So You Think You Want A Patent?

By BRANTLEY C. SHUMAKER
Contributing Writer

It happens to everyone at one time or another. The “apple hits your head” moment when you think of an ingenious new way to solve a problem, accomplish a task, or improve how something works. You describe your invention to friends, and they exclaim, “You should patent that!” But are they right? Obtaining a patent can be a time-consuming and expensive proposition. To determine whether or not to pursue a patent, you should understand what a patent is, how to get one, and most importantly, whether it is worth the investment.

Brantley C. Shumaker.

Brantley C. Shumaker.

A patent is a bundle of exclusive rights awarded by the United States Patent and Trademark Office (USPTO) to protect an inventive process, machine, article of manufacture, or composition of matter. Not everything is patentable, and the line between patentable and unpatentable is not always clear. Computer software and business methods are patentable under certain circumstances. However, laws of nature (E=mc2), physical phenomena, and abstract ideas (method of hedging risks in commodities trading) are not. The line keeps moving, too. The Supreme Court recently ruled that naturally occurring genes are no longer patentable (although complementary DNA is still fair game).

To get a patent, you must convince the USPTO – by way of a patent application often prepared by a patent attorney – that your invention is useful, new, and non-obvious. To be “useful,” an invention must work, either in real life or at the very least on paper. Perpetual motion machines don’t qualify. An invention is “new” if no one has ever done the same thing before, and “non-obvious” if it would not have been obvious to a “person of ordinary skill in the art.” The patent application process typically takes a year or more and is expensive, so it’s worth examining whether the return (a patent) will be worth the investment.

How can a patent provide value? The most straight-forward way to generate revenue from a patent is to enter into a “license” in which you convey the right to practice your patented invention to a “licensee,” and they agree to pay you royalties. If someone else practices your patented invention without your permission, you can sue them in court seeking damages and a court order forcing them to cease infringing activities.

A patent can also be a valuable business asset. A startup built around an idea is more marketable to potential buyers if the idea is protected by one or more patents. Even if you don’t intend to sell your business, a patent may discourage competitors from entering your market, or at the very least, may force competitors to invest time and money designing around your patent, giving you a head start in the market.

Despite what you may have heard, a patent is not a quick way to get rich. But if you are thoughtful about whether the potential value of a patent is worth the cost, a patent can be a great investment.

Brantley C. Shumaker is a member of the intellectual property practice group at Middleton Reutlinger. He focuses his practice primarily in the areas of patent prosecution and intellectual property litigation. You can reach Brantley at 502.625.2893 or bshumaker@middletonlaw.com.