Yes, there are pros and cons even with the most desirable IP protection folks! As always, I try to be honest and true with our readers; and while I would love to say there are no disadvantages of patents, that just wouldn’t be forthright. In fact, there are several. And they can be prevented if you do what you’re doing now and read about how to play the game right.
Before we dive in, here are the main advantages and disadvantages of patents I am going to discuss:
Top 3 Advantages of Patents:
- Exclusive Rights
- Sparks Innovation
- Easily Commercialized
Top 3 Disadvantages of Patents
- Difficult to Acquire
- Dealing with Infringers
- Limited Time
Harkening WAY back, as I LOVE to do…let’s take a look at Article 1 of the United States Constitution:
“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.”
Indeed! The founding fathers knew that in order to continue the trend (which became the industrial revolution) of technology improvement, we would need to incentivize inventors to share what they came up with so that we could all become smarter. To do this, the government agrees to “secure” and help enforce an inventor’s rights for a “limited time”.
The quid pro quo (I know this is in the news a lot lately) is that inventors give up and share their invention with the world, and the US government will give inventors up to 20 years of exclusive rights to it.
Advantage #1: Exclusive Rights
Powerful stuff. And, so…that leads me to the #1 advantage of patents, exclusive rights.
Those “rights” that an inventor is granted have been litigated and fought over, but now it is settled law that when an inventor is awarded a patent from the United States Patent and Trademark Office, they have the rights to EXCLUDE anyone else from:
That shortlist may not mean much to you yet, so let’s break down each of those in order to appreciate what they mean…
To be the only one that is allowed to MAKE the invention, it literally means that no one else is allowed to create or bring about the physical materials and create the claimed invention. While difficult to enforce if someone were to be making the invention in private in their own home or commercial building, as soon as they bring it into the public’s eye, it would be clear they have made your invention and would violate the first right.
Now in the context of a method/process type patent involving computer implementation, the actual “building” or “making” is much more challenging to interpret. So, in this sense, no one is allowed to “bring about” (write the code, position the circuits, arrange the storage devices, etc.) in the performing of the steps or following the process as you’ve laid out in your set of claims.
To be liable for infringement of the patent, all one has to be shown to have done is MADE one of the claims of a patent.
USING is fairly straightforward, and encompasses any imaginable use. For apparatus/device patents, it’s the tangible invention and even partial use or use of a sub-set (dependent) claim will infringe. There is even a doctrine that the federal court and supreme courts have created called the “doctrine of equivalents” and it allows infringement claims to be brought on parties that are trying to avoid infringement and avoiding the statutory language.
These sly infringers are actually not themselves using the invention, but they are foreign companies who hire US-based companies to then use the invention to further their business needs. This is seen as contributory infringement and the US courts have held foreign companies and individuals liable for doing just this.
SELLING the invention is also for the most part what you think. It is important (as with the other rights of making, using, and selling) that it is only a protection for the jurisdiction that you have patent rights in. In other words, if you only have a US Patent, you cannot prevent anyone from selling the patented invention overseas.
That said, the internet is a powerful tool, and it turns even foreign-based companies into international retailers if they sell online. Note, if a US resident can purchase the product, then they are infringing, even if they are based outside the US.
Another note (and it’s important) is that it’s not only “selling” but “offering for sale” that triggers an infringement. Meaning, if you are not the patent holder, and you are marketing or offering to sell the patented product, you’re liable even if you never make, use, or actually sell the product!
Ok, final, last note… The right to exclude IMPORT of your invention to the jurisdiction where you have rights (i.e. the US). This goes along the same lines as selling but calls out specifically the shipping/importing into the customs.
There is one big benefit that this right enables, which is the ability of the International Trade Commission (ITC) to stop the shipment into the country before it gets to customers/wholesalers here in the US. A patent holder can file an ITC infringement complaint and get a much more expedient decision on customs holds versus a federal court opinion. The downside is that there is no ability to seek monetary damages.
Advantage #2: Sparks Innovation
The patent system was not intended to attract inventors who only have earth-shattering, first-of-its-kind, groundbreaking technology. No, it was actually meant for inventors to IMPROVE the way we do things and stand on the shoulders of the innovators that came before them. The founding fathers knew that innovation is a movement, an interactive process, and one that is never finished.
