Although new ideas can be priceless, such values are often affected by the familiarity of inventors/founders of the patent application process. When inspiration comes to an entrepreneur or inventor, there is a crucial need to patent the idea before somebody else does under today’s first-to-file requirement. As a patent attorney with over 20 years of experience in helping startups capitalize on their ideas, I hope this roadmap will provide some insight on how an individual or company can secure valuable intellectual rights for their inventions and accelerate their path to success as a unicorn.
Here are five basic things an Entrepreneur require to know about patents preparation
What is A Patent
A patent is a license that the government issues to provide the patent holder with exclusive rights to a procedure, design, or innovation for a period of time. The patent holder becomes secure from any other entity trying to get hold of their intellectual property.
A patent is Not given over An Idea
Without any unique personification, a common idea or plan cannot secure intellectual property. The idea needs to structure as a tangible plan or asset, either by developing a prototype or via comprehensive portrayals and illustrations for it to qualify for a patent. The key to writing a strong patent is to become an expert in your concept.
There are Several types of Patents
During the patent preparation, the inventor must consider the type of patent that they wish to apply for. In the US, there are three main types of patent; utility, design and plant patents. A utility patent grants the right to stop anybody else from creating, selling, or importing the invention without the consent of its inventor. A design patent protects the distinctive look of any manufactured item like furniture, containers, and clothing. Plant patents on the other hand entails new varieties of plants that are unique and produced asexually. They grow from grafting, cutting or cloning.
Patents Requirements Vary From Country to Country
There has been a range of different patent authorities. However, there is no particular governing organization issuing internationally applicable patents. In the United States, the mandates falls under the “United States Patent & Trade Office” (USPTO). The office provides the inventors with the option to initially file a provisional patent application. The application labels your invention as patent-pending for a year. You can determine whether your idea is marketable or not while waiting for the approval.
One Who Files a Patent First Wins
In the new America Invents Act, a first-to-file approach on patents prevails over first-to-invent basis. The first applicant hence receives the patent award where more than one applicant is filing for the same. However, under the revised U.S. system, the inventors can still avail a particular grace period to file their application at the USPTO.
What are the requirements for obtaining a patent?
The actual test for patentability is more complex than the sentence implies. The U.S. patent laws determines patentability. For this to happen, an invention must meet these requirements;
- The invention must prove useful
- It must be new
- It ought to comply with the statutory requirements (subject matter eligibility)
- The invention should not be obvious
Useful Requirement
Patent law requires that subject matter be useful. This means that the invention must serve a practical purpose. This requirement is more critical when patenting a drug or chemical compound. It is essential to identify a practical or specific use for the compound.
Novelty (Newness Requirement)
The patentability of an invention requires that the invention be new or unique. There exists novelty requirements that the invention must posses. They include certain public disclosures that largely contribute to the patent been given. The most important rule, however, is that an invention will not be patentable if:
- The general public knew the invention before the filing of the patent application
- The idea was first described in a printed publication prior to the applicant filing for patent protection.
- Before seeking the patent protection, a description of the invention in either a published patent application or an issued patent exists.
This exception applies to disclosures made by an inventor within one year of filing the patent application. He/she must file for patent application within a year of the first public disclosure or offer to sell the invention. This “statutory bar” is very strict. An inventor who fails to file for patent protection of his/her invention within the one-year grace period loses any rights to receive patent protection.
Subject Matter Eligibility
Section 101 defines four types of patentable inventions: processes, machines, and articles of manufacture. Patentability is denied for inventions that do not fall within any of these four categories. Data structures that cannot use a computer or any type of computer-readable media are examples of structures that one cannot claim over.
Moreover, functional descriptive material such as music, literary works, and compilations or arrangements are not eligible. This also applies to electromagnetic waves and signals hence not patentable. Similarly, a claim to a software not linked to a process or physical machine is not patentable.
To avoid this problem, experienced patent attorneys will not claim software in the abstract but within the context of a computer machine or process.
Non-obviousness Requirement
A Novel invention is different from prior products or processes. To be patentable, an invention must non-obviously improve the prior art. The invention must also not be obvious to a person with ordinary skills in the art to which the invention in question relates.
Comparing the invention to the previous one helps determine whether the differences would appear obvious to an ordinary skill- in -technology person. The invention must be apparent before filing the application as per the requirements of the statute.
