I’ll start by saying that I have a unique relationship to intellectual property. In my first job out of college (UNH, naturally) I worked on early-stage research that was patented by my company. As a university employee, I’ve been responsible for hundreds of US patents and patent applications and many of those were licensed to university startups or other pre-commercialization companies. And I ran a biotech company, founded on a core IP portfolio that helped us compete on an even playing field with competitors with >$1 billion in revenue. So, naturally you might think that I’d advise everyone to file patents as soon as they can.
You’d be wrong.
Patents are highly misunderstood assets. Many people don’t know that patents are treated, under the law, as real property. This means owning a patent conveys the same rights as if you were a land-holder—you can use the patent, rent it to others to use (license), or simply use the patent rights to defend your business against others. At UNH, I’m responsible for commercializing the results of our research. But the first question I always ask someone about their idea is not whether it’s patentable but rather whether there’s a market. Since patents are real assets it’s important to know first whether the assets can be leveraged to create value for its owner.
The dirty little secret about patent rights is that a good patent attorney (and only ever hire patent attorneys with technical expertise in your specific field) can help get patent to issue on almost any idea. That’s not the point. The question to ensure is answered thoroughly is how broad the ideas in your patent are, and whether they can cover a single idea or a broad range of related ideas. If your patent rights are narrow it may not be worth spending the $10,000-$20,000 to file a patent application. Let me provide a quick example.
At my last job, we created a research tool using human liver cells (hepatocytes). In creating our product we had to purify the hepatocytes from all the other cell types in a liver. After 18 months in operation, I was contacted by a major research university in Boston about a patent they held claiming the use of hepatocytes, requiring a purification of at least 95%. When I asked my Chief Scientific Officer about it, his response was that we only purified our cells at 90% and that they actually worked better with the “impurities”. I quickly called back and told them that we didn’t need access to their patent. The point is that even though the university had an issued patent, and that patent was directly about purifying hepatocytes, the patent covered too narrow of an application and didn’t cover the real-world implementation of the concept.
My advice to early-stage companies and inventors is simple. First define your market, its size, and what part of that market you believe you can reasonably acquire. Next, define your idea and work with a reputable patent attorney to create out the broadest possible application of your initial ideas and write a patent that reads on all those applications. And finally, make sure that you have the resources to not only file the application (the first $10,000-20,000), prosecute it in the patent office until it issues (the next $10,000-$15,000), and then defend your patent against infringement ($500,000 and beyond) if someone uses your patent without permission. If you can’t afford at least the first two steps up front, patenting might not be the best approach to protect your idea.