Five patent tips for start-up companies

Five patent tips for start-up companies

http://wistechnology.com/article.php?id=1671

Steven Weinstock • Published 03/30/05

If you have a creative idea or invention, or you are interested in starting a company that has technology you want to protect, the first thing you do is contact a patent attorney and file a patent application. You believe that you have protected your invention, so you're set, right? Not necessarily.

Novice inventors and entrepreneurs should heed Mom's sage advice: look both ways before you cross the street, and know where you are going before you start on the journey. Preparing a patent application to protect your invention, while important, is only one of many action steps to consider. Carefully reviewing the following suggestions prior to preparing a patent application will not only increase your likelihood of success, but may also save you considerable time and money in the long-run.

Understand your product and market. When discussing your invention or idea, it is helpful to know:

• What is the ultimate goal? A patent application, while a legal document, is also a marketing tool that can be used to sell or create interest in a product or service or warn others of your intentions. The strategy in filing a patent application for marketing a product may be different than for licensing the invention. Similarly, patent portfolios should be packaged differently for companies that will eventually be sold versus those that will be grown and expanded.

• What impediments to market entry exist? Just because you have a patent does not mean that a third party won't stop you from using your own invention with their own patent.

Expand and test the limits of your invention. Entrepreneurs often see specifics, but not the big picture. Conversely, sometimes they see the big picture, but have not sufficiently tested the invention to support broad coverage in a patent. So your invention, although initially intended to cover the trees, may also cover the forest if you consider the broader concept valuable and you are willing to do the necessary legwork.

At least some analysis needs to be done to support broad claims of a patent. You can never start too early on such work. Furthermore, brainstorming new and creative supplements to your invention can bring great value to your ultimate goal or generate additional revenues. Such brainstorming sessions can be facilitated by an attorney.

Identify your competition. Know the competitive landscape surrounding your invention. Who are your competitors? What are the competitive technologies? What impact does your invention have on the competitors and the other technologies? Will new technologies leapfrog yours?

It is important to understand the patents that protect your competitors.

In particular, your patent may not have much value if a third party's patent blocks you from marketing your product. You may be able to take a license or buy the technology outright; but if you don't act or strategize early, you may be left to react once a third party files a lawsuit against you. Likewise, if you want a third party to take a license from you, it is best to know if you will be needing or wanting a license from the third party.

Consider foreign markets. Opportunities for different markets in different countries may impact your strategy. Sometimes foreign markets are larger than the domestic market for a product, but the process of patenting takes longer and presents greater challenges that will benefit from an earlier start. Success in these countries can fuel and fund your domestic opportunities.

Contemplate costs. Do not be penny wise and pound foolish. Ultimately, much of the preparation discussed above, and the patent application itself can be costly. Sometimes up-front costs can be hefty, but represent a great value. Likewise, some costs can be slight and secure very little. The decision to proceed on a particular track should not be determined solely by cost. Possible future expenses should also be considered.

For example, acquiring a foreign patent may be an expensive up-front cost; but litigating such a patent may be very inexpensive. Conversely, acquiring a U.S. patent may be inexpensive, but the costs to litigate the patent are typically enormous, costing millions of dollars.

In addition, you will need to select the proper attorney. You need someone who has experience and knows the business of patenting as well as the business world. A business-oriented lawyer with a technical (science) undergraduate degree is ideal. In the end, the right attorney will guide you through all of the above points.

So when you have an idea and you want to develop it, be careful to consider all the nuances before jumping into the patenting process. You may find that there is a lot more to consider than merely filing a patent application.

Steven Weinstock is affiliated with Godfrey & Kahn, S.C. as a consultant to its Intellectual Property Group. He was the Chief Patent and Trademark Counsel for Abbott Laboratories (1995–2004) and worked for Abbott for 21 years. He is also the past president of Interpat, an association of the Chief Patent Counsel for some of the largest pharmaceutical companies in Europe, Japan and the United States.

Talk back (Add your comment below)

Chuck Sara:

March 31, 2005 • Link to this comment

I agree with Mr. Weinstock's article. These are all good basic points for the novice inventor to consider. I recommend an additional point, one that I consider the most important:

Do not disclose your idea to anyone outside your company until you first run the idea past your patent attorney or patent intake coordinator.

The inadvertent "public disclosure" of an idea before the patent protection process is initiated can sometimes result in lost opportunities. For example if the inventor publicly discloses his/her idea before a patent application (or provisional patent application) is filed in the U.S. Patent Office, two things happen: (1) all possibility of foreign protection is lost; and (2) the inventor now has one year to file the application in the U.S. Patent Office in order to avoid losing his/her rights to patent the invention.

Charles S. Sara, Esq.
Chair - Intellectual Property Department
DeWitt Ross & Stevens, S.C.
8000 Excelsior Drive, Suite 401
Madison, Wisconsin 53717-1914
Tel: [phone]
email: [e-mail]