7 Crucial Mistakes to Avoid while Patenting a Mobile App

Patenting a mobile app can be tricky, but it’s important to do so before releasing it to the public. If you don’t patent your app before launch, competitors can come along and copy everything that makes your product unique. With so many pitfalls along the way – from not understanding what’s patentable to not finding out about a potential competitor’s application until after you submit yours – it can be hard to avoid making mistakes altogether. In this post, we’ll explore some of the most common mistakes people make while starting the process of patenting their mobile app and how to avoid them.

  1. Building an app for patent and not to fill a gap in the marketplace
  2. Releasing a test version to the public before filing a patent application
  3. Choosing the wrong IP protection
  4. Being unable to identify patentable features in the mobile application
  5. Not researching what already exists in the market
  6. Drafting an Improper patent application (in absence of a patent attorney who’s an expert on software patents)
  7. Not being clear about “provisional” and “non-provisional” patent applications

Building an App for a Patent

Steven Covey said, Begin with the end in mind. When building an app, ask yourself what the end goal is – are you building this app as an arsenal in your IP portfolio or are you building this app to fill a gap in the marketplace, with money as a by-product? Having an honest and clear answer to this question is the first, crucial step. If you’re building an application for the sole reason that you could secure a patent on the same, think again. Strategic business sense doesn’t allow for that.

Building an App for a Patent

Disclosing to Public Before Filing a Patent Application

The objective of a patent is to create a monopolistic right. If you do choose to go down the patent route with your app, rolling out even a test version to the end user before you file patent applications is the wrong move. Unlike copyright, which subsists as soon as publication is made, the premise of a patent is secrecy until the time you make disclosure through your patent application. Remember, everything that is in the public domain before you file your patent application will qualify as prior art. And will of course become open to duplication completely nullifying the purpose of a patent.

Disclosing to Public Before Filing a Patent Application for your mobile app

Choosing the Wrong IP Protection 

Patents are not the only way to protect your mobile app or its features. You also have design patents that many choose as a preferred mode of protection for apps, especially to protect the UI and UX.  Facebook, in 2017 had made a design patent application for “The ornamental design for a display panel of a programmed computer system with a graphical user interface, as shown and described.” This design patent showcases the app’s UI/UX. 

Copyright protection can help protect the look and feel of your app. And buttons, features and slogans can be protected by trademark.

Also read: Patents v. Tradesecrets – Which Way to Go?

Being Unable to Identify Patentable Features in the Mobile Application

We’ve said it before, we’ll say it again. Knowing what not to patent is as important as knowing what to. When you’re looking at building a mobile app, research shows that it makes better business sense to patent certain features of your app rather than the app as a whole. We say this for more than one reason. For anything to be granted a patent, it must fulfill the criteria of novelty and non-obviousness. Here are some features of apps that have strong patent potential. 

  • Communication Improvements

Think communication with servers and all the changes happening there with changing technology. Communication improvements that you make to your app can be the subject matter of patents.

  • Backend Processing

How your app works in crunching numbers on the cloud is a potentially patentable feature. The flow of operations on a phone may not have a lot to patent. But the phone’s interaction with other systems is potentially patentable

  • GUI

Applying for design patents on graphical user interfaces can prove to be strong patents. Essentially, these patents help protect the look and feel of your app. A lot of big players including Facebook and Apple have strong design patent portfolios. For instance, check out this design patent by a popular mobile application company on the “Display panel of a programmed computer system with graphical user interface”. Presented below is a glimpse from the design patent.

Source: Google Patents

  • Lite Versions

Operations that happen on the phone in lite versions of your app are patentable. With the advent of AI, these use cases are rapidly increasing. With the way you train AI being a unique element, this can make for a strong patent. Constructing a claim around a mobile device specifically may increase your chances of success. 

Not Researching What Already Exists in the Market

“Having an idea is just work half done.”

The other half of the work includes confirming the feasibility of the idea. It becomes ridiculously important to conduct extensive market research. The chances of an idea being made into an app, especially in this crazy tech age, is extremely high. So before you embark on a patent journey, look for what is already around. 

A novel idea is an important eligibility criterion. This is because a patent is a way to show the world that your idea/invention is yours alone. So, you must make sure to document the whole process of development. It may be a good idea to also develop a prototype. This will not only help your patent attorney draft a comprehensive application but also to understand the impact of your application and what parts of it are eligible to be patented. 

Drafting an Improper Patent Application

A patent is only as strong as its application. A properly drafted application setting out claims that are specific and well-defined is key. If you have an app that utilizes more than just the mobile phone to process, your claim must state as such. This helps to create a stronger patent in the event of changes in patent laws or technology. Client and server level methods must be claimed. It is also important to include device and/or apparatus claims. The physical storage of the app software – computer readable claims – must also be included. 

A patent is enforceable for up to twenty years from the date of filing. The rapid growth of technology may render your invention completely redundant well within the 20 years during which your patent is enforceable. This makes it even more pressing for the patent application and claims to be well-drafted and comprehensive. All processes and potential technology developments must be factored in during the application process. Also consider how the final user will be interacting with your app in the future and how that affects the functionality of your app. Remember we went from floppy discs to CD roms and candybar phones to touch screens way faster than we imagined.

Also read: 3 Qualities of a High-Quality Patent Application

Drafting an Improper Patent Application while patenting your mobile app

Choosing the wrong type of application between a “provisional” and a “non-provisional”

When choosing to apply for a patent for your mobile app, you can either file a provisional or a non-provisional application. Provisional applications are the most common in the case of patenting apps. This is because they give you an added advantage of time and help secure your ideas. Also, a provisional application can be filed without you having to provide a detailed description of your invention. Here’s a round up of some reasons you would choose to file a provisional application: 

  1. It gives you a 12-month head start to develop the product before you are bound by disclosure
  2. It allows you to use the term ‘patent pending’ on your product
  3. It’s economical as opposed to non-provisional applications

Non-provisional applications on the other hand must be filed with a complete claim and specifications. They must contain a written description of the invention and a claim which legally defines the invention. This means this document makes full disclosure of your ideas and your app. When all aspects of your app are finalized and ready to go is when it makes sense to file a non-provisional application. 

Patenting a mobile app - Choosing the wrong type of application between a “provisional” and a “non-provisional”

Wrap Up

We’ll leave you with some final thoughts that you ponder on before going down the patent route:

  • The purpose your mobile application serves –  it’s important that the app fills a market gap
  • What’s the right type of IP protection various features of your app need
  • Which apps already exists in the market that are similar to your app
  • Have you disclosed the app to public before the patent protection
  • The timeline of developing and preparing the patent application in line with your business plan for the app

Understanding whether your app is eligible for a patent is only the tip of the iceberg. Whether this fits into your business plan for the same is a bigger consideration. The want for a patent must balance with the fact that doing so will ultimately make your innovation public. Remember, patents don’t make products successful. Patents protect great products, but it is your product that you need to invest in before you have a patent to protect it. 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

Idea Evaluation: 6 Questions to ask while Selecting Ideas for Patents

Is your ideas to budget ratio usually skewed – in favor of ideas? Evaluating ideas for patentability becomes a brain-drain exercise in such a scenario. However, selecting the right ideas will most efficiently put your budget to work. This post lays out a framework to help you choose ideas for patenting that have the most potential.

Most enterprises choose to evaluate patents after they issue, which is much easier than at the beginning of the process where ideas are selected for patenting. The ideas that will be the most valuable as patents require speculation. The ultimate claim scope and importance of an innovation to market success requires educated guesses at the beginning of the process.  The risk factor is almost always high.

So how do you make sure to minimize the risk while evaluating ideas for patentability? Ask these 6 questions:

  1. What is the value of your idea in the marketplace?
  2. How core is it to your business and its revenue?
  3. Is it already in a product or in a roadmap for commercialization?
  4. How ‘observable’ is your idea if a competitor were to copy it?
  5. What is the likelihood of a successful patent grant on your idea?
  6. How enforceable will your patent be?

Value of your idea in the marketplace

Imagine your product on a shelf next to similar products – would the innovation get someone to buy your product? Is it easier to use, cheaper, faster, or better in a way that would motivate a purchase?

Select the idea, if you can visualize that it would make your product the preferred choice for customers. To determine this, ask if your patent is going to cover a key feature of the product? Ask if it is useful or game-changing enough to be a steady contributor to your business revenue. Will the unique product drive over the next twenty years?

Evaluating Ideas for Patentability | Q1 - Will idea make your product a preferred choice for customers?

A great way to assess how much value your idea has is by working backward from what your marketing team has to say about it. For example, the tagline for your product might be, ’It’s twice as fast as the competition!’ Work back to the innovation that enables that boast to the market. If you find that the patent if issued would protect that innovation, you know you have a winner. Having a market-driven approach is the right one to have when assessing ideas for protection. If your marketing team can’t say much about your innovation, there might be another idea more worthy of your budget. 

How core is the idea to your business?

Some ideas in your repository may be revolutionary. Some of your broadest innovation may happen in parts of the business that may have little market potential. These revolutionary ideas are not always synonymous with big profits. On the other hand, there may be ideas that don’t seem revolutionary but can protect large portions of the company’s profits. So, it becomes imperative to weigh ideas against potential profit and growth of the business that they would protect. 

Evaluating Ideas for Patentability | Q2 - Is idea revolutionary or revenue generating?

Imagine this. A leading company sells inkjet printers. But they generate the largest chunk of their revenue from ink sales, not the printers which are sold at a loss. They may have revolutionary ideas for their printers without any corresponding profit. So ideas in this space are not as valuable. However, if they were to come up with an idea to make the ink in the disposable cartridge cure quicker…knock-off replacements would smear or otherwise not have the performance of the genuine product. Not the most revolutionary idea, but definitely one that is great for the business as it protects a higher margin product.  

