By Harley Blosser and Matthew Kayrish of Sandberg Phoenix
Many successful Startup Companies have their genesis built around some “great ideas” that have been turned into a portfolio of patents limiting potential competitors. Here are some practical tips on maximizing your patent protection for your invention(s) at the core of your Startup Company based on our experience writing and presenting patent applications to the United Stated Patent Office (USPTO), as well as from the standpoint of an experienced patent examiner.
I. Putting Together the Nuts and Bolts
To be patentable, an invention must cover “patentable subject matter” (an often complicated topic best set aside for a separate article), meet what are called the written description and enablement requirements of 35 U.S.C. §112, and be novel and non-obvious when viewed in comparison to the relevant prior art, i.e., what was in the public domain before your invention.
There are some noteworthy aspects to these principles. There actually is no patent law requirement that you have actually built a prototype of your invention or even shown that it has been reduced to practice. However, it is strongly encouraged, as it may be difficult to convince the Patent Office that you have met the written description (stated as having provided a full and clear description of your invention so that “one skilled in the art” would recognize that you had possession of the invention) and the enablement (provided a sufficient “how to” as to making and using your invention so that the skilled in the art person mentioned above can do so without their having to take inventive leaps of their own) requirements. Additionally, as next discussed, it is often quite difficult to “get very specific” about your invention if it is still largely at the idea stage of development.
II. Be Willing to Get Very Specific
It is sometimes said that a patent application does not need to be akin to an “engineer’s blueprint”. While that is true, we have found that Applicants who do not include enough specificity in their patent applications frequently become easy targets for simple rejections of otherwise high-quality inventions. These types of applications will frequently face a slew of issues throughout the prosecution process. These include, but are not limited to, lack of clarity or utility, unpatentable subject matter (due to being too abstract), broad claims resulting in rejection, or lack of enablement. Furthermore, even strong inventions, if poorly written without sufficient specificity, can result in a long, arduous, and expensive road to final patent allowance, even when achieving eventual allowance.
The examination process, from initial review to patent issuance or abandonment, can range from as short as three months to more than three years. As the examination process becomes more drawn out, attorney costs, examination fees, amendment fees, and other fees and costs can add up to a very expensive price tag for achieving patent protection. Therefore, it is in the best interest of all involved to submit a clear, concise, and well-written patent application right from the start to avoid a long, expensive path to protect your inventions.
Most successful patent applications have one thing in common. They are well-written. That means they are clear, concise, and contain a sufficient level of specificity and detail to answer even the slightest questions proposed by the examiner. Items that are described in very specific detail allow an examiner to clearly understand the invention. Having an application prepared in this manner provides the inventor with several key advantages:
- It sets the foundation for a strong application with a higher likelihood of successfully obtaining a patent. The level of detail included in an application can be crucial for the patent examination and prosecution process. It establishes what your invention “is” in very finite detail, which is helpful for defining the boundaries of your subject matter.
- You will have more flexibility with your application, and your claims in the event that your invention is initially rejected. All material, disclosures and figures included in the initial application are deemed within the scope of the application. Consequently, this subject matter is available as a viable argument to help refute an examiner’s rejection, or to be included in the claims or claim amendments to more clearly distinguish your invention from the cited prior art.
- Once your patent is issued, you will have a stronger claim to your intellectual property and better protection should a case of patent infringement arise. Having a well-written patent publication, with enough detail and specificity allows you to clearly establish the metes and bounds of your invention.
III. Have a Professional Look at the Relevant Prior art at an Early Date
We cannot count the number of times that even relatively sophisticated inventors have suggested to us that we omit conducting a patentability review, suggesting that they have already taken a look and “there is nothing like” their invention out there. We agree that it certainly is advisable for the inventor(s), whatever their level of skill in the field of their invention, to take a first look, both as a potential cost-saver, and to assist in the patenting process. The USPTO databases and Google (and other search engines) are quite accessible to the computer-savvy. So you can and usually should both take an initial look at whether someone may have already invented what your idea is all about (and perhaps save a good deal of money and time if indeed you find out it is already out there) and provide a head start to your patent professional in the process. However, patent searching and evaluation of the search results, like any skill set, are honed over time. Therefore, having a professional take a further look is usually advisable just from a skill-level point-of-view.
