At Blueshift IP, we try to anticipate what clients want to know—or better yet, what they should want to know, even if they don’t realize it.

When companies approach us about patenting their inventions, our first task is to assess whether a patent is worth the investment. Here are the three questions that we think any company should ask an intellectual property attorney when they’re considering a patent application.

Is There Anything to Patent?

The United States Patent Office has strict requirements about what is patentable, and if an invention doesn’t fit the bill, there might not be reason to talk further. The requirements are even more strict for software because of a decision by the United States Supreme Court known as the Alice Corp decision, which said that generic computer functions aren’t patent eligible.

However, it’s very much possible to get patents for software, as long as you work with a patent attorney who specializes in software patents.

The key technical requirements for a patent are eligible subject matter, novelty, non-obviousness, and utility. Essentially these requirements boil down to one question: Does the invention do something that is technologically unique?

In the case of software, a technological improvement that can make the software patentable does not need to be completely new; it just needs to be an improvement over previous technology.  For example, speech recognition software that has higher accuracy than previous versions can be patented even if the basic function of recognizing speech has existed for a long time.

On the other hand, if an invention is a tool, product, or service that already exists in the market and the key differentiator is a better experience or cost structure, then a trademark or other form of intellectual property may be a more appropriate form of protection than patent. An example of this would be Spotify versus Tidal or UPS versus FedEx.

Is There Any Business Reason to Patent?

Patents, and even pending patent applications, can boost the value of your company and deter competitors from copying you.  An issued patent can be sold or licensed to generate additional revenue for your company.  If necessary, you can sue a competitor for infringing your patent to stop them from selling products and services that compete with yours.

Even if the technology might not pass the U.S. Patent Office smell test, there may still be value in filing a patent application in the short term—namely, marketing.

Maybe a company has an invention that is only marginally patentable. It could be worth filing a patent application to see where things go without intending to fight for the patent if it gets rejected just to buy a few years of a marketing boost.

Here’s something else to consider: In the short term, we are not really writing applications for the U.S. Patent Office. We’re writing them for all the lawyer friends of all the businesspeople the client wants to do business with. We want them to think it will be easier to do a deal than to have to litigate down the road. Having a well-written patent application can be the push they need to get to the negotiating table.

Pending patent applications also could boost the potential valuation of a company that is pitching to investors, showing the strength of the management team and technology.

Is It Too Late to Patent?

In the United States, companies have one year to file an application after public disclosure. Public disclosure means one of the following:

• Beginning to sell the invention
• Telling anyone not under a confidentiality or non-disclosure agreement about the invention
• Discussing the invention online, at meetings, or through marketing materials

The thoroughness of the disclosure is a determining factor. The litmus test is if an Average Joe could figure out what the innovation is and how to make it work from looking at the disclosure.

That’s the U.S. There is no grace period in most other international jurisdictions, including Europe.  Therefore, if you want to obtain patent protection outside the US, be sure to file patent applications for your inventions before marketing or selling those inventions.

A client’s best bet would be to consult with a patent attorney before making any kind of disclosure, even a beta test, to explore patentability and ensure non-disclosure, confidentiality, and terms of use agreements will avoid imperiling a patent application.

Contact the attorneys at BlueShift IP at info@blueshiftip.com to find out how a patent application can move your business plan forward.