Apart from revenue building, there are some ideas that may be an intrinsic part of your business identity. One that is important to dominate for your brand.  Ask if this is one of them. What value, if any, will it have over the next couple of decades without that product anchoring your business?  For example, a car brand may sponsor a competitive racing team and protect their winning edge even if it may never be used in the production automobiles.  Winning races drives customers to want your cars even if they bear little resemblance.

Is the idea going to be commercialized?

There may be a ton of great ideas from your innovators, but not every idea will be an important product/addition for the next 20 years. If you cannot imagine how to put your innovation into a product, it is almost certain that there is no revenue that it will generate. Investing resources in acquiring a patent for such an idea is of no value. But an idea that contributes to a product your business currently offers or something that is just to be released automatically becomes a frontrunner. Here’s a threshold test – Are there plans to put your innovation into a product? If yes, spend your IP budget trying to protect it.

Timing is everything in the innovation to patent journey. The closer the release date of the product your idea is related to, the more valuable it is as a patent. Once your product is released in the market, the idea that it carries becomes subject to duplication and any innovation starts becoming part of the public domain. So the release of an idea into the market without patent protection could be hazardous. The bottom line is if innovation cannot go into a product, any patent would only be wall art.

Evaluating Ideas for Patentability | Q3 - Is idea related to the product about to be released?

How ‘observable’ is your idea?

Observability is a big factor as you’re thinking about ideas to choose for patent protection. Prioritizing the ones that can be observed allows ascertaining infringement should that be necessary. For instance, your company has developed a chip that goes deep into a data center used in an enterprise. Say your competitor is using this chip. How likely are you to find it out? Consequently, will you be able to assert your patent against them? The answer, highly unlikely. 

When you are looking to build your patent portfolio, look for ideas that will be readily identifiable. So if you are looking at internal processes or small innovations like the chip, it may be a better business decision to treat them as trade secrets. Unidentifiable innovation should not eat into your budget. 

Evaluating Ideas for Patentability | Q4 - Is the idea observable?

How likely is a patent granting on your idea?

It’s important to be aware of the kinds of patents being issued by patent offices. There are some technology areas in which patent offices are wary about issuing patents. For example, patent offices are reluctant to issue patents for business methods, some therapeutics and certain kinds of software. Then there are things that are not patentable at all. Genes, human-performed medical procedures, tax optimization schemes, etc. It is thus imperative to know beforehand what is patentable before investing in a patent for your idea. 

Evaluating Ideas for Patentability | Q5 - Is the Idea Patentable?

There are tools available to help you ascertain these statistics. At Triangle IP, the  TIP Tool has it on the feature roadmap! With this feature, the TIP tool predicts the Patentability Score on your innovations. This score will be based on how likely similar technology gains allowance as a patent. Knowing the patentability score shall ease out your decision-making process.

How enforceable will a patent be for your idea?

Certain technology is difficult to enforce, generally, even where a patent is issued. Courts are likely to overturn patent claims in certain cases. Software, especially abstract software concepts, business methods, and the like are difficult to enforce presently. Knowing that a patent will be difficult to enforce should be considered.

The cost of the patent should always be outweighed by the volume of profit that the patent can generate. Patenting cost includes all the resources that you will need to invest in the patent journey. Protect something valuable enough such that damages models will support enforcement of the patent.  Some innovation although great, can never overcome the cost of getting the patent.

Evaluating Ideas for Patentability | Q6 - How enforceable will your idea be as a patent?

Thinking about what damages might be enforced if it ever reaches such a stage could also be a deciding factor. The amount of damages will also be largely dependent on how your patent claims are constructed and other legal issues. A great idea that has all the potential to be a powerful patent in your arsenal can be broken if the claims are constructed improperly or if there is some other legal flaw. Read this for tips and tricks to draft a high-quality patent application

Evaluating Ideas For Patentability | Wrap Up

While this is not an exhaustive list of questions for you to consider when evaluating ideas for patentability, it’s a good place to start. More specific questions will be born from the specific needs of your business that may change from time to time. Think long term (at least 20 years) when evaluating ideas for patentability. Channel resources wisely so that money spent can result in revenue that contributes to your resource pool for the future.

At Triangle IP, we have a value field to score ideas. The value field can be 1 to 10 based on the answers to these questions.  Many of these factors can be considered and weighted according to priorities within your enterprise.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

7 Surefire Ways To Get More Invention Disclosures

7 Ways to Get More Invention Disclosures

“Getting more invention disclosures is an uphill task since inventors and paperwork usually do not go together very well.”

If your organization is not able to get enough invention disclosures from your inventors, you are not alone. People are not eager to engage with things they do not understand. Long, complex forms are just that kind of thing. Inventors are busy people. Their main job is innovation and development, not paperwork.

Inventors often completely forget to report their inventions for patenting because of their busy schedules. Sometimes, they think that the invention is too obvious and they don’t report it at all. As a result,  the innovation managers may lose potentially patentable ideas.

The first step is to get inventors to capture more innovation using an invention disclosure form. Furthermore, when inventors fail to submit invention disclosures in a timely manner,  it leads to the patenting process being rushed. All too often enterprises approach me just before the launch date, seeking help for patent protection at the eleventh hour. However, as discussed below, there are ways to solve this problem.

More Invention Disclosures

Here are 7 ways you can get inventors to submit more invention disclosures:

  1. Training inventors on the importance of IP to socialize the process
  2. Keeping the invention capture process simple and understandable
  3. Ensuring the availability of IP experts in-house or from outside on a contractual basis
  4. Formulating an incentive program that encourages inventor involvement throughout the entire process
  5. Making participation in the IP program part of the inventor’s job description
  6. Evangelizing of the patent program from the executive level down
  7. Making the creation of IP a core part of the organisation’s culture

#1 – Training and Socialization

Training and educating about the importance of idea capture and the ways to fill the invention disclosure form (IDF) efficiently is essential. An IDF helps your organisation begin the process to decide which inventions are patentable and worth pursuit. The information in the IDF also documents information that will help evaluation and drafting of a patent application. 

Conduct interactive sessions with the inventors to explain the invention disclosure and patent process. Also, your organisation can circulate samples of properly filled forms where the patents have been granted successfully. Consider publishing guidelines for filling out the form or recording training for all new hires to understand the innovation program.

#2 – Simple & Engaging Process

As stated above, people do not engage with intimidating things they do not understand. The process for filling out an IDF needs to be simple and avoid unnecessary complexity. It has to allow the inventors to gather their thoughts about the invention and express them easily. 

One of the ways to increase engagement with the disclosure process is by having online disclosure forms. Electronic forms can be reactive and adaptive depending on the answers.  It also can provide helpful tips and allow collaboration with all parties involved.

Whether the IDF is online or not, it should aim to document only the necessary information to initiate the process. Invention disclosure mainly requires the inventor to accurately describe the technologic  problem and solution along with advantages of their invention over prior solutions. To avoid intimidation, the disclosure form needs to be as short as possible with simple language. The key elements of an intuitive and inventor friendly IDF are:

  • Title of the invention
  • Inventor’s contact information
  • Summary of the idea / invention including: 
    • The problem that prompted the creation of the invention
    • The solution provided by the invention
    • The novel and/or enhanced features in comparison to previous similar inventions
  • Detailed diagrams, flow charts, drawings etc. explaining the working of the invention are great too
  • Attaching any pre-existing documentation will help

Ask your inventors to answer these basic questions in order to make the drafting of comprehensive patent specifications easier. Proper invention disclosure will ensure a hassle free patent prosecution process. 

At Triangle IP we have created a simple Invention Disclosure Form, which we also call an Idea Capture Form. It skips the complex questions that need answers at later stages of the patent prosecution process. There is also the option of adding tags, which can be helpful later to filter ideas.

Triangle IP Idea form / invention disclosure form
The Idea Form At TriangleIP

If you wish you can download the idea from using the form below:

#3 – Availability of IP Experts

Your organisation can also explore the possibility of employing in-house Intellectual Property (IP) professionals who can help the inventors with the process. If employing a full or part-time in-house IP professional is not possible, then you should identify and engage outside IP professionals.  There are consultants, patent agents and patent attorneys who are well versed in the innovation capture process. Conducting seminars with the help of IP experts once or twice a year can be beneficial too. 

#4 – Incentive Programs

When there is a lack of incentives to participate in the patenting process, inventors do not feel the need to pay as much attention to filling out IDFs. Encourage the proper disclosure of inventions by providing inventors with varying monetary incentives at different stages. These programs vary in their incentive while paying for engagement through the patent process. For example, award incentives at the following stages of the process:

  • Upon submitting the IDF
  • When the invention is selected for patenting 
  • At the time of filing the patent application
  • Upon grant of the patent(s)
  • After the inflow of revenue from the invention
Incentive program for inventors to motivate them to submit more invention disclosures

#5 – Participation in the IP Program.

At the time of hiring engineers, software developers, scientists, and other innovators, your organisation should set clear expectations for them to participate in the patent program. Include a specific question regarding employee’s contributions to the company’s patent program in any self-evaluation / annual review. This encourages participating and eventually submitting more disclosures. 

Explore-Simulated-Version-of-TIP-Tool

#6 – Evangelists for Patent Programs

The top management of your organization should remind employees of the importance of the patent program. They should encourage inventors to submit an IDF as soon as an idea is conceived. Management endorsement and reminders assure the patent program will succeed. This priority will spread to the rest of the employees at the company. Without buy-in from top management, a patent program cannot be successfully implemented in your organisation.

#7 – Innovation-Driven Culture

Your organisation should make the process of invention disclosure and patent prosecution worth the inventor’s while. Your patent program should not be a burden on the inventor. IP awareness and protection should be a cultural thing, which is structured properly and decorated in its policies. Integrating IP strategy into your business policies fosters innovation, for example, the employee handbook. An effective patent program will properly protect your innovation.

