How Can You Reduce Your Outside Legal Services Fees?

How Can You Reduce Your Outside Legal Services Fees

Some outside patent firms have policies that make it easy and inexpensive to get information about your cases. But many of them will charge a few hundred dollars for status updates, even if you only talk to a paralegal. This leaves applicants in a difficult situation — they can fly blind without the information they need to make important business decisions or they can pay for information every time they need it.

As a result, inventors, managers, and leaders end up screening their questions. They dismiss questions as:

  • Expensive
  • Unimportant
  • Irrelevant

But failing to keep in sync with your patent lawyers and the U.S. Patent Office can leave you without important information that your business needs.

Below, you will learn how you can reduce your outside legal services fees while still staying on top of your patent cases.

Breaking Down Patent Information Silos

Until very recently, information about patent applications was siloed in two places:

  • The Patent Office
  • Your patent law firm

Your patent counsel who filed your patent applications was the designated correspondence address with the Patent Office. The Patent Office sent all paper and electronic correspondence in your application to your patent lawyers at their address.

Your outside firm would enter the correspondence into the firm’s docketing system and place a copy into your file. These docketing systems are usually very complex and include a lot of information. In fact, docketing systems are an overkill for small to medium sized enterprises.

Although these systems sometimes allow access by clients through an extranet, you will often need some interpretation of the information in your file to make sense of it. At best, you will be able to extract a docket sheet or status report. But these are usually designed for your patent law firm and may be indecipherable by clients.

Even though you have access to the silo containing your patent information, you still face paying your patent lawyers and their staff to convert this information to something your business can use in its decision-making.

Maintaining and Accessing Your Company’s Information

At the heart of this frustration over your patent portfolio is that your company has to pay to access information owned by it. The TIP Tool allows you to take control of your company’s information.

The TIP Tool includes a “Portfolio Manager” tab. You can find a list of all your cases under this tab. As you click on each case, the TIP Tool pulls up a window. This window provides information on your case, including:

  • An easy-to-read copy of the patent application
  • How well the case is proceeding
  • A timeline of the back and forth about the application with the patent examiner
  • Whether the case has met more resistance from the Patent Office than expected
  • Anticipated costs for the case
  • The application’s family tree of related applications
  • What has happened overseas in any foreign applications

The TIP Tool does not give you the dry, technical information your patent lawyer needs to track and prosecute your case. Instead, it gives you actionable intelligence about your cases without having to pay your patent law firm for answers.

Intuitive for Your Company’s Innovators and Leaders

Just as importantly, the TIP Tool from Triangle IP presents this information easily and quickly. With the Patent Office’s PAIR system and free databases like Google Patents, you could dedicate one of your employees to gathering this information and preparing a report for your inventors, managers, and leaders. But this takes time, money, and training. The TIP Tool already knows how to perform all these tasks.

Even more importantly, your company can customize the TIP Tool to provide the precise information it needs. You can tag applications with the ideas, products, or technologies they contain. You can then use these tags to quickly identify a subset of your patent applications along with their statuses.

Quick Answers for all Stakeholders

For example, suppose your company’s executives need to know all the patent applications related to mobile phones. If you ask your patent counsel that question, you could receive a huge bill along with the answer to your question.

Your patent lawyer does not have a detailed understanding of your products or patent portfolio. Your patent lawyer works for many clients and will probably need to read through the docket sheet and probably several of your applications to find the answer to your question. The time your lawyer spent doing this for your company has value and the firm will probably bill you for it.

At the same time, your innovators, managers, and leaders do understand your patent portfolio and products. As you file each application, the inventors can tag the application with contemplated products using the TIP Tool. When the executive asks for a list of all the patent applications related to mobile phones, a search for that product tag will produce a list quickly and, most importantly, without paying legal services fees.

Saving Money on Outside Legal Services with the TIP Tool

The TIP Tool has been designed to provide an innovative, interactive web-based portal. The information in the TIP Tool is accessible to all the managers and administrators responsible for the patent applications. Inventors only get access to the information they need, such as the applications where they are included unless they get enhanced access rights.

Such an intuitively designed tool allows administrators, managers, and inventors to gather the information they need or answer questions from company leaders about the patent applications they find. By breaking down the patent information silos and making this information transparent, your business will have the answers it needs to make intelligent and strategic decisions.

You can learn more about the Triangle IP’s TIP Tool by using the free demo playground. This demonstration will show you the power of the Portfolio Manager tab as well as the TIP Tool’s other features.

Cost Estimates for Filing Utility Patents in Top 7 Countries of the World in 2022

Cost Estimates of filing Utility Patents

One of the core considerations in developing an international patent portfolio strategy is the cost of patent filing. While the cost of patent filing varies per country, there are two basic components of the cost: government fees and attorney fees. We have created this guide as a one-stop list of the various costs involved in filing a patent in seven key jurisdictions that have the highest number of patent filings in the world:

  • USA
  • Europe 
  • China
  • Japan
  • India
  • South Korea
  • Canada

At a glance, you will be able to assess a rough estimate of the cost of patent filing in each jurisdiction. Bear in mind that the final cost you incur in each jurisdiction will also depend on the complexity of your innovation, whether you are making an international or domestic patent and the number of claims in your application.

