Patents are often essential for startups to secure funding and gain a competitive advantage in the marketplace. However, there are some common mistakes that startups can make when it comes to patenting their inventions. In this article, we will highlight six of the most common ones I’ve seen.
1. Publicly Disclosing Before Filing a Patent Application
Far and away one of the most common mistakes that a startup can make is publicly disclosing core technology, or any technology really, before filing a patent application on that tech. Best practice is to file a patent application before any sort of public disclosure, offer for sale, or even contracting with a third party for additional development. The reason is that, in the U.S., you have one year from the earliest public disclosure or offer for sale to file a patent application or the tech is considered surrendered to the public and cannot be patented at all. In certain foreign jurisdictions, it’s even more strict and any public disclosure at any point prior to filing a patent application can cause you to lose your rights.
Examples of public disclosures include booths at tradeshows that showcase the technology, giving a presentation on the technology at a conference, writing about the technology in a tech journal, offering the product for sale on your website, or even a mere attempted sale of the product or underlying invention directly to a larger company. Additionally, if you are going to contract with a third party for the development of the technology, non-disclosure agreements and other safeguards are highly advisable but, even then, disputes and loopholes can arise. In all of these cases, it is best to stake your claim with a patent application first.
Now this does not mean that you need to decide up front each and every country in which you want to file. That can get very expensive, and you can preserve your rights in most jurisdictions by filing one patent application and delaying decisions on other jurisdictions for around a year or more. You might start with a U.S. application or an international PCT application and then decide later if you wish to file in Europe, Asia, and other areas.
2. Thinking a Provisional Covers You
There are so many pitfalls with provisionals that it could be the subject of its own article. For the uninitiated, a provisional patent application is a patent application that is cheaper to file and has less formal requirements but does not confer any rights since it never gets examined or granted. Rather, the provisional patent application basically holds your place in line and gives you a year to file the actual patent application (called a “utility patent application”). So what a provisional does do is grant the applicant a filing date, which means if anyone else invents something similar in the interim, you are still entitled to seek patent protection before them and their invention does not become prior art to your invention. Provisionals also stop the public disclosure bar discussed above since you already have something on file.
That said, the problems with provisionals are many. For starters, the provisional is only as good as the level of detail it includes. If something is added to the invention later and it is not in the provisional, you could lose the priority date of the provisional when filing the actual utility patent application, which defeats the point of filing the provisional in the first place.
Provisionals also start the clock ticking for filing in foreign jurisdictions, which can greatly accelerate the costs you incur to protect your invention in valuable markets across the globe. And it does so all while delaying examination in the U.S.
So while provisionals can be useful to companies trying to buy some time while they get off the ground and seek additional funding, if you already have the funds you might want to skip straight ahead to the regular utility patent application.
3. Failing to File for Patent Protection Early Enough
Another common mistake that startups can make is thinking their invention is not ready for patenting yet and then waiting too long to file for patent protection. In some countries like the U.S., patent protection is granted to the first inventor to file on the invention. This means that if a competitor files a patent application before your startup does, your startup may lose the opportunity to obtain patent protection at all. And this does happen, especially in hot industries where everyone is striving toward the same solutions to the same problems at the same time.
To avoid losing patent protection, startups should file for patent protection as soon as possible after the invention is conceived. This will help them secure their intellectual property rights and prevent competitors from copying their invention unencumbered. And remember, you don’t actually need a working prototype to pursue patent protection as long as you can articulate how to make and use your invention.
4. Failing to Consider the Full Scope of the Invention
Don’t sell your idea short. You might have set out to solve a particular problem or to get into a certain industry, but that doesn’t necessarily mean that your invention is limited to those contexts. Think of all the possible variations and implementations of your invention, and then disclose them in the patent application. This can lead to much broader coverage and a much more valuable patent. It can also help you circumvent or even target potential infringers down the line as well as monetize your invention for other markets outside of your startup’s market.
5. Thinking the Invention is Not Even Patentable
Maybe you think your invention is not really even an invention at all but just an incremental improvement over existing art. Don’t sell yourself short! It could still very well be patentable. Consulting with a licensed patent practitioner is a good first step.
One misconception that is particularly common amongst the startup community is thinking that software is not patentable. That is simply not true and software patents are granted all the time. U.S. law says that software per se is not patentable – i.e. the logic steps in and of themselves. But you can still patent a device that executes the software or a process that involves the software steps. So it’s all about the approach you take, and it is very common to patent software inventions (including those related to artificial intelligence).
6. Failing to Consider Trade Secrets, Copyrights, Design Patents, and Trademarks
Okay, so this isn’t a patent mistake per se, but it’s still an intellectual property mistake. Failing to consider other aspects of IP can also have dire consequences for your emerging startup.
Trade secrets – Do you have some? What steps are you taking to protect them? Business processes and even technology that isn’t particularly suited for patenting can still be protected by trade secrets. However, the company needs to take reasonable measures to safeguard those trade secrets. An IP attorney can certainly help with that, including drafting employment agreements with non-disclosure clauses as well as putting other systems into place to safeguard your trade secrets.
Copyrights – Did you know source code can be copyrighted? In some cases, so can the aesthetic design of your graphical user interfaces, website, etc.
Design Patents – The aesthetic design of your inventions can also be protected through design patents. These patents are easier and cheaper to get, but harder to infringe. Still, if the aesthetic design is particularly important to your business, you should consider it.
Trademarks – Even if you haven’t sought or been granted federal trademark registration yet, have you been marking your company name and product lines with the superscript “TM” symbol? If you have obtained federal trademark registration, have you been marking your company name and product lines with the “®” Symbol? You could lose some of your rights if you don’t do that.
Plus, if you’re a startup you should really think about seeking federal trademark registration for your company name and product lines in the first place. Federal registration provides nationwide protection of your mark, and chances are you’re thinking big like that anyway. Trademark registration is a relatively affordable way to safeguard a core aspect of your business – its name, reputation, and goodwill.
Have questions about protecting your invention? Rogitz & Associates is here to help. Specializing in patent protection for high-tech inventions, our phone lines are always open. Feel free to call us at (619) 338-8075.