When Should I Patent My Idea?
Preparing your invention for a patent filingBy Canaan Suitt, J.D. | Last updated on January 26, 2023
Use these links to jump to different sections:
- Factors to Consider in Whether to Patent Your Invention
- When Should You File the Patent Application?
- Questions for a Patent Lawyer
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.
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.
The most common types of patents are:
- Utility patents for new machines, processes, and compositions of matter (such as chemical formulas)
- Design patents for new exterior designs or ornamentations for inventions
There are several steps to obtain patent rights for your new invention, including:
- Ensure your invention meets the basic requirements for a patent (to be patentable, an invention must be useful, novel, and non-obvious)
- Determine what type of patent you need
- Conduct a patent search to ensure your invention hasn’t already been patented
- Submit a legal document called a patent application with the United States Patent and Trademark Office (USPTO) along with filing fees
- Answer questions about your invention from patent examiners
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 inventors 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.
Factors to Consider in Whether to Patent Your Invention
A critical question for inventors is whether they should patent their invention and make it public or keep it a trade secret, says Pheiffer.
Should You Patent Your Invention or Keep It a Trade Secret?
“Trade secrets are sort of the antithesis of patents,” he says. “Whereas patents disclose to the public what your invention is, trade secrets don’t disclose to the public what the invention is.”
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.”
However, Pheiffer says, “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. That is something that you can’t really reverse engineer. You can get something close to Coke, but no one has ever recreated Coca-Cola to exactly the way that Coca-Cola is.”
Like the recipe for Coca-Cola, “there are certain inventions that you can come up with that are difficult to reverse engineer,” he says. With inventions like this, “you can have a competitive advantage by holding it as a trade secret, and there is a benefit to not patenting.”
Nevertheless, “[probably] eight to nine times out of ten, a patent is usually the better approach for most inventors,” he says.
Why are patents generally better?
Because “once your product has come onto the market, someone can successfully reverse engineer it,” says Pheiffer.
Another possibility is two people coming up with similar ideas or products. If an inventor patents it before the other, “you really have trouble competing against them because they have a patent they can enforce against you,” he says.
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?
When Should You File the Patent Application?
The short answer to this question is that once you’ve decided to file for a patent, do it as quickly as possible.
“Because of the possibility that competitors might also 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,” says Pheiffer.
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,” he says.
As the first person to file, “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.” he says.
Even though there is pressure to be the first to file, an inventor must consider other factors that can delay filing. Notably, “you do have to wait until you’ve at least enabled your invention,” says Pheiffer.
For example, “You can’t just say, ‘I have this idea to solve cancer’—that’s a great idea, but to get a patent for curing cancer, you have to… be able to know the precise treatment to cure cancer.”
“If you’re not that far along in the process, and you just sort of have an idea but haven’t exactly figured out how you’re technically going to implement that idea, you can’t file the patent yet,” he says.
“So, there’s a bit of a delicate balance,” concludes Pheiffer. “You want to get to the patent office as quickly as you can, but you need to make sure that you provide enough details to the patent office that the invention works and someone can practice it.”
To make sure you hit the right balance, consult with a lawyer. A lawyer with experience in patent filings will be able to guide you through the process and advise you on when the invention is ready to file.
Questions for a Patent Lawyer
Meeting with a lawyer lets you get expert legal advice about your patent. And since most patent attorneys provide free initial consultations for potential clients, it won’t cost you anything.
To get the most out of a consultation, ask informed questions such as:
- What are your attorney’s fees and billing options?
- What patent costs can I expect in the process?
- How time-consuming is the patent process?
- Is my invention ready to file for a patent?
- What kind of patent should I get?
- Should I seek a provisional patent application first?
Once you have met with a lawyer and gotten your questions answered, you can begin an attorney-client relationship.
Look for a patent attorney in the Super Lawyers directory for legal help.
Additional Patents articles
Find top lawyers with confidence
The Super Lawyers patented selection process is peer influenced and research driven, selecting the top 5% of attorneys to the Super Lawyers lists each year. We know lawyers and make it easy to connect with them.Find a lawyer near you