For technological innovations — for example, machines, compositions, processes, plants, chemicals, software, etc. — patents offer the strongest form of intellectual property protection available. Not only does a patent give its holder the right to exclude others from the invention claimed in it, but patent owners can also monetize their patents through licensing and as leverage for investment. But obtaining a patent is often a long, arduous, and expensive process, and some companies simply do not have the resources to see that process through to completion for each and every innovation they produce. Luckily, there are alternative forms of IP protection available for such innovations, and an Alabama intellectual property lawyer can help you decide which ones are right for you.
Common Roadblocks to Patent Protection
Unlike some other forms of intellectual property rights, patent rights do not arise automatically. Rather, they exist solely through a grant of rights in the form of a patent issued by the United States Patent and Trademark Office (USPTO). The process of obtaining a patent at the USPTO is called patent prosecution, and it is often a significant roadblock for inventors and companies, especially those that are small, inexperienced, or under-resourced. Some of the most common roadblocks applicants encounter when seeking a patent include:
The USPTO has very strict requirements for patentability. Not only must an invention be new (or “novel”), but it must also concern patentable subject matter, be non-obvious, and be adequately described in the patent application. Almost all patent applications are rejected on one or more of these grounds initially, and most applicants have to go through several rounds of rejections and amendments to get their patent applications allowed. If an applicant is unable to overcome a rejection after several attempts, he or she may have no choice but to abandon the application.
Prior Disclosure or Sale
Many inventors and companies are tempted to begin advertising and selling new products as soon as possible. However, this can be fatal to their patent rights in those products. Generally, any invention that is disclosed in a printed publication (including brochures, magazine articles, white papers, etc.), offered for sale, or otherwise in public use is not eligible for patent protection — even if it complies with all other requirements.
Patents are expensive. It is difficult to nail down an average cost of patent prosecution with precision, as the cost varies according to the complexity of the invention. According to some estimates, filing a patent application for a “relatively complex” invention (such as a prosthetic device) can cost up to $14,000, That number can rise significantly depending upon the number of rejections the application receives and whether any of the rejections will need to be appealed. Unfortunately, many companies simply do not have the necessary resources to seek patent protection on all of their inventions.
Alternatives to Patent Protection
Patents are not the only form of intellectual property protection available for technological innovations. Inventors and companies that are blocked in one way or another from obtaining a patent may use several other types of intellectual property protection, depending upon the type of innovation they own. An Alabama intellectual property lawyer can help you determine which type of intellectual property protection is right for you. Some common alternatives include:
Trade Secret Protection
Trade secrets refer to any proprietary information that gives its owner a competitive advantage solely by virtue of being unknown to others. This can include a wide range of information that could also fall within the realm of patent protection, such as manufacturing processes, chemical formulas, and software code, among others. A key inquiry when determining whether information qualifies as a trade secret is whether its owner took reasonable steps to maintain its secrecy. This is a relatively easy hurdle to clear for many R&D-focused companies, as most of them implement information security procedures anyway. Although trade secret protection typically is easier to achieve than patent protection, it is riskier. Reverse engineering and independent discovery generally are not considered trade secret misappropriation. Therefore, a trade secret owner would have no recourse against a competitor who developed its own version of his or her product independently.
Copyright Protection for Software
Software falls into an intellectual property gray area, which makes it notoriously difficult to patent. According to one school of thought, software is patentable because it is a process that affects the functionality of a computer. But according to another, software is not patentable because it is an abstract idea consisting only of algorithms. Because software patents are some of the most difficult and expensive to obtain and enforce, many companies opt to seek copyright protection instead. Copyright registration is relatively inexpensive and allows the holder to sue infringers in federal court. However, copyright protection for software is narrower than patent protection, as it applies only to the expression of the idea rather than to the idea itself. For example, a software copyright holder’s competitor likely would not run afoul of copyright law by releasing software that performed the same function so long as the source code was not an exact copy or substantially similar.
As noted above, any invention that has been disclosed in a printed publication, offered for sale, or is otherwise publicly available generally may not be patented. “Defensive publication” is a strategy in which an inventor intentionally discloses an invention to the public to prevent a third party from obtaining a patent on it. Inventors choose defensive publication over patent protection for several reasons, such as:
- The invention is not “core” to the business enterprise
- The invention is not valuable enough to ensure a return on the investment in patent prosecution
- The invention is an incremental improvement to an existing patented invention
Defensive publication offers no intellectual property protection on its own, but it can be an effective way to deter competition when used as a component of a larger patent strategy.
Contact an Alabama Intellectual Property Lawyer to Develop a Comprehensive Protection Strategy
Patents are merely one tool in the intellectual property protection toolbox. To get started on implementing a comprehensive intellectual property protection strategy, please contact an Alabama intellectual property lawyer at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.