Necessity of filing a patent
When to file a patent
Provisional vs. utility patents
Making patent applications public
Determining if your invention is patentable
Filing a patent after disclosing the idea
Freedom to operate analysis
Necessity of filing a patent
As a technology startup, your core technology may be the company’s largest asset and the cornerstone of the business. Owning patents or applying for patents demonstrates the company has cutting-edge technologies and is investing in developing and protecting its IP. A strong patent portfolio can boost a company’s value and help attract investors. Patents can also establish your own technology territory and prevent or deter others from entering the same business to compete with you.
When to file a patent
The United States recently switched from the so-called “first to invent” system to the so-called “first to file” system. Under the old law, an inventor had an opportunity to argue he or she actually invented first even if he or she applied for a patent later than his or her competitor. If successful, the first inventor was entitled to pursue the patent and the second inventor was not, even though the second inventor filed for protection first. The new law eliminates this scenario. For patents filed after March 15, 2013, whoever filed for the invention first has priority over later filers, regardless of who actually came up with the invention first. Therefore, it’s important to file early.
Provisional vs. utility patents
In order to be granted a patent, you must file a “utility” patent application. That filing must contain enough detail to show the people in your field what your invention is and how it works. If you don’t have all of those details ready for filing or you are on a budget, you can file a “provisional patent” application instead, which doesn’t need to have all of the details required in a utility application. Filing a provisional patent application allows you to establish a filing date for less money, and often more quickly, than a utility application. However, a provisional application will not be examined by the Patent Office, and, thus, cannot mature into a granted patent. If you filed a provisional patent application and want to obtain a granted patent application, you must file a related “utility” patent application within one year of the filing date of the provisional application. Further, if you wish to obtain patent protection in foreign countries, you must also file those applications within one year of your provisional filing date.
Making patent applications public
Provisional patent applications do not publish; only non-provisional patent applications publish 18 months from your earliest filing date (provisional or non-provisional). However, when the non-provisional application publishes, the provisional application becomes publicly available on the United States Patent Office website.
Determining if your invention is patentable
The US patent system will issue patents for an invention that is a process, a machine, a manufacture or a composition of matter so long as the invention is new, useful and non-obvious. Also, while abstract ideas cannot be patented, a particular application of an abstract idea is patent eligible.
Filing a patent after disclosing the idea
Generally, you should file for a patent application before you publicly disclose your invention to others. However, if you have made a public disclosure, you have one year from the date of the public disclosure to file your patent application in the United States.
Freedom to operate analysis
A freedom to operate analysis—or landscape analysis—is a study of the patent environment in a particular technology area. If doing a landscape analysis, it’s important to first create a strategy based upon the needs and circumstances of the business and then conduct a search to find relevant patents and pending applications. In other words, tailor your search; it isn’t practical—especially for an early stage company on a budget—to just search the patents covering an entire field or industry. From those search results, you can analyze what patents have issued, what is protected, what applications are published, what protection is sought, who owns the patents and/or applications, and when the applications were filed and patents granted.
