There are many situations when obtaining a patent is not practical.  For example, if the inventor has been publicly selling or disclosing the invention for more than a year, then he or she cannot obtain a patent.  If the inventor cannot afford the fees that attorney’s charge for preparing/filing a patent application and/or cannot afford the fees that the USPTO charges to file, issue, and maintain a patent, then a patent may not be his or her vehicle for protection.  Additionally, even if the invention is patentable, and the inventor has filed a patent application, hurdles with the USPTO might be in the inventor’s way.  Specifically, the patent examiner could take a hard position against the inventor, the appeal board could back the patent examiner, and the Court of Appeals for the Federal Circuit could back the appeal board.  In this situation, only the US Supreme Court would be able to overturn the decision by the Court of Appeals for the Federal Circuit.  Encountering all of these difficulties with the USPTO and courts could result in the inventor not being able, or not having the resources, to procure a patent.  

In any of these situations, the inventor’s inability to procure a US patent does not mean that the inventor has to enter the market place unprotected.  Specifically, a trademark is another vehicle in Intellectual Property Law that can offer the inventor recourse.  Though it is never a guarantee that the USPTO will grant a trademark, they do cost significantly less to procure than patents, take less time, and are not quite as difficult to procure.  If the inventor has been selling, branding, or otherwise using his or her technology in commerce in connection with a mark, he or she can procure a registered trademark from the USPTO.  If the inventor has not been selling, branding, or otherwise using his or her technology in connection with a mark, he or she can start to do that, and then attempt to procure a registered trademark from the USPTO.  Accordingly, although the inventor could not legally stop competitors from making, using, or selling the invention, e.g., because he or she did not procure an issued patent, if those competitors were doing so with similar marks in commerce, then the inventor could sue the competitors for trademark infringement.  This is significant.  If the inventor already had a lion share of the market, and got that share while associating the invention with the mark, then not having a patent would not completely preclude the inventor from stopping his or her competitors from stealing a part of that market share.

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.