MaRS Library Patents for inventions or innovations: Factors for startups to consider
The patent process takes time and money. Startups, therefore, need to assess certain factors to decide if their innovation merits a patent. Startups need to understand and assess:
- When an idea is patentable
- How much data is required for a patent application
- How polished the data should be
Factors to determine patentability
1. Your innovation’s “substance”
In deciding whether to patent, the first consideration would be whether there is enough substance for your invention to secure a patent. Ideas in themselves are not patentable.
The basic rules of patentability are that the invention be a matter, composition or process that is novel, non-obvious and useful.
2. Enabling disclosure
In addition, the patent must provide enough description to allow a person skilled in the art to reproduce the invention. This is referred to as “enabling disclosure.” For example, if you think a time machine is a clever idea but cannot produce a workable description of how to build one, you will not receive a patent.
3. Data requirements for patents
More realistically, if you think you have something that is novel, non-obvious and useful but you only have some preliminary data or a crude prototype of your product, it may be worth filing a US provisional patent application or a Canadian patent application.
A US provisional patent application will provide you with one year to produce more data before filing the non-provisional patent. Remember, however, that your refined data cannot be used to broaden the scope of your initial provisional application—it can only provide stronger support.
4. Commercial value of your invention or innovation
The next major consideration would be whether the invention has commercial potential and thus worth a patent application.
In evaluating your innovation’s commercial potential, consider its advantages and disadvantages before spending significant time and money on pursuing a patent application.
Commercial potential includes the possibility of licensing your invention to a company that requires it for a process or product.
5. Patent protection
A remaining factor to assess when deciding whether file for a patent is whether you will be able to protect your patent.
Try to gauge if others can develop a workaround, or if your biggest market will lie in a country where you will have trouble policing infringers.
If you are uncertain after your evaluation whether your invention has commercial potential, conduct a patentability search.
This can yield information about what already exists on the market and whether those products have had commercial success.
Note: The content in this article is for purposes of general information only. It is not legal advice.
- Legal advice: Lawyers and legal counsel for your startup.
- IP Management: Protecting and commercializing your creative ingenuity.
- Patent infringement and the Patent Act in Canada.
- Provisional patent applications in the US: A tool to protect your invention.
- What investors want in place when they invest in your startup.