- File early (It’s true for trademarks, also)
Your time to file for
patent protection is limited and patents should be contemplated early on in development. In fact, Verna Law will send you a questionnaire to help answer questions and guide the discussion of the product and the patent.
In 2012, the U.S. patent system switched from a first-to-invent to a first-inventor-to-file system. This subtle difference in terminology could mean dire consequences for those who delay seeking patent protection. You need to set the stage and framework for developing and protecting the technological advances that provide an advantage in the marketplace. The goal is to generate sustainable revenue and growth by filing a patent, allowing you to control the product.
Today, getting a patent is, unfortunately, a race to the patent office ever since the adoption of the America Invents Act on September 16, 2012. Regardless of who conceived of the invention first, the first one to file their patent application “wins.” Also, if an individual/entity begins using an invention (called a “user”) more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent, as long as the user did not derive the invention from the subsequent inventor. Being first prevents these issues.
If you plan to seek patent protection abroad, publicizing your invention at any time before filing a patent application could put your foreign intellectual property rights in jeopardy. Therefore, file early and keep quiet until you do. You should seek patent (and trademark) protection abroad, mainly because most products are not made in the United States and even if the product is not to be sold in the country where it will be manufactured, patent protection in that country may be the only avenue to recompense if the patent is infringed.
Don’t forget that your first step is to determine the scope of protection available within the context of potential demand in your product before filing.
- File again as the invention evolves – there is always more than one iteration
As your startup continues to develop its product or products, consider each new feature as a possibility for patent protection. Startups that file one early patent application and stop may find that, once the patent issues, the product has moved far beyond what was in the original patent application. The new product’s iteration may end up being under-protected or not even covered by the patent at all.
It is important to reevaluate patent protection on a regular basis and consider filing on new features of the invention when applicable. If the product is evolving quickly, consider filing a provisional patent application or a series of provisional patent applications within a year before filing a utility patent application.
- Do not wait for your patent to issue
Patents take time. While there are avenues available to expedite examination, on average it takes more than two years for a patent to be granted by the U.S. Patent Office. About 30 percent of patent applications do not make it through at all.
Having an issued patent may help to get funding for your startup and secure your place in your market. But, do not wait until your patent issues to commercialize your invention.
Keep your startup moving forward and keep developing. Chances are, you will solve additional problems along the way, which may lead to even more important inventions. In the meantime, you will be building your brand, reputation and revenue.
When discussing patents, the focus is often on utility patents, but design patents should also be considered as part of a well-rounded intellectual property strategy. In general, a utility patent protects the way a product is used and works, while a design patent protects the way the product looks. By the end of 2015, the U.S. Patent Office had issued more than 9.2 million utility patents, but only about 746,000 design patents.
Design patents can provide significant value as a supplement to utility patents or as a replacement when utility patent protection is unavailable. Software utility patents are still available in the United States. But, following the U.S. Supreme Court’s decision in
Alice v. CLS Bank, obtaining utility patent protection for software-related inventions has become more difficult and less predictable. Design patents provide a viable option to protect certain features of software-related inventions, particularly the graphical user interfaces.
The term of a design patent is slightly less, 15 years from grant for a design patent versus 20 years from filing for a utility patent, but so is the cost. Also, design patents often can be obtained much more quickly than utility patents.
- Do not rely solely on patents (as this firm has always said)
While patents are a valuable asset to any startup, they are only one piece of the puzzle. First and foremost, a startup needs a good product or service to be successful. The Patent Office awards patents for new and non-obvious inventions. Receiving a patent does not mean, however, that it is necessarily a good invention or one that anyone will want to buy. Make sure what you are protecting is worth protecting.
Trademarks. A
trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods and the quality of those goods of one party from those of others. Having a strong and recognizable trademark can be extremely valuable for distinguishing you from the competition. And, unlike patents, a registered trademark never expires as long as you keep using it and filing the proper renewals. Trademarks have different filing rules than patents, so it is best to start early and have a trademark clearance search done to ensure that there are no conflicts that could prevent your use of the trademark.
Finally, depending on the type of business your startup is in,
copyright and
trade secret protection also should be considered in your intellectual property strategy.
If you have any questions about patent law, patent applications, or patent infringement, please call Verna Law, P.C. at 914-908-6757 or send an e-mail to
anthony@vernalaw.com.
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