If you are a startup or a solo inventor, you may have thought of applying for a patent as one form of intellectual property protection. This blog post attempts to set forth some very basic concepts of patenting that a startup or a solo inventor must be aware of. Of course, there are many more issues to keep in mind, including whether you should even apply for a patent or go for other forms of protection (trade secret, copyright, etc.). Some scenarios are presented below.
1. “I have an idea – only my wife knows about it.”
A very common mistake by many inventors is that they tell their idea to someone who is not under a Confidentiality Agreement or a Non-disclosure Agreement. As a result, in the eyes of the law, the disclosure becomes public and sets off a clock (1 year) to file a patent application in the US. So, shhh….! Talk about your idea only to your attorney or agent.
2. “I don’t have a working prototype yet, that is why I am not filing for a patent.”
It does not matter if your idea has not been implemented in the real world, or is even close to it.
According to the Manual of Patent Examination Procedures (MPEP) issued by the USPTO, “[r]eduction to practice may be an actual reduction or a constructive reduction to practice which occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application.” See, MPEP §2138.05. In view of the America Invents Act of 2011, US patent law changed from being a “first to invent” to “first to file.” In other words, waiting to have an actual prototype or a model may be a risky strategy if a competitor files a patent application before you. So, file as soon as you can!
3. “I have a cool software I want to patent.”
In the US (and most places in the world), software per se is not patentable. What might be patentable, and it is a big might, is some physical and tangible embodiment of the software. Recent Supreme Court decisions in the software and business methods areas have added more confusion to what forms subject matter that is eligible for patent protection. In July 2015, the USPTO has issued guidelines as to how a software patent application may be examined at the USPTO and includes examples of ideas that are and are not patentable. However, each case is unique and therefore, patenting your software as a physical embodiment can be very tricky and unpredictable, even though your idea may be new and not obvious.
4. “Patent Lawyers are expensive.”
They can be. Lot of big law firms will have patent attorneys and patent agents who prepare and file patent application (Disclaimer: The author is a Patent Agent at a big law firm). However, you don’t have to go for a big law firm necessarily. While there may be business advantages to going to a big law firm, (e.g., they can offer you a range of services all under one roof), many solo patent practitioners and smaller boutique patent firms may suit your needs just fine.
Further, going to firms/practitioners in smaller cities and towns may be advisable, as there operational costs (and hence the client fees) are relatively lesser than a big city big law firm. Finally, you may prepare and file the patent application pro se (i.e., yourself) – the USPTO also has an inventor assistance center where you can call with your questions. However, just like other areas of law, drafting a patent requires knowledge of various legal issues in patents (in addition to the technology area knowledge), and it is highly recommended that you go to a reputable patent practitioner to guide you in this process.
5. “I have a patent! Now what??”
Congratulations! Now what? Merely having a patent is like having a fancy car and never driving it around. Once a patent has been obtained, one must think about potential licensing opportunities, or monetizing by selling the patent or even dedicating it to the public, the latter two scenarios arising if you think the patent is no longer relevant to your pursuits as a company or as an individual (good PR!). Alternatively, if you think that the issued claims are too narrow, consider filing a broadening reissue within two years from the date of issue of the patent. Still alternatively, prior to issuance, if you think the patent specification discloses other embodiments of your idea that were not claimed previously, consider filing a continuation patent application with claims directed towards those aspects, and claiming priority to the original filing date of the parent patent application.
Rushi Sengupta is a Patent Agent with BakerHostetler LLP in Washington DC. This article reflects the author’s views, not those of BakerHostetler LLP, and should not be construed as legal advice.