Protecting Your Invention

Updated January 2025

This article is intended as general information to help you understand how to protect your invention. It is not legal advice or tailored guidance for your specific invention or situation. You should always consult a qualified attorney or other professional before disclosing your invention to others or taking any steps to protect it.

Introduction

If you’ve invented something that you believe others will want, your next concern is likely securing ownership of it. This concern is well-placed; patent disputes can be costly and complicated. In some cases, a company might even try to copy your idea and resolve the matter through expensive court battles rather than develop its own.

The best way to protect your invention is by obtaining a patent. A patent grants you, the inventor, a government-backed monopoly to exclude others from making, using, or selling your invention in the country that issued the patent. Patents encourage innovation by rewarding inventors with temporary exclusivity, benefiting both inventors and society.

However, remember that enforcement is your responsibility and a patent isn't necessary to sell your invention. Monitoring and pursuing patent infringers can be expensive, with litigation costs often exceeding millions of dollars, especially in complex or multinational cases. Also, in many cases, there are viable ways to get around a patent. Before spending a lot of money on patent protection do research to find out if likely patent protection will be meaningful.

Patents Are Country-Specific

A patent is enforceable only in the country where it was issued. For example, a U.S. patent does not protect you in Europe, China, or any other country unless you file for and are granted a patent in those regions.

The Paris Convention allows inventors to file corresponding applications in other member countries within one year of their first filing, claiming the earlier filing date as priority. Additionally, the Patent Cooperation Treaty (PCT) streamlines the process of filing international patents. With a PCT application, you can file a single application that serves as a placeholder in over 150 participating countries, giving you up to 30 months from your initial filing to decide where to pursue individual patents.

Chinese Patent Options: Utility and Invention Patents

China offers two main types of patents:

• Utility Patents: Valid for 10 years from the filing date, these protect smaller, incremental innovations and are typically granted faster than invention patents.
• Invention Patents: These last for 20 years and cover significant advancements. They require a more rigorous examination process.

When considering protection in China, understanding which type of patent suits your invention is crucial.

Confidentiality Agreements (NDAs) and China-Specific Agreements

Before sharing your invention with potential partners, manufacturers, or collaborators, ensure you have appropriate agreements in place.

• Confidentiality Agreements (NDAs): These require the recipient to keep your invention confidential and prohibit them from using it without your permission. NDAs are commonly used worldwide.
• NNN Agreements: In China, Non-Disclosure, Non-Use, and Non-Circumvention Agreements (NNNs) are often more effective than standard NDAs. These agreements explicitly prevent a partner or manufacturer from disclosing your invention, using it for their purposes, or bypassing you to deal directly with your customers.
• Manufacturing Agreements: When working with Chinese manufacturers, ensure you also have a comprehensive manufacturing agreement. This contract should specify ownership of intellectual property, product quality, timelines, and penalties for non-compliance.

These agreements are critical tools to protect your invention, especially when dealing with parties in countries with different legal and business practices.

Some Typical Filing Costs

Securing patent protection involves several steps, each with associated costs. Here's an overview of the expenses an inventor might expect when filing a Provisional Patent Application (PPA), a Non-Provisional (Utility) Patent Application in the United States, and a Patent Cooperation Treaty (PCT) application for international protection.

1. Provisional Patent Application (PPA):

• USPTO Filing Fee: As of January 2025, the United States Patent and Trademark Office (USPTO) charges a filing fee of $60 for "micro entities" (gross income less than a certain limit and not having been named on more than four previously filed patent applications).
• Preparation Costs: Inventors can prepare and file a PPA on their own, especially if they have a clear understanding of the invention and its technical details. However, it's crucial to provide a thorough and enabling disclosure, as the PPA establishes the priority date for your invention. Inadequate descriptions can jeopardize future patent rights. Therefore, while self-filing is cost-effective, consulting a patent attorney for guidance can be beneficial.

2. Non-Provisional (Utility) Patent Application:

• USPTO Filing Fees: Filing a non-provisional utility patent application involves several fees:
  • Basic Filing Fee: $320 for a large entity, $160 for a small entity, and $80 for a micro entity.
  • Search Fee: $700 for a large entity, $350 for a small entity, and $175 for a micro entity.
  • Examination Fee: $800 for a large entity, $400 for a small entity, and $200 for a micro entity.

