As a patent lawyer with over 20 years of experience, I’ve had thousands of conversations with solo inventors and startups, just like you, who are just starting their journey with a new product or invention.
They often face critical decisions about whether to pursue patents and trademarks. Their main goal is to avoid wasting money and determine whether their use of funds is a good use or bad one.
Based on these discussions, I’ve written a series of articles to help inventors, like you, navigate these initial decisions wisely. This guide highlights the key considerations every inventor should make, all of which are based on my experience.
The first question inventors often ask is, “Should I get a patent?” A patent is a valuable tool that you can use to stop the competition, but it’s not always the right choice. For example, trade secret protection may be better for your invention, than a patent. The key factor in this decision is whether your invention can be easily reverse engineered. If yes, file the patent. If no, consider trade secret protection.
To help inventors understand when it makes sense to pursue a patent, I wrote an article that dives into this issue: Should I Patent My Idea? Here’s What You Need to Know.
Once inventors decide to invest in a patent, their next worry is often whether the patent will be strong enough to prevent competitors from easily bypassing it. After all, a weak patent isn’t worth the paper that it’s printed on. Or, shall I say that it isn’t worth the cost to store the patent grant on your computer.
Put simply, to get strong patent protection, you want to build a portfolio of patents, and not just secure one patent. It’s much easier to get around one patent, it’s significantly more difficult to get around a portfolio of patents. The trick here is to build the patent portfolio cost-efficiently while you have so many other expenses to launch your product.
In my article, How to Create a Strong Patent: A Comprehensive Guide, I explain strategies to develop a robust patent that’s worth the money cost efficiently, detailing steps you can take to strengthen your patent and maximize its value.
Another common question is whether to file a provisional or nonprovisional patent application. Many inventors are drawn to the provisional application because it is often advertised as a cheap option, but this isn’t necessarily true. When done right, the provisional is about the same cost as a full up nonprovisional application. Other patent attorneys are merely trying to get you in the door with the cheap price. After a lot of discussions with startups, the primary benefit of the provisional is that it can delay downstream costs for an additional year compared to the nonprovisional.
My article, Should You File a Provisional or Nonprovisional Patent Application?, outlines the pros and cons of each option, and can help you make a more informed decision.
Let’s say that you’ve decided to file a nonprovisional application, the next decision is whether you should expedite the examination of the nonprovisional application.
Some inventors consider expediting their nonprovisional patent application to get their patent faster, thinking it might be beneficial to their business strategy. If securing the patent sooner than later has a beneficial impact on your business, then do it. In my experience, getting a patent sooner than later doesn’t make you more money. It looks nice on paper but doesn’t do much to help your bottom line. As such, I typically recommend that you delay getting a granted patent so that you can delay examination costs. If you want to expedite the examination process, then it’s generally a good idea to have an articulatable reason to justify the expense. Otherwise, I tend to recommend against it.
Be aware that expediting also increases costs because you have to spend money on the examination.
Expediting can be useful in certain situations, such as when securing investment, but it’s not always necessary, especially at the beginning when the value of your business is more based on the revenue or profit it generates.
By not expediting, you delay a lot of the examination expenses which you could divert to marketing and manufacturing.
My article, Should You Expedite Your Nonprovisional Patent Application?, provides a detailed look at the pros and cons of expediting, helping you decide whether it’s worth the additional expense.
For inventors considering international markets, protecting their inventions abroad can be a critical but costly decision. I generally don’t recommend foreign patent protection unless a client can articulate a simple reason for spending the money. Otherwise, I tend to recommend against spending money on foreign patent protection.
If there is a reason for spending money on foreign patent protection, you should employ strategies to reduce costs. Within the past 20 years or so, the patent offices around the world have come up with ways to reduce the overall costs, especially with the Patent Prosecution Highway program with the patent offices of other foreign countries.
My article on Strategies for Cost-Effective Foreign Patent Protection provides a strategy for helping you reduce your costs.
Timing is crucial when it comes to filing a patent application. Filing too early before your idea is fully developed can lead to extra expenses in the preparation of the patent application. Filing too late can lead to the loss of patent rights.
My article, When Should You File a Patent Application?, discusses when it makes the most sense to hire a patent attorney and move forward with your application.
While patents protect your invention, trademarks protect your brand identity. One of the first decisions inventors face is whether to register the name of their products as a trademark with the USPTO.
Failing to secure trademark protection can lead to costly rebranding efforts if it turns out you’re infringing on someone else’s senior trademark rights.
I’ve outlined key reasons to register your trademark in my article, Four Key Reasons to Register Your Trademark, emphasizing the importance of clearing your mark and securing your brand’s identity for long-term success.
Filing a trademark application can be complex, and many inventors wonder if they can handle it themselves or if they need professional help.
In my experience, many can do it themselves. You probably won’t be able to do it better than me. However, it is possible. It’s different with patents where one mistake would ruin your patent protection. Don’t risk it with patents. However, with trademarks, there are so many good resources that teach you how to file them.
In my article, How to Prepare and File a Trademark Application, I provide practical tips for those looking to file on their own. If you can’t do it on your own or don’t want to risk it, you can always just give me a call.
Just like with patents, the timing of the filing of your trademark application is critical. Filing at the wrong time can lead to wasted efforts and additional costs.
My article, When Should You File a Trademark Application?, helps you understand the best time to protect their brand without unnecessary expenses.
Navigating the initial decisions of patenting and trademarking can be daunting, but making informed choices can save you time and money. If you have questions or need guidance, I’m here to help. With decades of experience advising inventors, I can provide the insights you need to protect your invention and brand effectively.