No patent, no problem?

Utility patents generally take a long time and a lot of money to secure. You may feel inclined to skip the entire patenting process and focus instead on marketing and selling the product. What would be the potential consequences if you choose not to apply for a patent? Let’s explore situations where it might make sense not to file patent applications.

When does a no-patent strategy make sense?

At the outset, we need to keep in mind the distinction between design patents and utility patents. Let’s first discuss the situations where it make might sense to forego a utility patent.

Utility patents with worthwhile claims take a lot of time to obtain. You may encounter multiple Office Action rejections where the patent examiner comes back with new prior art in response to your previous arguments and amended claims. If your product has a short shelf life, it might not be worthwhile to spend years trying to get a utility patent. Products with shorter lifespans may include, for example, trendy goods that rise and fall rapidly.

What if your products have been on sale for more than one year?

It would make sense to forget about patenting any products that have been on sale or publicly disclosed for more than one year. One potential workaround would be to apply for a modified product with improvements or new features that have not been publicly disclosed for over a year.

What if you do not have millions to sue others for patent infringement?

This appears to be a common objection to patenting – i.e., I don’t have millions of dollars to spend on lawsuits so I should forget about patents altogether. While patent lawsuits are expensive, the burden of litigation does not have to rest with you.

You can try to license or even sell your patent rights to a larger company who will fight the legal battles. If there is strong market demand for your technology, a large company might be concerned about lawsuits, not from you, but from their large competitors.

If utility patent costs are out of your budget, why not file a provisional?

If a utility non-provisional application is cost prohibitive at this stage of your business, consider a provisional patent application as a quick and expensive option to buy patent-pending status. Filing a provisional application buys you time – 1 year – to raise capital and generate sales that would make a nonprovisional application possible. Provisional applications do not get published, and the public would only have access to a provisional if you follow through with the nonprovisional application.

Should apply for design patents instead of utility patents?

Assuming you decide to skip utility patents, design patents may offer a quicker and more affordable alternative to patent protection. Of course, the design patent rights are not as broad as those of utility patents. For trendy products with shorter lifespans, design patents may strike the right balance in terms of costs and benefits. Owning design patents at least give you some arsenal to enforce against copycats selling on platforms such as Amazon.

How will the lack of patent filings affect raising capital?

When it comes to raising funds, investors may not necessarily require patented technologies, but they often prefer to see that your innovation is at least patent-pending. The absence of patent filings may raise concerns with potential investors as to how you will gain advantages over competitors who will likely introduce knockoffs at cheaper prices.

The connection between patenting and fundraising also relates to the question of whether it makes sense to file applications even if a patent is never ultimately granted by the USPTO. You cannot foresee all the things that could happen to your business between your patent filing date and the conclusion of your patent application. So it would be wise to take calculated risks and make cost-benefit decisions on the value of being patent-pending now and possibly patented in the future.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com