How to Know If You Need to Patent Your Product

Q: I'm ready to step out of my basement workshop and introduce my invention to the world. Do I really need to get a patent first?

A: You've designed a better mousetrap. And you're anxious to get the production and sales processes snapping so you can sooner start counting your profits. Not so fast. You might first want to think about applying for a patent.

Harris A. Wolin, an intellectual property attorney in Morristown, N.J., who has filed patent applications for products ranging from dog toys to lasers, says it's essential for entrepreneurs to consider whether their new product requires a patent to help make it commercially viable. "I've been doing this long enough to know that if you don't have a business discussion, then there's a disconnect," Wolin says.

In legal parlance, a patent is what's known as a negative right. Wolin explains that by granting your patent, the U.S. government endows you with the exclusive right to exclude others from making, using or selling your work. It's a form of protection that enables you to enter your product or idea into the marketplace with some assurance (though no guarantee) that another entrepreneur won't try to claim it as his or her own.

"If you're in a crowded field, the ability to get meaningful protection might be slim," Wolin says. "If you have a breakthrough invention without historical precedent, your ability to get broader patent protection is much greater."

Patents issued by the U.S. Patent and Trademark Office are enforceable only within the States, which means they also cover goods being imported into the country. That's a key distinction, because foreign countries with weak patent laws routinely inundate the market with knockoff products.

"The only way you're going to control your product in the market is if you have the ability to tell others to stop," Wolin says. "In the United States and elsewhere, it's the patent system. That's the only way."

There are three types of patents: utility (which covers function), design (which covers aesthetics) and plant (which covers, well, plants--of the botanical variety). That better mousetrap, for example, would require a utility patent. Wolin says the average utility patent application costs $5,000 to $10,000 to prepare, but that figure can go much higher depending on the technological complexity of the concept. A 100-page application that requires, say, 50 drawings could easily cost more than $10,000.

Once an application is filed--at which point your product is considered "patent pending"--the patent office might contest some of your claims. This scenario could lead to a back-and-forth (or patent prosecution) between your patent attorney and a patent examiner. The typical application takes upward of two to five years from filing to granting, according to Wolin, and extensive patent prosecution will only increase your cost. Once granted, a utility patent expires 20 years from the date of filing.

Before you file a patent application, Wolin advises, it's imperative that you study the marketplace to make sure that your invention does, in fact, represent a new iteration of mousetrap.

"You need to be mindful of what the industry is, how crowded it is, what your innovation is and how impactful it is," Wolin says. "You don't need a patent to sell something. I could put something together in my garage and sell it tomorrow. But if you don't have a patent, somebody else might have a patent. Even if you're not going to focus on intellectual property, you have to make sure you're clear of others' intellectual property."