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SPIE Professional October 2007

When Not to File a Patent

That's right, there are circumstances when filing a patent isn't the best course of action. Knowing when not to patent is vital to your business.

By Marshall Honeyman

Forgive me for being a wet blanket here, but in the excitement that comes with making a novel discovery, it is easy to lose one's business sense. You have likely encountered, or at least can imagine, a situation where your business has developed something revolutionary. The kind of thing that will be raved about when published in the SPIE journal Optical Engineering, might fundamentally change the technological landscape, and will almost certainly make your company millions of dollars. Now is not the time for delay or penny pinching, we must get a patent and get it fast!

But hold on a minute. As a patent attorney, it is often difficult to avoid being drawn into the vortex of excitement surrounding a client's new invention. After all, attorneys are a part of the team, and we want the team to succeed.

However, my experience has been that the patent attorney, although a teammate, must oftentimes play the role of killjoy. This is because many times patent protection is simply not available. Further, even if a patent is obtainable, it may be completely useless when received. Thus, by riding the wave of inventive enthusiasm without caution, the company may invest significant resources without reaping any benefit.

A series of questions A through E have been incorporated into a flow diagram shown in Figure 1. The consequences at each step are fatal in that a "no" answer means you should not file a patent. You should only pursue a patent after getting five straight "yes" answers.

A. Is the Invention Patentable Subject Matter?

Legally speaking, virtually "anything under the sun that is made by man" is patentable. A few things are not patentable, however, such as natural phenomena, products of nature, and mathematical formulae. Business methods and computer-related inventions are particular areas where inventors often incorrectly dismiss patentability. So although the answer here will tend to be "yes," a company should always present the "is-it-patentable" question to counsel to ferret out what is, and is not, patentable subject matter.

B. Has Anyone Engaged in Conduct that Would Legally Bar Patenting?

Businesses can lose patent rights because of statutory bars. U. S. law provides you will lose your patent rights if you sell, offer for sale, publish, or publicly use your invention more than one year before filing a patent application on that invention. And most countries won't even give you the one-year grace period. A company should therefore contact counsel as soon as possible after the invention is made, and especially before marketing or publicly disclosing it. If any legal bar exists, you should not file an application.

C. Does the Invention Survive the Search?

Before filing a patent, the business normally should perform some sort of patentability research. This may be done internally, but the most common practice is to have patent counsel obtain a search from a professional searcher. The searcher is normally a specialist who is not only comfortable with the technological subject matter, but is also proficient using prior art databases.

The cost for the search should be relatively low, and the publications returned will likely introduce you to prior art you did not know about beforehand. This prior art will provide you with a good estimation of what patent coverage might be available. If the potential coverage available is too narrow, an application should not be filed.

D. Is a Patent the Best Intellectual Property Alternative?

Now that steps A through C have been survived, we know that some coverage might be available, but we still must consider whether filing for a patent makes good business sense. Sometimes patenting, although an option, is not the best option.

Sometimes secret inventions can be protected using agreements, e.g., confidentiality agreements and nondisclosure agreements, instead of patents. The agreements are relatively inexpensive and create trade secret rights. This might be the best option if the inventor or company is able to maintain secrecy of the invention while still using it for economic advantage. If so, the trade secret will outlast the 20-year term of a patent.

Copyrights can also be used for the purpose of protecting an inventor's artistic contributions, and thus, might provide some intellectual property (IP) rights in some cases. Patents can, of course, be used in combination with these other forms of IP. But if there is a better IP alternative, you should consider not filing a patent.

E. Is the Cost Justified?

Filing just a single patent can cost between $4500 and $12,000, and there will be significant prosecution costs after that. Because of this, every company should have a clearly focused strategy and business objective for every patent application it pursues. These objectives might include enforcing the patent against competitors, licensing to generate cash flow, cross-licensing, or merely holding the patent to chill the marketplace.

In addition to knowing exactly how you intend to use the patent, careful consideration should also be given to whether the potential scope of protection available will enable you to enforce the patent against competitors. If the protection is extensive enough, a company may be able to dominate the market with respect to a particular product. If competitors can use conventional alternatives to your invention that are just as effective, you will likely not want to file.

Only after successfully clearing hoops A through E should you file a patent. Getting a "no" can be disappointing, but it is best to receive the bad news before investing thousands pursuing a worthless patent.

Marshall Honeyman
Marshall Honeyman is a patent attorney in Overland Park, KS, where he is of counsel to the law firm of Lanthrop and Gage, L.C. Previously he worked at the USPTO as an associate solicitor, and he served as a USPTO patent examiner, specializing in the examination of inventions relating to illumination technologies.

DOI: 10.1117/2.4200710.02