About this event.
Answers to common questions and strategy recommendations for those early years between idea and granted patent. We begin with your idea, how you can talk about it, and what you can and can’t do with it to avoid potentially irreversible patentability issues. We tackle the fundamentals of when your provisional should be filed, how to maximize your runway, and what investors are looking for in your first patent. Moving beyond your provisional filing, we dive into what your startup should be focused on during the critical year of pendency before conversion to a full application.
Attendee Q&A.
Q. What is a founders role in getting started with the patent process?
We aim to make this as low friction and high resolution as possible. We have an invention disclosure form, but find that that often feels too heavy for getting started. The typical process starts with a secure data dump of your PowerPoint decks, product specs, drawings, comps, etc. We then have very iterative conversations around getting to the essence of your invention. We find that many founders self-censor and downplay on key aspects of novelty and patentability, so this dialog is incredibly beneficial in terms of getting the most coverage in your patent.
Q. What are some strategies for fighting against knock-offs from other countries like China?
China is getting better. The government previously decided on the suits with outcomes heavily being skewed in favor of the resident violators, but recent rulings have been breaking more in favor of outside companies. You can additionally put your patents on notice with border protection and this can help with bringing violations to light during inspections. The biggest advice we give around this, however, is to be sure you're building highly valuable products and experiences for your potential customers so that they'll want to buy from you over some cheap knock-off.
It's also possible to setup continuous landscape monitoring and we can help with that.
Q. How does the patentability search process differ between the USPTO and when filing internationally with a PCT?
It is possible that a PCT can use the US as a search authority, but every searching office can definitely be better or worse. We've found Japan and Europe to be the most stringent, with the US falling somewhere in the middle. It is important to note that international searches are not binding in other countries. In theory, everyone is using the same databases, but some searchers are better than others.
If you'd like to get a better feel around patentability, freedom-to-operate, or want to get a better understanding of your landscape, we have a very gifted search team.
Q. What are your fees?
The answer to this is highly dependent on the size of your company, the state of your innovation, and your involvement in the process. We don't take a one-size fits all approach and instead tailor to each startup we work with. For instance, some clients participate more in the drafting process, provide more of their own drawings, have varying levels of tech complexity, etc. Please do reach out to schedule a complimentary meeting and we can get a lot more specific once we understand your situation a little better.
Also note that the fees associated with the various patent offices also depend on your company size. For small entities, fees can be reduced by up to half the amount, and for micro entities (based on income requirements, among others), fees can be reduced by up to 75%.
Q. How would we get started with the patent process for a software platform that's just a site and some comps right now?
Software can definitely be tricky in terms of patenting, but it's an area where we've had a lot of success. It's really about breaking things down in terms of technical problems being solved. What are the detailed steps the software is executing? What are the data flows, filters, processing steps, ML-angles, training datasets, database structures, modifications to base ML, etc? The focus really needs to be on technical problems and technical solutions. Right or wrong, the patent office doesn't look favorably on anything that can be viewed as an automated mental process – anything you could do in your head, even if it took an impractical amount of time.
Recommended reading and listening.
- Provisional Patent Applications: Speed and Fidelity
- From Filing to Issuance: A Patent Prosecution Timeline
- On-sale Bar: Patentability and Selling Your Invention
- Patents at the Speed of Sound: How to Fast Track Your Patent
- Your Own Worst Enemy - Managing Public Disclosures
- The Three Ws of Patent Strategy
- Quicker and Better Patents? Tell a Story.
- [Podcast] On-sale BarPatentability and Selling Your Invention
- Is a Design Patent for you?