Private Business Counsel

After investing in research and development, companies often debate when and how to file a patent application on their new technology. Although every company and technology is unique, these are common guidelines to help companies decide what is best in their situation.

Q: How do you know when to patent your technology?

A: If a company or individual has an idea that they feel is groundbreaking or a key improvement on a technology, it’s an easy decision to file a patent application. If the technology is important to your business or intellectual property is important to your business model, you should consider investigating the likelihood of success in patenting and the value of such patent if successful. Narrower patents (e.g. patents covering minor improvements to technology or niche technology areas) may also be useful tools for companies needing specific protection over their product. A cost / benefit analysis is useful to determine when is best to file such a patent application.

Q: How do you and your management team come to a consensus about filing a patent application?

A: I always recommend that the decision makers in a company come together and understand the costs of obtaining a patent and the risks of ignoring intellectual property. If there are doubts, a prior art search is often recommended to give a better idea of the chances of success. A prior art search is a search for any evidence that an invention already exists. It includes a search of the patent database and other resources for the existence of the same or similar technology.

Q: What are the costs involved and how long is the process to obtain a patent?

A: The costs and length of the process are heavily dependent on the technology area where patent protection is being sought. In heavily patented technology areas, the backlog in the U.S. Patent and Trademark Office can lead to years of pendency prior to receiving even a first substantive communication. Even in less crowded areas inventors should expect a multi-year process. There are many upfront and continuing costs to securing a patent. Factors include the technology area, the sophistication of the inventor and the time it will take to write and prosecute the patent application.

Q: How does it benefit a company?

A: Patents benefit companies by giving them an exclusive right to make, use or sell a patented invention until the patent expires. This is a powerful tool to keep competitors from using your technology. Patents are also valuable tools for raising money. Venture capital funds and other institutional investors often require patents for investment.

Q: What are some tips if your competitors attempt to copy your technology and it has been patented?

A: It’s important to understand that patent infringement litigation is expensive and uncertain. Therefore, it is a difficult road to prove that your technology is being copied. Often times, licensing your patent to competitors is a more appealing solution. A patent license can result in your company getting a royalty (i.e., a sum of money) each time your competitor sells an infringing product.