The First Step In the Patenting Process Is . . .

A common question we receive is, “What is the first step in the patenting process?” The answer to this question depends on a number of factors.

A first consideration is whether any looming statutory deadlines apply. For example, if you have been offering your inventive product for sale, you must file a patent application within one year of the first sale or offer for sale of the product. So, do not wait to seek advice on patent protection—move swiftly and with purpose. If you have very limited time before a patent application must be filed, then a first step might be to quickly file a provisional patent application. It is probably a good idea to have a patent attorney at least review the document before it is filed because such document will be the foundation for any later-filed nonprovisional application. If the foundation is weak, there may be problems ahead.

If you have some time to spare with no looming statutory deadlines, another option would be to have a patent attorney conduct a patentability search for you to determine whether your concept is novel or not based on prior patent publications. The cost for this type of search is usually 1/3 to 1/4 the cost of having a full nonprovsional patent application prepared and filed. It’s a means to hedge your bets. If the patent attorney’s search results are promising, you have spent additional money but you have more confidence in investing additional funds to move into the next phase of the patenting process. If, on the other hand, the search results demonstrate that your concept is not novel, you will have saved yourself at least a few thousand dollars by not going straight to having a nonprovisional patent application prepared and filed.

An alternative to having a patentability search conducted would be to move forward with filing a provisional patent application. A provisional application is less formal than a nonprovisional application and is considerably cheaper. The downside is that a provisional application is only temporary—it is a means to buy more time before you must file a nonprovisional patent application. The additional time provided by a provisional application can be up to one full year. During that one year period, you may be able to locate potential investors or interested buyers. Alternatively, the additional one year provides time to perfect the invention and work out any kinks.

There is no requirement that a patentability search be conducted or that a provisional patent application be filed. What is always necessary to move forward in the patenting process, however, is the need to file a nonprovisional patent application. This is an expensive step in the patenting process. The nonprovisional application will include claims that define the metes and bounds of your invention. We usually suggest to our clients that they have us conduct a patentability search before we prepare and file a nonprovisional application because the search could ultimately save the client money depending on the search results.

To recap, the best first step in the patenting process is different for different factual circumstances. Sometimes the factual circumstances are such that a provisional patent application should be filed first. Other factual situations may dictate that a patentability search should be conducted. In rare cases, it may make sense to go straight to moving forward with a nonprovisional patent application. Regardless of what is the right first step for you, one thing you should always do is move forward with purpose and not delay. A good first step would be to meet with a patent attorney and have the attorney consider your unique situation and offer suggestions on how best to move forward.

Do I REALLY need to register my copyright?

Many artists and creative product producers are aware that ownership of a copyright occurs automatically when an author of an original work places that work into a tangible medium of expression. Because this happens automatically, many feel that taking the extra step of registering their copyright with the U.S. Copyright Office is an unnecessary extra step. Regarding ownership, this is true. There is no need for an author of an original work to register the work in order to own the copyright in the work.

The issue changes, however, when an author desires to enforce his or her rights against a third party. In order to properly file a lawsuit to enforce a copyright, the filer must have at least first filed to register the work with the U.S. Copyright Office. Some federal jurisdictions even require that the work be registered before suit can properly be filed.

Perhaps the most important reason to register a copyright in a work is to be able to benefit from the statutory damages provisions of the U.S. Copyright Act. If a work is properly registered before infringing acts occur, the owner of a work can elect statutory damages instead of having to prove actual damages. This can save a tremendous amount of money in litigation. Statutory damages can range as high as $150,000 per registered work if the infringement is shown to be intentional.

It is tempting to think, “I’ll register my work if and when someone infringes it.” But this plan won’t afford you the benefit of statutory damages. In order to be able to benefit from the option of statutory damages, a work must be registered before infringing acts occur, or at least before knowledge of those acts occurs. So the idea of waiting won’t work. The drafters of the statute purposefully included this caveat to attempt to encourage authors to go ahead and register their original works of authorship. So, do you really need to register your copyright? If you want to benefit from the statutory damages provisions of the U.S. Copyright Statute, the answer is “yes”.