What questions should you ask when you’re unsure about filing a patent application?

Making a decision about filing a patent can be a daunting task. Where do you start? What will it cost? Will you even be able to get a patent? If so, will patents help? Let’s walk through a few preliminary questions about filing a patent that will hopefully reduce uncertainty and bring you closer to a decision.

Did you first publicly disclose or sell your invention more than a year ago?

Potential clients sometimes approach us with an idea that they have been thinking about for quite some time. In some cases, they may have even shown their invention to others or sold their products. What often comes as a surprise to first time patent filers is that you do not have an unlimited amount of time to file a patent application.

Patents are time-sensitive. Inventors have only one year from their first public disclosure to apply for US patents. Foreign patent protection in certain countries might be unavailable if you have already publicly disclosed your invention prior to securing a patent filing date.

If you showed your invention to the public less than one year ago, it is critical to calendar the one-year anniversary. To be safe, make sure to file your US patent applications well in advance of the 1-year deadline since it is a race to the Patent Office.

Would a design patent or utility patent be appropriate for your invention?

Beyond the obvious implications of filing the appropriate type of patent application, timing and budget are major factors in the differences between filing for utility patent or design patent protection. A typical design patent application would cost less than $2,000 for the initial filing for a small entity and have an approximate chance of success at roughly 85%. A utility patent application can range widely from $9,700 to $20,000 for the initial filing with an 80-90% chance of at least one patent rejection.

How much is your budget for obtaining a patent?

So you basically have a high chance of success in obtaining a design patent at a substantially lower cost versus a high chance of rejection in apply for a utility patent at a much higher cost. This should come as no surprise since utility patents generally offer greater protection than design patents.

If your current budget does not allow for filing a utility nonprovisional patent application, consider filing a provisional application to obtain patent-pending status and buy more time.

What is the value of a patent-pending product?

If you intend to launch your product, a worthwhile question to ask is the additional value that patent-pending status may bring. This factor may affect not only sales, but your ability to raise funds. Do potential investors want to see that patent applications have been filed? Have your competitors filed or even already obtained patents?

Would your products infringe an existing patent?

Keep in mind that a patent does not give you the right to sell product, but only the right to stop others from such activities. It is possible and not uncommon to own a patent, and yet still infringe on other patents in attempting to sell your product. Consider whether a freedom-to-operate (FTO) analysis would make sense and, if so, the costs for such a patent infringement search.

Remember that you can still be liable for infringing someone else’s patent even if you own a patent for your product.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com