USA

The USA is a hotbed for patent registrations. The United States Patent and Trademark Office (USPTO) has been receiving nearly 700,000 patent applications each year for the past five years. The cost of preparing and filing a patent application in the USA significantly depends on the type of innovation, the degree of complexity, and the type of entity applying for a grant of the patent. 

Below is a table showing the breakdown of costs of a utility patent filing in the USA:

In addition to the above fees, other official fees, including an extension of time, administrative charges, issuance fees, and post-issuance charges may apply. Professional drawing fees will cost between $300 and $400, while attorney fees will cost between $5,000 and $10,000, depending on the complexity of the patent. 

If filing an international patent under the international patent system of the World Intellectual Patent Organization (WIPO), through the USA, you should expect to spend a minimum of $8000.

Europe

As an alternative to filing a patent in each European country, a European patent gives its owner the same rights as a national patent in each country for which it is granted. It covers registration in 38 member states of the European Patent Convention – 28 member states of the European Union (EU) and 10 other non-EU member states. Once the European patent is granted, it needs to be validated in the designated states for it to be enforceable.

Below is a table showing the breakdown of cost for filing a European patent at the European Patent Office (EPO):

In addition to the above fees, note that additional costs may be incurred for translation of documents or appointment of national agents in designated states. Meanwhile, filing an international application through the EPO will cost at least €10,000, excluding attorney fees. Such costs will include a search fee (€1,775), an international filing fee (€1,233), and a transmittal fee (€135). You may refer to the EPO’s schedule of fees, for additional information on applicable fees.

Patent attorney fees for European patents depend on the scope and complexity of your invention. Attorneys may charge either a lump sum or an hourly fee, although the latter is more common. Fees for simple applications may range from €1,500 to €3,000, while more complex applications may attract a fee between €3,000 and €6,000. In summary, the total costs for filing a European patent can sum up to €15,000.

China

China is one of the most important global markets and innovators will often file their innovations in China, even where such innovations have not been introduced to the Chinese market.

The fees for filing a patent with the China National Intellectual Property Administration depend on the category of patent and the filing route. Generally, there are two ways of filing a patent application in China: a direct application through a licensed Chinese Patent Attorney and an international patent application under the Patent Cooperation Treaty (PCT). 

Below is a table of the patent filing fees and estimated attorney fees in China.

For more information on patent filing in China, here is a guide for SMEs published by the European Union.

Japan

Similar to other countries, the cost of filing a utility patent application with the Japan Patent Office depends on the route: direct filing or international filing under the PCT.

Additionally, if you do not have a permanent address or residence (office, if the applicant is a legal entity) in Japan, you are required to appoint a representative such as a patent attorney, in Japan. An attorney will charge you between 100,000 and 250,000 Japanese Yen (JPY) for preparing, filing, and registering a patent application in Japan.

The official patent application fees in Japan are as follows: 

In addition to the above, annual registration/renewal fees are required to be paid for each patent. If the patent application is opposed, opposition, appeal, and trial fees may also be required. Generally, a patent application in Japan will range from ¥200,00 to ¥500,000, excluding attorney fees. A complete schedule of these fees may be accessed at the Japan Patent Office

India

The cost of filing a patent in India is dependent on several factors, including whether the patent is being filed by an individual or a legal entity, the number of claims and pages in the specification, whether the normal or expedited process has been chosen, and whether the application is a provisional patent application, an international patent application or a plain application. 

Therefore, the total fees for filing a patent application in India will range from INR 45,000 to INR 95,000. For more details on the patent fees in India, see the schedule of fees on the Government website.

South Korea

The legal fees for preparing and filing a patent application in Korea range from 2,360,270.00 KRW to 4,130,472.50 KRW, depending on the complexity of the innovation. Below is a table of government fees for filing a patent in Korea:

If you’re filing an international patent in Korea, the examination fee and handling fee for a request for an international preliminary examination will cost 450,000 and 253,000 KRW respectively. A request for an international application search will cost 450,000 KRW in Korea and 1,200,000 KRW in English.

Canada

Canada is a relatively inexpensive jurisdiction, compared to other countries in which patents are commonly filed. 

The professional cost of drafting a new patent application in Canada may range from $5,000 to $15,000, depending on the complexity of the application. The actual sum will depend on several criteria, such as the complexity of the technological field covered by the patent, the completeness of the technical disclosure you give to your patent agent, and the number of different innovative conceptions that must be covered in the application.

Details of the government filing fees in Canada are as follows:

Additional fees may apply, such as fees for correction of an error, fees to advertise an application, and fees for requesting a re-examination of a patent. Full details of these additional fees may be accessed on the Canadian Intellectual Property Office’s website

The official fees for filing a PCT application are typically in the range of $3,500 – $4,500, depending on the size of the application.

