Inventions that are worth protecting are at the core of almost every new technology startup. For a newly formed company, it can be daunting to evaluate the amount of time and effort that should go into protecting these inventions. While overlooking the patent process may be enticing to startup founders still deep in research and development, it is important to understand the basics and what to expect when the time comes to seek patent protection. This article will discuss the various stages of the patent process, including patentability searches, patent application drafting, and prosecution of the patent application to issuance. It will also discuss important decisions a technology startup must make when seeking patent protection. Many people have heard that the patent process begins with a patent application, but in reality it begins with an invention. If you have a new or early-stage technology startup or are planning on starting one, chances are this invention forms the core of your business plan for long-term success. As the startup and business plan are formed, a question undoubtedly arises: how do I protect my invention and what steps can I take now with limited funding?
1. The Patentability Search
Before taking any other steps, it is always a good idea to understand the intellectual property landscape surrounding the particular technology area of your invention. Searching public databases of published patent applications and granted patents helps you quickly establish how crowded the space is. During the search, you may find a published patent application or issued patent that describes a closely related invention. Other times, you may find no references that describe technology remotely close to your invention. In either case, the key to this patentability searching is helping to define the scope of protection you can get for your invention. The scope of patent coverage is limited to the inventive aspects which are novel and non-obvious in view of publicly available information. Defining this scope early is critical to making a decision on whether it is worth it to spend a significant amount of time and money to pursue a patent.
Determining the desired protection scope will help you formulate an application and prosecution strategy going forward. If you find your invention previously described in a patent application or granted patent, it wouldn’t make sense to go through the time and expense of obtaining a patent. On the other hand, if you find your invention is novel and key aspects are worth protecting for commercial success, it may be time to move to the next step of the patent process by preparing a provisional patent application.
2. The Provisional Patent Application
Once you have determined the scope of protection you want to pursue, it is time to move on to drafting a patent application. A provisional patent application is typically recommended to early-stage startups for two primary reasons: it postpones significant costs of patent prosecution by up to one year, and it secures a filing date for your invention. These benefits are due largely to the fact that a provisional application is filed with the USPTO but remains unpublished and unexamined. The USPTO effectively holds your provisional application in confidence for up to a year, by which point you must file a non-provisional application. You also gain the right to post a “Patent Pending” notice on any products you produce, which may be helpful in marketing or discouraging others from copying your invention.
So how does filing a provisional patent postpone costs? Simply put, non-provisional patent prosecution is expensive, and many of those costs are derived from a repeated back and forth with a patent examiner in addition to more expensive fees paid to the USPTO . As a provisional application is unexamined, these additional costs are not incurred for the duration of pendency of the provisional application, effectively delaying them for up to a year. Also, the formal requirements for a provisional application are significantly reduced, which leads some startups to seek a “cheap” or “cover-sheet” provisional application with limited description, oftentimes drawn from an internal technical document or memo. While this strategy can reduce the immediate costs of the provisional application significantly, it is critical to remember a provisional application can only protect the invention enabled by its description. It is important to think of a provisional application as a method to postpone the major costs of patent prosecution, not the costs of writing the patent application itself. The old adage “you get what you pay for” still holds true for drafting provisional applications.
The most important part of a provisional patent is that it secures a filing date. Ever since the US switched from a first-to-invent to a first-inventor-to-file system in 2013, establishing this filing date is absolutely critical to securing the rights of your invention. Getting the earliest filing date means you get the rights to the invention, even if someone else independently invents and files a patent on the same invention. The inverse is also true; waiting to file an application carries the risk of letting someone else beat you to the patent office. A provisional patent application is the most cost-effective way to secure rights in the first-to-file system. The filing date of the application also determines what prior art may be used against your eventual non-provisional application. This is extremely beneficial, as any documents published after you file your provisional patent can’t be used as prior art against what is filed in your provisional application, whether the published document is created by you or by someone else.
At a minimum, your provisional patent application needs to provide a description of the invention which is adequate to enable someone to practice the invention. Ideally, your provisional patent application will fully describe and claim the invention in detail as you would for a non-provisional patent application. Not only does this ensure the full benefit of the provisional application, it makes filing the non-provisional application significantly easier when the time comes.
3. The Non-Provisional Patent Application
At some point within one year of filing your provisional application, a non-provisional application must be filed if you wish to preserve your patent rights. At a bare minimum, the non-provisional application should incorporate all of the material from the provisional application reformatted to meet the USPTO requirements. In general, the non-provisional application should be written to address any shortfalls of the description of the provisional application. A good non-provisional application will need a detailed specification, a claim set including any claims filed in the provisional application as well as any new claims, and a comprehensive set of drawings. Of course, your non-provisional application must also include a clear statement claiming the benefit of the provisional application.
