Often, entrepreneurs and inventors easily assure themselves that their product is unique. They have “never” seen the likes of their invention in the market place, and their own Google patent search has turned up nothing. Often, thousands of dollars are spent at the outset to get a patent application on file at the patent office as quickly as possible. Reasons for this include the desire to get an early filing date (which is essential in today’s first-to-file regimen of most national patent offices), and to build up a portfolio of applications to show potential investors.
However, this may not be the wisest way forward for an inventor or small business. There may be alternative less-costly approaches that provide adequate protection of one of the company’s most valuable assets: its intellectual property. Even where it makes sense to file a patent application, applicants craft an incremental strategy that spreads out the high cost of patenting over a manageable period of time.
Let’s remember that a patent is essentially a bargain: the patentee receives permission to exclude others from making, selling or using the invention for a finite period of time, in exchange for teaching the public how to make and use the invention.
However, a trade-secret (in which the details of making the invention are kept secret under lock and key) may provide better protection for an inventor. In this case, while there is no state-sanctioned monopoly, competitors are prevented from copying the invention so long as the details thereof remain secret. While a patent provides a twenty-year limit for this monopoly, the trade-secret has no such time limit. The caveat is that if another entity manages to reverse engineer the product, it can copy and reproduce the product at will. Coca-cola® is one example of a successful trade secret. True, others have tried to copy its formula, but have never succeeded at full replication.
Another IP tool for the protection of an inventor’s product is an industrial design, which is the visual features of shape, configuration, pattern, ornament or any combination thereof, applied to a finished article. For example, one may seek to protect a new design of a hockey bag or smart phone - even though each of these products have already been invented and patented. One advantage is that a typical industrial design registration is about one-tenth the cost of a patent. Similar to a patent, an industrial design registration provides a limited monopoly in exchange for disclosing the full design of the product. The disadvantage is that a competitor may make changes to a successful design and market the alternate product.
After considering the various options, perhaps filing a patent application is the best way forward. At this stage, an enthusiastic inventor should first seek the assistance of a patent professional to conduct an in-depth search of worldwide patent databases and published records that relate to the invention. The professional should use various combinations of keywords and patent classifications to hone in on the relevant information. This is far more sophisticated than a Google patent search.
An in-depth search will provide the inventor with an idea of what has been patented and what is in the pipeline, with the caveat that there may be applications in the pipeline that have not yet been published. The results of such a search provide the inventor with a reality check as to the “uniqueness” of his/her invention.
Applicants may not realize that an obscure publication disclosed many years ago, even if half-way around the world, still counts as prior art. If that publication happens to describe the very product that the applicant seeks to patent, no patent is possible, since the “invention” is not really new. Or, the search may turn up a number of patent documents that contain information on products that are similar (though not exact) to the proposed invention, making for a narrow — if not difficult — future patent.
In the case of small or medium-sized enterprises (SME), the patent professional can provide invaluable assistance by commissioning a patent landscape of a particular area of technology. This will help an SME business in charting its research and development course and deciding how to allocate funds towards product development.
While it is important to cover one’s IP assets, one should do so in a prudent manner that includes a strategy on how to use various IP tools (e.g. trade secrets, industrial designs, patents) in the most efficient, cost-effective manner.
By Sheema Khan, Ph.D.
Patent Agent, Shapiro Cohen
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