Conclusion

We have provided the costs for filing patents in multiple countries, with a focus on the top countries of the world where patents are commonly filed. We have also included estimated attorney fees and the cost of filing an international patent in each of these countries. 

With this guide, you have more information to design your patent strategy and the cost implications of your filing decisions. Here is how you can make the most from a global patent portfolio strategy.

Also read: How to control patent costs without compromising on your patent?

Patent Mining: 5 Ways To Go About It At Your Enterprise

5 WAYS TO GO ABOUT PATENT MINING IN YOUR ORGANIZATION

As a patent portfolio manager, you want to keep abreast of innovations within the enterprise.

You want to detect and capture likely patentable innovation early enough.

It’s you, who best understands the importance of creating valuable IP.

Maybe you are super technical or maybe not.

You may be comfortable in one technology domain but may not understand other technology domains so well. However, you need to capture innovations from all product lines in the enterprise.

This process of patent mining can be challenging in the absence of a systematic approach.

“Patent Mining is like a treasure hunt, the key to the treasure lies in asking the right questions to the right people.”

Patent Mining at your enterprise

The right people being:

  • Developers
  • Engineers
  • Scientists
  • Product Designers
  • Marketing
  • C-suite

And the right questions frame the patentable aspects of innovations across the enterprise. Ready to dive in? Here are the 5 ways you, the patent portfolio manager, would go about mining for patents at the enterprise.

Hanging around innovators

Tapping into existing development checkpoints

Staying up-to-date with product rollout plans

Learning key selling features from the marketing team

Knowing the strategic vision from the C-Suite executives

Hanging Around with Innovators for Patent Mining

Having the smartest employees is wasted if there is no opportunity to uncover their inventive ideas. Hang around people within the enterprise who have titles such as developers, engineers, scientists, and product designers. Find out about the problems they are solving and the technology they are developing to do so. The company presumably hired these sorts of employees to build new things so certainly they are coming up with new ideas as they carry out their work.

Hanging Around Innovators for patent mining

Networking with these groups of technical people will lead to discussions about their work and patenting opportunities.

Tapping Into Natural Checkpoints

Product development is multifaceted. The process has many stages from conceptualization through market release with the process varying in every enterprise. Usually, during the product development process, you have natural checkpoints that you should look out for. For example, during the product development stage, you might have a proposal, design review or customer presentation. These are often opportunities to get insights so lookout for things that could be patented.

Tapping Into Natural Checkpoints for patent mining

Ask questions about the uniqueness or novelty of the product being developed or its advantages. Focus on the responses and get feedback about the products satisfaction of customer needs. The feedback received would often expose a path to new improvements or enhancements that can place you at an advantage over your competitors. Feedback during the product development process identifies inventive ideas which can lead to a patent.

Staying Up-To-Date With Product Rollout

Closely watch as products get ready for rollout. Product rollout is a term used for the introduction and integration of a new product or service to the market. It is important that you listen to people talking about products that are about to be released. The key questions to ask here will be:

Is there anything new?

What is the problem that this product solves?

What are the advantages of the product?

How is it better than the previous version?

Does the new product make use of new technology?

Staying Up-To-Date With Product Rollout for patent mining

Asking these questions can lead you to terrific new insights and you shall be able to spot some potential patenting opportunities. Timeliness is of the utmost importance here. In the U.S. you lose the right to file a patent after one year of disclosing any information about the new product to the public. Marketing often controls the release of product information to create filing deadlines.

Learning Key Selling Features From The Marketing Team

Marketing usually goes hand in hand with the process of new product rollout. It is crucial that you look out for the key selling features that the marketing team is using to sell the new product. For example, the marketing team can claim the new product is more user friendly than previous products of its type or that it is 20% faster than the previous product. Uncover the technology or innovation associated that is creating that difference, and that might be something to file a patent on.

Learning Key Selling Features From The Marketing Team

Catching Up With The C-Suite Executives for patent mining within the enterprise

Networking with key executives on the technical staff, for example, the Chief Technical Officers, Chief Scientists, etc. is key for patent mining within the enterprise. These technical executives usually have a good grip on the strategic vision. They might not be familiar with how patents work so it’s important that you educate them. These key managers usually have their tentacles going in different product directions because they engage firsthand with the technologies used in the enterprise daily. The key managers should be trained to look out for and identify innovations or ideas that can be patented within the enterprise. It is important to catch up with these executives on a regular basis to know their innovative direction.

