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By J.D. Houvener
Patent Attorney and Founder

Hi, everyone. My name is JD Houvener, your host of the Bold Today Show. Are you the inventor, entrepreneur, or business owner? Get your daily dose of inspiration to make the world a better place. All right, we’re just starting a new series this week. Happy Monday to all those out there. What I want to talk about this week is pre-filing, pre-patent application filing. What are those considerations you should make as a business owner thinking about making that big leap of faith and a huge investment that the patent application process is involved in? One of the things you should be thinking about before you take that big step, that’s what we’re talking about in this whole five-part series starting today.

So, let’s think about what you should be doing in terms of why you might not want to file right away. What are the things that could prevent you and could actually help determine that patents are not the best way to go? All right, let’s go right through the list. Number one is the statutory bars. In patent law, there are what’s called the statutory bars, meaning if you have publicized or sold your invention more than one year ago in the United States, it now belongs to the public domain. That’s a huge statutory bar, and there’s really no exceptions to that time period. So, if you’ve run up against that one year and you’ve gone past it, your patent is not going to be eligible, and it could be invalidated even if you were to file the application. So, it’ll be a whole waste of time and money going through that process.

The second one could be from a business point of view. If you’ve done your diligence and done the research, the market in the industry for your product or service, and you found that there’s not that big of a market out there, even if what you’ve got is somewhat innovative and you’ve got an improvement on the current technology, the overall size of the market just doesn’t really lend itself to a new player, and there’s not that much demand for that product. Another great reason to not really want to go down the patent route, even though you could.

Another issue that’s going to come into play is the fact you haven’t yet thought about what might happen if the product is unenforceable, right? So, even once you get the patent granted, if you’re not going to be able to see people infringing your patent, this happens a lot in terms of manufacturing and methods that are used to, let’s say, make a product. When I think of a lot because of my background at Boeing is the processes that are involved in making the airplane, for example, the 787 is made of composite material. So, all the different processes that happen internally to manufacture it at the proper temperatures and heat the carbon fiber at the right speeds to get it to mold just right, those types of processes, while certainly patent-eligible, patentable, may not be the best fit for moving forward because they’re not going to be able to be detected. You would have to be inside your competitor’s factory to be able to see that they’re actually performing your patented method. So, unless you can prove by the end product that, ‘Oh, I can tell that they used my process,’ then you’re probably likely going to want to protect it under trade secret law.

So, that’s the biggie, right? Making sure you put the brakes on early in the process. Think about all these different decision points pre-filing, and that’s what we help you with as patent attorneys, as your advocate. We don’t want to waste your money. We don’t want you to end up in a bad financial decision position further down the line. So, get a hold of us, go to our website at boldIP.com or give us a call.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/