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By Marshall Honeyman

A movement is brewing among workers, perhaps emboldened by the robust labor market and pandemic-induced introspection. Whatever the reason, many are deciding to pursue success on their own terms — as entrepreneurs — now.

For the innovators among them, there’s pressure to plant a flag in the ground quickly, guarding their creations with patents. In a perfect world, that’s a fantastic idea. But in the real world, it could be a costly mistake.

So how do you decide whether to file or not?

 

Check all the boxes

In the thrill of ingenuity, take a hard look at what you’ve got. That often means seeking early help from patent counsel. There’s no point in pursuing a patent if you can’t answer yes to all three of these questions:

1. Is this subject matter patentable?

This may be an easy one. Basically, almost anything could be patentable except for natural phenomena, products of nature and mathematical formulae. Even business methods and computer-related inventions can be eligible, though software patents require a closer look. 

2. Are there any legal hurdles to patenting?

Various laws that may be unfamiliar to entrepreneurs can get in the way of patents. For example, U.S. law prevents patents for inventions that have been up for sale or public use for more than a year before the patent application is filed. The best step here is to contact counsel quickly after creating an invention — particularly before any sort of public disclosure.

3. Is my idea truly new?

Often, patent counsel will engage the help of a professional searcher to determine what similar ideas may be out there. Then, you have a clear view of your competition and can determine whether the available patent coverage is robust enough to merit an application. The search also may uncover existing patents that could be potential land mines for you.

 

Show me the money

The competitive pressure to pursue a patent can make money seem like a nonissue. But a year later, you might think differently. 

Startups grow and evolve, sometimes taking entirely new directions, and a company may not even end up wanting to pursue the innovation it spent so much time and money patenting.

Filing just one patent can cost more than $10,000 — and the successive prosecution costs are significant. Be sure you know exactly how you will use a patent and how it will apply to your business objectives. Make sure having a patent truly would provide sufficient benefit, protection, and differentiation from competitors. For example, if competitors have traditional options that yield a similar result to your innovation at lower cost, you probably won’t want to file.

 

Look behind door No. 3

You may have more options than you realize, intellectual property-wise.

For patents, there’s an interim option that can be a valuable tool, particularly for startups. Filing a provisional patent costs much less and gives you a year to figure out whether you want to proceed. It yields patent-pending status, sort of holding your place in line, even if a competitor files for the same thing within that year.

While a traditional patent application includes many formal parts, a provisional patent can be presented informally (e.g. on a napkin with a cover sheet). The provisional patent must be made nonprovisional within a year, but that provides a sort of grace period to see how the year plays out and gather new information for the formal application. Often, the money spent on a provisional patent will mean a bit less is required for the formal one. 

Alternatively, you may want to maintain your invention as a trade secret. Some companies, such as icons Heinz and Coca-Cola, have been able to keep their formulas as closely guarded secrets for years. Confidentiality and nondisclosure agreements create trade secret rights for relatively low cost. Trade secrets last longer than the patent’s 20 years (so long as the secret is maintained), and your innovation won’t be published. 

On the flip side, in the midst of today’s Great Resignation, secrecy may be difficult to enforce. In the event of a leak, it can be costly to pursue litigation and difficult to prove who actually leaked the information. A patent, however, provides a clearly defined property right and makes someone liable for infringing on your patent, even if innocently.

Other elements of IP protection also may be worth a look. Attorneys can offer advice about copyrights for artistic elements, trade dress rights for unique packaging, or effective blends of IP protections for your specific innovation. 

Obviously, protecting intellectual property is vital. But don’t cave to the pressure to rush into pursuing a patent. Take a beat to evaluate prudent steps before burning through valuable time and money.

Marshall Honeyman is a shareholder at Erise. He can be reached at marshall.honeyman@eriseip.com.