Do I need a patent for my invention right now?

質問

I am a qualified electrician and have created a new device for energy efficiency in the home. I have not shared the idea with anyone yet but it is working well in our home and I might be interested in starting a company later on. I don't have a lot of money to spend right now on lawyers so is there any value in getting a patent now if my technology is 'secret'? I don't want to spend money on a patent that will be half-expired by the time I get round to sharing the idea.

回答: 2 公開 & 1 非公開

Jeff formal photo med
弁理士

Hi,

There are cost-effective strategies, including the preparation and filing of a Provisional Patent Application, to preserve your priority date while avoiding or delaying some of the costs of full patent prosecution. You may also have some level of protection under trade secret law, depending upon the specific facts and circumstances of your matter.

I would be happy to assist you further.

Regards,
Jeff Schell, Lead Counsel, Rocky Mountain Patent

Img 1964 copy
エンジニア

A utility patent gives you 20 years protection from the date of filing -- do you really expect to take 10 more years to share the idea (I assume by that you mean commercializing it)?

A provisional patent gives you 12 months to later file a utility patent application. It is relatively low cost to file -- practitioner costs to draft it and only filing fees, for which you probably are a micro-entity and pay only 1/4 of those fees.

But you need to be also careful about falling under a public use bar. While you are using it in your home, and to some degree have expectations of secrecy, if any visitor to your home can observe the invention -- worse, if you talk about it with them! -- it could be barred as public use. The AIA public use laws have broadened what constitutes making the invention "available to the public", so you need great care to assure the invention is not public use, even in your own home, if you want to preserve patentability. A provisional patent would accomplish that with the lowest up front cost.

On the other hand, what value do you expect the patent to provide? If you just don't want to have someone else patent it and prevent you from using it yourself, then you just need to create a public disclosure of your invention (e.g., a short article in Popular Mechanics, show it at any trade show -- even on a poster -- talk about it with a potential manufacturer and document that, etc).

The value of a patent is to either exclude others from making it, or to license it to others and derive licensing revenue for the enforceable term of the patent. Exclusion means litigating infringement, or at least threatening that, and a lot of effort to demonstrate that the patent has been truly infringed. Usually, this is not the best value of a patent.

Licensing or selling the patent is often where the prime value of a patent lies. That still requires the cost of filing a patent application, but a provisional at a relatively low cost (maybe just a few hundred to one or two thousand dollars, depending on costs to draft the application) and buys you a year to get investors or manufacturers on board before filing the full utility patent app. Hopefully, those utility app costs then can be paid for in the investment or commercialization funding.
For the small inventor with limited funds (both to file/prosecute AND litigate! the patent) filing a provisional or even a utility patent application and then selling or licensing that (it is "property" you can sell, once filed) to someone with the funds to commercialize it may be your best use of the invention overall.

Net is it all depends on what you expect the patent to gain you -- exclusive use (with litigation to back it up), sale of the patent or licensing fees, or just freedom of action against someone else patenting the invention so that you can't make it (which does not require a patent, just public disclosure prior to any other patent filing date to achieve your freedom to make it)?

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