To Patent or not to Patent? That is the Question.

Only a small minority of the issued patents adequately protect their respective inventions or provide a return on investment to the inventors. Furthermore, the Patent Ofiice's new practice to publish the patent application 18 months after filing increases the risk of disclosing one's invention to the public if the application is later rejected. There are several reasons why patents fail to provide protection and return to the inventors.

In some cases, it is because the claims of the patent are drawn too narrowly. Competitors may then have ample room to circumvent the invention and produce knockoffs.

Inadequate analysis of areas where the claims may be circumvented can also result in weak patents. An inventor may have a great invention, but if the problem it addresses can be solved using a lower cost approach, the patent on this invention will not likely give the inventor a return on investment. For example, the Swiss manufacturers of mechanical watches spent a lot of money on perfecting their watches and their methods of manufacture. The digital watch technology circumvented the mechanical watches by providing a good solution but at a lower cost.

Two other major reasons that patents do not provide a return are 1) the invention is not marketable and 2) the patent is difficult to police. Often times an initial marketability analysis is not performed prior to filing a patent application only to later discover that there is no market for the product. If the invention includes process steps that can not be observed in the product, a competitor may infringe on it with impunity and the inventor will not know about it unless he or she spend a lot a resources to detect the infringement. Another example might be ingredients of a cooking or chemical recipe that can not be easily detected and therefore allow copycats to get away with infringement.

The rush to patent can stem from company dynamics in which all the parties involved have reasons to patent at all cost. The inventors want to glorify their name, management wants to beef up the patent portfolios to show off this asset to the board of directors (who don't know any better) and the patent attorneys… well they have never met a patent application they didn't like. So reality checks may be hard to come by in these situations often resulting in frivolous patents.

This last statement is not intended to cast patent attorneys in a bad light. The majority of patent attorneys are dedicatedprofessional who strive to do the best possible job for their clients. Most, however, are simply not set up to analyze or advise on patenting strategy issues as they relate to the company's competitive and business environment.

Yet there are many situations that certainly warrant the expense of patenting. If the invention seems to be marketable, has a low probability of rejection, fits well into the overall business objective, and provides a reasonable competitive edge it should by all means be patented. A thorough analysis will not necessarily guarantee patent viability. However, asking some tough questions in the beginning phases of the patenting process may save the inventor or inventive enterprise a lot of money.

As I previously pointed out, the Patent Office's new practice of publishing the patent application 18 months after filing presents an additional risk to the potential applicant. If the application is rejected, the contents of the application and any trade secrets it may contain become public knowledge. This makes it more imperative that the inventor weigh the consequences of filing against keeping his invention a trade secret.

The lack of patentability should not necessarily mean the end of the invention. If the invention can otherwise make money, it may, even without a patent, be able to build a big lead before any competitor catches up with it. Coca Cola for example never patented their formula but managed to keep it confidential for decades. Small improvements in processes or the addition of new features to a product, while obvious in the eyes of the Patent Office and therefore unpatentable, may nevertheless be money makers even without a patent.

Whether or not to apply for a patent is a decision an inventor needs to thoughtfully make early in the game. Waiting too long might jeopardize his/her rights to the invention. A search done at this stage may give the inventor a good feel for the chances of patenting the invention. If the decision is not to patent, the inventor may want to focus on making provisions to maintain confidentiality.