Sitting in his small, second-floor office beside a shiatsu massage joint in downtown Toronto, Michael weighed the costs of patenting his new idea.
Money was tight for his startup, but he was also worried that his method for customizing XML in documents would be copied by competitors. It wasn’t an easy decision, but he knew it was important, so he found the money to file his patent.
It wasn’t long before Michael Vulpe’s worries became reality. He was almost certain that his invention had been copied in a leading word processing suite. His little startup, i4i, was faced with the unthinkable – taking on the globe’s largest software company.
But with their patent in hand, i4i was ready for the David-and-Goliath fight that lay ahead. They knew that patents can help level the playing field. In the end, the court awarded i4i a several-hundred-million-dollar judgment against the other company.
Michael later said: “Innovation without patents is like fishing without nets – it’s great for the seals, but not so great for the fishermen.”
Do you fish just to help the seals?
Innovating without protecting the innovation is really just a donation to the competition. An IP lawyer friend of mine says: “Save your charity for those in need.”
But how do you get from idea to patent?
Filing a patent application
The patent process officially starts with you filing a document [patent application] with the patent office that describes your invention in detail, with diagrams. The patent office assigns an expert in technology and patents [patent examiner] to verify that the invention deserves to be patented [patentable].
Realize, however, that your patent application will eventually be published [patent publication]. That means that you can’t patent something and keep it secret. You have to choose.
Scope of protection
A patent is required in each country where you want protection. A patent from one country will not be effective against others in another country. Patents last for up to 20 years, after which anyone is free to use the invention. The invention cannot be re-patented after the patent expires.
IP Myth: You can get one worldwide patent to protect your invention.
IP Fact: There is no worldwide patent, but there is an optional centralized process for filing in multiple countries [PCT application]. Eventually a filing in each desired country is still required.
Timing
Procrastination and patenting do not mix. Patent protection must be sought before you publicize or commercialize the invention.
But if you haven’t found market fit yet, it’s probably also too early to file, since you haven’t confirmed that you’ve hit on something worth protection. Limited patent protection may be available if you recently publicized or commercialized your invention – but you need to talk to a patent professional as soon as possible to ensure you understand the deadlines.
Patent lawyers and agents
IP Myth: IP lawyers only tell you to file patents so they can make money.
IP Fact: Padlock, insurance and cybersecurity vendors make money too, but that shouldn’t stop well-informed professionals from making prudent business decisions.
Yes, an inventor can technically file a patent without a patent lawyer or agent – but I recommend against it. The patent’s value is in the words chosen to describe and claim the invention, and that requires a lot of legal training and skill. We’ll tackle how to engage IP professionals soon, but for now just remember that they’re useful and necessary.
Wrap-up
Study after study shows that businesses with patented technology are more successful. Like fishing with a net, patents don’t guarantee any fish but they certainly improve your odds.
In part III of our look at patents, we’ll pull the curtain back on the mysterious way in which a patent legally protects an invention.
Takeaway
- Patent applications should be filed before you publicize or commercialize, but can be filed within a year after (in some circumstances)
- Review your product development early and often to identify possible new opportunities for patents.
- Contact a patent lawyer or patent agent for assistance.
- “Innovation without patents is like fishing without nets.” Both improve your odds.