Startups can have some special concerns when it comes to the process of getting a patent. Hiring a patent lawyer can get pricey, and there’s a lot of paperwork that you have to get just right so that the U.S. Patent Office doesn’t reject your application. But if you have a concept worth protecting, it’s important to get a patent — and it is possible to do so for a reasonable amount of time and money.
The Patent Process
When you apply for a patent, you’re asking the government to grant you exclusive rights to a new and useful machine, substance or process, in exchange for agreeing to explain how to make and use whatever you’re patenting. In order to get a patent, you must submit an application to the U.S. Patent Office, which includes a full description of your invention. From there, a patent examiner who has technical training in your field, will review the application.
As part of the application process, the patent examiner searches prior patents to ensure that no one has already patented the technology in question. Once the search has been completed, the patent examiner chooses whether to grant or deny your patent. The length of time necessary to get a patent can vary significantly: the backlogs of applications to review at the U.S. Patent Office vary by technical field. Tina Loza is a patent attorney who has worked with clients such as Suzuki and Scion. Loza says, “The patent process typically takes between one and four years depending on the type of patent application (i.e., provisional, design, or utility) and the backlog at the US Patent Office.”
These lengthy delays makes it even more important to start the patent process as soon as possible. Mark Holzbach, the co-founder of Zebra Imaging and chairman of Zebra’s intellectual property committee has been through the patent process multiple times. He says, “At Zebra, we strive to start working on a patent application as soon as possible — we encourage our inventors to disclose their inventions in a timely manner (a critical first step), then our committee schedules an inventor presentation (usually within 30 days) and rank this disclosure according to our ranking system to set a priority level in relation to the other disclosures. The work on converting a patent disclosure into an application only begins when it rises up high enough in the priority queue.”
While you may not have multiple patent applications you need to work on, it’s worth starting as early as possible on your patent application. And, as a startup, you may find yourself having to file multiple patent applications over time. If that’s case, it’s very useful to have a set pattern you follow. If nothing else, keeping good notes on how you handle the patent process the first time can help you make a more streamlined approach the next time you file an application.
Your Patent Application
Before you start preparing your patent application, it’s important to decide what kind of patent you need: you can choose to either file a full application or a provisional application. The provisional application process is meant to offer a lower-cost first patent option. Essentially, it allows you to get a head start on the application process, even if you aren’t ready to file a full patent application. If you’re in a competitive field, a provisional patent application allows you to make a claim to your new development immediately — then, if someone else attempts to file a full patent application, your materials are already on file. However, if you intend to follow up a provisional patent application with a full application, you must do so within twelve months of filing your provisional application.
To file a full application, you not only have to fill out the basic application process, but you also must include a full explanation of your invention, complete with illustrations. That can require the help of a professional patent illustrator, who can create drawings that meet the requirements of the U.S. Patent Office. In most cases, freelance illustrators don’t do patent illustrations. Instead, it’s worth finding a illustrator who specializes in patents.
You may also want to look through existing patents to see if there’s something similar to your invention. Many patent attorneys and application tools offer a prior art search to help ensure that you aren’t wasting time trying to patent something that has already been patented. You can also run some basic searches online at the U.S. Patent Office’s website. A side benefit is that you can learn more about the format and language used by other applicants in a field similar to your own.
It’s worth noting that patent law varies from country to country. Depending on your target market, it may prove necessary to file applications for the same invention in other countries. Holzbach describes his experience with international patents: “We use foreign associate law firms in the countries where we want to file, and so the process is expensive and very long — especially in Japan. I recommend that start ups think long and hard about filing foreign patents — it’s not warranted in so many cases.”
Traditional Patent Preparation
Working with an attorney who specializes in patent law is generally necessary to complete a patent. The paperwork necessary to the application process is arcane enough that it’s difficult to complete without expertise in the area. A patent attorney can, based on information you provide, prepare or review your patent application and get it ready to submit. If there are problems during the patent application process — such as a patent examiner denying an application — a lawyer can also help you appeal or resolve the issue.
It’s crucial to choose a lawyer not just on price but on his or her ability to create a good patent application. Loza offers some suggestions on choosing a lawyer: “A good lawyer to work with, first and foremost, has to be someone that you like and who understands your invention when you are explaining it to them. Accordingly, an attorney who has a background in biology would not be a good fit for a software patent but would be a good fit for a medical device invention. It is important to be sure that the attorney has the educational background to understand the technology area of the patent. In terms of characteristics, I think patent prosecution is usually best done by small to mid sized law firms who can offer competitive rates for a startup that may be on a budget. Good questions to ask are whether the patent will be billed as a flat rate or hourly, who will prepare the figures, and whether a prior art search is being done.”
There are a number of ways to find patent lawyers, including many that might specialize in the type of patent you’re planning to file. Legal River is an online marketplace that can connect you with patent lawyers in a way that lets you sort through a few good prospects to find a good fit for your start-up. Another online tool, The Lawyer Market, offers similar help as well as assistance in negotiating fees.
New Patent Services
There are a variety of online services that will complete the paperwork for a patent for you, such as LegalZoom. It’s worth noting that you can get a very different patent application from an online tool than from an attorney specializing in patent law. While LegalZoom has a patent professional review all materials and handle the patent application process, many simply fill in the blanks on an application — a problematic approach considering all the small details that go into a good patent application. However, online tools can be relatively inexpensive. LegalZoom offers a patent filing package that leads you through the entire process for approximately $3,800.
There are a variety of patent search tools online, including Google Patents. While you may not be able to conduct quite as in-depth a search as a patent examiner, you can now handle many parts of the patent search process on your own, provided you’re prepared to spend pleny of time looking through patent applications.
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