The Importance of a Detailed Invention Disclosure
First off, the disclosure of your invention needs to be as detailed as possible. This isn’t just about fulfilling a legal requirement—it’s about laying a clear foundation for your patent application. You need to describe every aspect, component, and functionality of your invention with precision.
Think of it as telling a story where every detail contributes to a stronger narrative. The better you can articulate how your invention works and the problems it solves, the stronger your patent application will be.
Innovating Beyond the Current Market Offerings
To meet the novelty requirement, your invention must offer something new to the market. But here’s a strategic twist—don’t just think about what’s new, think about what could be a game-changer in your industry. Research current market offerings extensively.
What are the limitations of existing products? How does your invention not only address these limitations but also enhance user experience or efficiency? This level of innovation can set your startup apart and make your patent application compelling.
Crafting Claims That Protect Your Business Goals
When drafting your patent claims, they should be more than just legally sound—they should strategically align with your business goals. Each claim defines the boundary of your invention’s protection. Be precise and think defensively.
What future products or improvements might evolve from your initial invention? Your claims need to be broad enough to cover potential iterations of your technology, preventing competitors from sidestepping your patent with minor modifications.
Harnessing the Power of Provisional Applications
For startups, cash flow and timing are everything. Filing a provisional patent application can be a strategic move. It’s cost-effective and establishes an early filing date. Use this time not just to refine your invention but to test its market viability.
This period can provide valuable insights that can further refine your patent strategy or pivot it if needed before committing to a full patent application.
Mastering the Art of Non-obviousness
The requirement of non-obviousness can often be the most challenging hurdle. Your invention should not be an obvious solution to someone skilled in the field. Here’s where your innovation mindset needs to kick in. Engage with experts, gather feedback, and explore angles that are not immediately apparent.
This can often mean looking at your problem through a different lens or applying principles from other disciplines. Remember, non-obviousness adds a layer of robustness to your patent, making it harder for competitors to challenge.
Compliance and Beyond: Adapting to Legal Standards
Lastly, ensure your invention complies with all legal standards and patent laws, which can vary significantly by region. This compliance goes beyond just checking boxes. It’s about understanding how these laws can be leveraged to maximize the protective coverage of your patent.
Each element of your patent application, from the description to the claims, needs to be tailored not just to meet these standards but to use them strategically to build a moat around your invention.
Drafting the application
Drafting a patent application for a non-specialist may be challenging. This requires an in-depth knowledge of the patent laws and regulations. These are some tips to help you draft a patent application and increase your chances of it being granted.
- Do a thorough patent search before you begin to draft the patent application to understand the closest prior art. This will help you focus on how your invention is different in the description and the drawings and set up novelty expectations accordingly.
- A detailed description of your invention is required: Your patent application must include a description of the invention. This should include as many drawings and diagrams as possible since a picture is worth a thousand words. This description should explain clearly and concisely how the invention works, and what its advantages are over other technologies.
- Clear and concise claims: These are the most important parts of a patent application because they define the invention’s scope. Clear, concise, specific claims are essential. Avoid using vague or broad language.
- Use the appropriate terminology. Avoid using colloquial terminology. Use consistent terminology throughout your application.
- If they are helpful in clarifying the invention, drawings and diagrams should be included in your application.
- Hire a professional to assist you with the application. They are familiar with the legal requirements and have the experience to make sure that your application is compliant.
- Proofread and Review: Read the application carefully, and make sure to correct any errors or omissions.
Drafting a patent application involves conducting a thorough patent research, writing a description of the invention, drafting clear claims using appropriate terminology and drawings, hiring a professional to proofread and review the application. These steps will improve the likelihood of a successful patent application.
Start with a Robust Patent Search
Begin by conducting a comprehensive patent search. This step is crucial and serves multiple purposes. It helps you understand the existing inventions and ensures your invention truly stands out, reducing the risk of infringement.
Moreover, it provides insights into potential gaps in the market that your invention could fill. This isn’t just about avoiding legal pitfalls; it’s about strategically positioning your patent in a way that maximizes its commercial potential.
Define Your Invention with Precision
When describing your invention, clarity and precision are your best allies. Detail every component, mechanism, and interaction within your invention. Think like an engineer but write like a storyteller.
Explain how each part contributes to the overall functionality. This detailed blueprint not only aids the patent examiner in understanding your invention but also fortifies your claim against potential infringement by making it harder for competitors to find loopholes.
The Art of Writing Claims
The claims section is arguably the most critical part of your patent application. This is where you define the boundaries of your patent’s protection. Each claim must be crafted to cover the core of your invention while also encompassing potential variations.
