When should my start-up file a patent?

There are several key dates associated with obtaining a patent. The American Invents Act will be implemented March 16, 2013. The main change of this Act is making the US a first-to-file patent system where the first inventor to file a patent gets a priority claim to the invention. This is contrary to the current system (first-to-invent) where inventors can file affidavits to predate patent publications and cited art if they invented the patent first. Accordingly, come March 16, 2013 it will be very important for inventors/companies that believe that have valuable intellectual property to file a provisional patent covering the invention.

A second key date on when inventors/companies should file a patent is based on the company’s public disclosure date. Public disclosures are not confined to publications in books or technical journals but also to posters, slides, spoken lectures, seminars that are open to the public, youtube videos, twitter posts, blogs, etc. If you have publicly disclosed your invention, you will be barred from filing a patent internationally. Although this may not seem like a big deal but start-ups may develop technologies, such as mobile applications, that for whatever reason are popular internationally. Therefore, it is prudent for start-ups to maintain intellectual property rights overseas by filing patents before they publicly disclose their invention.

A third date associated with when it is important to get a patent is based on when you have enablement for your invention. To obtain patent protection for an invention, the inventor does not need to have a working prototype. Instead to obtain patent protection, an inventor only needs to enable others to make and use your product. For example, if your invention is directed towards a mobile application, it is not necessary for you to fully develop your mobile application to receive a patent. To obtain a patent, the patent only needs to describe to coders how the coder would create the application. Therefore, a working prototype is not required to obtain patent protection. This “date” can be important for start-ups when deciding whether to use their capital to obtain a patent or build a prototype. Although the prototype is probably going to be flashier and cooler, investors would more often than not invest in start-ups that have intellectual property rights in their invention.

In summary, come March 16, 2013 the American Invents Act will create a “race to the patent” office, where start-ups and inventors should be mindful that timing does play a major role in determining who is afforded intellectual property rights. A good way for smaller companies to overcome the speed hurdle to obtaining patent protection will be to file provisional applications.


By | 2013-02-04T22:10:44+00:00 February 4th, 2013|Uncategorized|Comments Off on When should my start-up file a patent?