As a technology startup, it is more than likely that in the year since the provisional application has been filed, significant research and development has been completed on the invention. In fact, it is rare that the first prototype of the invention is the one that will go to market. If updates have been made to the invention, the non-provisional application should be used to supplement the provisional application with additional detail that improved the invention in the intervening year. Oftentimes a startup will also have gotten a better feel for the competitive landscape and alternative designs. If this is the case, the non-provisional patent application should include these alternative examples and embodiments. The good news is that assuming your provisional patent included substantial material and claims, the non-provisional application updates should be relatively straightforward and easy to prepare.
4. Patent Prosecution
Once your non-provisional patent application is ready and properly filed (along with a listing of the most relevant prior art uncovered during the patentability search), it is time to hurry up and wait, as most patent applications will not be examined for one or more years. The USPTO currently has a backlog of over 500,000 patent applications, so it is unlikely yours will be examined quickly. It is possible to jump the line and receive an earlier examination using the USPTO Track One program; however, this strategy is expensive, limits the number and type of claims, and is not often utilized without a significant reason, like imminent licensing or potential litigation.
Whether or not you choose accelerated examination, at some point the patent examiner assigned to your application will issue a first office action. The office action will take the form of a Restriction or Election Requirement, a Non-Final Office Action, or a Notice of Allowance. Each of these actions require a response to keep the application pending and non-abandoned.
A Restriction or Election Requirement is issued when the examiner identifies more than one independent invention in the claims. In the case of a Restriction Requirement, the examiner has identified more than one invention that is distinct as claimed. In an Election Requirement, the examiner has identified multiple related “species” of an invention. For example, if you claim both a helicopter and an airplane in a single claim set under the broader category of a flying machine, the examiner is likely to require you to choose either the helicopter or airplane as a species of the flying machine. In either case, the examiner is looking to reduce his or her burden, as he or she has a limited number of hours to search and prepare an office action. A response to the Restriction or Election Requirement necessitates a selection between the inventions or species the examiner identified.
After the response to the Restriction or Election Requirement, or as a first office action, the examiner will typically issue a Non-Final Office Action that rejects or objects to one or more of the pending claims. The examiner may cite the most relevant prior art references and explain why your claims are unallowable, whether for novelty or obviousness reasons. The examiner may also reject or object to the claims over clarity issues and other informalities. In the response to the Non-Final Office Action, the claims may be amended to overcome the cited references, or arguments may be presented that explain to the examiner why the claims are allowable in view of the cited references. An examiner interview may also be conducted prior to filing the response, so that the rejections, cited prior art references, and proposed amendments may be discussed. The examiner interview is an invaluable tool for understanding the examiner’s position and determining an efficient course of action. In any case, a response to the Non-Final Office Action must be filed within six months, three of which are free months while the second three require an additional late fee.
As the examiner considers your response, he or she can determine whether to allow the claims, maintain the rejection, or issue a new rejection. If the examiner believes your claims remain unallowable, he or she will issue a Final Office Action. In cases where you presented arguments without significant claim amendments, the Final Office Action may maintain the prior rejection and include reasoning for why your arguments were unsuccessful. If claim amendments were made, the examiner may prepare a new rejection based on additional references or different reasoning. In either case, a response must be filed once again within six months of the mailing date of the Final Office Action. Multiple options are open for continuing prosecution of the application. An After Final Consideration Program request, an appeal, a Request for Continued Examination, or a continuation application may be filed, each of which are used in specific circumstances. In many cases, the options for response may reset prosecution with the payment of additional fees, so that the next office action will be a Non-Final Office Action or a Notice of Allowance. Depending on the importance of the claims and the particular strategy, this may turn into a long back-and-forth with the examiner until the claims are finally allowed or the application is abandoned.
Assuming you addressed any rejections and objections in the most recent office action, or the examiner didn’t have any further objections or rejections, you will receive a Notice of Allowance. A Notice of Allowance is good news, as the examiner has indicated that each of your pending claims is allowable and that you may soon be the owner of a granted patent. Before you get your patent, however, you must pay any outstanding fees, pay an issuance fee, and supplement your application with any required documents so that it is complete. An incomplete application will not issue, even if the claims are allowable, so ensuring the application is complete and correct is paramount. Once you have paid the issuance fee, the application moves into issuance and you can sit back and await your patent.
As you await your patent, the USPTO will send you a notification of your patent number, and within about four weeks you will receive your patent. The only thing left to do to maintain your patent rights is the timely payment of maintenance fees to keep your patent in force beyond four, eight, and twelve years. With the payment of these fees in a timely manner, the patent will be in force for twenty years from the filing date of the non-provisional application, plus any adjustments caused by delay on the part of the USPTO. You can finally rest easy knowing your invention is protected – congratulations!
The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the way can help simplify future steps in the process and make obtaining a patent significantly more efficient. Early on, determining a patent scope through patentability searches can help narrow a patent application to the important novel aspects that are most worthwhile to protect. Similarly, preparing a thorough provisional application can make the non-provisional application preparation much simpler and afford better protection against later published works or filings by others. By thinking about these key decisions ahead of time and being aware of the patent process, you can be more prepared when the time comes to seek protection for your invention.