Catching Up With The C-Suite Executives

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Let’s Sum It Up

These 5 patent mining strategies are the ways to go about gathering up inventions for patent protection. Here is a quick recap of the 5 strategies for you:

  • Professionals with roles like scientists, engineers, developers, and designers work on new products, and hanging around them can lead to patenting opportunities.
  • Tapping on the natural checkpoints like proposal, design review or a customer presentation may also help you find patentable innovations.
  • Whether the product is more user-friendly or 20% better at its performance; there is a good possibility of innovation that led to the improvement. Exclusively owning those marketing advantages is a must.
  • Many times marketing goes hand-in-hand with product rollout; learning key selling features from the marketing team may direct you toward the underlying innovations that might be patented.
  • Catching up with the C-Suite executives can help you spot strategic direction; as these are the people who have a complete picture and insider information on what’s happening across the enterprise.

Our founder recently talked about patent mining in one of his Youtube sessions. Here is the video:

Hope this would help you break down the sometimes-overwhelming task of identifying patentable ideas within an enterprise. Patent mining is one task and managing the patent capture is a whole different game. In the absence of the right tool, the information might just be a mess, that no one wants to get into. Hence, you might like to explore software that simplifies the process into stages:

Idea Capturing

Internal Vetting

Patent Drafting

Patent Filing

Portfolio Managing

Patent Mining framework

Here is a good guide for you to evaluate the tools for innovation capture for a sound IP strategy.

Patent Mining: 5 Ways To Go About It At 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.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.


Get Started Now

How do you develop an IP strategy for your company?

Triangle IP - Is my IP strategy headed in right direction?

As a fledgling company looking to make your mark, you have to be defensive. The lawsuits are quite a costly affair and can certainly be lethal. You will find yourself being pushed into bankruptcy even before you can really get going. Patents are expensive. But the protection that a strong patent portfolio can give your company is unmatched. 

Seek first to understand, then to be patented 

Building your own IP strategy is personal to your business and its goals. It largely depends on your company’s strategic vision. But it is also important to understand your competition. Possessing competitive intelligence is key. To develop an effective IP strategy for your company, understand your market and your competition.  If you are entering a market space that is patent-heavy, investors will be expecting you to have patents as well. But how many do you need? And where should you start? 

Start from the very beginning 

A good place to start is Google Patents. Let’s say you are a start-up that’s entering the marketplace with a product that is a virtual assistant. You might suspect that in the digital age, this is a heavily patented space. A simple search on Google Patents will list for you the details of many patents in the space. You will find details including who are the inventors and owners along with many similar patents. The free platform provides comprehensive coverage of every patent. The status of filing, litigation (if any), the office it has been filed in, etc. is all available to anyone. ​Spend a little more time studying the competitor innovation along with their filing their habits in the patent world. This will help you build competitive intelligence as you pursue your own patent portfolio. 

 Without patent(s) to protect the innovation in your product, you will be a pigeon amongst cats. Without patent protection as a defense, you are exposing yourself to attack. This can be in the form of infringement suits or threats that scare away your customers. Competitors will look to shake confidence in your investors or slow you down before your IPO. Or worse still, look to remove you from the marketplace before you reap its rewards. 

Before you develop your IP strategy to protect your company, go back to the drawing board. Relook at your vision for your startup and draw a blueprint of your product’s journey as it navigates past the competition. Mark out where you want to be in the next six months, year, five years, and then long term. Once you have the answers to those questions is when you choose which patents you want to pursue.  

Build a Portfolio; Ward off Litigation 

Did you know you are less likely to be sued with a strong patent portfolio than without it? With a patent portfolio, you are reducing the risk of the patent suit out of fear you would countersue. You are also giving yourself a chance to go on the offensive when you need to.

Sharks (large companies with many patents) are always on the lookout for little fish (start-ups with little to no patents). By not having patent protection, you are more likely to lose a patent lawsuit. The reason is not only statistical but logical. You become an easy target to go after as there is little chance of a countersuit and even if unsuccessful, a small company can be bled out with the extraordinary litigation costs.

But patents are an expensive affair. Choosing the right patents to have is an important part of competitive intelligence. If your portfolio is too small there is more risk of losing a patent battle. Your portfolio should be commensurate to your position/station in the marketplace. Having a portfolio that has about half the number of patents as compared to a competitor twice the size is a good rule of thumb. Being in this position will allow you to counter-sue. When the competition knows that it is susceptible to a countersuit, it is less likely to take you to court.  

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

In Sum, Strategy First

A strong patent portfolio doesn’t always mean having a ton of patents attached to your name. A strong IP strategy is something that is unique to your company’s innovation. It is something you think about as much as you think about your product. Having the right patents is as important as having the right product while procuring patents to match your growth timelines. This can be difficult with all the distractions that product development and new releases can bring.

Having an IP strategy and growing your portfolio along with your product success will strengthen your market dominance. Seek professional advice in building your IP strategy. That way, you stand to make the most of your investment. We’ve got Google’s most asked patent questions answered here for you already! Patents can be your biggest business weapon and most attractive asset. They attract investments when your fledgling product gains market while protecting you when you grow. So choose wisely, build well. 

On that note, from us to you – Happy Patenting!

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.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.


Get Started Now

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.

