Startups face a number of challenges, as anyone who has led a tech company or worked in the startup scene can tell you. Investors and potential customers must be convinced that the company offers something unique and that there are barriers to entry that prevent others from copying it or entering the market. As co-founder and chief technology officer, I have been involved in numerous pitches and discussions, both with investors and customers, in which our technology, approach, and business model have been demonstrated. My experience has taught me the value of patents.
The first step in obtaining a patent is to do it correctly from the start. When it comes to filing provisional patents, even provisional ones (more on this later), poor patents can end up costing so much that sometimes they are worse than not filing them at all.
Jumping In
If you have invented a solution to a problem that differentiates you from your competitors or provides you with a competitive advantage, seriously consider filing a patent application. Patents can be obtained or enforced more difficultly in countries where public disclosure is required prior to filing a patent application.
There are three main types of patent applications: provisional, Patent Cooperation Treaty (PCT) and a full patent application filed directly in the country of your choice (usually the U.S., but sometimes Europe or China). When you file any of these applications, your product can be marked as patent pending. Unlike a patent application, a provisional application does not get examined and does not mature into a patent; it acts as a placeholder and gives you a one-year grace period to file either a PCT or a full patent application that dates back to the date the application was filed.
In general, provisional applications should be filed for technology that is still in development and for technology that a company wants to test commercially before investing significant resources in obtaining patent protection. Provisional applications are usually filed first by startups. The patent shows that your company filed a specific patent for a certain technology, which is crucial considering that the U.S. patent system switched from first-to-invent to first-to-file in 2013. Provisional patents require fewer requirements than full patents, but it’s still best to submit a robust application. To avoid being locked out by someone who files first, file a provisional application as early as possible.
The answer depends very much on the stage of your company, your goals, and the level of development of your technology. My company realized that we could skip the provisional step since we knew the exact details of our algorithm. The company was ready for the full patent, so even though it was founded in Israel, we decided to file it in the U.S. The U.S. is unique in its patent filing system, and this was where we initially focused our efforts. During this period, we were also able to roll out our patents to other countries while focusing on the U.S. market.
Do Your Due Diligence
When you have an idea, search the patent database to make sure it is original. It is important to search for prior art when filing for a patent, noting that prior art does not need to exist physically or be commercially available in order to be considered prior art. In other words, it can mean that someone else has already described, shown, or built something similar to your invention.
A professional company, including law firms, offers this service as a service, but it’s best to do this search yourself. Taking this step gives you a great sense of what else is out there, the state of the market, cutting-edge technology and potential competitors. Starting with Google Patents is a great place to start, but remember that provisional applications won’t show up until they are filed as full patent applications and then published, which usually takes about 18 months. You can’t find something because it doesn’t exist, unfortunately.
To Self-File Or Not To Self-File?
Filing a patent (time, cash, energy) requires substantial resources. If you are filing a provisional application, you may be tempted to do it yourself or with nonprofessional assistance.
Although technically possible, I generally recommend against it. In general, I don’t think most companies have the bandwidth to devote the time and expertise required to produce a thorough patent that will benefit in the future. Every situation is different, and a lot depends on what you want to accomplish with your patent. In order for a patent to be solid, it must be defended. The document should be written well from the beginning. If you want your patent to be strong and effective, don’t shortchange yourself.
Pivots Happen
When your business is constantly changing and pivoting, make sure you keep your patent filing up-to-date to stay protected from these new developments.
It takes time to file a patent. Patents typically take more than two years to be granted by the Patent Office. A lot can happen from when you first file to when you receive your patent, so it’s important not to think that because you’ve filed, you’re covered. Any weaknesses or gaps will be exploited if the defensibility of your patent ever goes to court.
Get in early, choose the best kiAn average patent application takes more than two years to be granted by the United Statest skimp on time or money. A good patent is worth it.
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FAQ on Provisional Patent Application
Should You File Provisional Patent or Not?
Difference between provisional patent and disclosure document