Download this short, simple yet powerful Invention Disclosure Form to help you with your disclosure process

Conclusion

A simple and engaging invention disclosure process with the right training and motivation for inventors will help your organisation to:

  • Capture more invention disclosures
  • Decrease innovation that never gets documented
  • Expedite the process of filing patent applications
  • Documents innovation with knowledge capture
  • Provide your company with all the benefits of patent protection

Create a culture in your organisation where inventors understand the importance of patents and are enthusiastic about the process. To get more invention disclosures, train inventors to accurately fill out the IDF while socializing the program. A proper capture process helps identify all the ideas which can be transformed into patentable inventions. 

The IDF needs to be simple and engaging. At Triangle IP (TIP) we have created an intuitive drag-and-drop innovation capture tool to take control of the patent mining process while encouraging collaboration. Using the TIP innovation management tool will maximize innovation capture at your organization.

7 surefire ways to get more invention disclosures

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Patent Monetization: Busting the Myth | Idea = Money

Patent Monetization Busting the Myths

People buy businesses. They don’t buy patents. The news will tell you about the one guy who won the lottery but never about the thousands who bought tickets for nothing. Hollywood will share with you success stories of idea men who sold an idea for millions. Not much is ever said of those whose ideas didn’t convert to big money. Naturally, the notion that most people have is that an idea means money. However, ideas backed by businesses means money. People buy businesses. Thus, patent monetization is synonymous with building a business around it.

Why Patent Monetization?

The most cited example of a company that has aced its patent monetization game is IBM. They make tremendous amounts of money by licensing their patents. In 2019 alone, IBM was estimated to have earned US$367 million in revenue on patent licensing activities. They can do this because they have amassed one of the largest patent portfolios that exist today.

The IBM example is tantalizing as a patent monetization example. But really, how many IBMs can there be? And how many years does it take for a company to get there? 

We know each granted patent costs somewhere between USD 50000 on average and annuities are a further significant expense. As a company, you may choose to monetize your patents by: 

  • Enforcement, or
  • Sale

Is Enforcement Really A Way to Go?

Licensing 

Patent licensing is a form of patent enforcement. Licensing feels like a threat to most companies. This puts companies on the defensive and the instinctive reaction is to countersue. More often than not the licensing approach leads to courts and litigation. Walking down this path means money spent in legal fees, and a possible settlement. And spending money becomes the antithesis to your primary goal of monetization. 

Patent Monetisation: Is Enforcement Really A Way To Go?

A lot of companies shy away from monetization by licensing because of the risk of a countersuit.

Reduce The Risk Of Countersuit While Licensing

Here are a few things you can do to reduce the risk of countersuit while licensing.

  • Use patents from nascent areas within your corporation
  • Roll patents into your Business Sale Package

Use Patents from Nascent Areas Within your Corporation

A nascent area is one where

  • You no longer practice
  • You no longer sell products, or
  • The division is shut down 

but you still have existing patents.

Licensing is a great approach to monetization in nascent areas because it nullifies your risk of litigation. With no products backing your patents, businesses are more likely to invest and less likely to sue. And even if there is a chance of a lawsuit, you have nothing to lose because you no longer sell the products in these areas.

Roll Patents Into Your Business Sale Package

Every business is built for sale; it depends on what’s the price the buyer is willing to pay. Whether your business is booming or you are looking to shut it, roll your patents into the business package when you sell it. This also holds true for a single factory or product line. This will boost the chances of the sale of your business and meet your goals of monetization. 

Investors find it easier to comprehend the purchase of a business that has a potential revenue stream. Patents in the business are a great lure for potential investors. 

Patent Monetization by Sale | Be Strategic, It’s Arduous

Sale is less threatening when compared to licensing a patent or patents. Enforcing a patent comes with its set of challenges – more often than not, lawsuits. Sale, on the other hand, is a clean cut that comes with no risk. 

But where does one sell a patent and for how much? Who buys them and what is its marketplace?

There’s good news and there’s bad news. Let’s give you the bad news first: 

There was a time, not too long ago that patent portfolios were bought and sold with 7 figure transactions. Those times have now changed. Today, these figures have dropped to 5 figure transactions, on a good day.

The good news is patents are for businesses. And people buy businesses. Patents can still be bought and sold today, just not how they used to be earlier. Today, patents and businesses are a package deal. And you can sell these anywhere you like, but the legal department is not the best place to go.

There are circumstances where you will be able to sell a patent without a business. However, these circumstances are rare. In 2012, Yahoo sued Facebook for infringing a bunch of their patents relating advertising, privacy, customization, messaging and social networking. Facebook countersued Yahoo with specific patents, most of which they acquired, almost overnight. It usually is only circumstances such as these where businesses are willing to buy just patents. And waiting for these chances to come by is like waiting for a month of Sundays. 

The best and probably the only effective way to monetize a patent is to build a business around it. When you are selling just a patent, you are selling a right around an idea for a business. People aren’t used to buying that. When you back your patent with a product and a business though, everything changes. 

Patents are easier to monetize when bundled with a business

Selling To A Business

As a thumb rule, unless circumstances are exceptional, selling a single patent is impossible. Patents are best sold as families. So, who do you approach when you are looking to sell a patent portfolio? It’s best to take a patent portfolio to a business development team in an organisation. Our advice would be to prefer the businessmen over the lawyers. Lawyers are wired to deflect risk. Businessmen, they enjoy risk and innovation. 

Patent Brokerage

There are a bunch of patent brokerage firms. These work through patent brokers who represent patent buyers and sellers by serving as intermediaries to facilitate patent sales. They help throughout the process of patent transactions including the initial identification of suitable patent assets to sell, selection of sellers, screening of patents and identification of important patents and claims.

However, the brokers do not show any interest in single patent deals. They prefer selling patent portfolios altogether so that they can make a decent amount of money in the brokerage.

Let’s Sum It Up

Patent monetization is a tantalizing prospect. Reading stories of companies that have made millions from patent sales is exciting, hopeful and tempting. But like most things, there’s a lot more to those big numbers than meets the eye. As someone who is looking to monetize their patents, it is important to be fully aware of the challenges that you may face. Here are some pointers and reminders for you.

  1. In the traditional sense, patent monetization requires you to have a large patent portfolio. This may take years to build and a considerable amount of resources to maintain. As a large company with resources, this may be an option. Be reminded though, that you are looking at a long timeline here. 
  2. You can choose to go down the enforcement route when monetizing. This means you can license your patents to businesses in the marketplace. Licensing can backfire with a countersuit as a consequence. Be mindful when going down this route. Choose strategically – patents from nascent areas or inactive areas in your business. 
  3. When looking to sell, remember – patents without businesses have little to no value. If you are looking to monetize your patents, build a business around them. You can choose to sell them at any stage this way. Either as a fledgling business or as a spin out. 
  4. The business development teams in organizations are your go-to people for sales. Avoid sales through the legal team because they will be more likely to avert risk rather than take it. 
  5. When looking to sell patents, look to sell in bulk. Sell your patents as a family. As a general rule, patents don’t sell in isolation. You can choose to make sales to business directly or through patent brokers or marketplaces. 

In summary, monetizing patents is not an easy task. There are costs involved through the process of monetization as well. However, if you have a good strategy in place, transactions can be very fruitful. Thumb rule: Selling patents with businesses will be a win-win situation for all concerned. 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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6 Ways to Strengthen Your Patent Portfolio

6 Ways to Strengthen Your Patent Portfolio

The other day I was speaking to a portfolio manager at a large enterprise.  He was given a task to enhance the patent portfolio for the company. My first question to him was about the process of capturing ideas from inventors.

Me: “How do you capture the ideas and collaborate over the ideas to transform them into valuable IP?”

He: “We conduct certain brainstorming sessions, capture ideas in excel sheets and pursue as and when we feel a need for the same.”

In my experience of working for over 20 years with so many enterprises, the scenario is pretty much the same. Most enterprises use excel sheets, emails, docketing softwares (that’s like giving a factory when all that’s needed is a simple machine), or some other make-do softwares to capture ideas.

You Might Wonder What’s Wrong With Using Such Tools?

Well, in the absence of easy capturing and thorough vetting, a lot of things may happen which hurt the value of a patent portfolio.

  • Great ideas get lost while traveling amongst various stakeholders.
  • Weak ideas get pursued for filing a patent resulting in either a rejected patent or a low-value patent.
  • Filed/Granted patents are sometimes great in terms of innovation but do not have a market demand as the business team did not collaborate while persuasion.
  • Effort gets wasted on an idea which the company has already filed a patent on in the past by some other inventor.
  • Sometimes inventors get so busy with the progress of the invention that the idea gets completely missed out of the patenting process. Even worse, the product reaches the market without IP protection. And, competitors take full advantage of it.

Hence what’s needed is a defined process to capture ideas. A way to collaborate over ideas to conduct thorough internal vetting. A place where all the stakeholders from different arenas of a business and research can contribute. Thus making sure that only the finest ideas are pursued for filing patents. 

Strengthen Your Patent Portfolio Proactively

Strengthen Your Patent Portfolio Proactively

Besides this, a strong culture of innovation at the workplace and a time-to-time audit of the portfolio shall also be beneficial towards a valuable patent portfolio.

Here are 6 quick pointers that can help you strengthen your patent portfolio:

1./Effective Innovation Capturing

2. Thorough Vetting

3. Curating An Innovation Driven Culture

4. Getting Patent Experts Onboard

5. Pruning To Strengthen Your Patent Portfolio

6. Expediting Patenting Process

#1 Effective Innovation Capturing

It all starts with an idea. So, the inventor comes up with an idea. Maybe he shares the idea with you, maybe he does not. Maybe you review or maybe it gets slipped as you were too busy. And the inventor gets busy working on that idea totally forgetting about the protection it might need. Whether patent or trade secret or defensive publication. 

Now the product that gets created based on the inventor’s idea is revolutionary. And it reaches the public domain without any IP protection. It’s under the threat of fast followers. Companies out there who have resources and capital are always on a look for products which they can easily copy and sell for a lower cost. These guys also save on money that you spend on R&D and engineering of the product. Thus, grabbing the market share that your company deserved actually.

And the worst part is you cannot do anything about it. 

