Patent Early? Maybe Not

By Jackie Hutter

Patent lawyers almost always instruct inventors to file for patent protection at the earliest possible date, but maybe this is not the best advice for many startups. To the contrary, I think this conventional advice is flawed–at least when it applies to inventions involving unproven products with no known customer base. Put simply, unless customers show that they care about the product that will be covered by the patent such that they are willing to pay more than it costs to make the product in volumes that will lead to sustainable profits, the patent will provide value only for the attorney who files it. Indeed, the absence of customers who wanted to buy the product is why very few of the patents that I have obtained for clients over my almost 20 years in the IP world have made money for their inventors.

In my current role as an IP Strategist, I frequently counsel entrepreneurs that, prior to writing a $8-25K check to a patent attorney, they should instead first undertake customer discovery to determine whether anyone even cares about the awesome new product for which their attorney recommends they obtain patent protection. It’s one thing for me to counsel entrepreneurs on why it is far better to find customers before embarking on obtaining a patent and building a company around the patented product, but examples speak much more saliently than I ever could. In this regard, I suggest that folks who are thinking about starting a company based on a product innovation listen to this piece that appeared on NPR’s Morning Edition a while back. This story, which is an ongoing piece following a pair of entrepreneurs, should serve as an object lesson for people faced with the decision of whether to file for patent protection at an early date or to spend their money on other tasks more likely to create value for them in the long run.

MD Brush, the startup product company featured in the NPR story, was started 7 years ago based on the premise that customers would clamber for a toothbrush with an innovative handle design that improved brushing technique and overall gum health. The company was founded by first-time entrepreneurs, one a dental hygienist and the other a dentist. As with many startup stories, the deep expertise of the founders made them absolutely certain that they–and only they–knew how to solve the problem of getting people to brush their teeth correctly. The piece details the many issues faced by the MD Brush co-founders while bringing their toothbrush to market, much of which involved twists and turns in dealings with Asian plastics manufacturers. The founders filed a patent application at the start of their product development process; to date two US patents on their toothbrush design have issued.

These entrepreneurs spent $500,000 over the 7 years they have been laboring to bring their toothbrush to market. At the end of the piece, we see that the entrepreneurs were pleased that a box of their toothbrushes had finally made it to them in the US:

“It was a heck of a feeling . . . .To go through all that and finally see the vision that we had, right there in a completed form was a great thing.”

It certainly must have been exciting to see their hard work and financial sacrifice come to fruition. Oddly, however, the entrepreneur implies that his vision was to see the toothbrush actually made, not to actually sell the product. Notably absent from their multi-year effort is any consumer testing of the product. It appears that, even after all the trials they experienced in the last 7 years, the MD Brush entrepreneurs still believe the old adage “build a better mousetrap and the world will beat a path to your door.” The NPR reporter signals that the end of his story is really the beginning of more hard work for the MD Brush entrepreneurs:

“There is, of course, that final hurdle: whether anybody will pay $10 for a toothbrush.”

Those familiar with Lean Startup and customer discovery will recognize that what the reporter says is the “final hurdle” should really have been the MD Brush entrepreneurs’ first step. And, only when they validated that enough customers would pay $10 for their toothbrush, should they have undertaken the hard and expensive work of bringing their product to market. Most certainly, they should not have gone through the effort and cost of obtaining two patents on a product for which they did not first confirm that a market existed.

Of course, patent attorneys relying on conventional wisdom would find customer discovery prior to patent filing to be a risky proposition. From their perspective, finding out whether customers would be interested in buying the product before filing for a patent could operate as a public disclosure that could eliminate the opportunity to file for patent protection. I will address this topic in detail in a future post, but, if done competently, customer discovery should not affect the ability to file patent applications on a product being validated in such efforts. In short, if an entrepreneur is disclosing the patentable features of a product during customer discovery, she is doing it wrong.

After listening to the NPR piece, one hopes the entrepreneurs will be successful in finding customers for their toothbrush, which will mean that their two patents will help make it possible for them to keep other companies from leveraging their many years of hard work and expense. However, the lack of a validated customer for their new product design leads me to believe that their patents will end up being worthless because not many people will care enough to buy their $10 toothbrush. Other would-be product entrepreneurs should learn from their story and, at a minimum, be inclined to resist the conventional advice to patent first and validate the market later.

[This post originally appeared at the IP Asset Maximizer Blog.]

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