Whenever someone tells me they want to file a patent application, I ask why.
I have a couple reasons for this question. In part, I’m just curious. But more importantly, I want to know potential clients’ goals so I can counsel them on whether a patent application will help to achieve them.
Sometimes a patent application will help a client to achieve their goals, and sometimes it won’t.
Here, in no intentional order, is an abridged list of reasons I’ve seen people file patent applications, along with a few words defining and explaining each reason:
Pre-Public-Disclosure Filing / Avoiding A Bar Date
This filing is done before a public disclosure or before some other date that would bar patenting (thus, “bar date”), whether domestically or abroad. The person or company filing this application may not be 100% sure they need a patent for any other reason, but they know that they are facing a date that would prevent them from getting a patent if they don’t file before a deadline.
Often, filing a patent application when you can rather than destroying your chance at patenting your invention is a good decision.
Getting Investor Attention (Oh… And Money)
Most investors treat patents as signs of innovation and as potentially valuable assets. Investors usually view tech-focused companies with pending patent applications and issued patents more favorably than they view similar companies without those things.
For companies that haven’t publicly released information on their technology, this reason is tied in with the one just above. Most investors will not sign NDAs, and disclosing non-public tech to investors without an NDA can harm patentability. Thus, lots of companies decide to file patent applications in order to free up their ability to discuss their technology with investors while retaining the ability to patent.
Thwarting Competitors Part A: Suing for Infringement
A purist would say this is the main reason to have a patent. A patent in its most basic use case allows the holder to sue others for patent infringement. In a strict legal sense, this is the primary benefit of owning a patent.
There are some wrinkles. OK, one major wrinkle: Enforcing a patent against a competitor (by suing them) is incredibly expensive, and it is a path not available to most startups and smaller companies. You might be able to find an attorney who will take a patent infringement case on contingency, but such attorneys are rare and very careful about the types of cases they take on.
Midsize and larger companies will often have legal budgets that support patent litigation. Startups and solo inventors generally will not.
Thwarting Competitors Part B: Causing Friction
Suing a competitor for patent infringement isn’t the only way to make trouble for others with your patents. The mere existence of a patent (or, more likely, a patent portfolio) may give a competitor pause before entering a market or deciding to release a competitive product. If you have patents, you can effectively make your competitors spend money and time evaluating your patents. That is time and money they are not spending on directly competing with you.
Building or Adding to a Portfolio of Patents
Generally seen in midsize and larger companies, this type of filing is done not because a major breakthrough has been discovered, but because a relatively minor improvement or slight change to an invention has been made. It is generally harder to build noninfringement and invalidity arguments against a group of patents than against a single one, so it can make a lot of sense to build a portfolio of related patents even when some of them don’t quite cover groundbreaking technology.
Personal Pride / Resume Building
Some inventors simply like having patents to their name. And in some technical areas, being a named inventor on an issued patent is a sign of technical achievement.
Inter-Company Innovation Signaling
Patents are often seen as a proxy for innovation, and owning lots of patents can signal a focus on advancement and innovation. In competitive industries, some players file patent applications because they like being able to say they have more patents than their competitors.
Intra-Company Innovation Signaling
Within larger companies, competition between departments and divisions can be intense. Patent issuances and filings can be a marker of innovation within such companies, and could have an impact on decisions like budgeting and employment. And within departments, inventors with more patents to their name may gain visibility and credibility that helps with career advancement.
Because of the Intellectual Challenge
Some solo inventors and smaller companies enjoy the challenge of putting together a patent application, arguing with examiners in the patent office about the validity of the application, and moving the application toward issuance. It can be a fun process, especially if it fits in with your personality to engage in a prolonged written conversation with heavily legalistic overtones.
Because it Seems Like the Right Thing To Do
Individual inventors and smaller companies may believe that filing a patent application is “just something you do” when you have an invention. This belief may be fostered by popular media or by “invention services” companies that market to individuals about the importance of inventions and patents.
Of all the reasons on this list, I think this is the worst one. Anyone making a filing for this reason should really figure out another reason they might want a patent. And if they can’t figure that out, they probably don’t need one after all.