This necessitates to have a defined place to capture innovations and track their progress throughout the lifecycle.

Another thing that acts as a friction for inventors to disclose inventions and add them in the patent pipeline is: “long, non-intuitive invention disclosure forms with jargons that only attorneys understand”. At TriangleIP, we understand this friction and thus we have kept the idea capture form very simple in the TIP tool.  

An Easy Idea Form For Inventors | Strengthen Your Patent Portfolio

#2 Thorough Vetting

If you have a bunch of ideas coming in from different inventors; it’s very much possible that you might not have a budget to pursue them all for IP protection. So in order to choose which ideas to pursue, the ideas need to get evaluated from different aspects. You might wish to keep some ideas as trade secrets or give some to public domain with patent protection. Hence what’s needed here is a thorough vetting of ideas.

Thorough Internal vetting of Ideas | Strengthen Your Patent Portfolio

Innovation happens quite early in a process. Typically before you have any customer or market validation. Hence all that can be done is speculation on which ideas will generate revenue a few years down the line. It takes around 3-5 years to get patent protection for an invention.

However, one thing that helps you mitigate the risk and choose the best of ideas is to have it vetted by people from different streams; business, legal, engineering, strategy, etc.

Listed below are some important factors to consider to zero down on the ideas for patenting:

  • Strategic vision of the enterprise.
    • Alignment with a product line to have market dominance. 
      • Say there is a company that deals in smart refrigerators. It would want to have patents around advanced functions of refrigerator like: Ordering groceries based on the supplements about to finish in the refrigerator.
    • Market expansion across geographies.
    • Just for defensive purposes against probable lawsuits.
  • Relevance of technology to be patented in long term. Technologies go out of date as industries evolve. 
    • Example: Mobile phones have almost out-dated the landline phones in the last few years.  
  • Budget allocated towards IP.

#3 Curating An Innovation-Driven Work Culture.

“When failure is not an option, we can forget about creativity, learning and innovation. – Brene Brown”

Embracing failure is the key to have an innovation driven culture. Because the studies suggest that a significant percentage of innovations fail. The companies must have enough risk appetite (financially) to handle the failures. (Because somewhere there are chances of blockbuster success too).

And that’s not all, there are many other factors that can encourage or kill innovation culture at an enterprise.

The other day I was reading a book called “The Invincible Company” and in that, I came across a beautiful concept called “The Culture Map”. The culture map talked about the Enablers and Blockers of innovation at a company. It resonated really well with me. 

Innovation Culture Blockers:

  1. Lack of Innovation Strategy.
  2. General Fear of Failure.
  3. Bureaucracy slowing down innovation.
  4. Locked into Current Business Model.
  5. Lack of skills, knowledge and experience.

Innovation Culture Blockers | Strengthen Your Patent Portfolio

Innovation Culture Enablers

  1. Strategic guidance.
  2. Resource allocation.
  3. Innovation Tools.
  4. Legitimacy and Power.
  5. Skills development.

Innovation Culture Enablers | Strengthen Your Patent Portfolio

It would be beneficial to take a quick look inside your organization for these enablers and blockers. This shall further be helpful in creating an environment where innovation shall flourish for the organizational good.

#4 Getting Patent Experts Onboard:

Lack of expertise in drafting patents may result in rejection. Mentioned below are some of the top reasons for rejection of patent applications:

  • Improper and Insufficient description of the invention and how it works.
  • Lack of novelty.
  • Non-patentable subject matter; e.g. new use of a known substance.
  • Erroneous Writing: Issues with line numbers, reference numbers on drawings, or paragraph numbers.

If you don’t have in-house experts to write the patent, we suggest that you choose an IP firm that has the reputation and the experience to handle the end-to-end process. You need to have the right people on the job to draft the patent. Ensure that the one who is writing the patent has deep knowledge of the technology, has the right background, understands the fundamentals of a patent, and so on. 

#5 Pruning Patent Portfolio | Abandoning ‘Out-of-Date’ Patents

Let’s say you have a portfolio of many patents (50 or more), only a few of them would be worth a lot. The rest will guzzle your time, effort and money.

Maintenance fee alone can become a significant expense if there are many patents in a portfolio and for quite a long time. The snapshot below  shows the maintenance fee to be paid for patents at different time intervals.

Maintenance Fee USPTO| Patent Pruning | Strengthen Your Patent Portfolio | Abandoning Out-of-date Patents

The ability to know when to stop investing in bad IP assets is important to have a strong patent portfolio.

If you look carefully in your portfolio, you will find that there are patents that are areas in orphaned technology or where there is no commercial interest. Free up the budget allocated for it to work on an innovation that is more promising. A technology that was once highly used does not mean it is going to be relevant forever. Some of the patents might have run their utility. 

Let’s take a look at how IBM has pruned it’s patent portfolio over the last 2 decades. IBM has abandoned thousands of patents across T0, T1 and T2. This probably saved them millions of dollars and strengthened the patent portfolio.

IBM US Abandoned Patents by Pruning 1999-2020 | Strengthen Your Patent Portfolio

There can be many reasons for abandoning the patents:

We, at Triangle IP, are on the way to bring analytics to the TIP tool  that shall help the users identify hopelessly expensive cases.

  • Out-of-date technology as the industry evolved over the years.
  • Change in patent laws in different geographies.
  • No market presence, say you got patents in the UK but the business related to those patents never really took off in the UK. So, maintaining those patents does not make sense.

#6 Expediting the patenting process to be at the right time in the market.

There was a time when it took more than three to five years to get your patent up and running. Thankfully, that’s not the case anymore as you can easily get an expedited patent for a few thousand dollars in the US. While it might sound like a big number for a new startup, if it means that you can build your portfolio quicker, then it is wise to get that leverage for yourself. 

You can also watch this video by our co-founder where he explain portfolio management in a greater detail:

To Sum It Up:

Here is a quick recap of the pointers that shall help you progress towards a strong patent portfolio.

1..A well-defined business process to capture ideas and progress them to valuable IP (Intellectual Property). 

2. The process must provide for thorough vetting from strategy, market, legal, feasibility, financial aspects.

3. Curating an innovation culture by removing the blockers and supporting the enablers shall help your people to come up with more valuable inventions.

4. Ensure that your patent applications do not fall in the rejection bucket by hiring experts to write your patent applications.

5. Time-to-time pruning of the patent portfolio i.e. abandoning the patents (due for renewal) can help you strengthen the patent portfolio.

6. Expediting the patenting process for a few thousand dollars shall be a good tradeoff to be at the right place at the right time.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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3 Ingredients of High-Quality Patent Application

Understanding and decoding a patent can feel like reading a foreign language. Patent claims are littered with legalese and hard to parse. We might rely on recommendations or go to an established firm to get a patent drafted. Sometimes, the tendency is also to get it done as inexpensively as possible.

However, when you can’t judge the quality, then you can’t make a sure decision. So, differentiating a good quality patent from a not so good quality patent may seem like a daunting task. But it doesn’t have to be. Here are a few tips and tricks that make this easy.

There are three ingredients of a high-quality patent application you must look for:

1. Substantive coverage

2. Simple language without ambiguity

3. Technical details: Visuals, Citations, and References

Substantive Coverage

Contrary to popular belief, in a patent application, less is not more. A detailed description of the invention along with alternative solutions is essential to ensure broad coverage. 

Good patents tend not to be short. A short patent may have 4-5 figures and are very high level. They have very little detail in them. A really good patent would have about 10-15 figures correspondingly with detail that can be added to the claims if needed. Hence, when you get a draft back, check whether it is 3 pages long or 15 pages long. Generally, the more said about the innovation, the more likely you are going to get a better coverage.  Description of alternative solutions to the underlying problem will allow claiming those later as your competition tries to design around your roadblocks.

Claims are a very important part of a patent application. It’s quite debatable on what the claims should look like. A long book could be written on the topic and still would not make things easier. As a broad rule a high-quality patent application must have claims directed to how your innovation uniquely solves the underlying problem that originally motivated the invention. Dependent claims can add details as possible fallback positions. 

However there are few red flags you can look for while evaluating the claims:

  • Claims should be written in such a way that others cannot design around that would create legal gaps.
  • Too narrow claims reduce infringement opportunities, but if they are too broad it is unlikely that they would be allowed.
  • Technology covered in claims must be relevant 10-15 years down the line as the industry evolves.

Substantive Coverage Example: Techniques In Transit Advertising

Let’s take a look at the claims of this high-quality  patent application on “Techniques in Transit Advertising” for example. It has 3 independent and 13 dependent claims with 26 figures.

In summary the patent is for a method to generate a request for an advertisement based on an identified ridership pattern of a user of a transit system:

Let’s take a look at claims.

The illustration above is from the patent AU2013262776B2 picked up using Google Patents Database.

Let’s take a look at the coverage of this claim:

  1. The claim talks about retrieving information to find the advertising preference for the rider of the transit system to tailor the experience.
  2. It also talks about the kind of information that shall be retrieved: entry point, exit point, duration of transit, time and location of plurality of such transactions so that the advertising is location relevant.
  3. The claim also covers the places for displaying the advertisement like faregates, kiosks, countertops, etc. for the rider.

Going through the complete claims set of this patent, gives a good idea of what claims should look like. The other claims cover a lot of possibilities around the invention like merchant proximity, information that can be displayed other than advertisements, type of media (machine readable) etc. to provide further detail and fallback positions.

The Heart Of The Invention

Once you have a draft patent application, the inventor(s) should read it critically. Has the draft properly detailed the heart of the invention (i.e., the key differentiator that enables your invention). Is the heart of the invention only mentioned in a cursory manner? Or, is it filled with creative detail and alternatives? Reading of the draft should surprise the inventor with its thoroughness and detail. This goes to show how much thinking has gone into describing the invention. Remember, the patent application is not a marketing tool. It doesn’t need to be flashy with marketing language. The purpose of a patent application is to get the patent granted. And for that, the application must be detailed and thorough. Failure to disclose the details of the invention amounts to a failure to describe how the inventor was in the possession of the claimed invention.

