What Every Entrepreneur Needs to Know About Patents

By: Minda Zetlin

You've just had a brilliant idea for a new product or invention. The first thing you should do is get a patent, right? Well, maybe not. First of all, patents are expensive, will require a lot of your time, and usually take three to five years to complete. (Will your idea still be valuable by then?)

Second, there's solid evidence that there are too many people out there registering patents. Why do I think that? Because most patent-holders lose money on the deal. According to the website Invention Statistics, only 2 to 3 percent of patented products ever make it to market, and only 1 percent turn a profit.

Still some people do beat those odds--Steve Jobs is one prominent example of someone who got very rich indeed off products he patented. Also, if your plan is to sell or license your invention to a company, you may need a patent to have something to sell.

Still thinking you may need or want to apply for a patent? Here are some things to consider.

1. A patent may not be what you need.
There are three commonly confused forms of intellectual property protection: patent, trademark, and copyright. A trademark is a word, phrase, or design that identifies a specific organization as the provider of product or service (often identified with a little R in a circle). It applies to things like company names and logos. Copyright applies to creative works such as books and movies (and this column), but also to software, which at its core is another form of writing, albeit in code. Patents are only appropriate for devices, products, or designs whose workings are non-obvious.

2. If you were an employee when you came up with your invention, you may not be able to patent it.
In the absence of any agreement to the contrary, your invention is yours alone. But some employers have employees sign agreements giving over the rights to their inventions when they are hired. And even without an agreement, if you were hired specifically to create the new invention--or for your invention skills in general--then even without such an agreement, the invention may belong to your employer and not to you.

3. You have plenty of time to decide.
You have up to one year from when your invention is first made public (by being put on sale, or announced) in which to patent it. And you can always file a provisional patent application, something like a save-the-date note for a wedding. It doesn't commit you to a formal patent application, and doesn't result in a patent, but it does allow you to claim your invention so that you can do a full patent application later.

4. On the other hand, you should document everything as early as possible.
That's because if someone else comes up with a similar product, who invented what when will become an important question. So keep thorough notes of when the invention was created, who worked on it, and how it was developed and tested. Have independent witnesses expert enough to understand the patent corroborate your documentation.

5. You may or may not need an attorney.
If you decide to apply for a patent, the first step is to do a patent search to make sure there are no existing patents on inventions similar to yours. You can do at least a preliminary search yourself here.

Many inventors hire a patent attorney to help them through the process, but you can also consider hiring a patent agent instead. The advantage is that a patent agent is usually much less expensive. However, if you ever need to defend your patent in court, you'll need an attorney. And whether you hire an attorney or agent, it's best to choose one who is registered with the U.S. Patent and Trademark Office.

6. You need a full-fledged product, or design, to get a patent.
There are two types of patents in general use, utility patents for fully developed devices and products, and design patents for items that haven't yet been created. You don't need to have every detail worked out--Google has a patent for a tattoo microphone that can light up if the speaker is lying, for instance. But you should have a good idea of how it will work. Your patent application will require both a detailed description and drawings if appropriate.

7. You'll need to think carefully about how much territory to claim.
The other aspect of your patent application will be the claim of exclusivity--the exclusive rights you hope to own if the patent is granted. This is a balancing act. If your description is too narrow--say a device that opens the garage door while brewing coffee and reciting the morning news--you can leave the field open for a knock-off device that opens the garage and makes coffee while playing your favorite songs. On the other hand, if you draw the parameters too wide--say a device that can perform several useful morning-related tasks--and your application may be rejected. Or, if you obtain the patent, it may not stand up in a lawsuit.

8. Once you get the patent, you're not done.
The patent registration process is lengthy enough that you may be tempted to heave a sigh of relief once it's over. But if you want to keep the patent (usually for 17 years) you are legally obligated to protect and defend it. This includes giving notice of the patent, actually bringing a product to market, monitoring licensing and use of the patent or patented product, and taking action against any infringement. So think of obtaining a patent as the beginning of a process, rather than the end of it.