Most Patents Do Not Make Money
Although most patent owners think they have a really good money-making idea, nonetheless, most patents do not make money. Whether attempting to sell or license a patent, marketing the patent may be more difficult and more costly than obtaining the patent. It is often difficult to even get the attention of those in a position to license or buy a patent from the patent owner.
Enforcing Your Patent
Even after getting a patent, it is quite possible that someone may infringe on the patent without the patent owner ever finding out. The patent owner is responsible for enforcing her/his patent. It may be a good idea to consider how the activities of potential infringers are going to be monitored prior to applying for a patent. Once an infringer is found, if they decide to continue to infringe the patent and not pay royalties despite the patent owner's request to do otherwise, the patent owner may need to hire an attorney and sue the infringer in court to collect the royalties. (The government will not arrest someone or bring criminal charges against someone for patent infringement alone.) The cost of litigation can be quite substantial, and the number of attorneys willing to be paid on a contingency basis is at best limited. An individual patent owner may not be able to find an attorney to take the case on a contingency basis, and may not be able to otherwise afford the cost of litigation.
Additionally, when you attempt the enforce your patent, the infringer may attempt to prove that the patent is invalid. In more recent years, the courts and Congress have weakened patents and made them easier to invalidate and harder to enforce.
Ownership
Before applying for a patent it may be a good idea for the inventor to check if any agreements were signed that assign any part of the invention to one of the inventor's clients or former employers. Specifically, upon being hired as a full-time employee or even to perform work on a contract basis, a corporation may have the employee or contractor sign an agreement that stipulates that the corporation owns anything the employee or contractor invents. Sometimes these agreements extend beyond inventions that were developed at the corporation.
Cost
Usually obtaining a patent involves filing a patent application, and responding to one or more communications (usually including one or more rejections) from the US Patent and Trademark Office. The total cost of obtaining a patent could easily come to quite a large sum of money. The fees for preparing and filing the application are not the entire cost of obtaining a patent. The next significant communication from the Patent and Trademark Office is unlikely to come until at least a year after filing the patent application and possibly not until after several years. I charge a separate fee for each response to each communication from the US Patent and Trademark Office. Thus, the total cost of obtaining a patent is the cost of writing the application plus the cost of responding to each communication. Each significant communication will likely be spaced apart by at least three months, but not necessarily. Additionally, after obtaining a patent, the US Patent and Trademark Office charges fees that are due at 3.5, 7.5, and 11.5 years after the patent issues to maintain the full term of the patent (failure to pay the maintenance fees results in the premature expiration of the patent).
The Seemingly Endless Process
One of the few conclusions to the process of obtaining a patent (which is called patent prosecution) is the issuing of the patent. Usually, persistence eventually pays off. There is almost no upper limit to how long the prosecution of a patent application can be extended. However, the longer the prosecution extends, the more expensive the process becomes, and the prosecution may negatively affect the value of the resulting patent. In at least some cases, there are measures that can be taken to increase the likelihood that the prosecution will be relatively short. However, these measures may narrow the coverage that is ultimately obtained (because the Examiner is more likely to allow the patent application with narrower claims to become a patent than one with broader claims).
Will the Invention be Obsolete by the Time the Patent Issues?
The US Patent and Trademark Office attempts to keep the time between the filing of a patent application and its issuance to about eighteen months. Nonetheless, many patent applications are not even seen by the Patent Examiner until several years after filing the patent application. Consequently, it is possible that the product will become obsolete prior to the issuance of the patent.
No Guarantees
Although most patent applications eventually become patents, no one can ever guarantee that an invention is patentable or that a patent application will ever become a patent. There is also no guarantee that once a patent finally issues, it is in fact valid. The Examiner may be mistaken in his/her judgment or may miss the best available reference.
The above paragraphs are intended to portray a sense of the expenses and risks involved in filing a patent application so that anyone considering filing a patent application may better decide whether filing the patent application is the correct decision for them. However, the above paragraphs give only a brief description of various aspects related to monetizing a patent and are not intended to be a thorough description.
The above paragraphs should not be relied upon for legal advice.
If you have questions about an employment contract or other contract, licensing, or infringement, please contact an attorney. Please feel free to contact me if you have any questions.
