One of the most common questions I get from inventors is “do I need a patent to sell my product?” The short answer is “no”. Patents are often incorrectly seen as permits from the government allowing businesses to market their products. This common misconception pervades many people’s understanding of patent law. Unfortunately, patent rights are often counterintuitive to people unfamiliar with patent law. In truth, patent law concepts are often misunderstood by most non-IP attorneys. Let’s start at the beginning. What is a patent? A patent is “the right to exclude others from making, using, offering for sale, or selling” an invention in the United States or importing the invention into the United States. A patent does notgrant the inventor the right to make, use or sell the invention. What a patent actually does is provide a limited period to exclude others from making, using or selling the claimed invention (or importing the invention into the U.S.). In return the public receives the addition of the invention into the store of knowledge upon which other inventors can learn and build. Finally, after the expiration of the patent, the use of the invention passes into the public domain. This is the trade-off that patent law is based on, a limited period to exclude in exchange for the contribution of knowledge to the public. To summarize, there is no requirement to have a patent to sell a product, and a patent does not grant you a right from the government to sell. Then why do people obtain patents? One of many answers is that if the patent is drafted and prosecuted properly they are invaluable business assets. What must always be considered when obtaining a patent is that it is a business decision in which the inventor must weigh the costs and benefits. What are some of the costs of a patent? The initial costs include USPTO filing fees, as well as attorney drafting, filing and prosecution costs. These costs can be substantial for inventors, and unfortunately come during the formative stages of business startup when resources are at their lowest. While inventors can file and prosecute their applications pro se, the downside of not properly drafting and claiming your invention greatly outweigh any savings from foregoing an experienced patent attorney. Specifically, an improperly claimed invention can result in an essentially useless patent no matter how innovate and groundbreaking the invention. Litigation costs are another patent expense. While litigation costs vastly outweigh application costs, litigation generally occurs later in the business life cycle. In contrast, patent application costs must be undertaken either before or shortly after marketing of your product or patent rights can be permanently forfeited. What are the benefits of a patent? Patent benefits can be divided between swords and shields. Offensively patents can drive funding by demonstrating to investors that you have a serious business plan backed by intellectual property protections. Patents can also generate income through licensing fees or outright sales. Additionally, patents can be asserted offensively in litigation to seek damages or compulsory licenses. Defensively patents can exclude competitors from benefiting from your invention. Primarily this is accomplished by the publication of the patent, which puts others on notice that you have claimed rights to your invention. If necessary the patent can then be asserted in litigation to stop others from profiting from your invention either by an injunction, license, royalty or combinations thereof. At the cost of sounding repetitive, obtaining a patent is a business decision with costs and benefits. If you do not foresee profits exceeding the cost of the patent, it’s probably not worth pursuing. Conversely, if you are interested in licensing your invention a patent is practically a necessity. If you are looking to manufacture and sell your product yourself it will become a cost-benefit analysis. How much will the patent cost to obtain? How much market share will you lose if others can copy your invention? How much will it cost to enforce your patent either through cease and desist letters or litigation? Will the notice function of the patent publication inhibit potential infringers? Can you protect your invention through the use of trade secrets (topic for another day)? All of these questions should be considered and weighed when deciding whether or not you should seek to patent your invention. Carefully and deliberately consider all of your options, and preferably consult a registered patent attorney to get a better understanding of how a patent can enhance your business. Comments are closed.
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Should I Copyright the Trademark in My Patent?
AuthorNick Chiara is an IP attorney with over twenty years of patent and trademark experience. Archives
July 2022
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