An additional reason why having a professional take a critical look at the relevant prior art is usually important, is that your patent application will never be examined in a vacuum. There will almost always be some “art” out there to compare it with. So it is valuable to know how far apart (or close together) to build your IP fences at the time your application is drafted. If you mis-gauge the nature and closeness of the relevant prior art, your application may well miss the appropriate boundaries – i.e., fail to take into account important prior art that would have been quite useful to know about in the crafting of your patent application, especially your claims.
IV. Provisional and Non-Provisional Utility Applications
Under U.S. patent law, priority rights in an invention are based on a “first to file” system. While it is a somewhat rare case that there actually is a “race to the Patent Office” to achieve priority, since it is simpler to file a provisional application (which has no formality requirements), and the official fees are insubstantial, it generally makes sense to file provisionally first to obtain an initial priority date based on such a provisional filing. You then have up to twelve months after the provisional filing date to file a non- provisional in order to retain its priority. However, it must be kept in mind that a provisional application is only “as good” as the information that is included in it, in terms of securing its priority date. While the USPTO does not actually examine provisional applications, the provisional’s priority date attaches to any claim in a subsequent non-provisional patent only if the provisional’s written disclosure fulfills the written description and enablement requirements within its four corners. Hence, this can be a significant trap for the ill-informed who has not assessed this issue.
That said, it often makes sense to promptly place a stake in the ground with the USPTO for whatever you have already invented if it is at a commercially valuable stage of completion while you continue to experiment and improve your invention, look for investors or explore other aspects of your Startup business to make sure that it is viable. Additionally, it is worth noting that: 1) the USPTO will retain your application (provisional and/or non- provisional) in confidence for 18 months after your initial filing date, which you can maintain to your advantage in your other dealings by entering into NDAs; 2) in addition to the U.S., almost every foreign patent jurisdiction, based on international treaties, will recognize the priority of a U.S. provisional as a precursor to their own jurisdiction’s related application; and, 3) the time, i.e., up to one year of potential pendency of the provisional, does not count against the up-to-20 years of U.S. patent term that you might obtain upon issuance of your patent.
V. Consider your Patent Application’s/ Patent’s Audience
It is important for you and your patent professional to consider that you have multiple audiences in drafting your patent application. These “audiences” include one or more of potential investors, partners, licensees and customers – so, in a sense, it serve as a “sales brochure” for your business, if you choose. Also, importantly, consider that an Examiner will be assigned by the USPTO, who will review and examine your application.
As mentioned above, how will he view your application? And finally, as the application (and patent it turns into) is what competitors, and ultimately, a judge and jury, will look at in any enforcement action, you must also consider that they may be your ultimate audience. Thus, your company’s fortunes may ultimately rest in the hands of just ordinary folks, folks without any background in the field of your invention. As one who has frequently both prosecuted, as well as litigated, patents, I have found it very useful to look at patents with both sets of eyes – as a document that needs to be written and presented to the USPTO to obtain and maximize your patent rights, and as a document that may be considered ultimately as one that will be enforced in a court of law. I cannot stress enough the need to consider both viewpoints.
Harley Blosser is a licensed patent attorney in the Clayton, Missouri office of Sandberg Phoenix & von Gontard P.C. is a licensed patent attorney specializing in all aspects of intellectual property, emerging technology and business law. As an intellectual property attorney, Harley’s technical specialties include biotechnology, chemistry, clean energy and pharmaceutical patents; trademarks; copyrights; intellectual property portfolio strategic management; licensing and enforcement. He holds a law degree and a Bachelor of Arts in Chemistry, both from the University of Missouri Kansas City. Harley can be reached at 314-425-4906 or email@example.com
Matthew Kayrish is a Technical Patent Expert in Sandberg Phoenix’s Kansas City office. He is an electrical engineer with over 15 years of experience in a wide variety of technical and leadership roles, including four years as a Patent examiner with the United States Patent & Trademark Office. He can be reached at firstname.lastname@example.org