When Should I Patent My Idea?

U.S. Patent Law secures inventors’ property rights in their inventions. Patent owners have the exclusive right to make, use, and sell their patented inventions and stop others from making, using, or selling them without a license or permission.

If you’ve invented something, when should you file for a patent? U.S. Patent Law is a first-to-file system, incentivizing inventors to file first. But there are other legal issues to consider before applying. 

This article discusses important timing considerations. Reach out to a patent lawyer for legal advice in the patent process.

The Incentive To File for Patent Protection

Boston intellectual property lawyer Rory P. Pheiffer describes patent protections as a bargain between the inventor and the government. In exchange for patent protections from the government, the inventor agrees to the public disclosure of their invention, enabling the public to use and improve it.

You may have heard that filing for a provisional patent can help reduce the high costs and long delays of pursuing a standard patent. This is not really accurate. There is no such thing as a provisional patent, only a provisional patent application. The distinction is that you can speed up the initial filing process by taking the provisional route and this can offer some advantages, depending on your circumstances.

The primary benefit of a provisional application is that it can be simpler and speedier, with no required format or formalities, allowing you the advantage of an earlier filing date for a later non-provisional patent application. This is significant because, as of 2013, the U.S. is a “first inventor to file” country, meaning you don’t have to be the first inventor to receive a patent, but rather the first to submit an application to the patent office.

The Importance of Timing in Patent Law

The short answer is that once you’ve decided to file for a patent with the United States Patent and Trademark Office (USPTO), do so as quickly as possible. “Due to the possibility that competitors might be innovating in the same space as you, you want to try to file patents relatively early in the process,” says Pheiffer.

But why the rush to file? “Most patent systems, including the U.S., are first-to-file systems, meaning that whoever files their patent first has a priority right over someone else.”

Another possibility is two people developing similar ideas or products. If another person patents the invention before you, “You’ll really have trouble competing against them. They have a patent they can enforce against you,” says Pheiffer.

It’s important to weigh these factors in consultation with a patent lawyer. A lawyer can help you assess and strategize your particular situation: Is your invention the sort that will be hard to replicate? Is it worth going public for patent protection? How risk-averse are you?

The first-to-file system puts considerable pressure on inventors. “If you’re working on something and someone else is working on something, and you get to the patent office first, your invention will take priority over theirs,” says Pheiffer. “You get the patent, and they’ll have difficulty getting the patent based on the fact that you won the race to the patent office.”

The Dangers of Public Disclosure

A critical question for inventors is whether they should patent their invention and make it public or keep it a trade secret, says Pheiffer. “Trade secrets are sort of the antithesis of patents. Whereas patents disclose to the public what your invention is, trade secrets don’t disclose to the public what the invention is.” But there are important tradeoffs between the two approaches.

“The benefit of a trade secret is that no one knows what you’re doing, so you can continue to practice your invention, and people can’t use the idea,” says Pheiffer.

“The drawback is that if someone can reverse engineer your invention or come up with your invention on their own, you have no way to stop them from competing against you. So, the question someone should first ask when they have invented something is: does it make sense to patent this, or does it make sense to hold it as a trade secret?”

Pheiffer cites the most well-known trade secret: The Coca-Cola formula. “That has been under trade secrets for years. It’s something you can’t really reverse engineer. You can get something close to Coke, but no one has ever recreated Coca-Cola exactly.”

Like the recipe for Coca-Cola, “There are certain inventions that you can come up with that are difficult to reverse engineer. If yours is like this, you can have a competitive advantage by holding it as a trade secret, and there is a benefit to not patenting.”

However, because of the danger of reverse engineering many inventions, “Probably eight to nine times out of 10, a patent is the better approach for most inventors,” says Pheiffer.

Using a Provisional Patent Application Strategically

It’s important to know that you can file what’s called a provisional patent application (PPA) instead of a full patent application.

With a PPA, inventors obtain “patent pending status.” This lets them secure the priority date on the patent while giving them a year from the filing date to:

• Improve their invention idea
• Seek investments
• Meet with entrepreneurs and others in the market to assess the commercial viability of their invention
• You can move to a non-provisional patent application if you decide that moving forward with the patent is wise.

Assessing the Commercial Viability of Your Invention

Filing for a patent is time-consuming and potentially expensive. Before deciding to pursue this venture, it’s important to assess the invention’s patentability value. It’s important to remember that a patent is a business tool. For some, it is an investment they plan to sell for a profit. For others, it is about protecting a startup’s future growth. Evaluating commercial prospects prevents filing costly patents for non-marketable ideas.

The first step is to evaluate the market demand for your new product. Look for target users or industries. Identify pain points that the invention solves. Compare existing products and solutions and the invention’s competitive advantage. Consult industry experts, potential customers, or perform limited controlled disclosures under non-disclosure agreements (NDAs).

Conduct a preliminary patent search or hire an attorney for a more thorough review. Evaluate if the invention is novel, non-obvious, and sufficiently concrete to make it eligible for patenting. Commercial viability is severely reduced if patentability is weak.

Calculate the total cost of pursuing a patent. Compare these costs to the potential revenue a secured patent could generate. Now, use these numbers to take a broader view of the venture. For example, investors often expect patent filings as part of due diligence. They are more likely to invest in a company that can successfully secure patent rights. A provisional patent application can make early-stage fundraising easier.

Consider alternative revenue streams if the initial business plan is not cost-effective. Securing licensing with established companies may be easier for solo inventors. Commercial viability analysis should include the capacity to sell, license, or scale.

Balancing Patent Costs with Business Goals

A provisional application is also less expensive than a non-provisional one and allows the phrase “patent pending” to be applied to the invention. You must submit specifications and drawings with sufficient detail that your invention could be constructed from them. Even without strict formalities, your provisional application disclosure should be as complete as possible. Once filed, a provisional application may not be amended.

A provisional application for a patent acts as a kind of placeholder while you’re in the process of completing your non-provisional application (or deciding not to do so). It preserves your filing date for a non-extendable period of 12 months. If you haven’t submitted your non-provisional application by that time, you’ll lose the benefit of the earlier filing date. To claim the benefit, the non-provisional application must be supported by the provisional one (meaning that you can’t piggyback a new invention or modification onto a provisional application for a different idea). Attorneys recommend incorporating all possible variations of your invention into your provisional application description, both to protect your own modifications and to prevent copycats from claiming something similar as theirs.

“I usually tell people a provisional patent application is only as valuable as what you put into it,” Miller says. “There are two extremes: On one hand, you could sketch your invention on a napkin, mail it to the patent office, and you would technically have a provisional application on file. On the other extreme, you could fully develop the application as if it were a non-provisional application where everything is complete.”

Consulting a Patent Lawyer for Strategy

Inventors are allowed to go through the patent process by themselves, but, says patent litigation attorney John D. Vandenberg of Klarquist Sparkman law firm, it’s rare that someone is successful without an attorney. “That one person would have to be someone who had gone through the process with an attorney 10 times before, and has an aptitude for it. Even then, most would not be successful without an attorney.”