Use clear, concise, and exact language. Avoid overly technical jargon or vague descriptions that could be misinterpreted. Here, the goal is to build a fence around your intellectual property that is both broad enough to deter encroachers and specific enough to be defensible.
Utilize Drawings Effectively
Incorporate clear, detailed drawings that complement your written descriptions. Visual aids can significantly enhance the understanding of your invention, providing a direct view into its design and operation. These drawings should be more than mere illustrations; they should be strategic tools that visually argue the novelty and functionality of your invention.
Partner with the Right Patent Professional
While it’s possible to draft a patent application on your own, partnering with an experienced patent attorney can add a layer of sophistication to your application. Choose a professional who not only understands the law but is also familiar with your industry.
Their expertise can help navigate complex patent landscapes, advise on the strategic scope of claims, and anticipate potential challenges from competitors.
Review and Refine
Before submitting your application, review it meticulously. Look for any inconsistencies, typographical errors, or areas where further clarification is needed. This final polish can make a significant difference in how your application is perceived by patent examiners.
Dive Deep into the Details
Start by diving deep into every element of your application. Each word, each claim, and each diagram must precisely convey the unique aspects of your invention. It’s essential to ensure that there is no ambiguity that could open the door to future legal challenges or misunderstandings.
Clarify Technical Language: Technical language can be a double-edged sword. On one hand, it precisely describes the technical aspects of your invention. On the other, overly complex jargon can obscure the core ideas of your patent. Simplify the technical language without diluting the technical accuracy. Strive for clarity to ensure that anyone reading the patent, from examiners to potential licensees, can understand the innovative aspects of your invention without needing a dictionary.
Consistency is Key: Consistency in the use of terms and references throughout the document is vital. If you refer to a part of your invention as “Component A” in one section, don’t switch to “Element A” in another. Inconsistencies can lead to interpretation errors and potentially weaken your patent’s enforceability.
Engage with Visuals
Patent drawings aren’t just illustrative; they are integral to the patent itself. They provide a visual explanation of your invention, complementing the written description.
Enhance for Clarity: Review the drawings with a critical eye. Ensure that every line, label, and reference number is clear and correctly corresponds to the detailed description in the text. Consider adding exploded views or cross-sectional diagrams to clarify complex mechanisms if your invention requires it.
Visual Consistency: Make sure that the visual style and the level of detail are consistent across all drawings. This uniformity helps in maintaining a professional appearance and ensures that the patent examiner perceives your application as meticulous and well-prepared.
Solicit Feedback Before Finalizing
Before finalizing your patent application, it’s invaluable to get an external perspective. This could be from peers, a mentor in the industry, or better yet, a professional with experience in patent filings.
Constructive Critiques: Invite feedback on both the technical content and the readability of the application. A fresh set of eyes can catch errors that you might have overlooked and suggest improvements that enhance the overall presentation of your patent application.
Test Understanding: Have someone unfamiliar with your invention read the application. This test can reveal if your explanation and diagrams effectively communicate the invention to someone without your expert background. If they don’t understand it, it’s a sign that further refinement is necessary.
The Final Review
Your final review should be as rigorous as a proofreading session for a book before it goes to print. Every detail from the page layout to the font size should be checked to ensure compliance with patent office requirements.
Error-free Text: Ensure the application is free from spelling, grammar, or punctuation errors. Such mistakes, while seemingly minor, can detract from the application’s professionalism and can be distracting to those reviewing your patent.
Legal and Filing Check: Double-check that all legal requirements are met and that your forms and declarations are in order. Ensure that your claims are correctly numbered and that references in the text match those in the drawings.
Strategic Considerations
Finally, think beyond the patent itself. Consider how this patent will fit into your broader business strategy. Will it serve as a deterrent to competitors? Could it be licensed to generate revenue?
Or will it form the basis for a new product line? Aligning your patent strategy with your business goals can provide a competitive edge and drive long-term success.
What happens after you file the patent application
There are several steps involved in patent prosecution to obtain a patent for an invention. These are the steps involved in patent prosecution:
- Filing a Patent Application: This is the first step in the patent prosecution. You must file a Patent Application with the appropriate government agency (e.g., the United States Patent and Trademark Office or the European Patent Office).
- Examining the patent application: After it is filed, the patent examiner will review it and determine if it meets all the legal requirements to be granted a patent.