The patent office requires the inner workings and technical detail on how the heart or the core of the invention works.  It should provide the detail to allow another to make and use the invention.  The drafter should go in much deeper detail even if the product has not been built.

You should see that detail in the draft.

Think about what the most important technological thing is. For one, it should be captured in the claim. Because it is hard to parse the claims, ask the drafter, where it is mentioned in the claims. Then work your way back and see how much writing is there about that. A good patent application should have at least 2-3 pages of the core of the invention i.e. selling point of the innovation. 

Scope of Application

Does the draft speak to what is unique about that invention and define its scope too?

In addition to the uniqueness of the invention, the application must also have a wide scope to enable others to understand how it might be built. Ensure that it covers the existing and future scope of innovation as far out into the future as you might imagine. 

Simple Language

High-quality patent specifications are written in unambiguous language to be easily understood. The simple language also ensures that the ideas are not lost in translation.

This means the application must read like something familiar to you or any other similarly trained engineer, developer or scientist. If vague or confusing, it leads to potential attack down the road. If only the claims could be written to avoid the legalese, but the precision of their meaning requires the use of language that the courts have defined in their legal decisions.

Technical Details

A long, thoroughly drafted specification with thorough technical detail must have 

  • Block Diagrams
  • Citations
  • References

Block Diagrams

The visual impact of an application is almost as important as the written word. Make sure that the application includes pictographic representations of the invention – block diagrams, mechanical drawings, graphs, screenshots, etc.

Like ample description, the visuals should portray the innovation from different perspectives. For example the block diagram shown below is from a patent on “Techniques in Transit Advertising” (We have used the same patent as a reference throughout the post for easier understanding :)). The patent has 26 figures – a sign of high-quality patent application.

The illustration above is from the patent AU2013262776B2 (Google Patents Database).

Citations

A citation is a reference to prior art that’s relevant to a current patent application. 

There are two different types of citations 

Backward Citations

Backward citations are patents that are cited by a specific patent and forward citations are patents that cite a specific patent. In other words, these are earlier published documents that are publicly available before the filing date of a new patent application/prior art. 

Forward Citations

A good application must find and cite documents that 

  1. may anticipate the claimed invention, 
  2. or might be similar to the claimed invention and limit the scope of the patent protection, 
  3. or which generally reveal the state of the art of the technology.

These are forward citations. The number of forward citations a patent receives is often reflects on a patent’s significance.

The use of citations in a patent application shows the thoroughness of research. These can also act as markers to detail the scope of the invention. 

References 

A patent includes citations to other patents and literature that the examiner may find relevant to patentability (i.e., prior art). Adding references to the patent application makes it easier for the examiner to evaluate the same and indicates sophistication by the filer and generally indicates searching may have guided the draft.

They also add weight and credibility to the application, thereby increasing the chances of a grant.  The examiner will also search for references.  All the references will appear on the face of the patent application and more is better.

A good search prior to drafting helps define the novelty in the context of what others have done.  Claims should be drafted to broadly cover the innovation, but not step too far into the prior art.  Especially where your drafter may be unfamiliar with your technology, a good search can help familiarise them.

Tools To Evaluate Patent Quality

You might consider using a tool to evaluate patent quality. That is not a bad idea, but it has a downside. Let’s see how.

The quality of a patent encompass objective as well as subjective factors.

Objective factors are the ones that can be computed or measured by software. These include

  • Length of Specification
  • Number of claims
  • The number of words in the independent claims

Subjective factors are more traditional like:

  • Scope of the application
  • A correct and complete description of the heart of the innovation
  • How important innovation is to your business?

The tools available in the market can help you judge the quality of a patent defined by objective factors. It’s even possible to manipulate these objective factors. In fact, experienced and expert drafters can remarkably improve the quality of a patent. But for the subjective factors, human feedback is necessary.

In case you want to watch more about filing high quality patents, I suggest watching below video:

 

A Quick Recap

With this post we have tried to equip you with the ability to differentiate between a low and a high-quality patent application. To summarize presented below is a 7-points checklist for high-quality patent applications.

  1. High-quality patent specifications are written in unambiguous language to ensure that the ideas are not lost in translation.
  2. Claims should be directed to how your innovation uniquely solves the underlying problem that originally motivated the invention. Dependent claims can add details as possible fallback positions. 
  3. A high-quality patent application should have at least 2-3 pages of the core of the invention i.e. selling point of the innovation. Failure to disclose the details of the invention amounts to a failure to describe how the inventor was in the possession of the claimed invention.
  4. Make sure that the application includes pictographic representations of the invention – block diagrams, mechanical drawings, graphs, screenshots, etc. Like ample description, the visuals should portray the innovation from different perspectives.
  5. Numerous references in a  patent application make it easier for the examiner to evaluate the same and indicate sophistication by the filer. They also add weight and credibility to the application, thereby increasing the chances of a grant.
  6. A high-quality patent application covers the existing and future scope of innovation as far out into the future as you might imagine.
  7. The use of citations in a patent application shows the thoroughness of research. These can also act as markers to detail the scope of the invention. 

Conclusion

A well-drafted patent application, as expensive as it may be, is one of your best business investments. To ensure a high-quality patent application, hire the best. Read and re-read, keep editing, and amending and make the application thorough. In exchange for a limited monopoly, description and enablement are the “consideration” that you must provide to the public. 

To make the patent application even stronger, ask the following questions:

  1. Can this patent be adapted to the jurisdictions you would like to take it to in the future? Gain some insights here on the global patent portfolio strategy.
  2. How easy or difficult does the application make it to detect or prove infringement based on public information?
  3. Will competitors be able to understand the relevance of the patent?

Let’s keep that discussion for another day!

Wondering if your IP strategy is strong or not; read this “Is My IP Strategy Headed In Right Direction”!

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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Patents Vs. Trade Secrets: Which Way To Go?

Patents vs Tradesecrets which way to go

Patents Vs Trade Secrets | Choose Wisely!

‘Patents are expensive, why don’t we just trade secret everything?’ If this is a thought and cost cutting is something you’re looking to do, read on. It is no secret that investing in patents is an expensive affair. At the same time, a rich IP portfolio is very advantageous. Here, we talk about Patents, Trade Secrets, and Defensive Publications as IP tools to help you decide which one to be used in which scenario.

Trade Secret:

A trade secret is any information that’s unique to your enterprise and gives you an advantage over your competitors. As a company, this could include formulae, technical data, code, manufacturing data, customer information or any other technical, scientific information that a company may take steps to keep secret.  To keep such things as a trade secret does not require any money however you need to take care of certain things to maintain the secrets (as described later).

Defensive Publication:

A defensive publication is a disclosure of invention by the inventor to the public. This disclosure allows the inventor to safeguard the freedom to use this invention by preventing others from patenting it.

In the event a patent is sought to be obtained for the same or similar invention, a pre-dated defensive publication will act as a deterrent to the issue of such patent.

Put simply, any printed or electronic publication that fully describes an invention and was published before the filing date of a patent application can disqualify that patent from being granted.

Patent:

A patent is an exclusive right granted by a government for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. 

In order for an invention to be patentable,  

  1. It must be new
  2. It must involve an inventive step, one that is non-obvious to a person skilled in the field
  3. And it must be capable of industrial application

Patents protect your inventions for 20 years during which you enjoy a monopoly in the market place. However patent protection is country specific. So you enjoy the monopoly within the geographic boundary that your patent has been granted in. As a patent owner, you can do the following:

  1. You have the right to prevent others from using it, abandon it, sell it.
  2. You may also assign it or license it in totality or for a specific purpose. 

So, how does one choose what kind of protection to use for an invention? 

Trade Secrets

There are three vital things to do when you think of protecting something as a trade secret:

  1. Define your trade secrets and maintain an inventory of the trade secrets of your organization.
  2. Make your employees aware of the fact that these are trade secrets. Ensure confidentiality and non-disclosure agreements are in place.
  3. Do not make any information about your trade secret publicly available.

Here are some questions that will help you choose the right type of IP protection: “Patents Vs Trade Secrets”.

How easy is it to reverse engineer your invention?

The thumb rule of trade secret protection is to use it when inventions are impossible or require a very hard degree of effort to be reverse-engineered. By its very nature, a trade secret is vulnerable to reverse engineering because it only remains secret until it’s a secret! So, patent protection for inventions that can be easily reverse-engineered is more appropriate. How easy reverse engineering is; depends on the nature of your invention.

Mechanical inventions

Products that are a result of this kind of innovation are fairly easy to reverse engineer. With anything that is easy to reverse engineer, trade secret protection becomes completely ineffective.  

Chemical Compositions, Software & Electronic Inventions

While these are not as easy as mechanical inventions, with a little time and effort these products can also be reverse-engineered. Read this to understand how!  

Processes

These are quite difficult to reverse engineer. Since processes are business-specific, they are easier to keep within the company. There is a long list of food products that have managed to keep their recipes or chemical formulae as trade secrets for many years e.g. Coca-Cola, Listerine, Twinkies, Krispy Kreme Donuts, WD-40, etc. Google Search Algorithm and NewYork Times criteria for creating the best Sellers list are two processes that serve as great examples for trade secrets.

How beneficial is it to your company to keep your invention a secret?

In a cut-throat market place, competition is everything. A major aspect to consider if keeping your invention a trade secret gives you a clear competitive advantage. There are six factors of competitive advantage: price, quality, selection, speed, turnaround and service. Does your trade secret serve or help further any of these purposes?

Who are your likely competitors and how motivated will they be to access your invention?

To choose the right kind of IP protection, it is important to understand your competition. The motivation of your competition to access your invention will be directly proportionate to your market position. So, having a clear understanding of your market, your product and the path of your company will help with answering this question. 

Will the invention be useful after 20 years?

