Although getting a patent may seem like a great idea, keep in mind that obtaining one is a long and tedious process. First, you'll have to determine whether your technology or business method is even eligible for a patent. According to a PTO statute, inventions-business processes or otherwise-have to be new, useful and non-obvious.
The best way to determine whether your invention meets those requirements is to contact a registered patent attorney, who can, among other things, help you determine whether someone else has already patented your invention or obtained a federal registration for a trademark on goods or services similar to what you've developed.
Your lawyers should check prior art-which includes information such as patents, inventions or scholarly articles that show the same or similar inventions-before filing. If there are no other inventions just like yours, you'll be able to apply for a patent through the PTO. Have your lawyer write the patent application to avoid mistakes. Along with your application, you'll have to submit all instances of prior art of which you're aware describing the invention, which can be used to invalidate all or part of an infringement claim. Above all, remember that applying for a patent is an ambitious undertaking that requires knowledge of patent law, agency regulations and examiner procedures as well as a draftsperson's steady hand.
If you need help finding a patent attorney, try the PTO Web site. The agency maintains a roster of attorneys and patent agents who are registered to work with the patent office. Only attorneys or agents who are registered to practice before the office are permitted to file and prosecute patent applications on behalf of others. This roster includes listings by geographical area.
After filing, the waiting game begins. Experts say the average time to receive approval on a patent generally ranges from two to three years. Once a patent wins approval, however, the work is far from done. You must police the market to make sure no one infringes on your patent. As part of their licensing programs, many companies with patented business processes or technologies hire lawyers or use an in-house staff employee to contact and seek payment from any companies that may be infringing on their patents.
"It takes a lot of time, effort and expertise to police your patent and get royalties from infringers," says Lynn Tellefsen, vice president of marketing for CorporateIntelligence.com. Now that dotcoms are actively monitoring their patents for possible infringements, the lawsuits are mounting. Last year, for example, a federal judge ordered barnesandnoble.com to stop using Amazon.com's patented One-Click technology.
To Do List
Don't even think about filing for a patent until you do the following:
2. File a priority application. And file it as soon as you can, Tellefsen says. The whole process can take a long time, but if you get started as soon as possible, you'll be able to get a jump on any competitors who may file for a similar patent.
3. Train your attorney to think like a businessperson. Explain to your attorney why you're different and what the problem is that you're solving. "If you don't give them the business insight with strategy, they'll tend to try to patent what's cool, not what's important," warns Kevin G. Rivette, co-author of Rembrandts in the Attic: Unlocking the Hidden Value of Patents (Harvard Business School Press) and CEO and founder of Aurigin Systems, a Cupertino, California, intellectual property management software company. "You shouldn't care about what's cool. You should care about what's important to your company and what will give you a sustainable business advantage."
4. Consider global patent protection. While you probably aren't thinking about selling your product overseas right now, "if your technology is hot, you might want to market it overseas, so file for a patent there as well," says Tellefsen. In addition, she says, you should check the international patent databases when applying for a patent because, unlike the PTO database, which only reveals patents that have already been granted, international databases show you the most recent applications filed.
5. Plan a licensing ROI chart. Figure out what return on investment you could receive from companies that will want to license your technology or business-process patent-keeping in mind cross-licensing opportunities. Tellefsen says cross-licensing is important because your patent might be used in a completely different industry than the one you're in.