9 COMMON MISTAKES STARTUPS MAKE DURING THE PATENT PROCESS

For any tech company, filing a patent application is an important step if you want to protect and commercialize your technology.

But over the course of a long and expensive filing process, it can be all too easy to make a mistake — especially if you don’t have much experience managing a patent portfolio.

In order to avoid making the following 9 mistakes, here’s what you need to keep in mind.

1. WAITING TOO LONG TO START THE PROCESS OF PREPARING A PATENT APPLICATION

A patent application is highly time-sensitive, and many people wait too long to start the process. For example, many people make the mistake of relying on the one-year “grace period” under U.S. law, which allows you to file a U.S. patent application within a year of selling a product or publicly disclosing the invention. But this is often a mistake.

For one, relying on the grace period could allow a competitor to scoop you by filing their own patent application first. And perhaps more importantly, most countries don’t have the same one-year “grace period,” so you lose patent rights outside the U.S. if you don’t file a patent application before any public disclosure.   

And public disclosure isn’t just restricted to sales and printed publications! It can range from discussing your idea on your website, to talking about it at a trade show, to advertising.

So, think ahead! Begin preparing to file your patent application well in advance of making any public disclosures about your technology.

2. WAITING TOO LONG AFTER FILING A PROVISIONAL PATENT APPLICATION

You may have filed a provisional patent application in order to gain a degree of legal protection despite facing time or budget constraints.

But don’t let that lull you into a false sense of security:

• Provisional patent applications automatically expire one year after their filing date and cannot mature into a patent. 
• Waiting the full year before filing a non-provisional application could expose your claims to more prior art.

If a provisional application is the right approach for your business, it’s worth engaging a patent attorney who can help you draft a written disclosure that will support subsequent claims in your non-provisional application. And be diligent about preparing and filing the non-provisional application as soon as possible after the provisional filing.

3. NOT DOING DUE DILIGENCE WITH A PRIOR ART SEARCH

Doing a prior art search can often lead to a more valuable patent application. For example, if you know about the most relevant prior art before you file, you can develop a more strategic patent application at the outset.

A targeted prior art search conducted by a patent professional can help you find the most relevant prior art, develop a robust strategy, and determine whether it’s worth pursuing a patent application for your invention, saving you time and money in the long run.

But hiring a professional to conduct a prior art search isn’t always the best use of resources. For example, if you’re an expert in your field, and you have a limited budget, you might be able to do an effective search on your own.

In that case, keep in mind that prior art (the body of information that can be used to reject your patent application) isn’t limited to published patent applications and issued patents. Your search should include relevant journal articles, commercial products and white papers, and other public sources of information.

4. NOT PREPARING FINANCIALLY FOR A LONG, POTENTIALLY COSTLY PROCESS

When faced with a new and exciting development, many tech companies  assume that their first logical step must be to pursue patent protection.

But filing a patent application is expensive and time-consuming:

• The total cost to obtain a US patent is typically in the range of tens of thousands of dollars.
• It can take between 2-3 years to obtain USPTO approval for your patent application.

If your invention has strong commercial potential, patents are a worthwhile tool to have — so ensure you’ve taken the necessary steps to cover all your costs, from filing the patent application itself to prosecution-related costs incurred before your application is approved.

5. TALKING TOO MUCH ABOUT THE PRODUCT IN QUESTION — WITHOUT AN NDA

You may need to share details about your invention before your patent application has been filed. For example, you may need to shop your technology around to venture capitalists or larger companies in order to obtain funding or gauge market interest.

But disclosing your technology without a confidentiality agreement could prevent you from getting a patent. For example, even a presentation to a small group of people could be considered a public disclosure that would work against your patent application.

So if your invention has commercial potential, make sure you protect yourself before you talk to other people. First of all, you should have the other person sign a non-disclosure agreement (NDA), which is an agreement to keep the information confidential. And second, don’t share the secret sauce — only tell people what they need to know, and don’t disclose any technical details beyond the necessary.  

6. FILING AN APPLICATION THAT’S TOO SPECIFIC

Many important inventions are developed to address or resolve a specific problem. However, many inventions will also end up having broader applications — sometimes in fields that the inventor didn’t initially consider!

An overly specific patent application could cause you to lose out on the full range of possibilities for monetizing your invention — for example, like licensing your patent across multiple markets.

And if your invention is defined too narrowly, your competitors could devise workarounds to practice their own version of your invention without infringing your patent.

As such, your application should not only include key details about the invention and how to implement it, but also cover any alternate embodiments the invention could have.

7. FILING AN APPLICATION THAT’S TOO BROAD

As mentioned above, some inventors may be inclined to file a broader patent application, so as to maximize the commercial potential of their intellectual property.

But broad doesn’t mean obscure. An overly ambiguous patent application can be easily challenged:

• It could become vulnerable to prior art that’s irrelevant to what your invention actually does. 
• If your application leaves out specific details, you might not be able to enforce your patent in a litigation context.

So, when drafting your application, get specific. Use clear and concise language to discuss your invention and all elements surrounding its implementation. Don’t leave your work open to wild interpretations down the line!

8. NOT CONSIDERING INTERNATIONAL COMPETITION AND INFRINGEMENT

Early-stage tech companies often focus on establishing themselves in a local market first, and will only consider exploiting their invention internationally if they can achieve commercial success locally.

But keep in mind that many investors will want to see that you’ve taken reasonable steps to protect your invention in markets outside the U.S. And this requires planning. Early.

There’s a limited timeline and strict procedure for seeking patent protection outside the U.S. In particular, if you don’t file for foreign protection within a year of your U.S. filing, your foreign rights are lost. Moreover, most foreign countries don’t have a “grace period” for public disclosures, so you have to plan for foreign protection even before your U.S. filing.

If you’re planning to eventually exploit your invention internationally or seek funding from sophisticated investors, start doing your research as soon as possible! It’s never too early to begin preparing to file for patent protection in all of your target markets, to ensure you can secure early filing dates.

9. NOT SEEKING PROFESSIONAL LEGAL COUNSEL

Legally, you can draft and file your own patent application. But that doesn’t make it a good idea.

The strength of any patent application lies in the language used to craft the description and claims. Even a single word used inappropriately can change the entire meaning of your application, and severely limit its scope — if not invalidate it altogether.

That’s why it’s important to hire a competent professional who’s legally trained in patent prosecution, and whose technical experience is relevant to the scope of your work.

KEEP TRACK OF AN INVENTION’S ESSENTIAL DETAILS

By using an invention disclosure record (IDR) to thoroughly document the important details about new inventions beforehand, you’ll be better-prepared to navigate the patent process when the time comes.

Don’t know how to write an IDR? Our FREE template will help ensure that you never miss an essential detail. Download it now!