Patent Considerations For Start-ups And Small Businesses

By: Michael Thomas

Protecting intellectual property rights are a concern for many start-ups and small businesses. Patents, trademarks, copyright, and trade secrets are all forms of intellectual property protection available to start-ups and small businesses. Of these four types, patents generally raise the most questions and are the hardest to acquire. Knowing what exactly a patent is, if the invention qualifies for a patent, and information on how to file for a patent can help a start-up or small business decide if a patent is the right choice. 

The Basics: What Is A Patent?

A patent is a property right awarded to the inventor by the United States Patent and Trademark Office (USPTO). This right allows the owner to exclude others from making, selling, or using his or her invention. Much like other forms of intellectual property, the USPTO plays no role in enforcing this right and it is up to the inventor to ensure there is no unauthorized use of his or her invention. In most cases, this right to exclude exists for a period of 20 years from the date the inventor files for a patent. From a policy standpoint, this grant of exclusivity is offered in exchange for the inventor sharing his or her invention with the public. It is important to note that patent rights granted in the United States are only valid in the United States. If the invention is something that may be used globally, it is important to consider filing in different countries during the application process. Another thing to keep in mind is that the validity of a patent can be contested at any time. This means that even if a patent has been granted by the USPTO it can be challenged and found invalid before the 20 year period is up.

How Much Does It Cost To Get A Patent And How Long Will It Take?

            The cost of acquiring a patent can vary greatly depending on whether a patent attorney is used or the inventor decides to file on his or her own. The USPTO lists all of the current application fees on its website. For a basic patent application these fees will range from $280 for larger companies, down to $70 for small companies and individual inventors. Using a patent attorney to file the application will raise these costs but is recommended, as it will ensure the best chance for success. Filing an application on your own can be much cheaper but one should balance the cost savings with the time it will take to learn and work through the process.

            Although much of it is time spent waiting, the process of filing to ultimately receiving a patent can be a long one so patience is key. The USPTO keeps track of the estimated time to complete the application process, which currently sits at a little under three years. This timeframe can play a role in the choice of pursuing a patent, as the patent may not be as valuable in three years when it finally issues.

Is My Invention Eligible For A Patent?

While there are a number of statutory requirements that must be met, one of the basic requirements is that the invention must fall into one of the allowable subject matter areas. The Patent Act states that the invention must be directed towards a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” In many cases an inventor can see if they qualify by asking themselves which of the above categories their invention falls into. While these categories cover a large breadth of products and the processes for making those products, it does not cover things such as abstract ideas, laws of nature, and literary or artistic works.

Is My Invention Novel?

One of the most important requirements, and well-known ones, is that the invention must be novel. While this seems like a very straightforward concept there are a number of subtleties that can be unknown to someone unfamiliar with the patent system. The concept of novelty is covered in 35 U.S.C §102. In 2012 the America Invents Act was passed and changed the United States patent system to a first to file system, making the United States system consistent with the rest of the world. Under this system the inventor that files first with the USPTO is entitled to the patent even though another inventor may have developed the concept first.

A simple step that can be taken to determine if your invention is novel is to conduct a simple cursory search of current patents and pending patent applications. This can be helpful as it can save the inventor time and money if a quick search reveals that someone else has already considered the invention. Both the USPTO and Google offer patent specific search engines that are extremely easy to use. Google Patents provides a layout that will be familiar to most people and offers a very user-friendly format. In addition, Google Patents can search not only patents but also articles that may have addressed a particular invention or concept. For those a little more familiar with patent searches, Google offers an advanced patent search engine as well.

While a search is unlikely to reveal the exact invention, it can give the inventor an idea of what currently exists and presents an opportunity to think about what makes their product truly innovative. In many cases, an inventor has a truly novel product but hasn’t quite articulated what makes it worthy of a patent. This can be an important step in acquiring a patent because the USPTO will require a well articulated reason for what makes the product innovative compared to similar inventions. A patent attorney can be very helpful in crafting language that explains the invention in a way that increases the chances of acquiring a patent.

When Should I File For A Patent?

In some instances it may be advisable to wait before filing, for example if funds are low for a new business and other costs take priority. However, in most cases it is important to consider patenting your invention during development or soon thereafter because our patent system is a first to file system. This is also important because even though an inventor may have filed the application first and no one else has patented the invention, there are a number of requirements that can disqualify an invention. An important thing to remember is that any public disclosure of the invention prior to the filing date can disqualify the inventor from obtaining a patent. For example, a public sale of the product, use of a process to make a product, or even publishing a paper a year prior to the filing date can disqualify an inventor from receiving a patent.

To ensure an inventor has the earliest possible filing date the USPTO offers the option of a provisional application. A provisional application must describe the invention but it allows the inventor to file an application with the USPTO without many of the formalities associated with a full application. The provisional essentially allows the inventor to hold their place in line with an earlier filing date while they work out details of the invention. Upon filing a provisional application the inventor has one year to file a formal application with the USPTO. This is a worthwhile option in many cases but it must be used correctly. The provisional should be used when an inventor is perfecting their invention, not when they have a good idea and want to see where it goes. 

If a small business decides to file for an application they can do so themselves or with the help of a patent attorney. The USPTO will work with inventors filing their own application and offers a number of great resources to help an inventor through the process. However, it can be very helpful and is recommended to seek the advice of a patent attorney. The process of filing a patent and communicating with the USPTO has the potential to trip up those who are unfamiliar with the process. A patent attorney will give the small business or start-up the best chance for acquiring a patent and ensuring the patent offers the greatest amount of protection. Ultimately, a little research and familiarizing oneself with the patent system can help significantly in the decision on whether or not to file for a patent.