Maiorana, P.C.

Should I Market My Invention While My Patent Application is Pending?

Should I market my invention while my US Patent Application is Pending?

Chris: That's a question we get asked a lot. When we get new clients and have our initial interview, we explain how the patent system (and Patent Law) works. Patents are not the easiest way to make money. We tell clients up front - using your life savings is not the best idea. There might be a better chance at winning the lottery, but that’s all luck. Your skills will get used if you patent your invention. But if you don't have the gumption to market your patent, and seriously work on it on a daily basis, you're almost guaranteed not be successful. So when someone says, “Should I wait until I get my patent to start working on marketing?” I say, “No way. You need to get out there and market this thing. You should use the time (when the application is pending) to your advantage.” Give it a good push before the Patent Office sends out the first Office Action. That’s supposed to take 14 months, but sometimes it's a bit longer. If you get nowhere on it, it gives you some business information you can use. Maybe you don't want to spend more money with an Invention Lawyer Detroit MI.

Another issue with the marketing is some people think getting your own patent is going to protect you from infringement against someone else's patent. That's not the case. A patent is a right to exclude. The formal definition is - a right to exclude others from making, using, selling and importing your invention in the United States. You can prevent other people from doing that. But it’s the difference between infringement versus patentability.

Listen to the Podcast.
Interview with Chris Maiorana by Steve Sleeper; recorded in 2017.

Let's say I do a good job marketing it, but then I don't get the patent to issue. What then?

Chris: It's a concern, but not my biggest concern. If you're going to be successful at marketing, your product needs some unique aspects of interest. There’s no more risk if you waited on the patent to issue. Getting your own patent to issue doesn't protect you against infringing on other people's rights. Your patent is a right to exclude, so get out there and market. In some cases, that actually helps us to traverse an obviousness rejection. One criterion is commercial success shown to the US Patent Office (USPTO). They're not as keen about commercial success as they probably should be, but it’s another factor to help in pursing your patent application.

When people market and mention they have a pending patent application, I've seen where a company is not set up for unsolicited offers. Some sophisticated companies might put one person in charge of that, and send out rejection letter after rejection letter. They don't want to be accused of stealing inventions. Inventors say it happens all the time. “I had this idea, and someone stole it.” For the number of times I've heard that story, it simply can’t be true. But even so, you get those rejection letters and some read them as, “They're waiting for me to get my patent”. They're not saying that at all. They don’t want to be accused of infringement.

Should I get a right to use opinion?

Chris: Possibly. It's a good idea to discuss issues with us. A right to use is sometimes called a freedom to operate opinion, and that's where we would take a look at the art and analyze your downside against potential infringement. Keep your options open and talk to us.

Who does those opinions?

Chris: We do. We do non-infringement opinions and freedom to operate opinions. We had a non-infringement opinion that did quite well for a client. So instead of getting stuck in a big litigation, they used the analysis from our non-infringement opinion to negotiate. That saved the client potentially millions of dollars. So a freedom to operate opinion would give you a heads-up on that ahead of time.

Also, there are issues like, for instance, someone might not have paid their maintenance fees on what looks like an important patent, that could hurt you, is no longer valid. Or maybe instead of fighting, you might want to join forces and collaborate. Or maybe stay away from certain people because they're bad news. Don’t go in blind because you're taking an unnecessary risk. The more knowledge you have, the better.

You can always ask one of our Affordable Patent Attorneys for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549