Fish & Richardson Debunks Patent Myths

Understanding How to Correctly Protect Your Invention Is Key to Success

SAN DIEGO, CA–(Marketwired – Nov 4, 2015) – Fish & Richardson recently hosted “Back to (Patent) Basics” — a presentation centering on general information about patents for start-ups, entrepreneurs and seasoned business professionals alike. As part of the presentation, Fish attorneys Michael Amon and William Hunter discussed eight patent myths that can seriously affect a business’ decision making when it comes to its intellectual property.

Patent Myth #1: Getting a patent means you can market and sell the invention.

Not so, according to Hunter and Amon. Just because the U.S. Patent Office has awarded you a patent doesn’t mean that it will not run afoul of laws or regulations, as well as other patents. Patents provide the right to stop or exclude others from using your invention and the right to sue in Federal court when someone does. It does not, however, automatically mean that you can practice your own invention, especially where your patent is an improvement of another’s patented invention and your product would infringe the other’s patent.

Patent Myth #2: If you patent it, the investors will come.

Receiving a patent doesn’t mean that your invention will be successful in the real world. The value of a patent stems from the revenue stream it protects. Your business plan matters as much if not more than any patent, even though getting a patent may be a key part of your long-term business value, and getting investors early on. Patents/patent applications are only one of the things that investors look for when considering whether to invest.

Patent Myth #3: You can get a patent for an abstract idea.

The claims you make in your patent application must state a practical use of your inventive concept. In other words, you must not only have an idea but you must also specifically describe how your idea will be applied.

Patent Myth #4: Getting a provisional patent will protect you.

Actually, there is no such thing as a provisional patent, only provisional patent applications. Provisional patent applications are not examined, published or issued by the USPTO (United States Patent & Trademark Office) and only provide one year in which to file a regular patent application claiming priority to the provisional patent application. Additionally, provisional patent applications have the same legal requirements as a regular patent application, such as full disclosure of your invention. Provisional patent applications can be of use in your patent strategy depending upon multiple factors, but caution is advised — a provisional patent application, especially one that is filed quickly and is not properly drafted, might actually have long-term damaging effects.

Patent Myth #5: A Patent Cooperation Treaty (PCT) patent application protects you worldwide.

A PCT patent application never becomes a patent itself. Patents are specific to each jurisdiction, typically per country, and there are some countries (notably Taiwan) that are not covered by a PCT filing. The PCT provides unified procedures for effectively filing a patent application in multiple participating countries at once, but you must still file national stage applications within 30 months of the PCT application’s priority date. Filing and pursuing all these patent applications around the world can add up quickly, so you should think strategically about where you really need patent protection, based on your business.

Patent Myth #6: Patents protect what is shown in the drawings.

While this is true for a design patent, it is not true for a utility patent. In fact, while most utility patents include drawings, they are not actually required for some inventions. A design patent protects the innovative ornamental features of the product shown in the drawings; it does not protect functional features. In contrast, a utility patent protects innovative functional features of a system, apparatus, method, composition of matter, etc. as stated in the written claims of the patent.

Patent Myth #7: Design patents and utility patents offer the same benefits.

These two types of patents actually differ in several areas. Design patents expire 15 years after issuing while utility patents last for 20 years from the filing date. Design patents generally take only 12 to 15 months to obtain while utility patents can take up to three years or longer. Additionally, design patents are less expensive to prepare and have no maintenance fees. However, the scope of protection afforded by a utility patent is often greater than that of a design patent. Design and utility patents also have different legal remedies available. It is important to understand which type of patent you need, and depending upon your product, you might need both.

Patent Myth #8: Patents are expensive.

While it is true that a well written and executed patent may be a considerable investment for a company, the cost is much less than leaving a valuable invention unprotected. The decision to patent an invention is based upon many variables, and after consideration you may find that your invention doesn’t need to be patented. However, the benefits of patents can include:

• Increased company value (important to investors)
• Increased revenue through royalty payments
• Excluding competitors
• Bargaining chips to exchange with other companies for use of their innovations
• Potentially gain entry to domestic or foreign markets that would otherwise be unavailable

Each inventor’s and company’s situation is different, and the range of patent law issues that can arise is vast. This information should not be construed as legal advice. Inventing a new product or method requires great attention to detail and so does the planning and execution of a patent strategy.