In a series of articles, I’d like to recall and share some of my experiences as a dental product developer since 1987 and some basics about how our own product development process works at Practicon, Inc. Free advice is worth the cost, but maybe something herein will help someone who is equally excited about an idea for a better “mouth” trap.

For this article, the terms “owner” and “inventor” will be used interchangeably, though an inventor may “assign” or sell the patent rights to a third party (i.e. owner) if he/she so chooses. Further, the term inventor may refer to one or more persons responsible for the invention.

Once a new idea enters our product development process at Practicon, one of the first “filters” for it to pass through is the IP (Intellectual Property) filter. What is the status of the IP beyond the NDA, if any? Is the idea original and/or protected? Would protection be important? These are questions we investigate early in our development process since the answers can influence our ability/decision to move forward with an idea legally, financially, and strategically.

IP is a general term referring to many types of intangible, intellectual assets including patents, trademarks, copyrights, and trade secrets. This article will focus specifically on patents, and even more specifically on my experience at Practicon regarding whether US patent protection is worth the time and expense with regards to a specific invention. The need and/or justification for a patent is not automatic. A patent can have significant value or be as worthless as a piece of paper, depending on such factors as what it is protecting, its breadth of the protection, and its enforceability (both whether it CAN be enforced and whether it WILL be enforced). My hope here is to save inventors eager to “get a patent” time and money when a patent might not be worth it (no absolutes without a crystal ball).

I like this definition of a patent from Wikipedia: “A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention.” It says “in exchange” because after the owner has had a period in which to profit exclusively, they must then share use of the idea with the world. The concept enters “public domain” for the common good (think generic drugs, 3D printers, microwave ovens, or LED curing lights, as a dental example). Competition arises, prices fall, and inventors are forced to think of something even better. Trademarks and copyrights exist completely outside the patent system and are managed independently of any patent considerations. I won’t go into trade secrets, but it is worth noting that trade secrets never expire and are therefore the most valuable of all IP. They are also virtually free, other than the cost of keeping a secret. For example, can anyone else make Coke or original KFC? Can anyone else make Pampers diapers the same way as P&G? These are well-guarded trade secrets that cannot be reverse engineered, allowing exclusive profits for their inventors indefinitely (thus the real threat of industrial espionage).

Ultimately, whether an inventor chooses to patent his/her idea is up to the inventor and whatever legal counsel he/she has chosen. Refer to the product development bookstore imagined at the beginning of these articles. All the books on patent matters could easily fill half the store. A web search on any phrase containing the word “patent” produces thousands of hits. The subject is nearly limitless, ranging from patentability to procurement to enforcement to international rules, and is constantly changing with new laws. Anything I can offer here is very limited in scope, but it is based on what I have learned during years of dental product development considering the question, To patent or not to patent? in light of our limited market.

Let me say that I would not consider pursuing a patent without the assistance of a patent attorney or agent, preferably one experienced with the type of the invention. The decision to patent something is an expensive, multi-year commitment requiring knowledge and communication skills bordering on a second language. In my opinion, a non-provisional patent cannot be procured by oneself any easier than one could perform his/her own root canal. Understanding and negotiating international patent law borders on rocket science, in my opinion. It is conceivable that one could find his/her way through to a weak US patent allowance without legal counsel given enough time and determination. However, after issuance, attorney partnerships come in handy if/when enforcement becomes necessary. If one never expects to face infringement by a third party or never intends enforce the patent, why go to the expense of a patent in the first place, unless it is just to obtain a certificate suitable for framing? ?

Our process of deciding whether to seek/recommend a patent or not, or determining whether IP will be a factor in the “Go” decision at all, generally follows three questions:

1) Is the idea already patented or patent pending (by the inventor or by a third party unbeknownst to the inventor)?

If the inventor already has a non-provisional utility or design patent in hand, or one pending, then that question is answered. We’d look at the remaining patent life and study the claims (exclusive identifying rights or “boundaries” granted by a patent). Based on what we learn, we would move on from there with that filter behind us. Check!

If the inventor has not done any IP work in advance, a “prior art” search is a likely first step. Anything pre-existing, patented or not, that prevents a new idea from being patentable is called prior art. One can do a quick search using AI and internet search engines and keywords to see if the product is already out there in the public domain. If something similar is found, then where the IP stands becomes clear. An idea with public disclosure for over one year cannot be patented, or “re-patented,” in the US.