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Join the Discussion
7 comments so far.
Herman penneySeptember 11, 2018 07:20 pm
What about all those companies advertising, to help with inventions, there’s dozens out there. Is this a good or bad way to go
JimmyAugust 27, 2018 11:01 am
Nice Intro indeed. As an inventor (and small business owner) with a half dozen technology patents issued over the last couple of years, no one seems to talk about the reality of patent.
1) The patent lawyers really do not provide useful advice regarding the patent unless you ask the specific question regarding the viability of a patent.
2) Yes you’ve received your patent, now what? If you believe your patent is being infringed by others, there is not much you can do unless you have deep pockets. Even approaching a potential infringer can cause your startup to spend thousands of dollars and numerous of sleepless nights dealing with the IPR or PTAB, all because someone is infringing. Another issue to be concern with is the declaratory judgment portion that a potential infringer can file just because they feel threaten that you may file an infringement suit.
3) Patent laws and regulations have a life of their own and depending on the examiner, lawyer, and/or court could mean a different outcome. An example is 103 (non-obviousness):
“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”
The wording “identically” does not really mean what the average person believes it means. The average person would believe that “identically” would mean that every element of a claim would have to be stated in a prior art before it would be considered as non-patentable. This isn’t the case as logically as the wording may seem, “identically” does not mean “exact”. Additionally, the wording “prior art” does not refer to a singular reference but rather that multiple references can be put together by an examiner with the examiner picking parts of each prior art to cover your claims.
So the reference of “identically” and “prior art” is really fluid and take a life of its own within the patent world. Then you throw in the “person having ordinary skill in the art” into the mix means logic, reasoning, and common sense have no place within the process. After all, a “person having ordinary skill in the art” would know that identically means you can put 2, 3, 6, 8 prior art (or should it be “arts”) together (this may actually be “1+1=3” math).
Overall, as a startup thinking about venturing into the underworld of patents, make sure that you ask a lot of questions (who, what, where, when, and how) and continue to ask questions until you are satisfied with the answer(s).
Eric BerendAugust 26, 2018 06:57 pm
@ 4., ‘Anon’:
IOW, IP pirates.
AnonAugust 26, 2018 02:21 pm
Two words: Efficient Infringement.
Night WriterAugust 26, 2018 11:35 am
@2 Benny A search of prior patents (freedom to operate) is critical to determine if your end product might infringe a granted patent, regardless of whether the startup obtains, or even intends to request, a patent.
Here in the USA, Lemley has advocated for not bothering. Just take and anything you have to pay will be just at most a fair licensing fee as eBay ended injunctions and IPRs ended patents being worth more than the cost of filing an IPR.
BennyAugust 26, 2018 05:43 am
“If you find your invention previously described in a patent application or granted patent, it wouldn’t make sense to go through the time and expense of obtaining a patent”
Never mind obtaining a patent, this can put the brakes on your whole business, even if you do obtain a patent. A search of prior patents (freedom to operate) is critical to determine if your end product might infringe a granted patent, regardless of whether the startup obtains, or even intends to request, a patent.
TernaryAugust 26, 2018 12:05 am
A nice introductory article for people looking into obtaining a patent as part of their business strategy. The article makes it appear (not intentionally) that getting a patent is a rational and even a linear process. It sometimes is. But mostly it is not. If you are considering spending money on pursuing a patent, you may want to consider several, rather strange, and somewhat difficult to explain barriers in getting a patent. I will mention just 2 of them, but there are more.
1) your claimed invention may be rejected by the USPTO as being patent ineligible. This often happens to patent applications related to software based inventions. The concept behind such rejections is that an invention may be considered to be directed to an abstract idea. Ask your patent attorney if this could apply to your invention.
2) your claimed invention may be rejected as being “obvious” over one or more prior art disclosures. For many novice patent applicants the USPTO arguments for such rejections often will come across as nonsensical, because an Examiner “combines” aspects from different prior patent documents that seem to be unrelated. Inventors often tell me that “this is not how it works or can work.” That does not matter under patent law. Unfortunately, an Examiner is allowed under the law to combine (even in a seemingly illogical or unscientific manner) aspects of different inventions, to prove that your invention is obvious over the prior art.
You may want to read up on cases of inventions related to your own inventions that have experienced these above rejections and how these rejections have been overcome or not. You can review these cases on the Public PAIR website of the USPTO. It may be an unpleasant eye-opener of what patent prosecution actually entails.
Furthermore, getting a patent may not be sufficient to secure the Intellectual Property of your business. The validity of an issued patent, in post-issuance procedures, and especially in a stage wherein they are asserted against competitors, can and is often challenged and an issued patent may be declared invalid. At that stage you have lost the patent on which you thought you could build your business.
I personally believe it would be foolish not to try to protect your business by way of one or more patents. However, I strongly recommend that you prepare yourself as to what to expect in trying to get a patent and what its value is.