Is now the time to file that patent? A Q & A session with intellectual property attorney Dr. Charles Runyan of KEYT Law LLC.
Most people, including most patent attorneys, will tell you that the first thing you need to do is go get a patent. That’s wrong. But to explain why it’s wrong, we first need to talk about what a patent gives you and what it doesn’t give you. A patent does not give anyone, even the patent owner, the right to do anything. What it does give the owner is the right to prevent someone else from making products based on the patent. So, when you come up with a new idea, on day one, the rights that a patent grants aren’t very important to your new business or to you making money with your idea.
Exactly how much does a patent application cost?
Plan on a minimum of $5000 to have a high quality, bare minimum patent application prepared and filed in the simplest technology. Plan on up to another $5000 or more of second-phase expenses to get that patent application pushed through the patent office. (But that second phase of expenses probably won’t begin until two or more years after the date the patent application is filed).
And I don’t necessarily need this?
Going back to day one of your new business, taking $5000 out of the business to pay a patent attorney for a patent you don’t yet need will probably mean that you won’t have a business in six months. In fact, $5000 is likely more than most people would be willing to invest in starting a new business in the first place.
So, what is the first step?
Once you have an idea, the first step is deciding how you’re going to make money from it—how are you going to get that idea into a product and onto the market. That plan is going to take money to put into action. Use some of the money to figure out the best way to get your product to market and some of the money to start executing the plan (but without revealing the invention to outsiders).
And then I can start selling the invention and telling people about it?
Once you know how you’re going to market the invention, you need to find a patent attorney that will work with you on a timetable for filing the patent application. The patent attorney should help you decide what protection method and timetable best suits your marketing plan. For instance, some inventions will require a patent earlier rather than later. Also, you can market some inventions without getting a patent, while other inventions require so much development time that filing a patent application now just gives away patent term. The patent may issue while the product is still years away from any sales. Similarly, some inventions or products only have one or two companies who are likely to want them. In those cases, sometimes you can get by with a nondisclosure agreement instead of a patent application. (Nondisclosure agreements are less than 1/5 the cost of a high-quality patent application). If the company wants to buy your invention, let them shell out the money for the patent application. But sometimes companies won’t discuss your invention until you have filed a patent application. In those cases, you’d at least know that the time was now right to prepare the patent application. In any case your goal and your patent attorney’s goal should be a thriving business with many future inventions even if that means holding off on filing a patent application today.
Charles Runyan, Ph.D. is of counsel at KEYT Law LLC. He holds an advanced degree in Chemistry and has extensive experience in chemical-based inventions, medical devices, and is accomplished in the mechanical arts. Additionally, his practice includes trademarks, copyrights, and all forms of intellectual property litigation.
For further information on this article, please contact:
Charles E. Runyan, Ph.D. J. D. | KEYT Law LLC
3001 East Camelback Rd. Suite 130 | Phoenix, AZ 85016
(602) 906-4953 | cer@KEYTlaw.com
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Disclaimer: Charles Runyan providing this article and you reading it does not mean that he has provided you legal advice. Since all legal matters are intensively fact specific, all matters require individualized consideration. In view of that, you should regard this article as GENERAL guidance and not as a definitive statement of the law. His comments are non-specific and you should not rely on them as legal advice. He does not offer you legal advice or become your attorney until: (i) you first elect to hire him, (ii) you and he sign an engagement agreement that sets forth what legal services he will provide and how you will be charged, and (iii) you pay any required fee or security deposit.