One of the reasons you choose trade secret protection over patent protection is to extend the lifetime of protection that it offers. While patents offer you protection or a monopoly of 20 years; trade secrets can last you a lifetime. Although trade secrets are less of a strain on the pocket procedurally, keeping them a secret always comes at a cost. Being able to gauge the usefulness of your invention after 20 years is a great tool to decide how you would like to protect it. 

Patents

The following is a list of reasons to patent and questions that will help you evaluate the patentability of an invention:

Competitive Edge

A business usually wants to patent an invention to have a competitive edge, market power, and as a tool to earn more money. Hence the first question to ask is whether there is a market for the invention, the technology, or products incorporating it? 

Need in the Market

If there is a market for your invention, what are the available alternatives to it, and how do they compare with your invention? Check multiple factors such as utility, price, availability, customer satisfaction etc.

Utility of Invention

Once you have data on the market space, ask if the invention is useful for improving an existing product or developing a new product? If so, does it fit in with your company’s business strategy? 

Fund Raising

Another big reason for choosing to patent is using it as a tool to raise funds and attract potential investors. Before you choose to spend resources on a patent, check if there are potential licensees or investors who will be willing to take the invention to market?

New Revenue Stream

If you are looking to patent to sell your invention or as a tool to add a new revenue stream by licensing your patent, ask how valuable will the invention be to your business and to competitors? Also, just how easy is it to reverse engineer your invention from your product or to “invent around” it? Is reverse engineering easy enough to tempt others, especially competitors, to invent and patent what you have invented?

Sales & Profit

Purely as a tool to increase sales, profits, and revenue, do the expected profits from an exclusive position in the market justify the costs of patenting?

Commercial Utility

Lastly, what aspects of the invention can be protected by one or more patents, how broad can this coverage be and will this provide commercially useful protection

Defensive Publications

If you don’t want to walk down either the Trade Secret or the Patent route, you may consider a Defensive Publication. By making a defensive publication, your invention is neither a trade secret, nor patentable (if not done so within the time frame offered under certain jurisdictions). A defensive publication may be ideal for smaller inventions or inventions which do not serve your company greatly, financially.

What a defensive publication does is safeguards your right to continue doing what you are doing or at the very least opening yourself out to challenge patents. When you make a defensive publication, you essentially disallow someone else from filing a patent. Or giving you the arsenal you need to hold a patent invalid because you published first. With a defensive publication (made in the USA), you are given a one year grace period to file a patent based on such publication. 

A Quick Recap | Patents Vs Trade Secrets

To summarise, here is a tabular comparison of “Patents Vs Trade Secrets”.

FactorsPatentsTrade Secrets
Reverse EngineeringNot a factor that needs to be worried about since you make public disclosure with a patent, and are granted full rights.The easier it is to reverse engineer your invention, the riskier it is to protect it as a trade secret.
CostExpensive mechanism of protection. Involves attorney fee for drafting and filing and official fee for obtaining a patent.In theory, a trade secret is free. Practically, keeping it a well-guarded secret may cost your company a certain sum of money.
Life of the inventionIf your invention can stand the test of time and still be relevant after twenty years, this is not the right protection.The benefits of keeping a trade secret are directly proportionate to the life of your invention.
Funding and Marketing Better option to obtain funding as ideas become easier to explain to investors because of public disclosure. Difficulty in explaining the invention to an investor for fear of divulging a secret may prove to be a hurdle for funding.
First Mover AdvantageYou lose out on the advantage of being an initial significant occupant as disclosure through a patent application can help competition enter the same market space slightly quicker than otherwise. With choosing to protect your invention as a trade secret, you can extend this advantage to a slightly longer time as your competition will have no information on your invention in the public domain before its market entry. 

Conclusion

Choose wisely when deciding how you want to protect your ideas/inventions. Trade secrets are a great way forward and help you save your resources. Use these resources in patenting your best inventions. They don’t always have to cost a fortune. Here’s a guide to cost-effective patenting.

Like all things, life and business, IP protection is also all about balance. Trade secrets and patents can sometimes be used in a manner that is more complimentary than the contrary. IP strategy is personal to a Company and its journey. Hopefully, this shall make you choice easier: Patents Vs Trade Secrets.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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Types of Intellectual Property & Related Costs – Triangle IP

Everything about you IP cost in US

A Quick Overview: Types of IP

Type of Intellectual Property (IP) protection needed for an invention depends on the nature of invention. Each of 4 main types of IPR – Patents, Trade Secrets, Copyrights & Trademarks has their own use cases. Patents are best suited for inventions that revolve around a product – process of manufacturing, its layout or appearance etc. If you wish to protect a recipe or a formula, keeping it as a trade secret shall be the best choice. Copyrights protection is well suited for artistic works like music. Trademarks are the best way to protect the visuals that represent a brand.

Each type of IPR protection costs different, this post shares great insights on costs related to each type of IP protection.

To Patent or Not To Patent: Inventor’s Choice

In August  2010, two MIT alums filed a patent for an application that helps multiple clients share and access files over a network. There are high chances that you’ve used this file-sharing app. You must have used “Dropbox”, Haven’t you? Today, it has more than 14 million users and is a billion-dollar enterprise.

 

Dropbox patent drawing - Intellectual Property related costs

 

Not every founder, inventor or developer is as generous as  Linus Torvalds, who gave his masterpiece (LINUX) to the world for free? 

If the founders (Drew Houston & Arash Ferdowsi) of Dropbox Inc. hadn’t protected their asset by patent, Dropbox might have even had 10 times its user base today, but they wouldn’t benefit from it. This is why individuals and organizations should safeguard their intellectual property. 

Most organizations are wary about the costs involved in protecting their intellectual assets.There is an assumption that it costs a bomb to get it secured. While there is no easy answer on how much it costs to safeguard your intellectual property, the safest answer is – “it depends on a lot of factors”. In this article, we will help you traverse the difficult terrain of intellectual property and your IP-related costs. 

 

What Is Intellectual Property? 

 

The intangible creations of the human mind are called intellectual property. It refers to inventions such as literary work, artistic work, designs, symbols, names, product recipes, images, and so on. To ensure that others do not steal your intellectual property, you need to secure them.

There are four different types of intellectual property (IP) rights.  

  • Trademark
  • Patent
  • Copyright
  • Trade Secret

 

4 Types Of Intellectual Property : Patents, Trade Secrets, Trademarks, Copyrights

 

Trademark:

An American conglomerate filed a lawsuit against a Chinese company for using a brand name that was eerily similar to theirs. Even though the courts found that there were dissimilarities in products, since the latter was able to acquire clients and capture significant market share using the brand name, they had to pay up the American company. 

What Is A Trademark?

It protects brands. Under the law, a trademark is anything by which customers recognize a brand or the source of a product. A trademark offers legal protection for logo, design, symbol, phrase, wordmarks, or a combination of those that represents a source of goods or services. 

Example:

 

Trademark Example - Intellectual Property related costs
Credits: Legalwiz

 

 

Costs For Securing Trademark Rights in USA:

According to USPTO, the initial application fee for electronic filing for a trademark is $225 per class of goods/services. There are 45 classes of goods and services. 

  1. Your attorney will file a trademark application for you and the charges for it will be anywhere between $300 and $1000.
  2. Once the application is filed, it will be examined by a Trademark Examiner. 
  3. If the examiner issues an Office Action refusing the application, then the attorney’s fees to respond to that would be between $200 and $2000. 
  4. The application needs to be filed based on having used the mark already for sales or with an intent to do so in the future. A Statement of Use is filed if nothing has been sold using the mark. The government’s fee to file it is $100 for each class of goods. Attorney fees to prepare it is between $250 and $700. 
  5. After your application has matured to registration, you must fill the required maintenance documents. Between the 5th and 6th year of registration, Section 8 declaration has to be filed. 

i.) A Section 8 declaration is a signed statement saying that the trademark is in use in commerce and if not, then it should come with an excuse explaining the reasons. 

ii.) Between the 9th and 10th year after registration, a combined declaration of use/non-use and application for renewal under Sections 8 and 9 should be filed together. The fee for combined filing is $425 per class of goods or services. 

For a detailed account of the trademark fee, you can use this link here

 

How Long Does The Trademark Protection Last?

 

While the terms of trademark registration can differ, the duration is usually ten years. Also, the USPTO requires that between the fifth and sixth year after the date of registration, the trademark owner should file an affidavit stating that the mark is still being used commercially. If the affidavit is not filed, the registration is cancelled. The USPTO will not send any reminders requesting you to send the affidavit. 

Note: The trademark can be renewed indefinitely by paying additional fees. 

 

Patent:

 

One of the most famous patented inventions is the electric lightbulb. Another significant one is the telephone (Transmitter and Receiver for Electric-Telegraphs) which was patented by Alexander Graham Bell in 1876. Each of these made the patent owners significantly wealthy. 

 

Credits: Google Patents

 

 

What Is A Patent?

 

Patents protect the innovative ideas of processes. There are two types of patents:

  1. Utility patent – It protects a process, manufacture, composition of matter, and a useful machine. Example: Fully convertible high heel-to-flat shoe

 

 

Utility Patent: Convertible High Heel Shoe: Types of Intellectual Property

 

 

 

  1. Design patent – It protects the shape, appearance, pattern design, layout, and looks of a product. Example: Car or similar article by Warner Bros. (BatMobile)

 

Patent D311882 Bat Mobile - Intellectual Property related costs

 

 

Costs For Filing A Patent in USA:

 

For filing a patent, the costs vary not only based on the country, but also on the complexity of the invention. It could be $1000 if you plan to do most of the filing work or can be upwards of $40,000+ if your invention is complex. 

  1. The basic cost to file a patent application at the USPTO is $300. If you are an individual, and it is $75 and $150, if you are a small entity. 
  2. For professional attorney patent searches, it would cost anywhere between $800 and $3000. Find the best tips to hire a patent attorney here.
  3. Expect to pay anywhere between $3000 and $5000 on average plus the USPTO fees to an attorney to prepare a new patent application. 
  4. The costs for the patent depends on the type of patent you apply for. 
  1. Provisional Patent: $1500 – $3500
  2. Utility Patent: $5000 – $15000
  3. Design Patent: $2000 – $3500
  4. Plant Patent: $4500 – $8000
  5. International Patent- $100000+

Here is the USPTO link where you can find more information about the fees for filing a patent. 

