What is a patent?
A patent is a government grant, in the case of the U.S. the Patent and Trademark Office, to a limited monopoly right in an invention, plant, or ornamental design. Wait, what? Monopoly? Isn’t that a taboo in the good ol’ Red, White, and Blue? Well, yes, but that’s why the monopoly, or exclusivity, right is limited. Also, the patent system stems from a historically accepted compact in which an inventor gains exclusivity in exchange for teaching the world the means to practice her invention; effectively, it’s a tradeoff of temporary individual enrichment towards permanent societal advancement. In layman’s terms, you teach the world your secret sauce so others can make better versions one day, and in exchange for this goodwill you get the right to drag infringers in to federal court.
Probably the most important thing to understand about a patent is that it grants the right to exclude, as opposed to the right to practice. An overly simplistic way of thinking about this can be sourced from the game Settlers of Catan. In Catan, each player chooses a color suite of roads, settlements, and castles to construct on the playing board. The blue player cannot build a red road, as the red road pieces are exclusively limited to the red player; however, the red player cannot build a red road unless he meets certain conditions, both pre-defined by the game rules and dynamically defined by actions of the other players. (Unless you are the type of person to hold a semi-permanent grudge against someone for going all in on the quarry-4 tile and smoking everybody on Christmas Day, you shouldn’t play Catan, and thus, this red road / blue road dichotomy is all you ever need to know about this typically German export.) You may be awarded a patent, but that does not give you the right to practice your invention. There are legal and moral reasons that might dissuade you from practicing your invention, but there are also other intellectual property rights holders who may hold superior rights to yours. If you patented a glazed donut, you may need to first obtain permission in the form of a license from the non-glazed donut patent holder in order to sell, or even whip up one of your glazed donuts.
Why do I need a patent?
A patent (or portfolio of patents) may be important for securing market position in a particular technology, or for distinctive positioning in a research grant application. A patent may be absolutely critical, as in the case of a novel biopharmaceutical where a company expends billions of dollars in development costs, or it may be subservient to other intellectual property rights or market strategies in fast-growth technology or creative content industries. The need for a patent is dependent upon numerous market considerations, and should not be taken as as assumption.
How can I get a patent?
The process for obtaining a patent is explicitly spelled out in the 7,000 page Manual of Patent Examining Procedure. Spoiler alert: it’s not likely to displace Les Miserables on your bookshelf. The Patent and Trademark Office has actually made a commendable effort to educate the public with content and videos that fairly clearly summarize the patent prosecution process. The PTO’s local Patent and Trademark Resource Centers also feature a wealth of online content and exceptional in-person services to new inventors. In a nutshell, the process should begin with a comprehensive search of academic, market, and patent literature to identify prior art (essentially technology previously made public that could undermine efforts to secure patent exclusivity for a new invention). The crafting of a patent application based upon that search is iterative, requiring several back and forth conversations, emails, and/or meetings between inventor and attorney or agent to properly capture the essence of the invention, to explain it in a way that someone in the relevant technical field could read the patent and understand it well enough to practice the invention, and to construct a claim set that properly defines the circle of exclusivity for the invention which no external party can enter without permission.
Once an application is submitted, it’s time to wait. You can expect about 18 months before an application is first examined (during which time you may identify your invention if sold as patent-pending). Periodically, there are fee or technology based fast track programs that result if prioritized examination and issuance, if allowable. Generally, design patents are issued faster than utility patents.
Okay, now without saying “it depends,” how much is it gonna cost to get a patent?
Gene Quinn over at IP Watchdog has written an informative article on patent budgeting (FYI, this is not an ad free site). However, Gene does not address what may be the primary factor in cost: location. If you are securing a large firm in a large market, you can expect to pay more. For instance, in San Francisco you could expect to receive an invoice in which paralegals are billed at $300/hr, associates at $700/hr, and partners at well over $1,000/hr. Outside of the coastal cities, you should expect to pay considerably less.
The cost of a patent application is dictated by several factors, including universal contributors such as a six-fold increase in annual patenting activity over the last thirty years, as well as a tripling of Request for Continued Examination (RCE) application activity over the last ten years. Essentially, a new patent application must be carefully drafted to survive crowded innovation fields and to overcome rejection heavy examining art units. The extra time spent in preparation and prosecution by a patent attorney or agent often amounts to a greater investment by a patent inventor and/or owner.
About Kevin Christopher
Kevin is founder and principal of Rockridge®. Kevin’s practice areas include corporate, patent and trademark law. He is an entrepreneur, NIH RADx faculty member and Small Business Innovation Research (SBIR) reviewer. He mentors impactful and innovative founders through First Flight Venture Center, Oak Ridge National Lab Innovation Crossroads, and Tsai Center for Innovative Thinking at Yale. Kevin has been recognized as a SuperLawyer by Thomson Reuters and Top Business Leader by Conscious Company Magazine. Read more about Kevin, connect with him, and Calendly him.
RVL recommended reading by Kevin:
Plainspeak IP: IP Fundamentalist of Fundamentals
Plainspeak IP: Social Media Influencers
Grading Georgia’s Public Benefit Corporation Law
Improving Your Trademark EQ: How to Choose a RAD Trademark
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