Posts Tagged ‘funding’

Frequently Asked Patent Questions

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Here is a list of the most common questions clients ask me in our first meeting, with links to my posts with detailed responses:

1) Can I get a patent on software and/or business methods? Yes – but the real question is should you?

2) I’ve heard about provisional applications and non-provisional applications; what kind do I need? It depends – on how advanced development is, how soon you’ll be discussing the innovation in non-confidential settings, and how well funded your company is.

3) When do I need to file an application? Timing really does matter and the answer is often as soon as possible.

4) Is it expensive? Definitely. It also takes a number of years to get an issued patent. This means it’s extremely important to determine whether your company would benefit from investing in a patent application – before you file.


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What is a “continuing” app? Why file one?

Chess pieces Once you have filed a first non-provisional patent application and until that first application issues or is abandoned, you can file additional applications “related” to that first one. No matter when you actually file one of these “continuing” applications, everyone will treat the application as if you filed it on the same day as the very first application. The downside is that these applications have short life spans because they also expire at the same time as that first application. So why file one?

Smart use of continuations can save a company money. For example, you might file an extremely detailed first application that would support claims to a number of different aspects of your invention. You might choose to file the application with a small subset of the claims – perhaps the ones most relevant to your company at the time of filing – and then you only have to pay for the PTO to examine that focused subset of claims (and for you/your lawyer to respond to the PTO’s initial rejections). Once you get a patent allowed you’re 4-7 years out from time of filing and in a different place as a company, both from a funding perspective and from a business perspective. Maybe you’ve long since moved on to another venture – no need to have spent money on those other aspects of the invention. Or maybe the focus of your company has changed to one of those other aspects and you’re thrilled that you can now protect the methods / products that have become relevant to your business. Either way, you’ve bought yourself the time you need to make more informed decisions.

Additionally, filing continuations can be useful when licensing the technology. If you have continuations that are each directed to different aspects or implementations of the invention, you have much more granular control over what rights you license out. Say you have a patent that supports X, Y, and Z, where Z is the least relevant to your business model. You may want to license out Z to a company that is going to be able to use Z and send you substantial royalty fees – but you may not want to enable them to compete with you in areas X and Y. Continuations can help you do that.

Top Three Reasons to File a Patent

Keyboard button with the word "learn" on itThere are typically three good reasons to apply for a patent: 1) you want to signal to potential investors/partners that you are serious about your efforts and have something unique enough to protect via patent; 2) your business model depends on licensing technology, know-how and IP; and 3) you will need defensive patents to even the playing field against your competitors. Before filing for a patent, you should consider each of these in determining what you intend to do with the patent application now and in the future.
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