By Steven Swan for BiolawToday.org.
Hey startups and first-time inventors, congratulations and thank you for furthering society! I hope your ideas come to fruition and that your hard work pays off. At this point, you may or may not have considered patent protection for your idea or invention. If you haven’t, don’t fret. For many, the thought of the whole process is simply too daunting, which is probably why the same thought for you came and left. A great friend and mentor often joked with me saying, “whenever I have the urge to exercise, I quickly lay down until the urge passes.” Gets me every time . . . . And though this approach may work in some areas, maybe not so much in the patent realm.
So before you throw your idea on a crowdfunding site, say hypothetically speaking, you just want to test the water. You would like to get a patent or at least find out if patent protection is even necessary or worth it. Where do you start? Well, here I might offer a crazy suggestion: First, Google it. Make sure the exact same thing isn’t already on the market. You’ve probably already done this, maybe even a dozen times or more. That’s great! Now do it again. Only this time, use different search terms. Instead of “wing”, use “airfoil”. Instead of “socket”, use “joint”. You get the idea. Try different terms of varying breadth, and iterate. Also, using boolean search connectors like AND/OR in conjunction with parentheses can be very powerful. Without getting lost in the weeds, do the same thing, but for patents, on google.com/patents and on the USPTO (U.S. Patent and Trademark Office) website: http://www.uspto.gov/patents-application-process/search-patents. If after some initial research you indeed appear to have a new idea, then continue on!
Ok, so your hopes and dreams are still alive. Awesome! Now what? Next comes a slew of factors that all need to be considered, and should be considered by a patent attorney. Do your research, and call one up! If you’re a student however, consider the free resources provided to you through the university you attend. They are an excellent starting point. For example, the University of Utah funds the Center for Law and Biomedical Sciences and their student fellows with expertise in different professional areas, including intellectual property. They can assist in many ways, whether it be research, collaboration, or even document drafting (such as a provisional patent application as a registered patent agent, a license agreement, privacy policy, etc.). Otherwise, prior to meeting a patent attorney, he or she will perform what is called a “conflict of interest” check, which is a firm-internal checklist ensuring other clients’ interests are safeguarded and ethical rules are followed. Afterwards, the following example talking points, though certainly not an exhaustive list, may constitute your first meeting with such a patent attorney (or supervised student fellow at the Center for Law and Biomedical Sciences):
- What is the nature of your idea or invention?
- Are there any known competitors? If yes, how saturated is the market?
- If a patent could be obtained, what would you do with it? (assert it against a competitor, seek licenses, sit on it in hopes to never use it, assign/sell it, start building a patent portfolio, increase the company valuation, etc… If you don’t know, the patent attorney can provide some guidance.)
- What problem does your idea or invention solve? How has everything before now addressed or attempted to solve the same problem? (Depending on the complexity of the idea/invention, you should be able to distill this down to its very core.)
- How does your idea/invention solve the above-stated problem? (using this info, a good patent attorney should draft a rough outline of a broad, independent claim there on the spot for you to make sure he/she understands the crux of your idea/invention) [“patent claims” are basically the legal description of your idea/invention that defines the metes and bounds of what is protected by the patent]
- Has anyone assisted you with this idea/invention? If so, in what capacity?
- Have you disclosed your idea/invention to anyone? If so, to who and when?
- Cost to file a utility patent: on average between $8K–$10K, with additional costs of approx. $6K-$9K to prosecute the patent to issuance (or abandonment in some situations with a bleak outlook). These numbers can vary widely depending on the complexity of the matter, the difficulty of the patent examiner at the Patent and Trademark Office, other patent searches performed (e.g. a Canadian patent search), or the need/desire to have the Patent and Trademark Office continue to examine the patent application. **Prices not applicable to students working with the Center for Law and Biomedical Sciences**
- Timeline to get a patent issued: months to years depending on a myriad of factors, though it can get “fast-tracked” through the Patent and Trademark Office with an additional fee.
- Patent rights: a patent gives you the right to exclude others from practicing your idea/invention, but not the right to practice it. You could obtain a patent on something and actually be infringing someone else’s patent by practicing your newly patented invention. Patentability and infringement are two separate and distinct legal doctrines. Takeaway: Don’t leave it up to chance. Talk to a patent attorney.
- All of the above have certain legal implications. So here’s what comes next: 1) the patent attorney will have a searching agency perform a thorough patentability search for other similar patents out there; 2) depending on the results of this report and all the other previous factors/considerations just mentioned, the patent attorney will provide recommendations and enable you to make the best business decision possible regarding whether or not patent protection is the right thing to pursue.
I hope this helps! Please keep in mind, this is not legal advice. This is written to encourage people to obtain legal counsel from a patent attorney by providing a basic foundation in the patent process. My hope is that knowledge and understanding will dispel fear and distrust proffered by the plethora of lawyer jokes and the uniquely difficult circumstances that startups and first-time inventors find themselves in. By trade, I am a mechanical engineer, now 3rd year law student and registered Patent Agent with law firm and engineering experience. I am excited about my upcoming career as a patent attorney and hope to help any and all in the very near future.
Thanks for reading!
Steve
Steven attended Brigham Young University where he graduated in Mechanical Engineering. For his senior project, Steven helped develop calibration methods for General Electric’s deep-sea proximity probes. During school, Steven also worked as a full-time student engineer on product development teams at US Synthetic, a Shingo Prize manufacturing company, specializing in synthetic diamond cutters used around the world by oil and gas drilling companies. He is a law clerk for Maschoff Brennan, an IP firm in Salt Lake City, Utah, and is currently a 3rd year law student at the University of Utah pursuing Patent Law. Steven is a registered patent agent