000, depending upon the technology. If the technology is complex, the total fees and costs could be higher.
What are the benefits of having a product patented?
In the U.S., the key benefit is that it gives you the right to exclude others from making, using, selling, offering for sale or importing the invention covered by the patent.
And how long does that protection last?
A U.S. patent expires 20 years from the filing date of the application.
So you have to apply for a patent in each individual country?
Yes. Patent rights are territorial. If you want patent protection in a particular country, you have to obtain a patent for that country. Just to clarify, there are some countries that have joined together to form regional patent offices where you can obtain a single regional patent that will be recognized in individual countries, provided certain steps are taken. But the point is the same — you need to have patent protection within each country.
Are there any tips you could offer to companies looking to secure a patent?
Yes. Patents can be critical to a company’s success, so companies should take very seriously the decision-making process involved in pursuing patent protection. There are four important components to that process.
First is technical — what is the invention? Next is budgetary — can we justify the costs to obtain a patent? Then consider marketing — is there a market for this invention? And finally, the legal aspects — is the invention patentable and what will be the potential scope of the patent?
It is important to consider all of these components when deciding what inventions should be protected.
Tom Donovan is a partner in the law firm of Barnes & Thornburg. His practice focuses on intellectual property. Reach him at (312) 214-8329 or [email protected].
