Patents Protect Inventions 

If your invention  may be reverse engineered and adds value by belonging solely to your company or by being licensed to others, then you might need a patent portfolio. Book a 'working session' with Chris Paradies to determine if your invention is patent eligible and nonobvious over the state of the art. 

If your ideas are not patent eligible or it would take excessive experimentation to reverse engineer, then you might not choose to file a patent. Trade secret protection can protect you from misappropriation, if you take reasonable measures to keep your ideas or processes secret. Trade secrets offer the advantage of lower upfront costs, typically.  

If your ideas have little value to your company or others, then look elsewhere for IP protection. Don't waste money on utility patents! There may be other ways to protect your company's intangible property: design patents, trademarks, trade dress, and copyrights offer protection for other types of intangible property.

This type of patent is more like trade dress protection, because it only protects the "ornamentation" of a product your company sells. If you need this type of patent to protect your company's intangible property, then you likely need to consider robust trademark and copyright protections, also. Schedule a "working session" with Chris Paradies to formulate a plan to protect your company's designs.

This is what most people think about when they hear the word 'patent'. A utility patent can protect an invention. The invention must be disclosed in enough detail to allow any skilled artisan to make and use the invention. In exchange for disclosure, your company is granted a period of 20 or 21 years of exclusivity from your company's application filing date. If you need a utility patent, you usually need more than one, and you need it before you disclose or sell any product or service.

There is a third type of patent, but it only protects a new plant variety. Out of the hundreds of patents filed during more than two decades as a patent attorney, Chris Paradies has never filed a plant patent for a client. If you need one, Paradies law will reimburse the cost of your consultation and file your first application at cost, with no attorney's fee. I'm looking forward to hearing from you.

The America Invents Act of 2013 ushered in significant changes to the U.S. patent system. One of the most significant is changing our system from first to invent to first to file. Now, you lose your right to a patent if you fail to file your patent application first. That's one of the reasons we file provisionally, first. Also, a safe harbor provision is provided in the act for companies that don't file first but document use of inventions prior to the filing date of a third party patent that eventually issues. Use must be documented in enough detail to prove an affirmative defense. If you can prove that your company has been using the invention, even if you kept it a trade secret, you may continue making, using and selling products, even if those products infringe a later filed and issued patent.

To take advantage of the safe harbor built into the America Invents Act, your company needs to document its use in enough detail to prove earlier use of an invention that is patented subsequently by someone else. A provisional patent application may help you define an earlier date of invention and use for this purpose, even if your company chooses to keep its inventions secret and does pursue patent protection.

Why would a company choose to keep its inventions secret rather than patenting the invention? Keeping inventions as trade secrets often has a lower upfront cost. Obtaining and enforcing patents can be very expensive. Some innovators see patent infringement lawsuits as an unnecessary distraction and the costs of patenting inventions as a waste of resources. The America Invents Act has made obtaining and maintaining patent rights even more expensive and has done little to reduce the costs of enforcing patents. In fact, its made it easier for infringers to challenge some or all of the claims in a patent in an administrative proceeding that has helped shift the playing field to be more favorable towards infringers. So, some innovative companies prefer to protect their inventions as trade secrets, but this doesn't end the discussion.

Options are good. So, sometimes you might be inclined to protect an invention by keeping it a trade secret AND taking some steps to patent the invention. In this case, we almost always start by filing a provisional patent application. So, what are some reasons for filing a provisional patent application.

#1   The cost for filing a provisional application is a fraction of the cost for obtaining and enforcing a patent, but it preserves your future options for up to one year, can extend the term of a patent by a year, and offers the 'benefit' of not preparing and filing claims with your application. 

#2   The option to file a patent in the U.S. or through elsewhere in the world is valuable. Filing a provisional patent application that has a complete written description of your invention provides the earliest possible filing date and may be accomplished before making anything about your invention available to others.

#3   Investors often require patent filings before making an investment in a company. If you need capital, you may have no choice but to pursue patent protection. In this case, start with a provisional to keep costs down while securing the capital you need to grow your business and fund the patent process.

#4   You might become aware of competitors only later, after you start talking about your invention publicly. Having an earlier filing date for your provisional could give you an edge on your competition.

#5   In some industries, you may be required to build a patent portfolio, defensively, in order to reach cross licensing agreements in the future. Using provisional patent filings may offer an opportunity to license or sell your portfolio to a third party before you spend too much on the prosecution and maintenance of a patent portfolio by delaying the big costs of international patent filings. 

#6   During more than two decades serving startups as patent counsel, I've seen companies where the patent portfolio was the only valuable asset when the business decides to shut down. In one case, I worked with a client to sell a portfolio for seven figures, which cost just a fraction of that amount. Keeping costs down and delaying costs as long as possible is just maximizing the return on our patent investment.

#7   Patent applications may be licensed even while still pending, and you may retain a right to use the inventions within your company. Licensing can bring in cash when its needed most without giving away equity in your business to investors.

#8   Preparation and filing of a provisional application provides a date certain when everything in the provisional application was "constructively reduced to practice." It's inexpensive insurance against claims by a third party of infringement of a later filed patent.

The bottom line is keeping your options open. A provisional application doesn't publish unless relied upon in a nonprovisional application, it keeps your options open, and it provides additional proof when asserting affirmative defenses against patent infringement of a later filed patent, under the America Invents Act, without exposing your company's trade secrets unless you decide to pursue patent protection.