  These fees total $1,820 for large entities, $910 for small entities, and $455 for micro entities.
  

• Attorney Fees: Preparing a comprehensive utility patent application is complex and typically requires professional expertise. Patent attorneys' fees can range from $6,000 to $15,000, depending on the invention's complexity and the attorney's experience.

3. Patent Cooperation Treaty (PCT) Application:

• International Filing Fee: The international filing fee for a PCT application is approximately $1,454 for the first 30 pages, with an additional fee for each page over 30.

  
  

• International Search Fee: This fee varies depending on the chosen International Searching Authority (ISA). For example, the fee is $1,870 when the European Patent Office (EPO) serves as the ISA.
• Attorney Fees: Attorney fees for preparing and filing a PCT application can range from $4,000 to $5,000, depending on the invention's complexity and the attorney's rates.

Important Considerations:

• Professional Assistance: While inventors can file a PPA independently, the USPTO recommends using a registered patent attorney or agent for non-provisional applications and PCT filings due to the complexity of patent laws and procedures.
• Additional Costs: Beyond filing fees, inventors should anticipate costs for patent prosecution, such as responding to USPTO office actions, possible appeal fees, and maintenance fees to keep the patent in force.
• International Protection: Filing a PCT application doesn't grant an international patent but reserves your right to seek patent protection in multiple countries. Subsequent national phase entries in each desired country will incur additional fees, including translation, local attorney, and official fees.

Protecting Beyond Patents: Trademarks and Copyrights

While patents protect your invention, trademarks and copyrights provide additional layers of protection.

• Trademarks safeguard brand names, logos, slogans, and other identifiers that distinguish your product or service in the marketplace. Trademarks are relatively inexpensive to obtain and are also easy to enforce, particularly in digital marketplaces like Amazon.
• Copyrights protect creative works such as written descriptions, drawings, and software that you may have developed as part of your invention process. Copyrights also apply to sculptural works such as dolls and even product designs.

Amazon's Brand Registry is a powerful tool for enforcing trademarks. It helps trademark owners protect their brands on Amazon by preventing counterfeit products, removing infringing listings, and improving brand control.

Enforcing Patents: Low-Cost and Strategic Options

Patent enforcement can be costly, but there are options to help reduce expenses.

• Amazon APEX Program: Amazon’s Utility Patent Neutral Evaluation (APEX) program offers a relatively low-cost way to enforce your patent against infringing sellers on Amazon’s platform. Through this program, you can have disputes resolved quickly without resorting to expensive litigation.
• ITC Actions: The U.S. International Trade Commission (ITC) is another powerful tool for enforcing intellectual property rights, especially against imported goods that infringe your patent. ITC actions can result in an exclusion order, which prevents infringing products from being imported into the U.S.

These strategies can provide cost-effective ways to protect your invention in specific scenarios.

Filing a Provisional Patent Application (PPA)

In the U.S., a Provisional Patent Application (PPA) offers a relatively inexpensive way to establish an early filing date. While a PPA does not result in a patent itself, it allows you to claim “patent pending” status for up to one year. Within that year, you must convert the PPA into a formal Non-Provisional Patent Application to pursue patent protection.

Public Disclosure: Risks and Deadlines

Publicly disclosing your invention before filing a patent application can jeopardize your rights. In the U.S., you have a one-year grace period after public disclosure to file a patent application. However, many countries outside the U.S. do not offer this grace period, and public disclosure may immediately bar you from obtaining patents there.

Public disclosure includes activities like presenting your invention at trade shows, publishing articles, or even selling the product. Be cautious and consider filing a patent application or securing confidentiality agreements before sharing your invention publicly.

Patent Enforcement: Consider the Costs

While patents provide critical protection, enforcement is your responsibility, and it can be costly. Patent litigation often costs millions of dollars and can span years.

If you expect your invention to be copied overseas, it might be worth pursuing patents in countries where knock-offs are likely to be produced. However, foreign patent applications can be expensive, with annual maintenance fees often exceeding $1,000 per country.

Conclusion

Intellectual property protection is complex and can be incredibly expensive. But there are good strategies to help keep the costs down while still protecting your invention. Invention City can help you formulate an intellectual property plan that fits your budget.

Let us know if you'd like more information or guidance tailored to your specific invention!