Question
We are considering a patent application to protect our prototype invention in the field of personal health monitoring. However, the procedure of actually getting a patent does not only seem quite costly, but also very lengthy. What is the average time that it takes from application to patent?
In any case, we would like to know how to protect our invention during the time before the patent is granted. What is the best strategy and what other IP rights can help us?
We are located in Sunnyvale, CA.
Answers: 3 public & 0 private
I have to respectfully take issue with one point that Jing made - while your patent application is pending, you do NOT necessarily have the right to commercialize it, and even after you obtain your patent, you do not necessarily have the right to commercialize is because a patent does not give any rights to make, sell, or use your own patented invention - a patent gives you the right to prevent OTHERS from making using, or selling your patented invention, so whether your application is pending, or even after your patent has issued, you have to be careful that manufacturing or selling your patented invention does not infringe someone else's patent. Also, note further that when your patent application is published, it effectively puts the world on notice that you may obtain a patent in the near future for the claimed invention, and therefore, if there are infringers, they will likely be held liable for severe penalties because they were already aware of your potential patent and chose to proceed to effectively infringe anyway.
Not much to add to Steven's and Jing's excellent points, but one thing. It is key to understand that during the filing/examination stage (i.e. before a patent having examined claims actually issues), you really can't stop anyone else from competing/copying. But that should not stop you from considering patenting, for once it issues, you can stop others from selling/importing/USING your invention in the US (that latter one, if your invention has corporate users, is nice :-).
Please consider at least a provisional filing, for otherwise any disclosure severely curtails your rights to go back and get any sort of IP. Best of luck,
Luis
The time taken from filing a patent application to patent grant typically ranges from 4-6 years. However, from a commercialization perspective, you should note that you do not have to obtain a granted patent before you can sell/commercialise your invention. Commercialisation can occur after you file a patent application for your invention. As such, the length of time taken to obtain a granted patent should not impact on your ability to commercialise your invention. A grant patent simply provides you enforceable rights to stop others from exploiting your invention. As such, if you discover someone exploiting your invention before patent grant, you could take measures to expedite patent grant in order to take action against the alleged infringer. In most jurisdictions, you may be able to claim damages back-dated to the date the patent application is first published.
With regard to your question about different forms of IP protection, you should consider trade marks (for protecting your brand), design patents/registrations (for protecting the visual appearance of your invention) and patents (for protecting the functionality of your invention).
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