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The patent process basics for startups

Hello everyone, I wanted to get some input from the group regarding your
experiences with the patent process. More specifically:

. Provisional vs. Full Patent

. Cost

. Doing it yourself vs. working with a patent attorney

. Discovery process

. What is patentable and what is not

. Contact information of people or firms you have worked with and
the outcomes.

. Others?

Thanks!

15 Replies

Ian Shakil
1
0
Ian Shakil Entrepreneur
Founder, CEO at Augmedix

I applied for and was granted entry into the USPTO Pro Bono Assistance
program:
http://www.uspto.gov/inventors/proseprobono/index.jsp

I've since been assigned a local patent attorney who is filing a
provisional, a non-provisional, and providing other light legal services,
completely no strings attached.

It's been a good experience. If you qualify, you should apply.

Best,
Ian

Ian Shakil
shahttp://goo.gl/cwp4W

On Sun, Feb 3, 2013 at 9:43 PM, Gerardo Barroeta <jerry...@media.mit.edu>wrote:

Clynton Caines
0
0
Clynton Caines Entrepreneur
SharePoint Developer at Discover Technologies
Hi,

I've filed for a number of provisional patents ($110 each - now $125 I
think) and gone through the utility process with attorneys a number of
times ($10K+ each)! Here are my thoughts.

1. Follow Ian's advice. Getting help (financially or otherwise) is
definitely a good idea.

2. Don't Do It! You are a small player and the system is [uh... setup]
for large corporations and well funded trolls (see Mark Cuban's recent
rant on the subject).

3. USPTO.gov has a ton of info on getting started, but as a result it
can be hard to read through. Just understand that it always takes 3-5
years for non-revolutionary inventions to get patented (be honest - did
you just invent a new Sun?). One thing they wont tell you is that they
always reject your first submission (once they actually get around to
reviewing it). You don't have to believe me btw. With luck, you and/or
your attorney will have many opportunities to make changes and refile...
eventually succeeding? but the costs (and time) really add up.

4. It's relatively easy (but not fast) to get setup to file your own
petitions... And once you've read enough of them, you'll learn how to
word yours. The key is to get as much info (in general) about your
"invention" into the provisional submission. USPTO doesn't review it,
but you can't add stuff into the utility that's not in the provisional.
Think about every possible way it might be used - esp. in different
industries (ex: a protective 'food' glove that's also useful in
childbirth or bolt factories!)

5. You get a full year after filing a provisional to submit the utility
petition that's based on it (and takes advantage of the provisional's
filing date). Use that year to build your business! If it doesn't work
out, fail fast, lose the small investment and move on. Ex: you might
learn that someone else has a better solution or a really similar patent
that was already granted... or maybe you just realize it wasn't such a
great/fun idea. (I've previously mentioned that you should compete in a
domain that you own).

Getting a patent is hard, but once you succeed, turning it into a
profitable business (or licensing it for a profit) is harder still.

I hope all of this helps.
Clynton

(P.S. If you really want to know what I think, email me off group :-)

Sam Feller
0
0
Sam Feller Entrepreneur
Mechanical Engineer at Foliage

Here are a few tidbits that may help:

    1.  Sparkfun electronics has a great
article<http://www.sparkfun.com/tutorials/398> about
their stance on patents.

    2.  I've also heard people say that a patent isn't worth anything until
you win in court.

    3. if you want to license a product (i.e. a new idea for a toy that you
approach Hasbro with) they may want you to have a patent, because that
shows you didn't knock it off from someone else, which in turn, they worry
about getting sued for.

   4.  a provisional patent is super super cheap, not too hard to file
(just lots of paperwork), and you can write it yourself. it's basically a
one year place holder to prove you filed first, gives you some protection
if you talk about your idea publicly, and gives you a year to test your
idea in the market before deciding to plunk down the money for a Utility
patent.  it also starts a click ticking, as the patent enters the public
domain in one year if you don't follow on the provisional with a Utility.

Eric Rogness
0
0
Eric Rogness Entrepreneur
Technical Product Manager

I responded to a related question on Quora, though I just edited it. I hadn't been aware of the USPTO's pro bono programs.

EricRogness.com(647) 297-7126

Date: Mon, 4 Feb 2013 10:31:36 -0500
Subject: Re: [FD Members] patents
From: s...@awkwardengineer.com
To: Clyn...@stargenco.com
CC: [removed to protect privacy]

Here are a few tidbits that may help:

    1.  Sparkfun electronics has a great article about their stance on patents.

    2.  I've also heard people say that a patent isn't worth anything until you win in court.
    3. if you want to license a product (i.e. a new idea for a toy that you approach Hasbro with) they may want you to have a patent, because that shows you didn't knock it off from someone else, which in turn, they worry about getting sued for.