Therefore, by inventors sharing their life’s work, and their contribution to mankind (or at least their country) other inventors get insight as to how they perform their “magic” or what was behind the scenes. And yeah, you guessed it, now the race is on to either design a more efficient way to get from A to B or come up with a cool new “C” and make A-C more attractive to customers.
Did you know that the entire patent application with the specification, drawings, and all pending claims is PUBLISHED for the entire public to see before the patent is issued? Current US patent law requires that patent application be published no later than 18 months from the priority date.
Lastly, I do think that many individuals and companies (while not all) still run on competitiveness…and sometimes it’s the sheer number of patents that you have, or sometimes it’s the strength of your portfolio… but if the “other guy got a patent”… you better bet that sparks a little fire inside that pushes you to innovate and push barriers and find a way to create something new and useful.
Advantage #3: Easily Commercialized
Having an actual patent granted from the USPTO is an asset! Yes, just like the deed to your car, or house, or bank account – it’s a tangible, descendible, inheritable, transactional asset.
The bottom line on this commercialization advantage is that each party to a potential patent license or patent sale can determine the value based on objective criteria. The patent claim set is FIXED and is defined in English words. Sure, there can be some ambiguity with respect to claim scope, and whether certain definitions/scope/structure is enabled. But for the most part each side knows with a good degree of certainty what they are dealing over.
For a set of GREAT articles about monetizing patents, check out this series:
Patents are especially more concrete than their sister intellectual property type, the trade secret. When kept confidentially, a trade secret is much more loosely defined. Often times, a trade secret takes on many forms, is used by different individuals, and can be documented in several locations.
There is also the major risk of misappropriation, or worse yet, the secret getting out to the public and/or an inventor patenting the “trade secret”. Then, as soon as the application is published, the trade secret loses all value.
I’m not saying trade secrets are not worthwhile, nor am I saying they cannot be transacted (because “know-how” is definitely part of a commercial transaction). I’m just saying that patents are much more readily understood and negotiated by both parties and it leads to easier commercialization/monetization for the patent owner.
Disadvantage #1: Difficult to Acquire
Getting a patent is no small feat. There is a ton of work required to be at the cutting edge of technology in a single discipline, and it can take even more effort to come up with a solution or to add something new to a gigantic (and growing) body of knowledge. Invention usually comes when trying to solve a problem. And while it may sound strange, sometimes the hardest thing to do is to define what the problem is – then all you have to do is solve it.
So, sure, there are challenges with conceiving an idea or a solution to a problem. But even once you have something clear in your mind, it is still not an invention. You’ve got to be able to articulate it through writing or drawings in such detail that someone like you in the industry could make and use the invention. This is the enablement requirement that must be shown in order for the USPTO examiners to allow the patent to issue.
This enablement rule is in place to assure that when a patent is granted, the rest of the industry/world will be able to benefit from your knowledge and learn something new.
After you’ve got your idea to the invention stage, you’re ready to start the formal patent process (See below). Now you’ve actually got to do more research and homework in your industry to confirm that what you’ve contributed is actually novel (new) and non-obvious above and beyond the prior art (anything ever published in the same technology).
At Bold Patents, we recommend a 3-step approach to the first phase (of two) – you’ll see the Application (phase 1) below:
Most companies and sophisticated inventors go to a trusted Patent Attorney to seek an opinion on patentability (Step A above) prior to jumping headfirst into an expensive and arduous process of filing the patent application with the USPTO.
There is an entire second phase of the patent process which oftentimes is overlooked by inventors when planning for their time being patent pending. While I won’t belabor you with the nuances (it can be a very long and windy path from when a patent application is filed) to when it is allowed and eventually issued/granted.
The main features to note here are that the process starts upon the filing of a non-provisional (utility) patent application. This is not a provisional patent application. There are many formal exchanges between the inventor/applicant and the USPTO/examiner. The biggest steps are the first office action (see step 3 on the above flowchart), followed by the Interview (step 8), and then the Request for Continued Examination (Step 11), and then the notice of allowance (see step 14), and lastly, step 17, the patent is granted.
We have outlined in the graphic (for our firm) when we charge hourly fees, flat fees, and when a USPTO fee can be expected to be paid for each step in the patent prosecution process flowchart.
