Patents: Defined, Uses for Them & Deciding Whether to File

Previously, I discussed copyrights, trademarks, and trade dress, defining each type of intellectual property and how to protect and register them. The last topic in my IP Basics series covers patents. Today, I’ll discuss what a patent is, how they’re used, and how to decide whether to file for one. In my next post, I’ll discuss the 3 types of patents, requirements to get a patent, and the patent prosecution process.

Patents Defined

A patent is an exclusive right granted by the government to prevent others from making, using, selling, offering for sale, or importing the patented invention in the country, for a limited time. The patent system was created to promote the progress of science and useful arts. The United States Patent and Trademark Office reviews all patent applications for US coverage, and a patent granted in a particular country only provides protection in that country. Companies seeking patent protection in multiple countries often apply for patents through the Patent Cooperation Treaty or similar cross-border arrangement.

Because a patent only prevents others from exercising the exclusive rights above, it means that you, as a patent owner, may not necessarily have the right to do those things – making, using, selling, offering for sale, or importing. An instance of this happening is if you own a patent whose invention is used in a product, but may be prevented from selling that product because it embodies an invention patented by someone else.

What Makes Patents Valuable?

Patents are valuable because they are assets that are protected by law. Because of that, they have several uses for businesses or inventors looking to commercialize: 

• Offensive uses. Patents can be used to protect their investments in R&D in several ways; they allow suing for monetary compensation for patent infringement; obtaining a court injunction to prevent others from making, using, selling products that embody your patented invention; and licensing through patent license deals for additional revenue.
• Defensive uses. Patents can be used defensively as deterrence and as a block for competitors. A company with an extensive patent portfolio in a certain technology area can discourage competitors from entering the same space. A strong portfolio can also block competitors from patenting in the same technology space, and thus competing with you for market share.
• Building a valuable business. Because patents are assets with inherent value, they provide investor confidence, can boost employee morale and recruiting, and build customer confidence that the products they’re buying are valuable and protected. And, they can help build a company’s reputation as an innovator, and increase the valuation of a company at acquisition. Overall business value is one major reason I’ve advised innovative startups to consider creating a patent strategy and budgeting to build a strong portfolio.

Should I Patent An Invention? 

When I worked at SanDisk’s Patents Department, I spent much of my time reviewing invention disclosures and interviewing engineers with our in-house patent attorneys. From there, we decided whether an invention was suitable for filing a patent application, considering these below factors: 

• How innovative is this? As you’ll read in my next post on patentability considerations, an invention must be novel and non-obvious to be patentable. An invention that is only a little different from publicly available existing technology isn’t very innovative, and may not merit the time and money spent on filing a patent application. However, a groundbreaking invention could be well worth patenting, and it’s often worthwhile to write several patents covering various aspects of the invention or embodiments, as protection from competitors.
• Is there commercial value in this invention, and if so, how much? In determining commercial value, consider these 4 aspects: 
  • How likely is it that a competitor will want to commercialize this invention? Even if you, the patent owner, decide not to commercialize the invention, a competitor might. If a competitor is likely to want to commercialize it, it may be better to patent it yourself first.
  • How easy is it to detect infringement? If it’s apparent from looking at a product that it includes your invention, it’s relatively easy to detect and patenting it may make sense. However, if extensive reverse engineering of a competitor’s product is required to detect infringement, it’ll likely be expensive and may not be worthwhile to patent.
  • How long is the technology life cycle? The patent prosecution process (the application, USPTO examination, and grant process) usually takes 2-3 years. If your invention will become obsolete in 5 years or less, you won’t have many years of meaningful patent protection, plus will have spent considerable time and resources submitting the application. In that case, it may not make sense to patent it at all. 
  • Is the invention better kept as a trade secret? Some inventions are better kept as trade secrets because the company has a competitive edge in not disclosing every aspect of its products. For example, a manufacturing improvement for a hardware product that reduces costs may be better kept as a trade secret instead of patenting it and disclosing it to the world, particularly as detecting infringement may be difficult.

In deciding whether to patent your invention and how many patents you may be able to get from an invention and its various embodiments, it’s best to consult a patent attorney to understand how to balance your budget and company goals along with building a strong patent portfolio.

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