   4.  a provisional patent is super super cheap, not too hard to file (just lots of paperwork), and you can write it yourself. it's basically a one year place holder to prove you filed first, gives you some protection if you talk about your idea publicly, and gives you a year to test your idea in the market before deciding to plunk down the money for a Utility patent.  it also starts a click ticking, as the patent enters the public domain in one year if you don't follow on the provisional with a Utility.

On Mon, Feb 4, 2013 at 10:15 AM, Clynton <Clyn...@stargenco.com> wrote:

Matthew Cordasco
0
0
Matthew Cordasco Entrepreneur • Advisor
Co-founder and Head of Product

My experience has been split over the years.  When raising money, I often
hear first-time entrepreneurs mention they filed a patent?and they believe
that it means something.  The investors don't care if you filed.  They care
if you get one issued; but as some other responders pointed out, this could
take 3-5 years and some serious $$ (think $10k-$20k.)

On the other hand, I have seen acquisitions where the priority filing date
(when the provisional/ utility was first filed) was very attractive to the
acquirer who wanted to pursue the patent themselves and push off other folks
in their industry.  But the lift in valuation has been marginal, it has
mostly served as another motivating factor to start negotiations in early
exists and smaller deals.  Bigger deals will only care about issued patents,
and more specifically, if there are some players they think they can
prosecute for damages/ royalties.  (In general a nasty business that I try
to avoid at all costs.)

If you are filing a provisional, don't do any research.  Anything you find
that is related makes you liable for knowingly infringing.

As for attorneys, I like to write provisionals myself, have an attorney
format and file inexpensively and then have an attorney defend.  Not the
most cost-effective way but strikes a good balance for me between self-serve
and full-service.

On a related note are Trademarks.  I think these are very important indeed.
File two of them: one for the text-only name of your company and one for
your logo/ mark.   Perform some basic research ahead of time to make sure
there is nobody else in a substantially similar/ related field and word it
broadly.  If there is someone else is in your domain, you should probably
consider changing the name of your company sooner than later before you
build up brand equity.  When you file start using the ? next to name/ logo
and when you get the trademark issued start using the ( ) - this is an easy
way to ward off some level of trolls.

Summary:  
1. Investors don't care about patents you have filed, only ones that are
issued- and even then it depends on who you are talking to.
2. An issued patent is only useful  if you have the wherewithal to actually
pursue someone in court.
3. File trademarks.  They are fast, inexpensive, and a good foundation to
protect your brand equity.

Disclosure: I am not a lawyer, so take my advice for what it is- only
advice.  Ping me directly if you want any more dirt.

Matthew
Founder, (stealth-mode) MyCrowd.com

From:  Gerardo Barroeta <jerryhttp://groups.google.com/group/founderdating?hl=en.
For more options, visit https://groups.google.com/groups/opt_out.

Tony Rajakumar
1
0
Tony Rajakumar Entrepreneur
Founder/CEO at SnugBoo

I'd first ask if patents make sense in your case. If it's biotech for
example, then patents are the currency of the realm. If you're doing a
mobile app, then patents are likely not worth the time and expense. The
decision metric is this: if your product takes off, can a large company
knock it off easily and drive you out of the market? Then it's probably
worth a patent, as that acts as a deterrent first, and as a valuation
multiplier for an eventual acquisition second.

If it does make sense, budget $15k or so total (that's for filing and then
nursing it through the patent office to issuance). Start off with a
provisional you can file yourself for $150, making sure to pack it with as
much information plus creative twists on the invention and the areas of
applicability. It's ok - the patent office doesn't actually read it. It's a
placeholder, especially as the system is now first-to-file, meaning whoever
gets to the patent office first wins. You then have one year to decide
based on market developments whether it makes sense to file the final
application.

The way the system has been gamed, there is not much that is not
patentable. There are two schools of thought on how to go about it. Most
attorneys advise you to not read any other patents and just file as broad
as you can. The idea is to let the patent office determine what's
patentable and what's not, betting some underpaid overworked examiner won't
find enough to make you narrow it too much, thus maximizing the area of the
patent. The other school says dive into the current patent set pertaining
to your application and then be crisp and clear about what's different and
just craft from that and cite the prior art. This makes for faster
examination (and less attorney costs) but of course you end up with a
narrower and thus perhaps less valuable patent.

I would definitely work with a patent attorney, especially one who has
filed patents in your general area.

On Sun, Feb 3, 2013 at 9:43 PM, Gerardo Barroeta <jerry...@media.mit.edu>wrote:

Max Avroutski
1
0
Max Avroutski Entrepreneur
eCommerce, Software Developer, Usability, Marketing & Product Creation consulting services.

Corrections,
1) "If you are filing a provisional, don't do any research. ?Anything you
find that is related makes you liable for knowingly infringing." - completely wrong, do the research.

1.a) If you don't do the research you still be liable for infringement the larger of either a reasonable royalty or lost profits that result from infringement, while for deliberate infringement ("willful" infringement) punitive damages can be assessed up to three times the actual damages plus attorney fees.

