WHEN’S THE RIGHT TIME TO START THE PATENT PROCESS?

At Henry Patent Law Firm, we frequently hear from innovators and startup owners who are seeking to patent their inventions.

Although patent protection is often the right business move for these folks, they frequently also face constraints like a limited budget or an underdeveloped invention.

Given the number of inquiries we’ve received on the issue, we thought we’d address this common concern: When’s the right time to actually start the patent process?

IS PATENT PROTECTION RIGHT FOR YOU?

This post assumes that you’ve already done the homework to determine that patent protection is actually right for you. This generally involves establishing the following three things.

First, and most obviously, your invention must meet the legal requirements for patentability. Under U.S. law, this is defined as:

• Patent-eligible subject matter: A “process, machine, manufacture or composition of matter”
• Novel: Different from all prior art
• Useful: Functions as claimed to benefit the public
• Non-obvious: More than a trivial variation of prior art

Next, your invention should have commercial value. Because the patent process is quite costly, we typically advise pursuing it only if there’s some potential revenue tied to using your invention.

Finally, you’ve determined that your invention would not be better protected as a trade secret. Trade secret protection might be a better alternative if it’s virtually impossible to reverse engineer your invention, and you can exploit its commercial value while keeping it secret.

SIX FACTORS TO CONSIDER WHEN DECIDING WHEN TO START THE PATENT PROCESS

Typically, we strive to file patent applications as quickly as possible in order to secure early filing dates against possible prior art. But often, there are good reasons to delay filing your patent applications.

Below, we’ve outlined the six key factors that determine the right time to file a patent application.

1. ESTABLISHING AN EARLY FILING DATE

The filing date of your patent application is extremely important in determining the outcome of your patent application. Specifically, your application will be evaluated against all known prior art as of your effective filing date.

The earlier your effective filing date, the less likely it is that your application could be exposed to third-party prior art down the line. That’s because anything filed or disclosed after your effective filing date can’t be used against you.

Securing an earlier filing date may be especially critical if you know that your competitors might be working on a similar invention to yours.

For example, be aware of upcoming trade shows or conferences where your competitors might be sharing new details about their own technology, as this could create prior art against your later-filed patent applications. Many companies will try to file their own patent applications ahead of these types of events, in case their competitors are developing similar technology.

2. THE COMPANY’S OWN PRIOR ART

Additionally, it’s possible for your own previously-filed applications to be used against your current application as prior art.

Generally speaking, your company’s previously filed application can be counted as prior art if it’s published before your current application. So if you realize that the one-year deadline is approaching, you may need to file a patent application quickly.

Note: The laws governing previously-filed applications as prior art are quite technical and complex, and they vary in each country. To gain a more in-depth understanding of the issue under U.S. law, please read our blog post on how the AIA defines prior art.

3. FUTURE PLANS TO DISCLOSE THE INVENTION

If you’re planning to make any public disclosures of your invention (for example, through a public presentation or a marketing strategy), you’ll want to file your patent application beforehand so as to avoid creating prior art against yourself.

But in some cases (for example, when you’re shopping your invention to venture capitalists), you may be able to maintain confidentiality by getting all third parties involved to sign a non-disclosure agreement.

4. YOUR OVERALL BUDGET AND FUNDRAISING TIMELINE

The patent process is governed by a series of strict deadlines — and you have to be financially prepared to pursue each step as it comes. Accordingly, you’ll need to establish your overall budget, and a timeline for when you expect to obtain funding.

If your business’s financials don’t align with the timeline for the patent process, it may be better to hold off on filing a patent application until you know you can afford to follow through.

And don’t be tempted to cut corners! For example, filing without a patent attorney could save you money upfront, but could result in your application falling short of the USPTO’s complex requirements. Often, the consequences of cutting corners will outweigh any initial cost savings.

If you don’t anticipate having a lot of resources in your first year, but need to establish a priority filing date, you could file a provisional patent application. But this is only a stopgap measure: filing a provisional application is cheaper in the short run, but it will still need to be converted into a non-provisional application within a year.

5. PURSUING INTERNATIONAL PATENT PROTECTION

If your business could have potential customers, competitors, or licensees outside of the United States, you may want to include foreign patent protection in your overall strategy.

But because you’ll be facing a tight timeline and expensive procedures, you may want to hold off on filing your initial patent application until you’re confident that you can meet those targets.

For one, if you file via the PCT, you’ll need to “nationalize” your application within 18 months of your earliest filing date (or 12 months, if you’re filing via the Paris Convention). For more information on what this entails, please see our blog post on international patent protection.

For another, international patent filings are much more costly than domestic filings. We recommend budgeting between $30,000-$50,000 per country over the life of the patent.

6. YOUR INVENTION’S STATE OF DEVELOPMENT

Most folks typically file their patent applications while their invention is still in the research and development (R&D) process.

This is always a balancing act because you have the competing interests of (i) filing quickly to secure an earlier filing date versus (ii) delaying the filing to capture ongoing improvements.

One practical way to think through this is to ask yourself whether the invention is only “half-baked” from an engineering perspective. In other words, do you have enough knowledge to instruct another person in your field how to make and use the invention?

• If yes, you can probably move forward with an effective patent application.
• If not, you should delay the patent process to be sure that you have more technical detail to include in the initial patent application.

Anything that’s not sufficiently described in your application’s specification will not be protected. So be careful of:

• Filing a provisional patent application too early in the R&D process. Provisional applications are often a good way to secure a filing date, but don’t let it give you a false sense of security. If the provisional application isn’t thorough or if it’s filed too early, you might not get the benefit of its filing date when you prosecute the non-provisional application.
• Filing a patent application when you have plans for future development of the invention. For the best chance of getting a patent that covers your company’s end product, review your patent portfolio periodically to ensure it’s aligned with your product roadmap.

Many companies develop a continuous process of filing updated patent applications periodically — each time they improve their technology. To prevent the cost of this process from getting out of hand, consider partnering with a good patent attorney who can help you work it out in an economic way.

ARE YOU READY TO START THE PATENT PROCESS?

Patent protection may be the right step for your business — but it can be difficult to keep track of all the variables involved in the legal process. That’s why we’ve compiled a free checklist, “Are You Ready to Pursue Patent Protection,” to help you stay on top of things. Download it now!