If you want a cheaper route, then you can do all of this by yourself, but you need to be meticulous in terms of recording everything about your invention. You might have to spend hours filing everything correctly. 

Choosing Inventions For Patenting

While every innovation of your invention deserves a patent, it might not be feasible to patent everything as the prices are a bit steep. Not everyone has huge budgets so corporations may have to pick and choose on what to patent (according to the strategy that they might have). You need to evaluate your ideas before you decide. The company should take the call on which part of your invention to pursue for patenting. The most important part in this process is to keep a track of all ideas so that nothing is missed. You can use a simple spreadsheet but that tends to get corrupted with time along with having security issues. TriangleIP provides a free tool which helps you in maintaining and tracking your ideas. It provides you with 4 different workflow stages till the filing process – through which you can navigate and track your ideas. 

Maintenance Costs:

 

Patent maintenance fee is paid to the USPTO to keep up a granted patent and is sometimes applicable for pending patent applications. Note: Design and Plant patents do not require maintenance fees. Maintenance fees are to be paid at the fourth, eighth and twelfth year anniversary from the time the patent is granted. To calculate the maintenance fees for your patents, you can use this link from the USPTO website

 

Maintenance Fees of patents - Intellectual Property related costs

 

How Long Does Patent Protection Last?

 

A utility patent is granted for 20 years from the date the patent application is filed. A design patent is protected for 14 years from the date the patent is granted. To enforce the protection of the patent, there are fees involved. 

 

Copyright:

 

Vanilla Ice’s song Ice Ice Baby used parts of music from the song Under Pressure by David Bowie and Queen.

When they faced a lawsuit, Vanilla Ice confessed to sampling the work, and the case was settled out of court for an undeclared sum of money and crediting Bowie/Queen for the track. 

 

What is Copyright?

 

It protects the original work of authorship. It helps the copyright owner to control reproduction, performance, adaptations, and distribution of the work. Examples of such works are- literature, drawings, paintings, songs, music, computer software, films, photos, web content, etc. 

Copyright is generally attached to the work when the original work is available in a fixed medium. It means that the work has been written down on a piece of paper, saved in a storage device, or in some tangible format. 

 

Costs for copyright protection in USA:

 

Filing a copyright application involves a lot of forms and each of them has different fees. Here is a breakdown of the costs involved to copyright your work.

  1. The copyright registration fees for one work by one author costs about $45 if you are filing online. The fee is $125 for paper filing. 
  2. For all the other filings, it will put you back by $65. 
  3. There are special fees for registering an application claim in a group or obtaining additional certificates of registration. 
  4. The USPTO does special services that have a different fee format too. 

 

How Long Does A Copyright Last?

 

The terms of a copyright for a work depends on a variety of factors, including whether it has been published and if yes, then the date of publication. 

  1. Copyright protection lasts for the author’s entire life plus an additional 70 years, for works created after January 1, 1978. 
  2. For anonymous works, or a work made for hire or a pseudonymous work, the copyright is for a period of 95 years from the year of its first publication or 120 years, whichever expires first. 
  3. For works published after 1923, but before 1978 are protected for 95 years from the date of its publication. 
  4. If the work was created but not published before 1978, then the copyright lasts for the life of the author plus 70 years. 

 

Renewal:

 

For works that are created after January 1, 1978, the copyright is not subject to renewal registration. 

 

Trade Secret:

 

In 1953, inventors at Rocket Chemical company came up with a formula at the 40th attempt and called it WD-40 – “Water Displacement, 40th Formula”. The company never patented it because trade secret seemed like a better protection and wisely so. And the company managed to keep it a secret for 50+ years. By the fiscal year 2017, gross revenue for the company, including sales of the familiar WD-40 Multi-Use as well as other products, totaled $381 million in annual revenue. It was only in 2009, that “Wired” with advanced processes like gas chromatography and mass spectroscopy managed to find out what’s inside WD-40.

 

WD 40- Tradesecret - Intellectual Property related costs
Credits: Wikipedia

 

What is a Trade Secret?

 

A trade secret is any valuable information that is not publicly known and of which the owner has taken reasonable steps to maintain secrecy. It could be ingredients used in their dishes, business methods, customer data, ideas related to your business, marketing strategy, experimental technology, etc. 

 

Costs To Guard Trade Secrets in USA:

 

Since you don’t have to register with a government body for qualifying your product/business as a trade secret, there are no costs associated with it. Guarding the secret requires security measures, and these might accrue some costs.

As trade secrets costs feel nominal compared to patenting expenses, you might get tempted to opt for trade secrets. This may or may not be a good idea. Thomas Franklin, the founder of Triangle IP has shared great insights in the following video to choose between patents and trade secrets.

 

https://youtu.be/mqA8-OYQPOw

 

How Long Does Trade Secret Protection Last?

 

Indefinite protection to the trade secret as long as the secret is commercially viable. It will continue as long as the secret is not available to the public. Also, unlike patents or copyrights, trade secrets are protected without registration. 

 

How To Protect Your Intellectual Property?

 

We have discussed the major four types of intellectual property and how they can safeguard your business from infringers. It is the onus of the business to protect its assets. Losing one of your assets can result in significant damages to your business. Getting the right advice from professionals will make it easy for you to protect the interests of your business.

For starters, you could write down a list of ideas, discuss them with your lawyer and decide which are the ones that are worth going after. TriangleIP helps companies with a free tool using which ideas can be managed till the filing process.

 

Conclusion:

 

In summary, below is the list of the 4 forms of intellectual property related costs discussed in this article:

IP Form Protects  Life (in yrs)  Prosecution & filing costs Maintenance Cost
Trademark Infringement/Damage of reputation by another company 10 (can be renewed indefinitely) $225-$400 per class of goods/services depending on the type of application  $425 per class of goods/services
Patent It protects the commercial use of the invention without the consent of the patent owner 20 $75-$300 based on the size of your company $1,600 for large entity | $800 for small businesses | $400 for micro businesses
Copyright It protects the original work of an author 70-120 yrs Starts at $45 for e-filing No maintenance fees
Trade Secret It protects information that is crucial to a business, using which the entity has a strong competitive advantage Lasts as long as the trade secret is viable commercially There is no need to register with a government body to guard your trade secret No maintenance fees

 

A report from the Commission on the Theft of American Intellectual Property pegs the loss from IP theft between $225 billion and $600 billion annually. If you fail to protect your intellectual property because of the costs involved, you might end up losing a major chunk of revenue as competitors might copy it. You will lose your competitive advantage too when others claim to provide the same features that you do. 

It is normal to feel overwhelmed with the rigmarole of the lengthy procedures involved in filing applications for each intellectual property, which is exactly why you should delegate it to the experts, depending on the situation.

 

 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

Answers To 25 Most Searched Patent Related Questions

25-MOST-SEARCHED-PATENT-RELATED-QUESTIONS-1

Every enterprise needs to explain basic terminology and commonly asked questions.  You would be surprised how the most basic questions are never asked.

To get the most engagement with a patent program, training and socialization are key.  Many companies have made patent training part of orientation for their new technical staff.  Periodic refresher courses are also offered. Typically, your patent counsel will offer this training for little or no cost.

This FAQ has a compilation of queries that bubbled up from several large companies from their employees. 

What is a Patent?

A patent is a grant by the U.S. Patent and Trademark Office of the right to stop others from making, using or selling an invention in the United States for a limited period of time.  Let’s explore this in detail:

  • A patent is a “grant”, therefore you do not have it until the government awards it to you (in other words, you have no right to enforce a patent against anyone else until the patent has been issued).
  • A patent provides the right to stop others, and not necessarily the right to do anything yourself.  Someone else may have a patent that prevents you from doing anything with your own invention, even though your invention is patentable.
  • A patent gives the right to stop others from making, using or selling.  For example, if someone who was infringing on a patent were to make the invention in a foreign country, he or she could not sell it in the United States. 
    In the same way, it is still considered to be an infringement if the invention is made in the United States but exported immediately, or if a person buys the invention overseas and uses it in the United States for their own use.  There is no “personal use” exception for patent infringement.
  • Patents can only be awarded for inventions.
  • Patents are awarded by the U.S. Patent and Trademark Office. For that reason, a patent can only be enforced within the United States.
  • A patent has an expiration date.  Once a patent has expired, the invention may be freely used by anyone, as long as no other patent would prevent it. 

What All can be Patented?

Anything under the sun that is human created—any new idea that has not otherwise been disclosed or otherwise published more than a year ago.  There are different kinds of patents, although only the first two will likely be of interest:

  • Provisional Patent — Precursor to a utility patent that serves as a one-year placeholder to quickly secure a filing date while preparing a formal utility patent.
  • Utility Patents — Cover science and technology, such as:
    • Methods or processes, such as software or other functionality
    • Apparatuses and systems (e.g., cell phones, computer systems, point of sale devices, etc.)
    • Chemical compounds and engineered biologicals and their methods of use
    • Improvements or updates to any of the above
  • Design Patents — Cover the ornamental features of useful objects, but not the functionality (e.g., the ridge pattern of a golf club grip, shape of a cell phone).
  • Plant Patents — Cover certain types of plants that are genetically the same.

What cannot be Patented?

  • Mental processes or human performed actions (e.g., medical procedures).
  • Mathematical formulas and algorithms in the abstract, but once applied to a given situation they are candidates for patent protection.
  • Hopes, dreams, aspirations or other abstract ideas unless a technological or scientific solution to achieve them is devised with some specificity.
  • Basic ‘methods of organizing human activity,’ such as fundamental economic practices like market hedging and escrow transactions.
  • Naturally occurring things that have not been invented, but rather found (e.g., genes, minerals) unless you are protecting a refined version or how it is used to solve some problem (e.g., proteins used to cure a specified disease, use of carbon in the form of graphene for a space application).
  • Scientific principles or laws of nature (e.g., gravity, conservation of energy, Pythagorean theorem) unless applied to a specific problem.
  • Inventions that only serve the purpose of making atomic weapons, human-performed healthcare, tax shelters, and a few others.
  •  

What Qualities must Something Possess in Order to be Worthy of a Patent?