As of the writing of this article, the current pendency (duration of time that a patent application is patent-pending prior to it either being granted or abandoned) is:
You can see the current statistics here.
Yes, you read that correctly. For un-expedited patent applications, it takes on average 15 months to hear anything back, and almost two years to either get the patent granted or the application goes abandoned.
Disadvantage #2: Dealing with Infringers
For most inventors, the very thought of infringement is their biggest fear. Someone ripping them off and making it big can seem like a nightmare. This fear can be a big motivator for an inventor to seek patent protection, but does getting a patent mean that no one will steal your invention?
Unfortunately, no… Bad actors will steal no matter what, but guess what arrow you have in the quiver now that you’ve got a patent? You can ENFORCE your patent rights against them in federal court, the ITC, or PTAB.
Enforcing patent rights – while a necessary part of the process – is the least fun. You’ve got to shell out a lot of money to pay attorneys and soak up your attention with a lawsuit (or at least threatening a lawsuit by sending a cease and desist letter) instead of focusing on your core business or on innovating the next solution/invention.
The most valuable patents that are issued today are the ones that get infringed. This is well known… if no one is infringing your patent, it can actually be seen as a bad thing. This means there is no market demand for your product and/or its too far ahead of its time – which can drastically diminish the present day value.
The effort in dealing with infringers is really only half of the work. The other half of the work comes in before you identify infringement. Meaning, it’s your job to monitor the markets in the jurisdictions you have patent rights to watch out for infrigers. You cannot sit back and hope that everyone competing with you is going to follow the rules. You have to be the one to enforce your rights, and stand guard. There are NO PATENT POLICE!
Another drawback is that the more powerful the invention, the higher likelihood is that big players (think Google, Facebook, Microsoft, Amazon, Samsung, etc.) will be infringing…and you better bet they have a huge legal team that faces these types of allegations all the time. They also can afford do protract litigation especially against a patent holder, and make things more expensive through time delays, expanded discovery, and appeals/motions and the like.
Want to learn more about patent litigation? Check out the in-depth article I wrote!
Therefore, it can be seen as a disadvantage to patents to have to pool the resources, capital, and attention to face would be infringers and enforce your patents against them.
Just know that even if you as the inventor cannot face the likes of Google with your litigation pursuits, your invention becomes MORE valuable. Plus, the chances of you being able to strike a deal with another big player that wants to take on Google increase dramatically. There are also options to seek an insurance policy on your invention. This allows the insurance company to foot the legal bill to defend against infringers. A great resource for this is www.ipisc.com
Disadvantage #3: Limited Time
Yes, patents DO expire… sad but true! This is part of that quid-pro-quo I mentioned at the top of the article. The government is willing to reward innovators with exclusive rights to their invention, but only for limited times.
For design patents, it is 15 years of protection for articles of manufacture that protect the shape/ornamental qualities. For utility patents (including plant patents), 20 years of protection is granted from the date the utility/non-provisional patent application was filed.
Now, something important to understand is that not all patents make it to their end of life. It is actually pretty expensive to maintain the patents’ enforceability. This is true for utility patents only as design patents do NOT have to pay any additional maintenance fees after the patent is granted.
Here is a quick snapshot of the maintenance fees that you will have to pay to keep your patent alive the entire 20 years:
So, if you pay all of these fees after the period of enforcement, the patent simply expires. This means that anyone (individual or company) can make, use, sell, and import your invention without infringing your patent.
Don’t be too bummed about this – remember, you have CONTRIBUTED TO THE WORLD’S KNOWLEDGE! Now inventors are using your patent to leap from, and find new and better ways to do things.
While there are pros and cons to most anything you do, hopefully this article was able to give you a keen sense as to what’s possible with patent protection, while also being aware of some of the drawbacks, and things to be careful of.
To recap, the top 3 advantages of patents are:
- Exclusive Rights
- Sparking innovation
- Easy commercialization
And the top 3 disadvantages of patents are:
- Difficult acquisition
- Dealing with infringement
- Limited time
As always, if you have any questions that still remain, please comment below, email into firstname.lastname@example.org, or simply give us a call at our main line: 800-849-1913.
Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.