What would be your first step to take before applying for a patent?
The following answers are provided by members of Young Entrepreneur Council (YEC), an invite-only organization comprised of the world’s most promising young entrepreneurs. In partnership with Citi, YEC recently launched BusinessCollective, a free virtual mentorship program that helps millions of entrepreneurs start and grow businesses.
1. Hire a Lawyer Before Filing a Provisional Patent
My company, Priori, is a B2B legal marketplace, so we are uniquely positioned to know how entrepreneurs are currently using legal services. We frequently encounter businesses who apply for a provisional patent on their own, and only enlist a lawyer when they are ready to convert it. Often, it turns out that the provisional wasn’t maximally protective; it’s vital to consult a lawyer at the outset.
2. Be the First to Market Instead
A patent is only as valuable as the money you are willing to spend to defend it. If someone wants to infringe, they can, and you are on the hook to spend the money to fight them. If they have resources to outlast you, your patent is virtually worthless. It is better to market and corner the core customers first and consider a patent second, rather than doing it the other way around.
3. Consider Whether You Need a Patent
Sometimes you are better off keeping your secret sauce simply as trade secret. Consider that versus provisional or non-provisional patents.
4. Ask These Three Questions
Is my product truly unique? Will I change the design in the next three to five years? Will my product life cycle last more than five years? If the answer is no to any these, think hard before moving forward. The time and monetary cost of filing and receiving a patent can cost you more than it’s worth, especially if the design or market may change.
5. Do Your Research
Do a thorough prior art search to find related or similar inventions. You need to understand what is already patented and how your invention differs. Pay particular attention to the “claims” section of each patent. This explains the bounds of each patent. Reviewing existing patents also will help you understand more about the components of a patent and what you need for your own.
6. Start With a Provisional Application
A provisional patent application provides a chance to refine your patent in the 12 months following the filing date. The process is relatively cheap and quick, and allows you to legally use the term “patent-pending.” Once the application is complete, you can conduct more research into a regular patent. It is best to work with a trusted legal team from the start, even in the provisional stage.
7. Interview a few Experts
Like any other adventure in life, you have to be prepared. Ask people who have done it what they learned about the process. Conduct interviews with them and be sure to ask what they learned and what mistakes they made in the process, as well as what they would do it again or change next time. Pay for advice if you need to, too.
8. Have an Offensive Plan
A patent does not give you or anyone a license to commercialize a product/device. Rather, a patent acts as a defensive barrier to ward off some (not all) would-be competitors in a specific category. Before you file your provisional or utility patent, get real with your thinking and be sure you are spending your time and money wisely and not forgetting about your offensive plan to get to market first.
– Jeffrey Schab, Protequus LLC
9. Don’t Do it Yourself
There are a lot of moving parts in the patent process even after it’s issued, and a patent does not necessarily mean you’re protected. If you write it too broad, competitors can invent around your paten; too narrow and you can be exposed as well. Choose someone that knows your industry well and rely on them. Do what you do best and let the experts do what they do best. It is well worth the expense.
10. Understand That the Laws Have Changed to “First to File”
This is by far one of the most important rules in filing for a patent. Many people operate on the previous method of being the “first to invent,” however that has recently changed to “first to file.” The patent will go to whoever files the patent first, so it’s important that you get your documentation in order and file quickly.
11. Understand All Strategies
Make sure you understand all of the patent filing strategies and choose the best one. To figure out the best option, ask yourself why you are filing the patent. Is it to defend your technology against competitors, increase the value of the company or to license as revenue? An experienced attorney in your field will be able help, and think toward the future if you need global protection.
12. Consider What Regions You Need It to Cover
Even a solid U.S. patent might not always protect you. Often people forget that patents are territorial and it’s imperative to consider which regions and markets you will be working in. You don’t always need to secure patents in countries that should not affect you, however if you have the budget and resources, it’s something every startup with a unique invention or concept should consider.
13. Start Now
Start the process right away. Acquiring a patent is a long and rigorous process that should not be put off. It is very important to start as soon as you can because there is so much information you will need to supply that it will take you time to gather that information. It is not unusual either to be asked more questions or have to resubmit later when you have more details.