Do You Need a Patent? 4 Questions to Ask Yourself

Do You Need a Patent? 4 Questions to Ask Yourself

by Joe Runge, Esq., November 2016

You watch as your friend's eyes dart across the screen as she slowly goes through your investor deck. Every nod boosts your confidence, while every furrowed brow sinks your heart. Halfway through the deck, she stops, looks you straight in the eye, and asks, "Don't you think you need to file a patent before you start pitching?"

You hesitate, unsure of your answer. Patents are expensive and a lot of work. At the same time, they are highly valuable—a prized form of intellectual property. It is not a decision you want to take lightly. Do you need a patent?

To help you out, here are four questions you can ask yourself to reach the right answer.

1. Is this the sort of thing that I can patent?

There are some things that you cannot patent: You cannot patent a bean (unless you genetically engineer it), electro-magnetism, or a mathematical formula. You cannot patent an idea. What is and what is not patentable is an evolving area of law and is constantly being challenged by the development of new technology.

Whether or not an invention can be patented is determined by law and breaks down into four categories:

  • Process. A patentable process combines new steps together in order to produce a particular result. A process patent can describe a way of manufacturing a product, a process to use a computer to operate a telecommunication system, or even a new business method.
  • Machine. A patentable machine describes a combination of components into a single operable whole. A novel machine contains a novel combination of parts or uses parts of a totally different design to produce a new kind of machine.
  • Manufacture. Manufactures are produced materials—think sheetrock in a house or asphalt for pavement. Manufactures are often claimed like recipes—what you get when you combine new materials in new ratios and process the combination in different ways.
  • Composition of Matter . If a manufacture is a produced material, then a composition of matter is an entirely new material. A novel chemical, like a drug or a chemical additive, is an archetypal composition of matter.

It is important to note that the statute defines a patentable invention as any one of the four categories or "a useful improvement thereof." If your invention adds one new part to a machine, one new step to the process, or one new ingredient to the manufacture, then it is an improvement. Patenting improvements are encouraged under current law.

2. Do I need a patent, and will it help my business?

If the answer to question number one is yes, then a patent is possible. That doesn't mean a patent is a good idea for your business. Patents are property; you can exclude trespassers from your property. If you are going to file a patent, is it the kind of property your business needs?

For example, your invention is a machine with a particular configuration of parts. If your competitors start producing and selling the same machine, then it would be straightforward to determine if your competitor is infringing your patent. Buy the machine, take it apart, and look at the components. If they're the same as your patent, then you have a trespasser: time to kick them off your property.

If, however, your patent is a method of manufacturing, proving infringement may be more complicated. If you need to gain access to your competitor's factory, watch them produce their goods, and then determine if your competitor is infringing your patent, then your patent is much more difficult to enforce. Patent rights that are difficult to enforce tend to be less valuable.

Your patent has to add value to your business. Make sure that you are acquiring valuable property that you can evict trespassers from.

3. Is my invention novel enough to get patent protection?

If your invention is the kind of thing that you can patent and fits into your business plan, then the next step is to find out if your invention is actually novel. The United States Patent and Trademark Office (USPTO) requires all new patents to be novel and non-obvious. They will search through published patent applications and issued patents to find all the parts of your invention. Before you apply for a patent, do your own patent search.

Performing a patent search has never been easier. Free online tools help you find out what the patent examiners will find when you submit your patent application. Search often and use your results to guide your inventive process. If someone has already invented your invention, read their patent very closely. Maybe there is a way you can improve their invention or go in a different direction to find a new invention. Innovation is iterative and, by using the patent literature as a guide, you may find that next great invention even faster.

4. What's my budget and when am I going to spend it?

You have a patentable invention, that fits your business model, and is novel, so the next step is filing a patent. It helps to know how much you want to spend and when you'll have to spend it.

A patent application is a commitment, often taking years to go from application to enforceable claims. Moreover, once a patent is awarded, the inventor must pay maintenance fees in order to maintain it.

One way to manage how much and when you'll pay is to file a provisional patent application. A provisional patent lacks many of the formalities of a full patent application, which makes it substantially less expensive. The provisional filing gives you 12 months to decide if you want to file a full patent application—or if you want to walk away.

The provisional patent application gives you the benefit of an earlier filing date. If you are uncertain if you need a patent application, but may know better in 12 months, a provisional patent application can be the way to go.

LegalZoom can help you file a patent online. Whether you want to file a provisional patent application to give your more time to decide if you want file a full patent application or you're ready to file a design patent or utility patent, we can help.