Protecting Potential Patent Rights

Startups are typically heady with patent potential, whether real or imagined. It is important to keep in mind some best practices for protecting potential patent rights.

1. Audit your Intellectual Property. Develop of system to organize a keep track of your potentially patentable inventions.  Schedule “harvest” sessions with a patent attorney to identify potential patentable inventions. These sessions are a relatively inexpensive way to develop a patent strategy that makes sense for your startup.

2. Be careful with public and third-party disclosures. Do not be quick to publish. Consider whether the trade show is worth risking potential patent rights.

3. Mind the one-year clock. The United States provides an inventor a one-year grace period after a first disclosure during which to protect potential patent rights by filing a patent application. It can, however, be more complicated than it sounds.

4. Understand how U.S. patent law has changed. The U.S., until recently, operated under a “first to invent” system.  The first inventor to conceive of an invention was entitled to patent protection. It was not a race to the Patent Office. Now, it’s a race. The “first inventor to file” will receive patent protection.

5. Consider a provisional patent application strategy. Startups are challenging. The invention is in, well, its startup phase, and the budget for patent protection is very, very small.  Startups worry that the invention isn’t complete, finished, locked down.  It could change. They can’t afford a non-provisional patent application. Consider filing a provisional patent. It can allow for immediate commercial promotion of your invention without risking potential patent rights.

6. If filing a provisional patent application be sure to adequately describe the invention. A provisional patent application provides an earlier filing date. Again, under the “first inventor to file” system, an earlier filing date can be more important than it used to be.

It is important to understanding how protecting patent rights fits within a company’s business strategy. In a competitive market environment, how a company protects its patent rights can determine the volume and quality of value or revenue generating opportunities.