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Wednesday, September 4, 2013

Knowing When to Seek Patent Protection

By Steven Shape, IP Attorney

Preparing and filing a patent application for an invention is not a complex process for a professional patent attorney. Deciding when to seek patent rights as a client, however, is not as clear. Furthermore, knowing whether or not it is the right course of action for the best protection is also not so clear.

Identify and Document the Invention - At the outset of the process, identify and document the invention then seek to determine what you think you have invented. Is the invention a process best described as a series of steps which can be represented by a flow chart, or is the invention a system of inter-related and specifically arranged components, or is the invention a device (or possible a composition of matter)? Decide, then reduce your invention to a written description and visit your patent attorney.

A Prototype or Not - A working prototype may help you recognize not only design changes that are essential, but also identify new and important elements necessary to achieve the functionality of your invention. It is imperative that you maintain the confidentiality and secrecy of your invention throughout the development process. Under recent changes in the patent laws, it is best to seek advice from a patent attorney early in the development process to be sure you do not inadvertently lose any of your intellectual property rights

To Search or Not - Most patent attorneys will prepare and file a patent application for a fixed fee--anywhere from $6,000.00 to $12,000.00 (USD) depending upon the complexity of the technology and the location of the attorney. A patent novelty search can cost upwards of $1,000.00 to $2,000.00 (USD). A search is not required prior to filing a patent application. However, the search can help the inventor understand the realistic scope of protection available for the invention. The general rule is to perform a search when you are not familiar with the engineering, manufacturing or overall marketplace of your invention.

To File or Delay - Decide whether the ultimate market is domestic (U.S.), international or both. Consider if you can afford the amounts necessary to seek domestic and international patent rights. For a domestic product, or a modestly funded patent budget, consider maintaining the invention confidential in order to solidify the business plan for bringing the invention to market. Otherwise, you have no choice but to file before any non-confidential disclosure. If your invention is such that it will never be visible to the public, even when incorporated into a product, consider maintaining the secrecy of the invention (trade secret protection) and foregoing filing a patent application that may become public knowledge after eighteen (18) months. If the patent budget does not permit international rights, but the invention will be apparent to the public when included in a product, file and seek "non-publication."

In any case, the best course of action is to seek counsel from your patent attorney early in your development process to avoid compromising or losing any of your intellectual property rights.

Disclaimer: Please note that this article does not constitute legal advice, and should not be relied on, since each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This post does not create an attorney-client relationship.

© 2013 Steven M. Shape  All Rights Reserved.

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