It is important to note that a self-search is by NO means an exhaustive patent search. In my experience, a definitive search requires an attorney with expertise and resources we average inventors do not have the time or ability to access, especially if one wants to seek international protection. Many ideas are patented without ever being manufactured and marketed, therefore never made known outside the USPTO (US Patent and Trademark Office) database. Some prior art conflicts may not be obvious, functioning under the same principle but not looking like the searched invention. Use of a similar idea still under patent protection without permission or license is an IP infringement, regardless of whether the owner ever commercialized the idea. After a self-search, I often decide whether to proceed with a full paid search based on (a) a “ballpark” estimate of the initial investment (design time, tooling cost, minimum order, marketing budget, etc.), all of which could be in jeopardy if a patent infringement is discovered later; and (b) my personal experience with the idea’s relative novelty; and (c) Practicon’s historical knowledge of market potential, if any. That is all subjective and judged on a case-by-case basis. It is usually worth the $500 to $1,000 for a true patent search to know that an idea is “free and clear” with the highest possible degree of certainty (still not guaranteed, but as close as you can get).

If an idea is found to be patented and/or marketed already, the inventor can try to advance the concept far enough to justify an all new patent application, thus allowing the patent system to do exactly what it was intended to do—encourage human advancement to the next level of utility or design with a profit incentive, financial, emotional, or otherwise. Alternately, having lost any claim to his/her idea, an inventor could attempt to contact the owner of a prior patent still in force and possibly license the patent, perhaps with Practicon or another manufacturing partner in mind. In the history of Practicon, that has never happened. If the patent has lapsed or expired, anyone can use or “practice” it AS IS without concern of infringement. Finally, the inventor can simply move on to his/her next idea, affirmed by the fact that they thought of something patentable. With over 12,000,000 patents out there now (yep, US patent 12,000,000 was issued June 24, 2024), count on an invention already being patented more often than not.

It is worth noting that “patent pending” is not the same as “patented.” Many things can happen during prosecution to dismiss a patent application, including the publication of a competing patent filed before the inventor’s own “priority date.” Pending patent applications are not published until 18 months after they are filed. Only then would they show up in a patent search, even if no patent has been granted yet. Inventors may even file a non-publication request which, if granted, keeps the application and USPTO communications confidential until a patent is granted. Until a patent is officially issued and published, there is always a risk that an earlier-filed patent may be forthcoming, possibly invalidating all the time and money invested into the then-infringing development. That is why there is always some sense of urgency surrounding the patent process. Look for an article on priority dates and the mystery of “First to File vs First to Invent” by our patent attorney, Ryan Simmons, coming up later in this series.

2) Can the idea be patented? How well?

If the idea is free and clear of any prior patent protection, it may indeed be because it has never been conceived of, or it may be that the idea is simply not patentable subject matter. For a new idea to be patented, it must be “useful, novel, and non-obvious” to someone knowledgeable in the field. Search on that phrase to find numerous online discussions of what it means, or better yet, rely on the opinion of your patent attorney.

Based on the prior art search and answers to the Practivations Questionnaire featured in Article 5 of this series, a patent attorney should be able to advise you in three areas concerning potential patentability of a new idea: (a) counsel on the probability or likelihood of an idea making it through the patent process, (b) advice on how lengthy and complicated (i.e., expensive) the patent procurement is likely to be, and (c) while very difficult to predict in advance, an opinion on how strong or enforceable a patent might be after issuance based on the number and strength of any potential claims. Make no mistake—attorneys do not have a crystal ball either, but hopefully he/she has been through a few prosecutions and has experience dealing with USPTO examiners and office actions.

3) Is it worth patenting?

If a new idea works from a patentability standpoint, you start the patent process, right? Not necessarily. When it comes to our own internal product ideas, answering this third and final question regarding whether to seek a patent requires some calculating. Patents are expensive and time consuming. Along with other startup costs, they must pay for themselves fast enough to reach that elusive return on investment (ROI) on schedule. The key is understanding the risk in advance. In the second half of this article, we’ll walk through that calculation and ways to reduce that risk, or even whether to pursue a patent at all. Stay tuned!

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Next up: Practivations Article 7: To Patent or Not to Patent? Part 2

Practicon was founded in 1982 with a vision of advancing dental health and increasing practice success through improving patient education. Building on a mission to Make Dentistry Better, we have grown to become a trusted developer and marketer of “Practical Innovations” that provide effective solutions for common problems, sold alongside a growing line of brand-name supplies. Customers describe Practicon’s products as creative, unique, and hard-to-find, many inspired or designed by dental professionals looking to Make Dentistry Better. Our product development mission is to develop exciting products that are relevant and useful in everyday practice—or in short, practical innovations.