Posts Tagged ‘IP strategy’

International Patent Filings

Posted on May 24, 2012 by

Vintage globe

There are well over 140 countries in which you could file patents!

A patent is only valid in the country in which it was filed. If you have a US patent and have an infringer based out of Canada, you won’t be able to stop them with your US patent. (A great example of this is in the RIM/NTP Blackberry patent infringement case – for some of the claims, RIM didn’t infringe because their servers were in Canada). However, since filing patent applications in every single country on the planet gets pretty expensive, you should understand your options for managing costs and making smart filing decisions.


The PCT application is one tool to preserve your options affordably. Over 140 countries have signed a treaty to cooperate with each other on patent filings and make it easier for their citizens to protect inventions abroad. Applications filed in accordance with the treaty are known as Patent Cooperation Treaty Applications (“PCT apps”). If you live in one of those 140 countries (which you probably do, since they include most of North and South America, most of Europe, Australia, and most of the Asias), you have one year from the date on which you file an application in your home country to file a PCT application, which gives you 18 more months to decide in which of those 140 other countries you’re going to file your application. At the time that you file an application in your home country, and even a year later, it’s often way too early to know whether the product or feature incorporating the invention is going to be successful enough to warrant international patent protection. Therefore, most companies decide to file the PCT application and preserve the option to file internationally.


At 30 months from the original filing, you have to make your final decision about where to file – no extensions. At this point, look to revenue, client base, and competitor locations to make your filing decisions. Got a huge client base in Europe, 90% of revenue coming from Singapore, an Australian investor that wants you to expand in Southeast Asia, or a big competitor in Canada? Those are all signs that you may need to invest in filing patents in those countries or regions. On the other hand, if you’re still boot-strapping the company, haven’t got much revenue anywhere outside your home country, or have an extremely country-specific technology, you might decide against making the investment. As with most patent-related decisions, look to your business objectives for guidance, consult with your attorney, and make the best decision possible given the resources available.


Frequently Asked Patent Questions

Question-Answer image
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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Can I patent my software?

Posted on July 16, 2011 by

CrossroadsCan I patent software and business methods? This is the first question most clients have, and one of the most common questions I get. But the real question is should you patent your software and business methods?

From a legal perspective, we need to look at two requirements in particular: novelty and obviousness. Regarding novelty, you can usually find a way to write up the invention so that it’s novel – you can add a requirement that it be coded a certain way, or that you take a particular step that is unique to you and you alone (“and then a widget powered by purple hamsters running clockwise does the inventive thing”). But then your competitors will have an easy way to avoid infringing your patent (Use blue hamsters! Or have them run counterclockwise! Or leave them out altogether!). So you and your lawyer need to be able to resolve the tension between ‘broad enough that you’ll be able to cover work-arounds’ and ‘narrow enough for the Patent Office to find the invention patentable.’

Next, you need to address obviousness, which is a big issue for software and business method applications. Why wouldn’t one of your peers be able to easily figure out how to make your invention? Why hasn’t anyone does this already? For a more detailed discussion on obviousness, see this post.
If you and your lawyer can identify solid arguments to overcome novelty and obviousness issues, then you should consider filing the application. If not, you may want to reconsider using patents to protect that feature.

Then there are a number of business questions to consider: Is it worth your time and money to go through the process? What will your business gain from developing patent properties? How will you benefit from this investment in the years before the patent application is approved and a patent issues? For a detailed discussion of some of the biggest business reasons to file a patent, see this post.

If you and your attorney have identified the aspects of your technology that satisfy the novelty and obviousness requirements and you’ve made the business decision that your company will benefit from an application, then, yes, you can file a patent application.


P.S. No hamsters, purple or otherwise, were harmed in the writing of this post!


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Why Timing Matters in Patent Law

Posted on March 6, 2011 by

Chess pieces The two biggest, non-financial questions to ask yourself in deciding when you want to file your patent are 1) could you have competitors working on a similar invention and 2) when did you first tell anyone about your invention?

Every day you put off filing your patent application is another day someone else has to complicate your efforts to get a patent by filing for a patent on the same or a similar invention. That’s because the date on which you file that application plays a big role in defining what kinds of documents the Patent Office can use in rejecting your application, which ultimately impacts how broad or narrow your patent rights will be and how tough a fight you’ll have to get those rights allowed.

Even if you are convinced that no one else on the planet is working on this invention and that you won’t have to worry about prior art, you may still want to file that application sooner rather than later. As we’ve discussed before, if you make a public disclosure of your invention, you’ll have limited the amount of time you have in which to file that application.

While it’s all well and good to say that you ought to file sooner rather than later, you’ll need to balance these factors against your particular resource constraints. In some scenarios, you may be better off deferring detailed disclosures until you can raise the funds to file an application – or getting coaching from your attorney as to what not to say in your disclosures to others. Alternatively, you may need to make the business decision to gamble that what you’ve got is so innovative that no one else is going to come up with a similar invention before you can file your application. Regardless of your company’s particular situation, keeping these timing factors in mind will help you make sound decisions about your patent strategy.

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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.

How to Address Patent Skeptics’ Concerns

How to If your company’s growth strategy includes patent acquisition, the execution of your IP strategy will depend upon cooperation from the whole team. One challenge that you may face is addressing the concerns of anti-patent employees. For example, it’s quite common for software engineers to be skeptical of the value and propriety of patents. If your company makes the decision that it will develop an IP portfolio, clearly explaining the rationale behind the decision goes a long way to helping even skeptics understand why cooperating with the strategy makes sense.

Schedule regular meetings to address questions and concerns and to discuss topics such as how and why the company plans to use patents, what kinds of innovation the company will and won’t file on, and why it’s in the company’s best interest to pursue its patents strategy. Additionally, make someone available to employees who can do patent myth busting, answer questions, and explain the company’s perspective on IP.

When they understand how the company arrived at the conclusion to implement a patent strategy and why the company believes the strategy is important, employees tend to become much more willing to put aside their philosophical concerns for the good of the company.

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Provisionals vs. non-provisionals – what to file?

Chess pieces In an ideal world, inventors would only ever file non-provisional patent applications. We would have plenty of time and resources to thoroughly discuss the invention and work out the claims, draft a detailed specification and prepare a complete application. In the real world, unfortunately, this isn’t always possible. How do you decide whether to file your application as a provisional?
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3 Pitfalls of DIY Patent Provisionals

Caution signTechnically, you don’t need a lawyer to write a provisional patent application. It’s true! But you’ll miss out on having a trained eye helping you avoid all the mistakes that await the novice drafter. And, unfortunately, an improperly written provisional can really be just as bad as no application at all. Let’s look at three of the big pitfalls to watch out for.
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When Not to File Patents

Keyboard button with the word "learn" on itLast post, I talked about three reasons to patent something – but there are reasons not to file patent applications as well. Before filing, determine the following: 1) relevance to business objectives, 2) practical leverage gained, and 3) unique contributions to your existing portfolio.
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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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