Generally, any innovation created by humankind and implemented with technology is patentable.  This presumption may be tempered by a discussion with patent counsel, but don’t discount incremental or slight improvements until you have legal guidance.  There are three general requirements for patentability:

  • Novel” means the invention has never been disclosed, released or published by another prior to you inventing it.  Once your innovation is known to others, you only have one year to apply for a patent, but may have lost your overseas rights.  Your own actions in the year prior to your application for patent.
  • Non-obvious” is a legal test not to be confused with the dictionary definition of that term.  It does not mean self-evident as most might presume. Most innovation is fairly derivative, but if your novelty has advantages over prior solutions you are well on your way to overcoming this hurdle.
  • Utility” means that the innovation you invented does something over what is naturally occurring.  It cannot be too abstract an innovation and built with technology. 

Should We Patent Every Innovation?

The pursuit of every patentable innovation would bankrupt most enterprises.  Devising a strategy and trying to accomplish that within a budget will often dictate decisions. 

A process for selecting the best innovation most crucial to protecting our investments in new products and services is the goal.  Legal or members of any patent committee can often provide guidance.

Also Read: 10 Types of Innovation to Drive Growth at Your Company

What will it Cost to Obtain a Patent?

Depending on the complexity of the invention, technology area and amount of argument, the entire process of obtaining a patent can cost between $20,000 and $50,000 in most cases over several years. 

The cost is split between drafting, argument and government fees, some of which occur after issuance in the form of annuities or patent taxes. 

Also Read: 6 Things to Know Before Hiring a Patent Attorney

What Steps are Typical in the Process of Prosecuting a Patent Application?

Identification

The inventor completes an Invention Disclosure Form or some other form of written disclosure (such as a white paper) which provides a description of the invention and other important information. 

Sometimes a patent mining session is helpful to brainstorm possible patent ideas and can be facilitated by patent counsel.

Vetting

There is no requirement to search ourselves as the patent office conducts a thorough search.  Public databases (e.g., Google Patents) allow quick review of what might already be filed, but search vendors can often do a far more effective search.  There are different strategies for searching or not that patent counsel can walkthrough.

Approval

Some enterprises formalize approval with a patent committee that looks at the merit of an idea with respect to strategic vision.  It need not be that formal so long as both the technical and strategic considerations are represented as ideas are selected for patent protection.

Drafting

Patent counsel interviews the inventors to develop a broad understanding of the idea, related technology and how it might evolve.  A draft provisional or non-provisional is produced within one to three months typically.

Also Read: 3 Ingredients for High Quality Patent Applications

Filing

Once the draft is approved by the inventors, it is filed with the patent office for an examination.  Feedback general comes in 6-24 months depending on whether the filing was fast-tracked.

Argument

Only a very small percentage of cases are approved without push back from the patent office.  The argument phase can be as short as 6 months or go on for years. Two-four rounds of argument are typical before allowance.

Maintenance

Issued utility patents expire no matter what 20 years from their earliest priority date. They expire sooner unless escalating government fees are paid at 3.5, 7.5 and 11.5 years into their term. 

If I submit an idea related to my job, and it is not approved, can I pursue it on my own?

No, ideas are created as part of your job duties the pursuit or not of patents are within the sole discretion of your employer. That your idea is not approved doesn’t mean that it will never be. A good patent program has an excess of innovation that is strategically pursued so long as budget permits. 

Should you have an idea completely unrelated to your job duties and not developed using company resources may be treated differently so long as any moonlighting policy is complied with.  Legal can review and approve such pursuits and provide written approval. 

How can I tell if my Team’s Invention is Patentable?

Inventors can conduct a novelty search to determine whether any previous patents exist similar to a particular invention. 

It is recommended to use http://patents.Google.com to search patents and literature to at least get a flavor of what others have done in your space that is similar to your innovation.  Other paid tools are available for searching as are third party search firms. 

Who is an Inventor?

The US patent office requires identification of the inventors with full legal name (including any middle initial), address to receive correspondence and city and state of residency.

There are typically 1-5 inventors listed on a patent, but the legal standard on who to include is tricky. On a provisional patent, it is anyone who contributed to the innovation disclosed. Where there are claims, an inventor is anyone who contributed to the conception of one or more of the claims.

Notably, implementers are not necessarily inventors and the same goes for with managers and mentors, etc.  Deception about inventorship can invalidate the patent along with the other members of the patent family so don’t play games with attribution and stick to the legal standard.

Once Patented, Can I Sell or License My Invention?

No, those hired or contracted to invent cede ownership of their innovation to their employer. 

Further, employment/consulting agreements further clarify enterprise ownership of the ideas you develop within the scope of your duties.  Confirmatory assignments are provided throughout the patent process to memorialize this as required by the patent office and foreign patent offices.

If you think your patent would be of interest to others for sale or license, please consult with legal who might pursue such avenues in consult with your management.

Also Read: How to seek investments using patents?

How Long is a Utility Patent Enforceable?

A utility patent is valid from the issuance by the patent office and ends 20 years after the date of filing of the earliest non-provisional application upon which the patent is based. 

There is a patent term extension that will extend that window if the process at the patent office was backlogged through no fault of your own. Plant and design patents have different terms. 

Can a Patent be Extended or Renewed to get a Longer Term?

Not unless patent term extension was recognized by the patent office at the beginning of the patent term or sometimes for delays while pursuing FDA approval. 

Once a patent expires, the claimed invention and anything described is permanently dedicated to the public domain. 

Can we still Obtain a Patent even if My Invention was Released in Our Product or Otherwise Known to Outsiders?

Domestically, you must apply for a patent within one year of the first publication, but most foreign countries bar patent rights any time after publication. 

Would a Knock-off Competitor be Able to Make Minor Changes to Avoid My Patent?

The patent laws contemplate someone designing around your patent claims, but deciding how well that was done is complex.  When determining the scope of your patent, the claims are what defines your right to exclude others.

Patent counsel can assist with interpreting the applicability of claims to the competitor. 

Can’t I Simply Insert a Description of My Invention in a Sealed Envelope and Mail it to Myself, for Protection?

No. Patent protection requires a filing with the patent office as only the government can provide those rights. 

Additionally, it is a race to the patent office as the first filer will almost certainly get the enforceable patent

Does Our Patent Protect Me Worldwide?

No. Rights are given country-by-country with some regional filings possible (e.g., Europe, Africa, Russia) to ease certain parts of the process.  There are treaties that ease your process for obtaining rights in multiple jurisdictions (e.g., Paris Convention & Patent Cooperation Treaty).

It gets expensive very quickly with each jurisdiction costing $25-75K for that geographic protection.  Patent counsel has strategies for maximizing coverage while minimizing expenses.

Also, not all jurisdictions are equal when it comes to enforceability so some are not very good at excluding the competition.

Also Read: Foreign Patent Filing: 5 Strategies to Develop an International Patent Portfolio

Can We Obtain a Patent on My Invention without Disclosing the Important Aspects of My Invention?

Generally no.  The government grants a limited monopoly for your patent claims in exchange for full disclosure.  There are strategies for keeping some ideas out of a patent that your counsel can help with. 

Not being a U.S. citizen and/or Resident, Can I Still Obtain a U.S. Patent?

Yes.  You can get a U.S. patent, but some countries require permission to file overseas first. Patent counsel can research the specifics and devise a filing strategy. 

Should We File a Provisional Application?

A provisional patent simply lets you secure a filing date without going through all the steps required for a utility patent application.  With the limited formality required, provisional patents are often the only thing possible given a certain time crunch.  For example, a paper describing a product may be going public tomorrow, and that paper might be quickly filed as a provisional patent.  Since a provisional patent is never examined or confers any rights, a regular utility patent application is required within a year anyway. 

Should I File a Patent with the Patent Office on My Own?

No.  Please coordinate with legal who handles this on a regular basis and has a relationship with counsel. 

When do I say “Patent Pending” or “Patented?”

“Patent pending” for a product simply means that you have a patent application on file at the U.S. Patent Office. 

You can mark your product “Patent Pending” only if you have filed a patent application that would cover part of the marked product, and the application has not been abandoned or withdrawn. 

“Patented” means that the patent is issued and not expired. Listing the patent numbers covering the product somewhere on the box, enclosed materials, on the product itself, or virtually on the web site is recommended.

How do I read a Patent and Understand the Scope?

The claims define the scope of the right while the remainder of the patent application provides context, clarification and additional detail.  A patent claim is simply a statement, but it can be very difficult to read so reach out to counsel to help.

What are Annuities/Maintenance Fees/Patent Taxes?

Patent offices around the world have schemes to encourage pruning of patents by charging fees even after issuance.

Consider abandoning your patent when those fees come due to give your non-strategic ideas to the public domain.  These government fees are a great funding source paid by those with the more important patents. For larger and/or international patent portfolios, most will use an annuity service to pay these fees in a process similar to what you might have done with your favorite domain registrar who tacks on a service fee to each renewal.

If you only have US patents, payment at the USPTO.gov site is fairly straightforward so you might avoid service, but be sure to not miss the deadlines of 3.5, 7.5 and 11.5 years from the issuance of your utility application.

Also Read: Types of Intellectual Property and Related Costs

What is a Patent Troll?

The pejorative term describes an entity that does not currently produce anything, yet owns and asserts patents against others. 

Sometimes called a non-practicing entity (NPE), the only purpose of these companies is to pursue license revenue while threatening suit. 

Commonly, the settlement amounts are very low to avoid having any defendant truly challenge a patent. Targets are faced with the prospect of fighting assertion at great legal expense or quickly disposing of the suit.

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Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

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