Before deciding to pursue patent protection, it is a best practice to gauge the patent landscape behind your inventive concept to determine whether that concept can fit within that landscape without being overly narrow.
The purpose of a patent search is to locate granted patents and patent applications (aka prior art) that may affect whether your inventive concept is patentable. A patentability opinion is a professional recommendation of how your patent application would fare during examination.
At Intellent Law, a patent search yields a search report that includes a formal record of the search terms used throughout the search, a summary of the USPTO and CPC classifications the inventive concept may fall under, and two lists of prior art references. The first list is a novelty list and consists of prior art that disclose all the elements of your inventive concept. The second list is an obviousness list and consists of prior art that share one or more elements with your inventive concept.
A patentability analysis is best done after a prior art search. However, a search may be unnecessary if you, the inventor, have already performed one, or knows the patent landscape sufficiently to provide the practitioner with enough information to provide a patentability opinion. Patentability is determined based on the risk of receiving a novelty or obviousness rejection in light of the prior art. The analysis also includes a professional recommendation of what type of patent application should be filed at the invention’s current stage of development.
Some practitioners argue that a patent search can form biases that can affect the quality of the patent draft. This can happen if specific wording was used to describe components that are also found in your inventive concept. However, diving into a patent application without carefully weighing the risks is not only not advisable but also highly unprofessional.
What are the first steps for patenting your latest invention? To find out, you probably want to meet with a patent attorney. But what’s your intellectual property protection budget?
Patent attorneys have the technical background and Patent Bar credentials of a patent agent, but have three years of law school and State Bar passage on top of it. They’re authorized to do everything: draft your patent, correspond with the USPTO, sue that competitor of yours who totally reverse-engineered your patented invention, and give you legal advice if someone tries to purchase your idea. But they typically charge by the hour – for everything. Even the smallest law firms charge over $8000 to draft and file a full nonprovisional patent application, and this usually doesn’t include fees for illustrations, phone calls, and emails. Patent attorneys are expensive; they rightly capitalize on their degrees and qualifications to charge attorney rates.
You wouldn’t take a Ferrari to pick your grandma up from the airport, would you? She won’t even notice the ride, and you’ll be paying an arm and a leg for premium gas and rental insurance. At the early stages of your startup business, you don’t need litigation or acquisition legal services. You need to cement your intangible assets by patenting whatever’s patentable.
Patent agents are not legal powerhouses – we’re more like Hondas. We practice only patent prosecution – meaning we can only help you obtain that patent, and can’t represent you in court if you sue an infringer. We are focused practitioners who work to keep your patent protection costs low.
The future business value of the granted patent depends on the way your application is drafted, and, at the end of the day, patent applications are best drafted by lean, focused technical writers who understand your business and keep everyone involved in the learning process.
If you are a startup seeking patent protection or if you are just on a strict budget, a patent agent may be your answer. Request a free consultation to talk to a patent agent today.
Are you planning a startup where your most valuable asset is your intellectual property? If so, you are probably looking to get that IP patented. If not, then you might be behind!
1. What should I file? Early-stage startups usually file a provisional application before diving deep into high cost nonprovisional applications. Provisionals are lean applications with enough disclosure to cover as many embodiments of your invention as possible in order to secure an early filing date. Provisionals are cheap and relatively easy to file. Nobody sees them unless you later file a nonprovisional application on the same subject matter. Within a year, provisional applications must be converted to nonprovisionals, or they expire.
2. When should I file? After you publicize an idea, a 1-year timer starts ticking. At the end of that year, the idea enters the public domain and you can no longer file a patent on that idea. The U.S. grace period is actually fairly generous – the rest of the world is not so forgiving. Product startups hoping to launch a Kickstarter or Indiegogo campaign should file at least a provisional application first.
3. Do I need a patent? Patents provide a limited monopoly in exchange for public disclosure of your invention. This limited monopoly grants you the right to exclude others from manufacturing, using, exporting, selling or offering for sale your invention for a period of time (20 years after filing a utility patent; 14 for design patents).
If you are selling or plan to sell a product that can be readily copied (by reverse engineering), it’s probably best to get a patent on it. Keep in mind that the product doesn’t need to be tangible: SaaS patents are widely prevalent in the industry today.
4. Should I write it myself or hire a professional? There are many resources available that will guide you through the patent process. One example is Pressman’s “Patent It Yourself”. But once the first Office action comes around, you may be hard-pressed to fight it if you realize you left out a key element in your description.
If you think you have a patentable product or if you are just plain confused, feel free to shoot us an email at firstname.lastname@example.org or schedule a free consultation.