Patenting your Tech: What to Expect and Tips for a Positive Experience
Technologists are constantly inventing and innovating, but the topic of patents is usually an afterthought. There could be several different reasons for this, namely expense and confusion as to how to get it done. These are totally valid concerns, but with expectations set correctly and making a few right moves early-on, you’ll be better prepared for a successful outcome.
Is my idea patent-able?
Likely, yes. Whether it’s hardware, software, a mechanical product, a system, a chemical compound, or any number of other things, it can most likely be patented. Honestly, what’s most surprising is the amount of IP that isn’t patented. So long as there is “uniqueness” in how your tech solves a problem, there is intellectual property and you should consider getting an opinion as to whether it’s worth pursuing a patent.
Which brings us to the next topic, patent attorneys.
Do you need a patent attorney? In my opinion, the answer is an unequivocal “yes”. But, how do you go about finding one? That’s the hard part. Pretty much every mid-size and above law firm has at least one attorney that works in trademarks and patents. However, that doesn’t mean they’re worth a shit. A lot of general attorneys will take on patent & trademark work without being a specialist in these areas — that’s an expensive recipe for disaster. Having the right patent attorney makes the world of a difference. Here’s a few tips to get started on your search.
There are five Patent Office locations in the US; Alexandria, VA (headquarters), Dallas, Denver, Detroit and San Jose, CA. This is a good map of where to start your search. First, is your product IT related? It’s probably a good idea to focus your search on Alexandria (Washington, D.C.) and San Jose area patent firms. Oil & Gas? Texas. You want to work with firms who know your sector inside & out.
Next, select firms that ONLY work in patents & trademarks and related fields (there’s a bunch out there). Most dedicated patent attorneys spent several years clerking in US Patent Offices — this is vital. The amount of patent work attorneys are exposed to at the patent office is mind-bogling and that experience & knowledge is what you’re paying for, not to mention internal knowledge of procedures and likely even camaraderie amongst the patent community. If your patent attorney doesn’t check all these boxes, that doesn’t mean they aren’t worth their salt. But, the rationale for selecting one who does check the boxes is pretty sound.
Also, I should mention that patent attorneys are really, REALLY cool people. Their knowledge is fascinating and you should feel a partnership that’s different from most of the other attorneys you’ve probably come across. At least in my experience, they take you, the “inventor” very seriously and treat the process with an unexpected preciousness that will help you realize you’re doing something that’s a very special personal accomplishment, one that will follow you positively for the rest of your life. YOU are an INVENTOR now. Not many people can say that.
What’s it gonna cost me?
Standard answer is $30k, but it’s typically spread out over the two to five years it takes to get your patent approved. Most attorneys will get you started for $5k to $10k which should get you through your provisional filings and then some. Even after you have a patent in-hand, most attorneys these days leave claims open so you can extend the functionality of your IP in the future. Ka-ching.
A really great patent might end up costing well over $100k in the life of its service. Said great patent might generate you untold millions of dollars in royalties though, so it should be thought of as a negligible cost of doing business. Honestly, you shouldn’t worry about the cost too much. A good patent attorney will be upfront with you as to the marketability of your patent and whether it’s worth pursuing. If you’re broke, but your idea has a lot of potential, learn to swing a golf club and talk to some well-heeled folks about financing your research. You may be surprised how many people will jump at the chance to invest in your brilliance (for a cut, of course!).
You have an idea, now you need a strategy.
Great patent attorneys not only understand your product inside & out, they also understand the patent landscape and can help design your claims in such an effort that you don’t get sent completely back to the drawing board. You always have a direction to go in, a leg to stand on — this is how you get a patent. It might go in directions you didn’t expect at times, but the result generally is that you’ll be forced to be much more explicit in what your IP accomplishes, and how it gets it done. Go with the flow.
When the creative juices are flowing it can be hard to succinctly decide exactly what your tech will accomplish. This is what the “provisional” patent application is for. Throw all of your ideas into the provisional patent app and get it in as soon as possible so you can secure the “date” (priority). This buys you a year to further work on your IP before you’ll need to submit the specific “Non-Provisional” patent application — this is the “real” patent application.
So you’ve spent a year or more coming up with your idea, several months whittling it down into a provisional patent application, worked another year getting ready the non-provisional app out, now what? Well, you wait a few more years for an examiner to review your application. For me personally, my first patent has been a near five year process already, from ideation in 2015/16 to today. I hope to find out that I will be awarded my patent sometime in the first half of 2021. The process is long, but things that are important take time. The time it takes is an testament to how meaningful getting a patent actually is. That said, I’ve seen some patents that have taken less than two years to be approved and some as long as seven years, so it really just depends on how prepared you are, and your patent strategy.
Things you think about after you submit your non-provisional patent app.
There’s this horribly naked feeling after you submit your non-provisional app. Suddenly, all of your IP is out there on Google Patents for your competitors to parooze. Your entire strategy can typically be surmised. No way around it, this part kinda sucks. But, you get used to it and learn to trust the process. After all, once it’s said and done you’ll be the proper owner of your technology and have rights to pursue legal action against opportunists. Try not to think about it, there’s nothing you can do to change it. Just realize that you’re getting really close at this stage.
And finally, I have to give a shout out to my patent attorney, Joshua Povsner of Volentine, Whitt and Francos PLLC based in Charlottesville, VA. Working with Josh has been an incredible experience — you should keep him on your short list when searching for an IT IP attorney.
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