Many small businesses and startups have developed novel ideas for products that have the potential to generate significant revenue. As an entrepreneur, one must be concerned with protecting their intellectual property (IP). As discussed in a previous article a business’ IP includes trademarks, copyrights, trade secrets, as well as patents.
According to the U.S. Patent and Trademark Office (USPTO), a patent is an intellectual property right granted to an inventor that prevents others from making, using, or selling the invention throughout the U.S. or importing the invention into the U.S. Patents last for a limited time and come in exchange for publically disclosing the invention when the patent is granted.
There are three types of patents you can apply for based on your type of invention: utility, design and plant.
- Utility patents – if you invent or discover any new and useful process, machine, article of manufacture, composition of matter – or any new and useful improvement of these – you may be eligible for a utility patent.
- Design patents – if you invent a new, original and ornamental design for an article of manufacture
- Plant patents – if you invent or discover a distinct and new variety of plant
In addition patents applied for to the USPTO must meet very specific about the requirements in order to be patentable. Your idea or invention must be:
- Novel
- Non-obvious – meaning anyone else with the same skills in this area could not have come up with the same idea
- Clearly explained and documented so that someone equally skilled could make and use the invention
To get further guidance as to whether your idea meet these tests, the entrepreneur can review the USPTO’s “How do I Know whether my Invention is Patentable?”
If you believe your idea meets these requirements, the next steps, will include checking for previously filed patents, as closed prior art. It is incumbent that the entrepreneur studies these patents to be sure that no one has previously applied for a patent covering the technology or design you want to patent. Be assured that the Patent Examiner will uncover additional prior art that they will cite as reasons to deny your patent application. This is called an “office action”. Examiners, not being skilled in the business’ specific technology, often uncover patents that are not specific to your application. So, be prepared to argue each claim of prior art. If the business has done its research and due diligence, more often than not the business will prevail.
If more research is needed to refine the technology and determine what should be claimed, a business can file a provisional patent application. There is some confusion surrounding provisional application as it is not a patent filing. The benefit of a provisional filing is that it establishes a recorded date and time for the invention. This may be important for establishing precedent as the US has adopted a “first to file” patent system versus our old system of “first to invent.” The other benefit of a provisional application is that the business can say they have a “patent pending.
Your local Yavapai College Small Business Development Center can greatly assist a business owner in the research of prior art, determination of the requirements, and the application process itself. The YC SBDC Counselor will always recommend that the business owner consult a good patent attorney but by meeting with us first you will become knowledgeable to the issues which could ultimately save you money.
By: Kurt Haskell