US: To patent, or not to patent?

12-11-2021

Paul J Sutton

US: To patent, or not to patent?

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The title of this article, intentionally borrows from the opening phrase given by Prince Hamlet in William Shakespeare’s play “Hamlet”: “To be, or not to be”.

Individuals and companies are often faced with the very significant decision involving inventions, namely: to patent, or not to patent?

The natural impulse is to file for patent protection on all new developments and creations that qualify as inventions. After all, the US Constitution in Article I, Section 8, Clause 8 expressly states: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Writings are protected under the laws of copyright, while discoveries (inventions) are protected by patents.

However, such impulses do not necessarily best serve the interests of creators, nor their commercial enterprises. Often, relatively small product improvements can make all the difference in improved product sales or perceived company value. And yet, a legitimate business decision must be made as to whether or not to pursue patent protection on such small improvements.

All US patent applications will be published 18 months from their earliest effective filing date, unless a petition is filed against it.

“Individuals and companies are often faced with the significant decision involving inventions and creations, namely: to patent, or not to patent?” - Paul J Sutton

Until such publication, the owners of patent applications rely on secrecy between inventors’ patent attorneys and the US Patent and Trademark Office (USPTO). The 18 months will be measured from the filing date of any provisional patent application upon which the related non-provisional relies. That means that all parties will have easy access to the entire contents of published patent applications.

There will be a tension between the desire to file and a competing desire to treat inventions as trade secrets. A trade secret is a form of IP that protects commercially valuable information which is capable of being licensed or sold.

Trade secrets must only be known to a very limited number of persons. Failure to abide by this requirement will result in the loss of trade secret status.

.Owners of inventions, either as inventors or via assignment of the patent rights, will naturally prefer to keep their inventions secret. However, valid patent protection requires full disclosure of inventions within the patents covering such inventions.

One must remember the “deal” made by the Constitution, namely, that the benefits of valid patent protection will only extend to those who fully disclose their inventions to the public. This is the trade-off laid out in the document which was created over 200 years ago, when inventors hindered developments in the new US by hiding their inventions from others.

The aforementioned sections of the US Constitution intentionally created the benefits of patent protection in hopes of luring inventors toward filing for protection. And it worked. Millions of US patents have been granted by the USPTO, covering a myriad of technologies ranging from products and systems to business methods and computer software.

Motives for pursuing patents include strategies for patent monetisation. Patent portfolios covering systems that have yet to be commercialised still have great potential value to some who will invest in their acquisition. One cannot over-emphasise the benefits afforded by licensing arrangements that include one or more patents. Yet, the vast majority of US patented inventions never enjoy commercialisation.

A factor in deciding whether to pursue patent protection may involve the speed with which an industry or technical field is evolving. It is possible that a published invention may become obsolete by the time a patent is granted on it, making the investment in time, energy and finances not worthwhile. In such a case, the result may be a teaching of competitors without any patent protection.

For this reason, individuals and companies may opt to use trade secrets where circumstances allow. Clearly, an invention embodied within a product that is commercially available cannot be protected by trade secrets since an examination of the product will provide the invention’s details. That said, manufacturing methods and processes may very well protect trade secrets, provided access to them is limited to very few individuals. The guidance of experienced patent counsel in such instances will be invaluable.

Paul J Sutton is a founding partner of IP boutique law firm Sutton Magidoff Barkume and is adjunct professor at NYU’s Tandon School of Engineering. He can be contacted at: paul@smb.law

Sutton Magidoff Barkume, patent protection, copyright, inventions, USPTO, trade secret, IP, US Constitution, technology, portfolios

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