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5. Is a patent necessary?

Ask yourself this question: "what's your ultimate goal?" It is probably one or more of those listed below:

to prevent others from being able to patent or use your invention
to profit from your invention through licensing the technology
to preserve your rights to obtain patent protection while you develop the invention for financial gain
to create a visible example of your contributions to society's body of technical knowledge
to protect the outward ornamental appearance of your work of industrial art
to make the invention publicly available so that others can freely benefit from your invention
to maintain an advantage over your competition.

Identifying your goals is critical to determining the most appropriate steps you should take to protect your invention. Your goals affect your entire strategy. Your goals directly affect costs as well. For example, if your primary goal is NOT to realize a financial return, but rather to disclose your technology to the public so that others may benefit from your efforts, one option is the filing of a Statutory Invention Registration application. In this case, costs are significantly reduced. The Statutory Invention Registration (S.I.R.) allows you to obtain a visible record of your contribution to society's storehouse of technical knowledge--the Patent Office publishes the S.I.R. much like a patent in the Official Gazette of the U.S. Patent Office, except that anyone may now make, use, or sell your invention without first obtaining your permission.

Understandably of course, most of us are not interested in making gratuitous contributions to society, especially when the contribution costs us substantial time and money. We rightly believe that we deserve financial rewards and that others should compensate us fairly for our creative efforts. If this is the case, attaining our goal requires a different tact and procedure. This tact is likely to involve the filing of a patent application. Why? This is just the way Congress designed it. <

True, having a practitioner prepare a "full-blown" patent application for you can be a very expensive prospect (we'll talk about the expense later). However, one somewhat risky, short term alternative is available in the United States. Your diligent development of the invention beginning at conception and continuing until filing your patent application or the "reduction of your invention to practice" (building a working prototype) preserves your rights to a U.S. patent. Provided that you do not subsequently "intentionally suppress or conceal" the invention, the government considers the date on which you build and successfully test a working prototype the date on which you "reduced your invention to practice". This serves as your "priority date," the earliest date which you may claim as being the inventor as of that date, should another inventor file for a patent on the same invention at about the same time as you do. I stress that this does not eliminate the necessity of your filing a patent application within one year of the date someone else sells, uses, offers for sale, or publicly disclosures the invention in this country, or publishes or patents the invention anywhere in the world, as discussed below. Nevertheless, unless you file a patent application within one year of the date a rival inventor patents the invention, you will be unable to establish your patent rights, or may incur costly litigation expenses in an effort to establish your patent rights. Therefore, this approach can be very risky. You should discuss this limited option with a patent practitioner before relying on it for protection!

A second, less risky but somewhat expensive option is to file a provisional patent application. This is a relatively new option which essentially buys you one year's time before you must pay the regular filing fee and file a "full-blown" patent application. It can be somewhat expensive because the enabling and best mode requirements of a regular patent application apply. This means that the provisional application should be just as descriptive as a regular application. Claims need not be filed, but practitioners generally agree that the best practice to follow in drafting the specification is to draft the claims first. Therefore, the net result is that there is very little difference in the cost of preparing a thoroughly descriptive provisional application as compared to a complete regular application. Essentially, you realize a cost savings only if over the year's time in which the provisional application is pending, you make substantial improvements in the design of the invention. If this is the case, it is wise to draft and file a more up-to-date regular application. This saves you the cost of a second filing fee while, at the same time, securing for you an earlier effective filing date.

Yet another option is to keep your invention secret. This option is usually only a viable alternative to patent protection in cases where your invention is a process which cannot be reverse engineered through analysis of the resulting product. If this is the case, then your challenge is to keep the process secret. If you are successful, and no one is able to reverse engineer the process, the benefits of secrecy will help you maintain a competitive advantage. In addition, you will not be limited to protection for 20 years. Thirty five or more years of protection may be attainable. Maintaining secrecy will usually involve having employees and suppliers sign confidentiality agreements, and putting into operation a system which helps ensure that persons who have access to your secrets are aware that they are obligated to maintain secrecy. A risk though is that a competitor will file and obtain a patent which they may be able to enforce against you (the patent laws favor those who "disclose" as opposed to those who "conceal and supress" technical knowledge). You should consult with your local intellectual property attorney to find out whether this is a viable option for you in your particular state.

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