Filing a patent application is a crucial step in protecting your invention, but knowing both if and when to file is just as important. The timing of your application can determine whether you spend your money wisely or waste it, especially when you’re working with a limited budget as you prepare to launch your product.
Before filing, it’s essential to evaluate whether it’s a patent you need or some other type of intellectual property, assess your invention’s potential for commercial success, and ensure your invention meets the requirements for patentability. In this article, we’ll explore key factors to help you decide if and when to file your patent application.
Before moving forward, here are three key factors to consider:
1. Assess Whether a Trade Secret is an Option
Before filing for a patent, first determine if your idea can be better protected as a trade secret. Trade secrets, unlike patents, do not require public disclosure and can provide indefinite protection as long as the secrecy of the information is maintained.
An invention or idea is generally suitable for trade secret protection if the idea can’t be reverse-engineered. If it can be reverse-engineered, then trade secret protection is not the right type of intellectual property. You need to look to patents.
If your invention can be safeguarded by a trade secret, it means that your competitors can also keep their processes hidden. This makes it difficult for you to detect whether they are infringing on any patent you might secure, as they wouldn’t need to publicly reveal what they are doing. You’d have a hard time detecting whether others are infringing. As such, if your invention is more suitable for trade secret protection, it most likely isn’t suitable for patent protection.
If your idea is well-suited for trade secret protection, this could be a more cost-effective and powerful strategy, allowing you to maintain control of the invention or idea without the need to teach others how to benefit from your ideas. To get a patent, you would have to disclose the secret sauce or teach others how to make and use your invention.
2. Evaluate the Financial Potential
It’s important to consider the commercial viability of your idea. Ask yourself if your invention has the potential to generate significant revenue. A patent costs money, and filing for one only makes sense if you believe your invention will provide a competitive advantage and make you a significant amount of money.
3. Conduct a Thorough Novelty Search
Before filing, you should conduct a novelty search to ensure that your invention is unique and hasn’t been patented by someone else. The USPTO (United States Patent and Trademark Office) offers guidance on how to perform a patent search through its multi-step patent search strategy tutorial. This step-by-step approach helps you search existing patents and applications to assess whether your invention is novel.
Don’t spend money hiring a patent attorney to do one for you. You can do it yourself. After you complete your search, you might want to have a patent attorney confirm your search results. However, you shouldn’t have the patent attorney do one first because you might find something relevant and save yourself some money.
Timing Your Patent Application
When should you file your patent application? If you file it too soon, then you may have to redo it and spend more money. If you file it too late, then you may lose your patent protection.
It is strongly recommended to file your patent application immediately after you complete the 3 factors above but at the latest before you publicly disclose your invention through offering it for sale, publishing printed materials, or doing a public demonstration. These events include:
- Offering for Sale: For example, launching your product on platforms like Amazon or running a Kickstarter campaign.
- Printed Publication: Any public description of your invention, such as an Amazon listing or creating a website about your idea, qualifies as a printed publication.
- Public Demonstration: This includes showcasing your product at a trade show or presenting it to a large group of potential buyers. Even private showings to multiple parties could be considered a public demonstration in some cases.
While you are not required to file before these events, it is highly recommended. The reason is that the United States follows a first to file system. If someone else files a patent application for a similar invention before you do, they could secure the rights, even if you were the original inventor. This could create significant problems for you in obtaining a patent for your invention if you wait too long.
Sharing Your Idea with Manufacturers or Engineers
In most situations, you don’t need to file a patent application before sharing your idea with a manufacturer or engineer. This is often premature, as they might help develop or improve the product. These improvements can then be included in your patent application.
However, it’s essential to protect yourself when working with manufacturers or engineers by using an independent contractor’s agreement. This agreement ensures that any improvements they make will belong to you, not them. Without such an agreement, the engineer or manufacturer can claim ownership of their contributions to your idea.
Here are my basic NDA and other agreements that you might need. Use at your own discretion and at your own risk. If you want me to guide you through the process of using these forms and look them over to see if they fit your needs, please schedule a consultation with me.
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Answers to Your Basic Patent and Trademark Questions
This article is one article in my series titled Answers to Your Basic Patent and Trademark Questions which explains answers to the basic questions when you are seeking patent and trademark protection for your product. The articles relate to different basic issues you will encounter as you go through the patent and trademark process.
Patents
- Should I Patent My Idea?
- How to Create a Strong Patent?
- Should You File a Provisional or Nonprovisional Patent Application?
- Should you expedite your nonprovisional patent application?
- Strategies for Cost-Effective Foreign Patent Protection
- When Should You File a Patent Application?
Trademarks