Vinay Tannan, a registered U.S. patent agent and innovation strategy consultant with Taan Consulting who works with clients ranging from startups to Fortune 500 companies, answers those questions and more for OPEN Forum.
What will a patent do for me and my invention?
“Broadly speaking, a patent is an agreement between you and the government,” Tannan says. “In exchange for disclosing the details of your invention to the public, the government grants you a limited period of time to exclude others from practicing that invention, which protects your invention or your inventive idea.”
How important is it to protect my invention?
“Patents are an important contributor to intellectual growth and economic development, because they play a key role in supporting businesses bringing new products and services to the marketplace,” Tannan explains. “Imagine a medical device company seeking to bring a new product to market, which may require thousands or even millions of dollars in investment. How can they take that risk knowing a competing company could make and sell the exact same product? Patents enable you to justify the investment with some assurance that you’ll have an exclusive period of time to monetize the product.”
Does my patent apply worldwide, and will it last long enough for me to see financial gains from my invention?
“You can only exclude others from using your invention and selling the resulting products in the U.S.,” Tannan says, noting that patent protection obtained in the U.S. applies only to within the country. “If you only have a U.S. patent, you can’t exclude the product from being made overseas, but you can prevent it from being imported and sold in the U.S.” If you wish to patent your product in other countries, that must be done on a country-by-country basis, Tannan adds.
“Patents in the United States last either 14 or 20 years, depending on what is being patented,” he notes.
How can I tell if my product or idea is patentable?
“In order to qualify for a patent, an invention must be conceived and reduced to practice; then meet certain criteria as dictated by law,” Tannan says. “In brief, the invention must be useful, novel and non-obvious to a person skilled in the art. Inventions of all sorts from various industries might be eligible for patent coverage. It’s best to consult a legal expert such as a patent agent or attorney regarding patentability.”
Are there any drawbacks to acquiring a patent?
“A notable drawback to patents, particularly for startups and small businesses, is the fact that they require a sizable investment of money in filing fees and legal expertise,” Tannan says. “For example, taking an application from filing through prosecution [the latter refers to negotiating the patent] and eventually to issuance can easily run a bill in the six figures.”
Is it worth the expense?
“Patents are by no means necessary to have a successful product, but don’t ignore them as a value-add or from a defensive standpoint,” Tannan says. “The return on investment could be tremendous. A business could dramatically increase its value with a robust patent portfolio, given the asset value and the competitive advantage it may provide. To protect their investment and get the best outcome, small-business owners should take great care in having a well thought out patent strategy to ensure that they are investing wisely.”
What steps would I take to make sure it’s the right choice for my business?
If you want to explore patent protection for an invention, typically the first step is to evaluate the invention for patentability, Tannan advises. “A keyword search of Google Patents, Lens or another one of the many free online patent databases can shed light on what prior art already exists. Reviewing prior art is no trivial exercise, however, so consider speaking to a legal expert who can provide you with a more accurate opinion,” he says. “Any past public disclosure, such as a scientific publication, PowerPoint presentation, webpage or product flyer can be used by a patent examiner as prior art that would bar you from obtaining a patent.”
The second step in evaluating your invention involves its commercial viability. “A patent isn’t worth the paper it’s printed on if the claimed invention isn’t desirable in the marketplace,” Tannan says. “This type of evaluation might be easy for an established business that understands its industry well, but it can be a significant challenge for startups or individual entrepreneurs. I advise researching the market landscape for existing products and determining if there would be work-arounds to your invention that competitors could use. Also be sure to explore the broadest possible applicability for your invention before filing, as it may have other uses outside of your original product idea or industry.”
If I decide a patent is right for my invention, what steps should I take next?
“The steps to acquiring a patent can vary, but typically the process involves filing a provisional patent application with the United States Patent and Trademark Office [USPTO] and within 12 months converting it to a non-provisional patent application, which usually comes in the form of a patent cooperation treaty [PCT] application,” Tannan says. “At that point, you generally have 18 months to decide in which countries to pursue patent rights. Or you can skip this step and file directly in the countries of choice.”
Next, you argue the merits of your invention in a back-and-forth with patent examiners, which is known as prosecution, Tannan explains. When this is complete, you receive allowances of certain claims that you agree to, which results in issuance of the patent. “The claims you agree to constitute what you can exclude others from practicing with your patent,” Tannan says.
Anything else I should keep in mind to ensure the patent process goes as smoothly as possible?
“Avoid preparing applications on your own,” Tannan warns. “A poorly crafted application that contains an insufficient description of your invention or too narrow of language could result in a weak patent that allows for loopholes and provides insufficient protections. I advise protecting your investment by seeking legal assistance to facilitate the patent process.”
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This article was originally published on January 28, 2015.
