A common question we receive is, “What is the first step in the patenting process?” The answer to this question depends on a number of factors.
A first consideration is whether any looming statutory deadlines apply. For example, if you have been offering your inventive product for sale, you must file a patent application within one year of the first sale or offer for sale of the product. So, do not wait to seek advice on patent protection—move swiftly and with purpose. If you have very limited time before a patent application must be filed, then a first step might be to quickly file a provisional patent application. It is probably a good idea to have a patent attorney at least review the document before it is filed because such document will be the foundation for any later-filed nonprovisional application. If the foundation is weak, there may be problems ahead.
If you have some time to spare with no looming statutory deadlines, another option would be to have a patent attorney conduct a patentability search for you to determine whether your concept is novel or not based on prior patent publications. The cost for this type of search is usually 1/3 to 1/4 the cost of having a full nonprovsional patent application prepared and filed. It’s a means to hedge your bets. If the patent attorney’s search results are promising, you have spent additional money but you have more confidence in investing additional funds to move into the next phase of the patenting process. If, on the other hand, the search results demonstrate that your concept is not novel, you will have saved yourself at least a few thousand dollars by not going straight to having a nonprovisional patent application prepared and filed.
An alternative to having a patentability search conducted would be to move forward with filing a provisional patent application. A provisional application is less formal than a nonprovisional application and is considerably cheaper. The downside is that a provisional application is only temporary—it is a means to buy more time before you must file a nonprovisional patent application. The additional time provided by a provisional application can be up to one full year. During that one year period, you may be able to locate potential investors or interested buyers. Alternatively, the additional one year provides time to perfect the invention and work out any kinks.
There is no requirement that a patentability search be conducted or that a provisional patent application be filed. What is always necessary to move forward in the patenting process, however, is the need to file a nonprovisional patent application. This is an expensive step in the patenting process. The nonprovisional application will include claims that define the metes and bounds of your invention. We usually suggest to our clients that they have us conduct a patentability search before we prepare and file a nonprovisional application because the search could ultimately save the client money depending on the search results.
To recap, the best first step in the patenting process is different for different factual circumstances. Sometimes the factual circumstances are such that a provisional patent application should be filed first. Other factual situations may dictate that a patentability search should be conducted. In rare cases, it may make sense to go straight to moving forward with a nonprovisional patent application. Regardless of what is the right first step for you, one thing you should always do is move forward with purpose and not delay. A good first step would be to meet with a patent attorney and have the attorney consider your unique situation and offer suggestions on how best to move forward.
Before building a tower, consider the cost. Many startup companies start with great intentions but their forecasts for revenue generation are too optimistic and there is not enough capital to sustain the business until it becomes established. Another related issue for companies seeking investors is failure to ask for enough money. Ask for what is needed with an eye toward some rainy days ahead.
- Failure to Protect Intellectual Property
Patent protection is what most companies think of when it comes to intellectual property and owning a patent is a great way to exclude your competition. However, companies that are not eligible for patent protection often assume that intellectual property is not something for them. In the process, trademarks and copyrights are overlooked. Every company has access to intellectual property rights—it’s just a matter of finding what you can protect for your company. Assume you have something worth protecting, find out what it is, and take the steps to formally protect your intellectual property.
- Not Finding the Right Market
Most companies offer a product or service that meets the needs of a particular market or group of people. Identifying that group is crucial in establishing early sales and driving a consistent stream of revenue to the company. When a company fails to identify a particular and correct target market, marketing efforts are spread too thin and the company message is not communicated efficiently to the people that need to hear it. Find your niche and drive your message home in your target market.
The differences between patents, trademarks and copyrights are not obvious to the casual observer, and these terms are often intertwined or misused with one term for the other. To set the record straight, here are some practical ways to think through the differences between these types of intellectual property.
Patents are rights bestowed by the federal government to inventors of a new utilitarian apparatus or process, a new design, or a new plant variety. The patenting process is a formal application process that must be made through the U.S. Patent & Trademark Office. The patent right is the right to exclude others from making, using, selling, offering for sale or importing whatever is claimed in a particular patent. The term of a utility patent is 20 years from the filing date of the application.
Trademarks are symbols used to designate a source of a good or service. An important function of trademark law is to protect the consumer so that consumers can be confident in the sources from which they buy goods or services. No formal application process is required to obtain trademark rights. However, there are many good reasons to consider taking formal steps with the U.S. Patent & Trademark Office to protect your trademark through a formal application process. Trademarks have no expiration date.
Copyrights protect the expression of information when such information is placed in a tangible medium of expression. Examples include photographs, art work, music, books and computer code. No formal process is required to obtain copyrights in your original works of authorship but, as with trademarks, there are many good reasons to consider taking formal steps to register your copyright. Compared with patents and trademarks, the registration of copyrights is relatively inexpensive. The term for a copyright is typically the author’s life plus 70 years.
When a new technology is developed, obtaining a patent often becomes a priority. There are some situations, however, in which seeking patent protection is a less desirable option. One of those situations is when a technology is developed that cannot easily be reverse engineered—a technology that can be kept secret.
A classic example of this is the formula for Coca-Cola. Had the Coca-Cola Company sought patent protection, their patent would have expired in the early 20th century. However, because Coca-Cola knew that its formula could not be easily reverse engineered, the company opted to rely instead on trade secret protection. Now, well into the 21st century, Coca-Cola still has a secret formula and a brand that is very valuable.
A key to trade secret protection is in its name—keeping your technology secret. If a technology is in public view or can otherwise be easily reverse engineered, it’s very difficult to keep the technology secret. In such a situation, patent protection is preferable. The life of a patent is limited and extends 20 years from the filing date of a nonprovisional patent application assuming all maintenance fees are paid. In some cases, the term may be extended due to delay by the U.S. Patent Office during patent prosecution. In any event, the life of a patent has a definite ending point. Trade secrets on the other hand have no expiration. So if you have a new technology that can be kept secret with proper controls, you may want to seriously consider relying on trade secret protection instead of patent protection.
Under the common law, trademark rights arise by use alone, so it is possible to gain trademark rights in a trademark by simply beginning to use it for your goods/services. However, there are a number of benefits to hiring a trademark attorney and registering your trademark at the federal level.
The first of these benefits is a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide for your listed goods/services. Another benefit is the public notice function of being able to use the registration symbol, ®, to demonstrate that you have a federal registration.
Another consideration prior to launching a brand of goods or services is to have a clearance search to see if your mark is available for your selected goods/services. Often, businesses launch and invest money in marketing for a particular mark only to find out later that the mark is already in use by another company. This realization sometimes comes in the form of a cease and desist letter from the owner of the trademark who has priority of use. This can cause a great deal of waste, all of which can be avoided by investing in a preliminary trademark search.
And all trademark searches are not equal. Simply searching for federally registered marks may miss vital information. For example, another company may have a state registration but not a federal registration. The state registration can be just as dangerous as a federal registration. In fact common law trademark use can be used to cancel federal trademark registrations if the common law user has priority and there is a likelihood of confusion between the applicable trademarks. As such, it makes sense to hire a professional to conduct a comprehensive clearance search covering federal, state and common law trademarks. If the search is clear, the next step should often be to attempt to register your trademark at the federal level and enjoy the benefits of a federal trademark registration.