Whether one should file a patent application must be reviewed on a case-by-case basis to make out the business case and justification for the expense and effort. In some instances, it may just make sense to push to market as quickly as possible without filing patents due to the various factors such as expense, patentability, and potential markets. In other instances, it can be foolhardy to bypass seeking patent protection. Here are some excuses and considerations whether to file patent applications….
- EXCUSE: Cannot afford to file a patent:
-Do you pay business insurance? Filings patents can very well be the cost of doing business in a high tech oriented business and any other business that needs to innovate to survive. Maybe you are not betting on being a big success? If you are successful, you will wish you had a patent to at least keep some of the competitors at bay. The competitors will generally come out with new technology or just simply knock you off. Isn’t it better to have something to fight them off with or at least level the playing field for yourself? You might have spent a significant amount in R&D and now you are allowing a competitor to ride your coat tails for free? A patent legally provides barriers to entry and potentially greater market share, minimizes infringement risk, and increases your Freedom-To-Operate (FTO) and opportunities to cross-license.
- EXCUSE: Cannot protect business method patents or software, so why bother?
-Yes, the patent laws have changed over the past several years due to cases like Alice v. CLS and State Street which limits the scope of the types of patents one can get, but you can still get some protection in many instances.
– You have to show that your concept is not merely an abstract idea and further show that the end result provides something more than just merely making something more efficient by automating it using conventional hardware or processors. You need to show that you have come out with a transformative result that is not obvious in view of the convention brick and mortar techniques.
- EXCUSE: Why bother getting a patent, it is going to be found invalid or severely restricted through the inter partes review (IPR) process at the USPTO?
-Yes, many existing patents are dropping like flies. But, patent applications filed today are going through a more rigorous examination (being challenged for Alice issues and also with more thorough searches), so that I predict that IPRs in the future will not have such a high rate of finding patents invalid. Also note that with IPR, the patentee has the opportunity to amend the patent claims during the process to avoid finding invalidity or at least possibly be able to steer the patent claims to read on someone’s potentially infringing product, but possibly in a more narrower form. This drives the importance of doing a thorough search up front.
- EXCUSE: Cannot afford to assert your patent
-Full blown litigation is expensive (and that hasn’t changed), but the cheaper and faster IPR or CBM process ($9k to $14k in PTO Fees) does bring the parties to the table towards settlement and reality much sooner in many instances. IPR/CBM only determines validity, you may still end up needing to go to Federal District Court or the ITC to further raise claims of infringement or non-infringement (as the case may be) and ultimately force a settlement.
- EXCUSE: Patents are worthless
-Patents or other IP such as trademarks and trade secrets might be the only valuable assets your company has at the end of the day. You can generate licensing revenue or sell the entire patent portfolio for large sums, particularly if there is a product that goes along with the IP rights. They work hand in hand in many instances to significantly increase the value of your company. Why do you think investors want to see whether you have patent coverage or other IP coverage?
Pablo Meles, P.A. 