Protect Your IP Before Your Co-Founder Leaves Your Startup

5 STEPS TO TAKE BEFORE YOUR CO-FOUNDER LEAVES

Remember co-founders are also employees who are privy to confidential information. A leaving co-founder may pose a significant threat to your IP. We bring to you five ways to protect your IP when your co-founder leaves.”

The team that starts a company is often not the one that stays on till the end of it.

Co-founders leave.

A co-founder who is leaving the company may pose a significant risk to the company. He/She may claim the company’s intellectual property rights as his/her own.

A leaving co-founder can start their own rival entity and may end up using the company’s intellectual property.

Typically, when co-founders start a company, they brainstorm, develop an IP, and then start with the business.

This makes the co-founders privy to all kinds of proprietary information. They have seen the growth of the IP from a nascent stage. And they may think that they have a right to use it, independent of their association with the company, as well.

So, what to do when a co-founder leaves? How to protect the company’s IP against a leaving co-founder?

We highlight below five ways by which you can protect your company’s IP. And contractually bind the co-founder to not use or treat the company’s IP as his own:

Assign IP to the company rather than co-founders/Invention Agreement 

Intellectual Property enhances the valuation of companies. Hence, its protection becomes important. IP Rights need to be assigned to the company rather than the founders. In the event, the founders decide to walk away from the company, it is important that the IP rights still remain with the company.

How can IP rights be assigned to the company?

This is where a proprietary inventions agreement comes into the picture.

Such an agreement mandates that all the intellectual property developed, conceived, formulated, and generated by a company would be the sole property of the company.

While drafting this agreement, care should be taken that the intellectual property rights of the co-founders are assigned to the company and that they do not remain the property of an individual. It is not uncommon for companies to obtain trademarks, patents, and domain names in the name of one or more of the co-founders initially.

Later on, these should be transferred in the name of the company.  Any patents which are filed should be filed in the name of the company and not the co-founders. 

Employment Agreement

A co-founder is not only associated with a company in the capacity of a co-founder but also as an employee. He/she may develop intellectual property during their employment with the company.

Rights in such intellectual property should also be vested in the company.

The co-founder’s employment agreement which would be separate from the inventions agreement should contain such a clause. 

Non-Disclosure Agreement

A Non-Disclosure Agreement should be mandatorily signed with the co-founder. Such an agreement would prevent the co-founder from disclosing the trade secrets of the company. 

For example, if you have a restaurant business and there is a unique recipe that has the capability of attracting more customers to your restaurant; the recipe is your restaurant’s trade secret.

If your co-founder leaves and opens a competing business and uses this recipe, your restaurant would lose its edge. A non-disclosure agreement would contractually prohibit him from engaging in such an act. 

Confidentiality Clause

Business ideas form the very base of successful functioning and continuance. Hence, it is prudent to bind all current and even former partners by the clause of confidentiality.

Confidentiality should protect the business ideas, trade secrets, any operations/procedures which have been adopted to give finality to these ideas, and finally the end-product itself.

A confidentiality clause can be built in the employment agreement of each co-founder, in the Founders’ Agreement, and in the NDA which the co-founder signs.

Remember to make the confidentiality clause applicable even post the termination of the aforesaid agreements.

Typically, a confidential clause should survive 6-12 months after the agreements have ended. 

Explore-Simulated-Version-of-TIP-Tool

Non-Compete Clause

A non-compete clause prohibits the co-founders to engage in competing business for a reasonable period of time after they leave the company.

It is essential to have a non-compete clause in the Founders’ Agreement and the employment agreement of the co-founder. 

One hurdle that one may face with regard to non-compete clauses is its enforceability.

The enforceability of non-compete clauses varies across states.

In California, such clauses are void and unenforceable.

In other states such as North Dakota and Oklahoma, the use of non-compete provisions outside the sale of a business is limited. Other states such as Illinois prohibit the use of non-compete with regards to low wage workers.

Hence, having a non-compete clause can be one of the ways in which you can prevent your co-founder from stealing your confidential information and use it for the benefit of a rival/competing entity.

However, it may not be fool-proof and hence should be coupled with other protections such as assigning of IP to the company, NDA, confidentiality obligations, etc. 

Our co-founder recently talked about this in a detailed video. You can watch the video below:

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

Conclusion

To conclude, while it is understandable that a co-founder leaving a start-up that they helped build may be a devastating blow for the management, it does not necessarily have to be a fatal one.

By doing small exercises to protect the larger interests of the company over the individual interests of the founders, the company can have a strong foundation on which it can be built.

If organizations take steps like including IP ownership by the company, along with NDA and non-compete clauses as part of a founders’ agreement, then any future fallout resulting in the founders splitting ways, will not tear the company apart.

These steps will provide stability to the company and protect its IP.

If you like this article, join us where we share patent information that matters to you. Don’t worry, we only send emails that we feel are highly relevant for you. ?

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.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.


