Three fundamental myths about patents frequently result in missed opportunities and lost value for innovators. These simple misconceptions cause real damage to real companies.
Myth #1: I Need to Build it Before I Patent It
This false assumption is particularly dangerous. Patent law does not require companies to actually build, implement, or even test their innovations before seeking patent protection. Instead, the law requires only that the inventor describe the invention in enough detail—including a written description and figures—so that others in the same field of technology could build it if they wanted to. Because others in the same field of technology are assumed to have a reasonable baseline of knowledge in the field, patent applications need not describe each and every detail of an invention so that a novice could construct the invention. For example, an electrical invention need not describe the operation of Ohm’s law, a mechanical invention need not explain how gears operate, and a software-based invention need not disclose actual source code. While the novel portions of an invention must be described in detail, well-known building blocks in a technological field require only general description.
Innovators who incorrectly believe that an invention must actually be commercially implemented before a patent application can be filed often delay filing an application until a competitor has already done so. In this situation, not only does the innovator not have a patent for their invention, but they also have to deal with the competitor’s patent. Because patent law around the world operates on a “first inventor to file” basis, an innovator has little recourse against the competitor in this situation, unless the competitor actually copied from the innovator (which is relatively rare and often hard to prove). Sophisticated companies file patent applications as soon as they have a concrete understanding of a new and potentially valuable invention.
Myth #2: My Patent Must Match My Product Design or Specification
When innovators have a developed specific product configuration or specification, they often fall into the trap of thinking that their patent must cover exactly what they have designed. This is also false and value-limiting. Good patents disclose many different variations, or “embodiments,” of an invention. While the particular embodiment chosen by an innovator for their own commercial product is often a valuable one, it is usually not the only valuable one, and almost never the most valuable for all time.
Technology changes over time. A particular invention may be practiced in one field now, but practiced the same way in another field in the future. For example, cybersecurity has long been associated with enterprise computing networks, but is now being implemented in diverse IoT-based fields of technology. Well-written patents should have imaginative and thorough disclosures that can allow patent claims to adapt to changes in technology. This is particularly valuable when “continuation” applications are filed based on an original patent, which serve to keep the application alive even after the original patent issues. Accordingly, when a patent application is being written to robustly protect an invention, forethought and creativity are critical.
Myth #3: Patents and Trade Secrets Cannot Protect the Same Invention
This myth is partially true but largely false. One of the fundamental attributes of patents is that they are public. The policy of patent law is that an inventor may be given a limited period of exclusivity in their invention in exchange for the inventor publicly disclosing their invention through a patent and thereby educating the public. Trade secrets must necessarily be secret. When a trade secret is made public, trade secret protection is irretrievably destroyed. Thus, whatever is disclosed in a patent cannot be the subject of a trade secret. To this limited extent, inventors must choose what features of an invention to publicly disclose in a patent and what features to retain as secrets. But it very often happens that different features of an invention may be protected by both patents and trade secrets.
For example, a new software-based invention may be implemented by a very specific artificial intelligence algorithm that draws on particular data sets and makes certain computations to produce useable outputs. In that situation, the AI algorithm is ideal to protect as a trade secret. It may be hard to reverse engineer and would be too narrow to protect with a patent in any event—both, signals that a trade secret, and not a patent, is the best form of protection. At the same time, more general attributes or functionalities of the invention may be disclosed and claimed in a patent without revealing the specifics of the algorithm. For an invention like this, trade secrets and patents complement each other in providing complete protection. Neither form of intellectual property, by itself, would fully protect the invention.
Originally printed in Haaretz Magazine on February 20, 2019.