Regardless of your invention’s commercial potential, there are situations where you may be hesitant to file a patent at all.
Amidst business closures and stay-at-home orders, we’ve all spent a lot more time at home during the COVID-19 pandemic. If you’re an inventor, you may have used this time to improve on one of your existing inventions or even develop an entirely new one.
You’ve also probably given considerable thought to protecting your invention with a patent. Since 1963, the United States Patent and Trademark Office (USPTO) has seen an increasing number of patent applications each year. In 2019, the USPTO received over 650,000 patent applications and granted nearly 400,000 new patents.
Protecting your patent rights is important, and you’ve no doubt asked yourself, Should I hire a patent lawyer? While there’s no definite answer, it’s probably a good time to hire a patent lawyer if you find yourself in any of the following situations.
1. You Aren’t Sure What Kind of Patent You Should File
Patent law distinguishes between three main types of patents, each covering a specific kind of invention:
- Utility patents, which cover functioning inventions with some kind of identifiable benefit;
- Design patents, which cover the ornamental design of an otherwise functional invention; and
- Plant patents, which cover new varieties of plants.
The vast majority of patent applications received and granted in the U.S. are for utility patents. Only about 7% of the total applications received in 2019 were for the other two types of patents.
Patent applications are either provisional and non-provisional. Only non-provisional patents grant full patent protection. By contrast, provisional patents grant only partial protection, but are far less formal; they allow inventors to create an informal record of their invention. This is especially useful if the inventor needs more time to complete their research or the longer non-provisional application process. In short, provisional patent applications are like short-term “pre-applications” that do not provide any formal patent protections. They do, however, protect your idea while you finalize and refine your invention. You can then convert your provisional application into a non-provisional one. Conversion requires care because inconsistencies between each application may result in the loss of some patent rights.
If it is unclear to you what kind of patent you need to file, you should contact a patent attorney to help you. They will know not only what kind of patent you should file but also what your patent application should contain.
2. You Aren’t Sure if You Can Patent Your Invention in the First Place
Not every invention is patentable. The patent system exists to protect and encourage the independent development of new and interesting inventions. As a result, only patents that meet certain subject matter requirements are eligible for patentability.
Every new invention competes with the growing body of existing inventions, called the prior art, whether or not they are officially patented. As a result, new inventions must be useful, novel, and non-obvious when compared to these existing inventions. While these requirements can get tricky to satisfy depending on an invention’s complexity, they generally conform to the following patterns:
- Inventions are novel if they are previously unpatented or unpublished at the time the patent application is filed;
- Inventions are non-obvious if a skilled person familiar with the process, method, or machine to which the invention relates would not have thought of the particular improvements contained in the invention; and
- Inventions are useful if they fulfill their intended purpose and that purpose provides a defined benefit.
Perhaps the most important of these is the novelty requirement. If a patent is not novel, then there is no sense in proceeding with the application because it will be summarily rejected after review by a USPTO patent examiner.
Even if you’ve conducted your own research, it isn’t always clear that your invention is truly novel, non-obvious, or useful. Each year, the USPTO grants only about 50% of the utility patent applications it receives. Accordingly, it’s time to hire a patent lawyer if you aren’t absolutely sure that your invention is eligible for patentability.
JCLaurenceLaw.com provides more information on the specifics of patentability.
3. You Don’t Know What Your Patent Application Should Include
Every patent application contains the same general structure, though the exact nature of what’s included may change depending on whether the application is provisional or non-provisional. This structure includes:
- A specification describing the invention;
- A summary of your invention and how it operates;
- Drawings or diagrams of your invention; and
- Claims that set out exactly what your patent intends to cover.
The claims are the most important part of your patent because they define the scope of your patent protection. One one hand, claims drafted too broadly run the risk of rejection by the USPTO because they cover prior art. On the other hand, claims drafted too narrowly may exclude patent protection to certain parts or uses of your invention to which you would otherwise be entitled.
In addition, the USPTO follows specific rules regarding the presentation and content of patent claims. If you’re ready to file your patent application but you’ve never drafted patent claims before, it’s time to hire a patent lawyer. Patent claims are incredibly important for the scope of your rights in your invention. Attempting to draft them yourself isn’t worth the risk of missing a crucial detail that could make a significant difference.
4. Your Invention Has High Commercial Potential
New inventions aren’t guaranteed to make their inventors rich and famous, but the right execution can lead to widespread change across an industry. Certain inventions are extremely valuable because they reduce the cost to produce something or improve upon the strength or versatility of an end product. Whatever the reason, the potential for commercial success brings certain risks and challenges that the average inventor may not face.
If you believe your invention will find a home in a large market or fundamentally change an industry, it’s time to hire a patent attorney. They will assist you with the procedural aspects of filing and provide advice on the challenges you may face.
How Do I Know If My Invention Has Market Potential?
Estimating the true market potential of your invention is very difficult, if not impossible, because so many unknown factors could influence your success. The best you can do is step back and ask yourself:
- How many people or businesses would find my invention useful?
- If my invention improves on an existing process or machine, how commonly used is that existing process or machine?
- What kinds of cost or efficiency benefits does my invention offer over alternatives?
- How valuable are those alternatives?
While you may still be left without a definite answer, you can use data from other sources to put together an approximate market for your invention. Using census information, industry surveys, and reports from other businesses, estimate how large your potential target market might be. Then consider how much you will charge to license your invention to others, accounting for scalability, the cost of competitive alternatives, and the size of your potential market.
Always remember to be realistic when estimating the market potential of your invention. If there is a range of numbers in your calculations, stick with the lower end. Additionally, don’t consider portions of the target audience that you believe are unlikely to need or want your invention.
Taking the time to carefully consider these points will allow you to be better able to work with your patent lawyer, especially if you want to license or sell your patent.
5. Your Invention Relates to a Highly Competitive Industry
Regardless of your invention’s commercial potential, there are situations where you may be hesitant to file a patent at all. Although individual patent applications are confidential under federal law, patents themselves are intended to be public documents. By obtaining a patent, you are agreeing to make your discovery public in exchange for the exclusive right to control how your invention is used for the duration of the patent protection.
In a highly competitive industry, you may not want to reveal your invention to your competitors. In that case, filing a patent isn’t the best choice. Like secret recipes, your invention may be better off with protection under trade secret law. If your invention fits any of these descriptions, then hiring a patent lawyer is the best way to figure out what you should do next.
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