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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 publishing a description of your invention. In this case, costs are significantly reduced.

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, a somewhat less expensive option is to file a provisional patent application. This 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, if you draft and file a more up-to-date regular application you can protect these improvements while claiming an earlier filing date for the basic invention.

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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