WSID #1: To patent or not to patent

This article is part of the “What Should I Do (WSID)?” series where I discuss various scenarios involving intellectual property and business. Topic suggestions are always welcome.


“I have an innovative idea! What should I do?”

That moment can strike at any time—BOOM! You have the idea for the greatest product since sliced bread. Now what? Even for a seasoned tech entrepreneur, this question may not have a straightforward answer.

An innovative idea?

The photo at the top is an original concept for an instrument, as prototyped by my 10-year old, based on a tissue box as the resonator box, two rubber bands, and a slider bar (a repurposed quarter-round) for changing pitch. Is this a good candidate for patent protection?

Silly example aside, should you file for patent protection for your innovative idea? The patent prosecution process is not for the faint of heart. It can be expensive and time consuming, as even the simplest technologies can cost over $10,000 and 3 to 5 years to obtain an issued patent. Most of all, to be done effectively and efficiently, patent prosecution requires strong coordination between your business, technology, and legal staff and service providers—this coordination is not always easy to implement.

Still, we all know intellectual property (IP) issues can greatly affect the valuation of a technology company (here is a recent and excellent summary article on this issue by John Fleming of Banner & Witcoff).

Let’s look at some of the key issues we discuss when my clients come to me with this question of “to patent, or not to patent.” Here are some of the factors to consider when deciding whether or not to pursue patent protection for your innovative idea.

I. The Plan: What are you going to do with your innovative idea?

  1. If you want to build a product based on your innovative idea, then who are your competitors? Are the competing products patent protected? Are your competition known to be litigious? Have you previously built and sold similar products?
  2. If you want to use your innovative idea to add value to your company’s patent portfolio, then what other patents exist around your innovative idea? How many of these surrounding patents do you own? Is this addition to your patent portfolio in alignment with your business goals? Do you already have trade secrets related to your new idea (There are strategic reasons for keeping an innovation a trade secret rather than filing for a patent, and you should carefully consider this question)?
  3. If you want to try to license your innovative idea to other companies, then what products are these other companies already producing? Are these existing products patent protected? Can you demonstrate that the incorporation of your innovative idea into the existing products would create value for these other companies? Do these other companies have a history of in-licensing technology?

II. The Timeline: What’s your time horizon?

  1. If you are in a business with a short product rev cycle, such as software or apps, talk to an IP professional about ways to protect your innovative ideas in much more quickly than going through patent prosecution.
  2. If you are in a technology area with longer time scales for proof-of-concept and product design validation, then having patent protection may give you a sustainable business advantage over your competitors. In other words, by the time you are ready to launch your new product, you may be close to having an issued patent in hand.
  3. If you are looking to quickly boost your company’s valuation (see the above referenced article), then having a number of well-crafted, pending patent applications may help. The emphasis should be on “well-crafted”—a bunch of slap-dash provisional patents will not do here, especially if you’re headed into a deep-dive due diligence process (Russ Krajec recently talked about this issue in this article).

III. The Risk: What’s your tolerance for uncertainty?

  1. Have you previously applied for patent protection around other ideas?
  2. Do you have an established relationship with a patent attorney or patent agent who is experienced in your technology area as well as knowledgeable about the current case law related to patents?
  3. Have you previously created product based on your ideas? Have you ever licensed a technology to another company? Or do you know reliable professionals who can help you with these activities?

Discussions about patent protection tend to raise more questions than can be answered with a simple yes/no answer. Be sure to talk with an experienced patent professional (whether attorney or agent) who can take into consideration all of your business, technical, and legal goals in order to help you make the best decisions for you.

So, beyond deciding whether or not to patent your innovative idea, what else should you consider as you contemplate what to do with your innovative idea? I’ll tackle the additional topics of how to discuss your innovative idea with other people and how to decide on your end game in additional articles in this WSID series dedicated to the question of “What Should I Do?” in different IP-related scenarios.


About the Author and Disclaimer: Yoriko Morita has worked with innovators in a variety of contexts, in a law firm working for inventors, as in-house IP director, and as a licensing professional. She currently helps clients with such IP-related questions, as well as developing integrated business/technology/patent strategies, through her company, Patents Integrated. The contents of this article are intended to be informational only, not legal advice. The reading of this article does not establish an agent-client privilege between you and Patents Integrated, and Patents Integrated is not responsible for any damages arising from your use of the information in this article under any circumstance. Your use of the information in this article is at your own risk, and you should seek the advice of a licensed legal professional regarding your own specific situation.