Get Started Now

5 Strategies To Reduce Patent Expenditure

5-Strategies-to-Reduce-Patent-Expenditure

“Reduce Patent Expenditure”: Have we read your mind?

The on-going pandemic has drastically affected the availability of resources for discretionary expenses such as patents. It is of no surprise that many companies are proactively looking to conserve cash by pruning their patent portfolio.

So, what are some of the strategies that companies can opt to reduce their patent expenditure?

The following points aim to highlight the plausible ways:

Trade Secret

Patents are intangible assets, and so are trade secrets that enjoy legal protection from misappropriation.

The caveat here is that if a trade secret holder fails to maintain secrecy or:

  • if the information is independently discovered,
  • becomes released, or
  • becomes known in the general course of business,

then the protection of a trade secret is lost.

Nevertheless, here is how the Courts can enforce trade secrets in misappropriation cases:

1. By ordering maintenance of secrecy.

2. Payment of royalty to the owner.

Watch Webinar: How to manage your prosecution in the Covid environment?

Webinar: 5 Strategies To Reduce Patent Expenditure In The COVID World

Defensive Publication

Patents are expensive, defensive publication is a good alternative. You can curtail or defer expenses relating to patents by using the defensive publication to your advantage.

The defensive publication refers to the publishing of a technical disclosure of your idea in the public domain. This disclosure prevents competitors from obtaining a patent.

The reason behind the popularity of defensive publication is its cost-effective nature over patents.

Provisional Patents

Unlike a utility patent, a provisional patent is not reviewed by the USPTO.

A provisional patent acts as a reservation for the invention until an investor is willing to file a utility patent. However, the follow-up utility patent application needs to be filed within a year.

Thus, filing a provisional patent allows a company to defer patent expenses for a period of less than a year. In this period you can continue to conduct more research into the market viability of the patent. You can also use this time to refine the patent product/process itself. 

Also Read: Everything You Should Know About USPTO Patent Center

Curtail Overseas Spends

Patents are an expensive proposition, more so in foreign countries where patent applications stretch out over a year or sometimes more.

Furthermore, the patent protection regime in such countries may not be conducive to patent filing as enforceability is often lax.

Therefore, companies should reconsider their non-strategic patent spends and weed out jurisdictions after undertaking a cost-benefit analysis of obtaining a patent in that particular country.

Continuations

A continuation patent application is an extension of the existing patent application. The continuation patent application increases the scope of patent protection from multiple perspectives.

However, continuations are expensive to file. Since they are “designed” around an existing patent, it only serves to enhance coverage of an existing patent.

To conserve cash, companies can either forego filing continuations or defer them.

Other Strategies

Here are a few more high-level strategies that will ensure the optimization of patent spends for companies:

Ask Questions

Companies or clients should regularly question their patent attorney to gauge the timeframe as to:

  • when a patent will be issued,
  • what are the chances of getting a patent,
  • how best to curtail patent spend, etc.

By asking questions at every step along the patent application process, the viability of a patent can be determined. Whether it makes monetary sense to pursue the issuance of a patent or abandon it altogether.

Align Corporate Strategy

Often, patents are pursued with the sole intention of ensuring the protection of an invention rather than a monetizable invention.

Hence, in the prevailing scenario of depleting cash reserves, it is prudent to pursue patent applications of those inventions which:

  • align with the overall corporate strategy
  • or are expected to provide for economic benefits.

License to Litigate

Patents are a means to litigate. They provide for the legal protection of your inventions. In cases of infringement, the Court can award damages, court costs, and reasonable attorneys’ fees. Hence, it is a wise notion to pursue a strategy only for patents that are litigate-able.

Let’s Sum It Up

The COVID pandemic has thrown corporate strategies as well as financial forecasts for a toss. It is the all-hands-on-deck mode to conserve cash. It is widely acknowledged that patents, albeit extremely critical to the success of a company, incur exponential costs.

Companies can rationalize their patent expenditure over the short-term and medium-term by aligning it with the overall business objectives. Companies can also opt for ways to postpone filing a patent application.

Hope the insights presented in the post shall help you reduce patent expenditure.

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.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.


Get Started Now

Ultimate Patent Strategy for your Software Startup (Comprehensive Guide)

Patent strategy for your software startup

As any tech company has learned over the years, securing new patents can be a very frustrating, challenging process and it’s not getting any easier.

Why You Need a Patent Strategy?

So, for start-ups entering a market for the first time with a brand-new invention, the balance between securing early protection and preparing a viable application with a good chance of approval is critical.

The fact is, software, in particular, has had so many runs at the U.S. patent office, they are not impressed by the next big thing and often turn down packages as duplicates, ill-prepared, or the easy kill – insufficient information on which to base a patent approval.

The second problem inherent in the system is that existing software patents are written like a giant barn door, capturing far more in licensing power than many should have, also blocking otherwise subsequent good packages from seeing the light of day.