- Respond to office actions. If the patent examiner discovers issues with the application they will issue an “office action”, which is a letter outlining those issues. Before the grant can be granted, the applicant will have to respond to office actions.
- Allowance and payment for the issue fee: The patent office will issue a notice to approve the application and then the applicant will need to pay an issue fee in order to get the patent granted.
- Patent office grants patent after payment of the issue fee. The patent office publishes the patent in the official gazette.
- Maintenance: To keep the patent in effect, the patentee must pay maintenance fees once granted.
- Enforcement and Defense: The patentee is able to enforce the patent and stop others from using, selling, or importing the invention. However, the patentee also has the responsibility of protecting it against invalidity and non-infringement challenges.
The patent prosecution process includes filing a patent request, reviewing and examination, responding in office actions, allowance, payment, issue fee, grant or renewal of patent, and maintenance fees.
The Examination Process: Your Patent Under the Microscope
The examination of your patent application is a detailed and critical process. Here, a patent examiner reviews your application to ensure it meets all legal criteria, including novelty, non-obviousness, and utility. This stage can take several years, depending on the complexity of your invention and the backlog at the patent office.
Engage proactively with your patent examiner. Don’t just passively wait for their decisions or objections. Be ready to provide detailed explanations or amendments to address potential concerns. This can significantly expedite the process.
Office Actions: A Call to Dialogue
An office action is a document from the patent office that often contains rejections or objections. It is not the end of the road but rather a part of the conversation between you and the patent office.
View office actions as opportunities to refine your patent’s scope and strength. Responding effectively to office actions can often be the difference between securing your patent and facing delays or rejections. Prepare clear, concise, and technically sound responses that directly address the examiner’s concerns.
Notice of Allowance: The Green Light
Receiving a notice of allowance is a significant milestone—it means your patent application is on the verge of approval. However, it’s not just a time to celebrate but also a moment to ensure all administrative and fee-related requirements are promptly met.
Use this time to ensure that all claims and drawings are correctly represented and that no clerical errors are present. Any oversight here can affect the enforceability of your patent.
Paying the Issue Fee: Sealing the Deal
Once you receive the notice of allowance, an issue fee must be paid to the patent office to officially grant your patent. This fee is critical to move from a patent-pending status to owning a granted patent.
Timely payment of the issue fee is crucial. Consider setting reminders and possibly automating this process to avoid any last-minute hiccups that could delay the issuance of your patent.
Post-Grant Proceedings: Keeping Your Guard Up
Even after your patent is granted, the journey might not be over. There can be post-grant reviews, oppositions, or even litigations, especially if your patent covers a highly lucrative or competitive field.
Stay vigilant and prepared to defend your patent. Regularly monitor the market for potential infringements and be ready to enforce your rights through legal means if necessary. Consider setting up a watch service that alerts you to new patents or publications in your domain.
Regularly Monitor Patent Landscapes
In the fast-evolving world of technology and innovation, new patents are filed daily. Staying informed about the patent landscape not only helps you keep track of emerging competitors but also identifies potential infringers early on.
Set Up Alerts: Utilize patent databases and monitoring services to set up alerts that notify you of new filings in your domain. This will help you react swiftly to potential threats or opportunities for collaboration.
Analyze Trends: Keep an eye on trends and shifts within your industry. Understanding where technology is heading can help you adapt your strategy, ensuring your patent remains relevant and enforceable as new advancements arise.
Develop a Strong Enforcement Strategy
Having a patent doesn’t automatically stop others from infringing on your rights; it merely gives you the legal basis to stop them. Developing a robust enforcement strategy is crucial.
Understand Your Rights: Fully understand the scope of your patent protection. This includes knowing what you can enforce and where, especially if your business operates internationally.
Prepare Legally: Work with your patent attorney to prepare a legal action plan. This should outline steps to take when infringement is suspected, from sending cease and desist letters to filing for injunctions or damages.
Engage in Continuous Education
Laws and regulations surrounding patents can change. Staying educated on these changes is crucial for maintaining the strength and relevance of your patent.
Attend Seminars and Workshops: Regularly attending IP-focused seminars, workshops, or webinars can keep you informed about the latest in patent law and strategy.
Consult with Experts: Periodic consultations with IP experts or legal advisors can provide insights into best practices for IP management and help you navigate complex scenarios that may arise.
Leverage Post-Grant Opportunities
A granted patent opens up several strategic avenues for your business, from licensing agreements to enhancing your negotiating position in business deals.
