Whether you're a small or solo inventor, patent law can seem daunting, but it doesn’t have to be. This article aims to serve as an introduction to the key concepts of patent law, the process of obtaining a patent, and what you should consider as you move forward.
What is a Patent?
At its core, a patent is a legal right granted by a government that gives the patent holder the exclusive right to exclude others from making, using, selling, or importing the patented invention for a certain period of time—typically 20 years from the filing date. It’s important to note that a patent does not grant the right to make, use, or sell your own invention. Instead, it prevents others from doing so without your permission.
This distinction is crucial because it emphasizes the defensive nature of patents: they’re a tool to protect your market share and innovation from being exploited by competitors. It’s possible that you invent an improvement on a technology that is patented by another company. That company would not be able to practice your patented improvement—but you would not be able to practice it either, if it also infringes on their patent.
What Can Be Patented?
To obtain a patent, your invention must meet several key criteria:
1. Novelty: The invention must be new and not disclosed to the public before the filing date of your patent application. This means it must be different from anything that has been previously made, used, or described in published literature. This is typically an easy hurdle, as even a small addition can make an invention novel.
2. Non-Obviousness: The invention must not be obvious to someone skilled in the relevant field. Even if your invention is novel, if it’s an obvious improvement or combination of existing technologies, it may not be patentable. Patent examiners can use any reference (called prior art) that was available prior to the filing date of your application. Typically, that will be previous patent applications, but it can include journal articles, commercial products, or virtually anything else you can think of that is publicly available. If the patent examiner can reasonably combine features of the prior art to arrive at your invention, he will reject it for being obvious.
3. Patent Eligible Subject Matter: Not all inventions are patentable. The general rule in the US, according to the Supreme Court, is that “abstract ideas” cannot be patented. What constitutes an abstract idea remains a hotly contested legal debate, but this doctrine has been used in recent years to prevent some software-based inventions and gene sequence inventions from being patented. A patent professional can often provide guidance to help determine whether a specific invention is likely to be considered abstract or not by the patent office and the courts.
The Patent Process: Timeline and Costs
Understanding the timeline and costs associated with obtaining a patent is essential for planning your strategy.
0. Step Zero: Before you begin, do not just start talking to people about your idea. If you talk about your idea publicly, you may not be able to patent it at all. Even discussing it with family or friends is risky. For example, they may suggest an improvement. If that improvement ends up in your patent application, they might be considered a co-inventor, making them a co-owner of your patent. Talk to a patent attorney before you do anything.
1. Initial Consultation and Search (1-2 weeks): There is typically an initial consultation to understand the client’s invention and its potential patentability. A preliminary patent search might follow, where the landscape of existing patents and publications can be assessed that might be relevant to your invention. This initial consultation is an excellent opportunity to also assess whether the invention constitutes an ineligible abstract idea or not.
Cost: A patent search is optional, but a thorough patent search can help you understand what aspects of your invention are novel.
2. Patent Application Drafting (1-3 months): If the search indicates that your invention has a good chance of being patented, the next step is drafting the patent application. This is a detailed document that includes claims defining the scope of your invention, a written description, and any necessary drawings.
Cost: Drafting a patent application can cost anywhere from $5,000 to $15,000, depending on the complexity of the invention and the thoroughness required.
3. Filing the Patent Application: Once the application is ready, it is filed with the appropriate patent office. For U.S. inventors, this is the United States Patent and Trademark Office (USPTO). Filing a patent application establishes a priority date, which is critical in the patenting process.
Cost: Filing fees vary by jurisdiction but typically range from $400 to $2,000, with small and micro entity discounts available for individual inventors and small businesses.
4. Patent Examination (1-3 years): After filing, the patent application undergoes examination by a patent examiner. The examiner reviews the application for compliance with legal requirements and may issue office actions requiring amendments or arguments in response.
Cost: Responding to office actions and engaging in back-and-forth with the patent office can add additional costs, depending on the complexity of the issues raised. If you disagree with the examiner’s decision, an appeal can give you a second chance, but it can increase the costs even further.
5. Patent Issuance: If the examiner finds that the application meets all requirements, the patent is granted. You will then need to pay issue fees and, periodically, maintenance fees to keep the patent in force.
Cost: Issue fees are typically around $1,000, with maintenance fees due every few years to keep the patent in force.
International Patents and Jurisdictions
If you’re considering protecting your invention in multiple countries, it’s important to understand the concept of international patents. There is no single “worldwide patent,” but there are mechanisms like the Patent Cooperation Treaty (PCT) that allow you to file a single application to preserve your rights in multiple jurisdictions.
- PCT Application: Filing a PCT application gives you up to 30 months from your earliest filing date to enter national phases in the countries where you want patent protection. This can be a cost-effective way to delay the high costs of filing in multiple countries while you assess the commercial potential of your invention globally. But filing a PCT is typically more expensive than filing directly in the jurisdictions you will ultimately file in, if you know that ahead of time.
Common Challenges for Small and Solo Inventors
As a small or solo inventor, you may face unique challenges in the patenting process:
1. Business Method Patents: Many small inventors innovate in the area of business methods—new ways of doing business, often involving software or processes. While it’s great to innovate in this area, it’s important to know that business methods are generally difficult to patent. Courts and patent offices, especially in the U.S., have set a high bar for what constitutes a patentable business method.
2. Costs: Patenting is expensive, and the costs can add up quickly. As a solo inventor, it’s crucial to weigh the potential benefits of patenting against the costs and consider whether alternative strategies, such as trade secrets, might be more appropriate for certain types of inventions.
3. Enforcing Your Patents: Patents are not self-enforcing. If you think someone is infringing your patent, it can be difficult and expensive to get them to stop. A cease-and-desist letter may be effective at a lost cost of a few hundred to a few thousand dollars, but drawn-out litigation may be required. The cost for litigation all the way through trial can be significant—$100,000 at the low end, and upwards of millions of dollars for complex cases. And there’s no guarantee of winning—you might end up spending all that money just to end up with a finding of no infringement, or worse, a finding invalidating your patent.
Conclusion: Your Next Steps
The patenting process is complex, but it is a powerful tool for protecting your innovation. By securing a patent, you can safeguard your invention and potentially open doors to licensing deals, partnerships, and even venture capital funding. However, it’s important to approach the process with a clear understanding of the costs, timelines, and potential challenges.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Alliance IP LLC, any other of its lawyers, its clients, or any of its or their respective affiliates. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. No attorney-client relationship is formed through this article or the content of this website.