The results of these two factors have created a modern patent process that rewards undeserving winners and makes it almost impossible for most startups to see their way through the process without solid investor backing from big players and heavy patenting expertise.

Also Read: Answers To 25 Most Searched Patent Related Questions

Basis of the Patent Strategy of your software startup

Many will argue the first and best step is to secure solid legal representation and let the lawyers handle everything.

However, this is incorrect.

In reality, the cornerstone and foundation of a good patent has always been the innovative nature of the invention to be protected.

Pure and simple, the invention must carry the day in how unique and different it is from anything already protected.

This provides the basis for what in essence becomes a legal monopoly no one can break for decades without severe risk.

So, the invention has to be a standout and unique.

The invention must also have staying power. What solution does it provide?

People don’t buy a tool because it’s a tool; they buy the tool because it provides a functional solution to a problem.

In other words, the invention needs to be the kind of idea that is going to be around for a decade or so at least. If the viable window for your invention is only a few months or a year, save your money and legal resources and instead maximize what you can from sales and the market before the fad wears off.

It’s a better use of your time and keeps more earned cash in your company wallet. Then move onto your next market idea.

Investing Patent Efforts on Software as well as the Hardware front

Technically, anything invented that is unique and different from anything already existed in that same purpose and function can be patented, but is it worth the trouble?

In many cases, the answer is no. Patenting simply for the sake of patenting is foolish.

It’s a waste of money, effort, time and resources to make happen, especially if the patent is not going to be used economically or protects a critical component in an assembly that will go to market.

Choose the protection of your inventions wisely and realistically in terms of what is truly going to go to the market and be a reliable revenue-maker.

If the patent is just an attempt to gain a reputation by showing ownership of multiple patents, you can do a lot better for a lot less with other titles such as certifications or industry awards instead.

Your protection of intellectual property needs to be strategic in nature.

As heavily detailed by Blake Harris in his book, The History of the Future, when Oculus created their virtual reality headset product, the patent protection they pursued was not on the hardware.

Most of the hardware parts were knock-off material from previous products and inventions re-purposed by Oculus to make the developer kits and the first masks.

Instead, Oculus put its patent effort in the software and hardware combination that made their version of virtual reality work so darn well and different from anything before. That was the invention that gave Oculus their strategic advantage, and what needed legal protection.

This was proven later in a subsequent patent trial Oculus’ team partially won holding onto the same patent rights.

Importance of Filing Patents on Different Parts of an Invention

Even if you get an invention patent, is your product going to be worth fighting for? There are lots of companies with far more money, power, and lawyers than your startup who can burn you dry filing counter motions and delaying tactics in court to drain your bank account. This is a well-known and well-used tactic.

If you go bankrupt before your protection is awarded, what’s the point of having the patent in the first place?

While your startup may not have an unending bankroll available to litigate, like that of maybe Oracle or Google, you can layer your invention with more than one patent.

Strategically filing patents on different parts of your invention can create a far more complex fight before it starts. It’s far more complex and requires that the separate parts have a distinct difference, but successful multiple patents produce stronger ownership of the invention as a whole.

Then you have the choice of defending on multiple fronts, making it harder for the bigger player to run away with one part and be successful.

Apple, for example, was approved 44 patents on just one new iPhone design in 2018. Additionally, you could sell one of the patents to another player, and use the sale funds to pay for your defense as well.

If it’s a good invention showing significant promise, others will want to invest, and that can offset the financial strength of the attacker in litigation.

Detailed Roadmap of Patent Strategy

Many startups and new companies lose their focus trying to patent too early to leverage uniqueness. Instead, patent experts regularly advise the best approach is having a strategic timing plan of when the patent will be pursued along the path of the company development and launch. The most successful tech patents were pursued and secured just before the product based on their invention went to the market and at the edge of its revenue run.

That, in turn, protected every exponential dollar in sales as the product took off. Patent too early, and money will be wasted on what might turn out to be a mistake that never goes to market or fizzles. Patent too late, and someone else might churn out a viable substitute invention before your startup gets a footing.

Your roadmap should have a clear phase of the following:

·         Development of the invention

·         Finished prototype

·         Investment partnering

·         Pre-market preparation

·         Pre-market launch

·         Production

Where the ideal point for the patent is in your startup’s case depends on which phase your invention becomes viable and in demand as something new and a real solution to a customer’s problem. When that happens and goes public, the attention will go viral, and your risk of loss without a patent rises exponentially increases as well. Add in the fact that today’s international patent markets are growing very much in sync with each other, the protection can be extended across borders as well.

Explore-Simulated-Version-of-TIP-Tool

Combining Elements for an Edge as a part of Patent Strategy

A common question by many startups trying to differentiate themselves in the market tends to be with taking a niche approach. While they aren’t the first to the market to create one element, they may find a market creating a bridge between two or three existing elements.

These elements may even have patents themselves individually and already owned by someone else.

However, the bridge invention created may very well be eligible for a patent because no one else saw the possibility of the separate items coming together for a new purpose.