1.b) Why would you want to invest your time and money using someone's active patent without permission? Anything you invest in that is lost. Find out first if what you are working on is patented or is published for opposition. See if you can get the license or buy it entirely. If it's patented and you can't get it, then see if you can invent improvement and restrict them from using it in some financially rewarding way and then license it back to them or to whoever they licensed it to. Alternatively, consider abandoning that direction and do something else.

One way or the other you are always better knowing than not knowing.

2) "When you file start using the ? next to name/ logo and when you get the trademark issued start using the (?) " - this is incorrect.

You can use (TM) immediately on any mark that you wish to designate as a trademark.? No registration is required, and in most states this will actually give you some "common law" trademark rights.

You can use (R) only once you obtain a federal trademark registration from the US Patent and Trademark Office.? The process of applying for a federal trademark takes about a year, and during the application process you may NOT use the (R) symbol (doing so is illegal).? You must continue to use (TM) until the federal registration is issued.

Max Avroutski

--- On Mon, 2/4/13, Matthew Cordasco <matthttp://groups.google.com/group/founderdating?hl=en.

For more options, visit http://groups.google.com/group/founderdating?hl=en.

For more options, visit https://groups.google.com/groups/opt_out.

?

?

Krassimir Fotev
0
0
Krassimir Fotev Entrepreneur
Founder of Peer Belt Inc.

Max: Good clarifications, especially the trademark discussion. A note on the need for extensive research when filing patent.

There is no way knowing what is in the USPTO pipeline, before the content gets published. So, do research, but do not get overly obsessed with it. Most importantly, do the research yourself! If you hire someone you are missing a great opportunity to learn.

-Krassimir

Sent from my iPhone

On Feb 4, 2013, at 8:28 PM, Max <alphaon...@yahoo.com> wrote:

Matthew Cordasco
0
0
Matthew Cordasco Entrepreneur • Advisor
Co-founder and Head of Product

Good catch on the (R) and (TM), Max.  I got caught up trying to get them to
display on the screen and transposed them. Bad bad.  Lesson learned, I will
proof-read more and write slower.

Vis a vis the research, I still don't agree with you.  When an idea is first
conceived by a poorly funded inventor, the last thing they need is to get
bogged down in the murky world of patent research and interpreting if an
existing patent is too similar to their idea.  Instead, they should do
competitive research, seeing if there are any companies  that occupy the
space similar to their business model.

File the Provisional to establish your Priority Date, and then work like a
demon for a year to see if the idea is viable.  If you get traction with
your business the rest will fall into place, and you can tweak the language
in your non-provisional as needed to ensure you are not infringing.

Net net, build a successful business first.

M

From:  Max <alphaon...@yahoo.com>
Date:  Monday, February 4, 2013 5:28 PM
To:  Gerardo Barroeta <jerry...@media.mit.edu>,
<[removed to protect privacy]>, Matthew Cordasco <matt...@noveris.com>
Subject:  Re: [FD Members] patents

Corrections,
1) "If you are filing a provisional, don't do any research.  Anything you
find that is related makes you liable for knowingly infringing." -
completely wrong, do the research.

1.a) If you don't do the research you still be liable for infringement the
larger of either a reasonable royalty or lost profits that result from
infringement, while for deliberate infringement ("willful" infringement)
punitive damages can be assessed up to three times the actual damages plus
attorney fees.

1.b) Why would you want to invest your time and money using someone's active
patent without permission? Anything you invest in that is lost. Find out
first if what you are working on is patented or is published for opposition.
See if you can get the license or buy it entirely. If it's patented and you
can't get it, then see if you can invent improvement and restrict them from
using it in some financially rewarding way and then license it back to them
or to whoever they licensed it to. Alternatively, consider abandoning that
direction and do something else.

One way or the other you are always better knowing than not knowing.

2) "When you file start using the ? next to name/ logo and when you get the
trademark issued start using the ( ) " - this is incorrect.

You can use (TM) immediately on any mark that you wish to designate as a
trademark.  No registration is required, and in most states this will
actually give you some "common law" trademark rights.

You can use (R) only once you obtain a federal trademark registration from
the US Patent and Trademark Office.  The process of applying for a federal
trademark takes about a year, and during the application process you may NOT
use the (R) symbol (doing so is illegal).  You must continue to use (TM)
until the federal registration is issued.

Max Avroutski

--- On Mon, 2/4/13, Matthew Cordasco <matt...@noveris.com> wrote:

Ian Shakil
1
0
Ian Shakil Entrepreneur
Founder, CEO at Augmedix

One thing I've often wondered:
Is it possible and reasonable to outsource lower-value patent work to low
cost overseas lawyers? I'd really like to explore doing simple things (e.g.
trademarks, duplicating patents in other countries, etc.). Does anyone have
any trustworthy connections?

Best,
Ian

Ian Shakil
shahttp://goo.gl/cwp4W

On Tue, Feb 5, 2013 at 8:59 AM, Matthew Cordasco <matt...@noveris.com>wrote:

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