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Should I Patent My Invention?

 
     
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    Q: I'd like to find a way to prevent competitors from stealing my invention, but I'm afraid of the high costs of getting it patented. Is it really worth spending all that money on legal fees?

    A: That's the $30,000 question--or even more, in some cases. While Fortune 1000 companies such as IBM, AT&T and Google have huge financial war chests to patent thousands of inventions, a startup entrepreneur can rarely afford to patent even one.

    That's why it pays to do your homework before you spend tens of thousands of dollars on lawyers and filing fees that you may never be able to recover. The first step is to conduct a patent search to see if your invention has already been patented by someone else, advises Amy Goldsmith, an intellectual property attorney at New York City's Gottlieb, Rackman & Reisman, P.C. She specializes in the prosecution and licensing of trademarks, copyrights and patents. (You can do a search for free at the U.S. Patent and Trademark Office website.

    If the search results look promising, then you are ready to consider filing a patent application. According to Goldsmith, whose clients include manufacturers of pet products, biomedical devices, jewelry, eyewear and apparel, a provisional patent application protects your invention worldwide for one year, allowing you to create prototypes and see if there's any demand for your product in the marketplace. But once that year draws to a close, you must file a full-blown U.S. application and a foreign placeholder application in order to keep the patent process moving.

    What are the pros of filing a patent? Both a pending patent application and an issued patent can be licensed to other companies, generating a lucrative royalty stream, Goldsmith says. You may also choose to sell your application or patent rights outright. What's more, you'll gain the right to stop a company or individual from infringing on your patent and defend yourself against claims that your invention has infringed on someone else's.

    Should you choose to save money and not file a patent application, you may have trouble preventing competitors from copying your invention once it takes off. But remember: Patent protection lasts only 14 to 20 years, depending on the type of patent you file. If you want to protect your invention forever, you may want to consider protecting it as a "trade secret." Goldsmith says that trade secrets make sense if your invention can't easily be reverse-engineered (such as the secret formula for Coca-Cola) and access to the invention can be restricted (For example, Google successfully protected user queries as trade secrets when subpoenaed by the Justice Department.).

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