Remember though, a combination alone is not an automatic patent approval. The government approves patents because the invention is “new, useful and non-obvious,” not because of a combination of parts being present in general.

In Oculus’ example noted above, the virtual reality kit maker used common parts already patented by other manufacturers but the software was the unique bridge that made the parts come together in a better way. The software needed the parts, but the coding was the bridge invention itself that made the entire product viable as a better way to experience virtual reality.

How can Provisional Patent Option be helpful in your Patent Strategy?

Most people unfamiliar with the patent process simply assume that a patent is an all or nothing application. It gets submitted, reviewed and either approved or denied in total.

That’s not true.

There is what is known as a “provisional” patent application.

This option allows a filer to submit a “temporary” application that gives one year of protection versus a permanent patent for an invention.

However, unlike the full patent process, the provisional patent is cheap in comparison. And it’s a great tool for gaining some temporary protection for a unique invention that needs some sort of defense but a startup is not yet sure it will be a worthy investment or not.

Normally, a provisional patent filed with an attorney’s help will cost anywhere between $1,500-2,500. Before hiring a patent attorney, you must take these 6 things into consideration.

However, if a startup really wants to go as cheap as possible, the application can be self-written by the company itself and the government’s filing fee runs about $70-140.

And, in addition to the protection, the owner gets the benefit of being able to legally warn anyone that a patent is pending, which itself can scare off theft at a very low cost.

The full patent filing will need to be submitted a year later if full protection is going to be pursued, and the full filing needs to be based on the earlier provisional filing versus creating an entirely new package.

The filer can’t add greater features, detail, or scope to the provisional package with the subsequent full filing 12 months later, using the provisional filing as a “draft” run.

Why you should Patent under the name of your Startup?

Whichever patents your startup decides to create, make sure they are owned by the startup business entity right from the beginning. Too often startups have a smart team player, and the patent is titled in that person’s name versus the company.

This can become a big mistake if the person walks away from the startup when things really start taking off. While non-discretionary agreements (NDAs) can prevent an employee or partner from giving away intellectual property for a while, NDAs expire in a few years’ time.

And then the ownership of the patent in practical terms is gone. Startups that make it clear ideas and inventions created in the context of the business are owned by the startup right from the start do themselves big favors down the road and avoid an “achilles’ heel” weakness with key inventors as personnel.

What to do in case you have no budget for patents?

One of the areas that nobody can effectively create a patent has to do with the public domain. This is where an invention is known to everyone and is commonly available. As a result, nobody can claim the invention as their own unique and new idea. A startup that wants to make sure a prototype idea gets to fruition but doesn’t have the resources or the expectation the idea will get a patent of its own can use the public domain to make sure no one else can do the same.

The Linux operations system code is a great example of this approach. Unlike Microsoft Windows or Apple iOs software, Linux code was made publicly available from the start. Because the code has been constantly developed in the public domain, nobody can turn around and patent Linux today (although they have tried as in the case of Microsoft). Anyone can work on the code and improve it. This approach has kept Linux in the shared-development domain for decades, and the product has been extremely effective in how well it’s been improved as a result.

Linux today is the preferred operating system for many large-scale server systems, for example, far more so than Windows Server, and it is the coding basis for the Internet of Things (IoT) world as well. This alternative approach can be a great way to protect an invention from being lost by doing the opposite of the profit model and making the idea available for everyone to use.

Getting Different Government Help to Secure Early Protection at Lower Cost

It’s a smart idea to consider which market your invention is going to be sold in as a product before filing for protection.

For example, if your invention is geared for Europe and a foreign language jurisdiction, it doesn’t make a lot of sense to file immediately in the U.S. for patent protection. Your startup would be better served to seek protection in Germany or the U.K. instead.

We previously also wrote about 5 strategies that could help you develop Foreign Patent Portfolio.

In some cases, startups can be eligible for government help in offsetting the costs for their international patent filings.

The Canadian government, for example, provides guidance and financial support for small and medium businesses to file patents within its system.

One might ask, why go to Canada versus operate in the U.S., but remember that international coordination is now happening with greater and greater strength every day.

Filing a patent in Canada with government-funded assistance could be a way to put legal protection in place that the U.S. would honor, and it’s a lot cheaper than the cost of filing a full patent in the U.S. out-of-pocket.

Just like software coding, there’s more than one way to skin a cat when working to patent a software or prototype. Problems can be solved, gaps can be crossed with different directions and steps.

As a startup, you will have financial challenges and the traditional path toward success won’t seem practical. But you can break that mold by being smart with your startup’s patent strategy and playing your options that fit best for your particular intellectual property scenario.

Remember, you will likely have more than one patent, and there’s no rule that says you have to use the same approach to protect one invention versus how you protect the next.

Plan each one in itself and then combine your overall business model with what works best, firing on multiple channels instead of just one single path.

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

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.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.


Get Started Now