Explore Licensing: Actively seek licensing opportunities. Licensing your technology can be a lucrative revenue stream and also expand your market presence.
Use Patents in Negotiations: When entering business negotiations, use your patented technology as a leverage point. This can be particularly powerful in joint ventures or alliances where IP plays a central role.
Stay Prepared for Post-Grant Reviews and Challenges
Even after a patent is granted, it can still be challenged. Being prepared for post-grant proceedings such as reexaminations, post-grant reviews, or inter partes reviews is vital.
Legal Readiness: Ensure that your documentation and legal bases are solid to withstand challenges. Keep all developmental documentation and proof of concept that led to the patent filing.
Budget for Defense: Set aside a budget for potential legal defenses of your patent. This financial planning can be crucial for startups operating in high-stakes technology sectors.
Leveraging Your Patent: More Than Just Legal Rights
A granted patent is a powerful tool in your business arsenal. It can serve as a deterrent to competitors, a key asset in strategic partnerships, or a significant boost to your company’s valuation.
Actively explore how to commercialize your patent. Whether through licensing deals, strategic partnerships, or direct incorporation into new products, your patent can open numerous revenue streams and strategic opportunities.
Now reap the benefits of your hard work
Once you have filed your patent application, it is now a tangible asset with value. There are many ways to use a patent to increase the value of an existing company. Here are some examples:
- Licensing allows the company to license the patent to others companies. This gives them the right to use the patented technology for a fee, or royalty. This is a way for companies to generate revenue, without needing to invest in manufacturing and distribution.
- New products and services can be developed: Companies can use the patent technology to create new products or services that can be sold to customers, or licensed to other businesses. This could help increase the company’s product and service offerings, as well as its revenue.
- Competitive advantage: A patent can be used to protect existing products and services of the company from other competitors. This gives the company a competitive edge in the market.
- Cross-licensing is when the company can use the patent for cross-licensing with other companies. This allows the company to access other patents in return for licensing its patents.
- Increase company valuation: A patent portfolio can make a company more attractive to potential buyers and investors.
- Legal protection: Patents can be used to defend the company against patent infringement lawsuits. This allows the company to continue to function without worrying about costly legal disputes.
Important to remember that patents can only be used to increase the value of an existing company. This requires a strategic approach as well as a deep understanding of the patent landscape and market. Before implementing a strategy, a company must consider the benefits and costs of each option.
Turning Patents into Revenue Streams
A patent doesn’t have to be just a legal shield; it can be a significant income generator. Consider different ways you can monetize your patent:
Licensing Opportunities: Don’t overlook the power of licensing your patented technology to other companies. This approach allows you to generate revenue without the overhead costs associated with manufacturing and distribution. You can offer different types of licenses, such as exclusive or non-exclusive, depending on your business strategy.
Strategic Alliances: Your patent can be a valuable asset in forming strategic alliances. Use it as a bargaining chip when entering into partnerships or joint ventures. It can give you leverage in negotiations, ensuring you get favorable terms that boost your business growth and market reach.
Enhancing Your Market Position
Owning a patent elevates your standing in the industry. It sends a strong signal to competitors, investors, and customers that you are a leader in innovation.
Barrier to Entry: Your patent can act as a barrier to entry for competitors, protecting your market share. It can deter other companies from entering your space with similar products, giving you a chance to capture and dominate the market.
Brand Reputation: Highlighting patented technology in your marketing materials can enhance your brand’s reputation. It shows that your company values innovation and is capable of producing unique, cutting-edge products. This can attract more customers and higher-quality partnerships.
Fostering Innovation and Securing Investment
Patents are incredibly appealing to investors. They are tangible assets that can significantly increase your company’s valuation.
Attracting Investors: With a patent, you can demonstrate to investors that your technology is not only innovative but also protected. This reduces their risk and can lead to higher investment at better valuations.
Support for Further Innovation: The revenue and credibility generated by your patent can be reinvested into further research and development. This can set off a virtuous cycle of innovation, leading to more patents and growth opportunities.
Navigating Challenges and Maximizing Impact
Owning a patent also comes with its set of challenges which require strategic navigation.
Maintenance and Vigilance: A patent needs to be maintained with periodic fees, and its scope and infringements need to be vigilantly monitored. Consider using IP management software or services to keep track of your patents and any potential infringements.
Legal Preparedness: Be prepared to enforce your patent. This might involve legal battles, which can be costly. Set aside a budget for potential legal issues, or consider obtaining insurance that covers litigation costs.
