FAQs for Patents

Frequently Asked Questions (FAQ) for Patents

How long does it take to get a patent?

From the time you file a patent application in the U.S., it can take a number of years until your patent issues. The length of time strongly depends on the technology, with biotechnology and computer-related inventions taking up to 5 years or more to even be examined on the merits. The USPTO does strive to issue patents 2-3 years from filing, if not sooner.

Is a provisional patent application a “real” patent application?

A provisional application does not issue directly into a patent. However, utility applications filed within a year can claim the priority date of a provisional, while the 20-year patent term starts from the utility filing date. Advantages to first filing provisionals include lower up-front costs and an extra year to assess the economic potential of the invention. It is dangerous, however, to file “quick and dirty” provisionals because it can be difficult to rely on them for a valid priority date.

How do I know in which countries to foreign-file?

This is a complex question. There are a variety of strategic and tactical issues that you must consider, and the answer will likely depend at least on your reasons for patenting, your international business plans, where your invention will be produced and sold, and your IP budget. You also need to consider the likelihood of successful patent prosecution in each country of interest.

Should I patent my invention or keep it as a trade secret?

Every inventor must answer this important question. In many ways, patent protection and trade-secret protection are mutually exclusive. For a patent, you must fully disclose the invention to the public, in exchange for monopoly rights for 20 years from the filing date. For a trade secret, you must not disclose any details publicly; yet you cannot prevent others from making or using the invention if they do so independently. Trade-secret protection can theoretically last forever, although the average trade secret lasts only about 5 years. The most well-known trade secret is probably the formula for Coca-Cola®. Keeping an invention as a trade secret can be a good option in fast-moving markets, when enforcement of the patent would be difficult, or when an invention is simply not patentable. On the other hand, patents are more-flexible business tools, help give you marketing leverage, usually last longer than trade secrets, and are often easier to defend.

How can I assign a monetary value to a patent?

Patent valuation is extremely difficult due to the large number of unknowns. Generally, patents can be valued just as any other piece of property would be valued, by analyzing comparables and estimating what the market is willing to pay. Accurate valuation accounts for the net-present value (NPV) that could be derived from the patent—through a blocking position, licensing revenue, or other means of generating net cash flow.

If I could never afford expensive litigation, should I bother with patents?

If you are ever involved in a patent-infringement case, your litigation costs can greatly exceed what you paid for patent prosecution. However, there are several ways that this legal expense can be avoided: litigation insurance; business partnering, where your partner agrees to pay to defend your patent; and hiring a lawyer on contingency, where the attorney’s fees depend on the outcome of the trial. Also keep in mind that very few patents ever end up in the courts.