Article by Adhip Ray, consultant at PatentPC.
If you have a tech startup, you surely are heavily investing in R&D. But have you invested in legal protection for your inventions?
Sure, you could keep them as a trade secret, but if they get leaked that can cause you millions of dollars in damages and losses. Your entire business could get wiped off clean by your competitors.
That is why we at PatentPC always advise our clients to get their inventions protected with the help of a rock-solid patent.
For that, getting a good patent lawyer is key but it is also important that you know what to expect – which is why we asked entrepreneurs to share their own experiences in getting patents so that future inventors and patentees can learn from them.
Here are 5 key insights shared by entrepreneurs detailing their experiences when they started out in the journey to get their invention patented.
#1. Be Ready to Get Blocked by Prior Art (or Previously Patented Inventions)
You can either appeal the decision or modify your claims and resubmit the patent.
However, in some unlucky cases, your patent can even get rejected. Robert Barrows, founder of R.M. Barrows, Inc. Advertising & Public Relations shares his similar experience when he tried to get a patent –
“I got a patent on a video tombstone called the Video Enhanced Gravemarker (U.S. Patent #7,089,495). You can see more about it at https://www.barrows.com/invention.html
Realizing the ghoulish nature of the invention, I filed the patent application on Halloween in 2002. The patent application got rejected three times due to a lot of prior art, and I finally got the patent after an appeal in 2006.
One of the prior art patents made so many claims that it was very difficult to overcome. (I joke that if a dog peed on his version of a video tombstone, he’s got that patented, too.)
So, it’s not just beating the patent filing by a few moments, it’s how to beat the claims of the prior art to get a patent.
I think I may have started the application with about 30 or 40 claims and after almost 4 years and three rejections and the appeal (and about $20,000 in fees to my patent attorney) the patent was finally approved with about 8 or 9 claims.”
#2. Patenting is as Good as Your Budget to Enforce them
Not every invention deserves or requires a patent. You should first try out a proof of concept and check if the invention is really valuable for your target market before opting for patent protection.
“I’m an engineer, inventor, and founder of a hardware startup. Previously I had a role that resulted in me patenting technology for a B2B company.
I currently hold multiple patents in the airdrop space which is related to my startup. In the beginning, I had enough experience to write an “ok” patent myself and then file a provisional. Bought us enough time to raise money and pay the $8K plus for a good patent representation.
In general, I find patents are a checkmark for venture startups, or in certain industries a way to generate value on an exit. As a small startup, you’re generally not going to have the resources or want to spend them on patent enforcement. The same goes for overseas submissions unless you have a large presence in that market.
Overall, I find that many entrepreneurs put too much weight on patents and idea theft, and not enough on execution or realizing that patents are only as good as your budget to enforce them if serious infringement happens. “
#3. Think About the Cost of Getting a Patent and the Commercial Viability of Your Invention
James Green, Owner, Build A Head shares – “We explored the idea of getting a patent for our original product, but ultimately abandoned the process.
We have the product, we have the commercial viability, but it would’ve ended up costing too much money to hire an attorney and go through the application process.
Patents are particularly useful when you have a highly competitive product that you don’t want anyone else to produce. In our case, we don’t have much competition at the moment, so it didn’t seem like going through the application process would have been worth it.”
True, a patent is important, but if you believe as James does, that your invention does not have much competition and there is not much threat of infringement, then it all comes down to a commercial decision – Is it worth it?
Can your business make enough to justify taking a loan and going for a patent? Patenting is expensive – no doubt about that. Sure with the help of AI, we at PatentPC, have managed to lessen the cost by around 70%, but it is just us.
That’s not the case with any other patent law firm elsewhere.
Adam Rossi, CEO of TotalShield also shares the same – “When obtaining my patent, I found that the experience was fairly painless, however, it did take quite a long time– likely due to the Covid19 Pandemic. It was also quite expensive, costing me about $10,000 by the end of it.
Filing fees were a bit surprising, so if you’re preparing to file for a patent, expect that these will be part of the final cost.”
Therefore analyze the commercial viability of your product and then consider whether it is worth legally protecting your invention from getting infringed by competitors.
#4. Patenting Your Invention can be Both Challenging and Non-Challenging Depending on the Subject Matter
“I have faced this experience of patenting one of my inventions. So, the first lesson is sometimes achieving an invention isn’t as challenging to acquire as you may believe. Certainly, it’s me who has created something unique and intriguing. But I humiliated my patent work and became upset to hear that what I was working on was not particularly new. There are top 3 criteria for patenting an invention, which I followed: novelty, inventive step, and industrial applicability. When I was moving from idea to masterminding to patent, irrespective of how or why I found myself stuck in the idea phase, the first and foremost business rule was to get the ball rolling.”
On the other hand, however, Isla Sibanda, an entrepreneur and a Cybersecurity Specialist with a background in ethical hacking at privacyaustralia.net warns about the rigorous process that getting a patent entails –
“Patenting intellectual property in the technological world can be extremely challenging. I am a cybersecurity specialist and business owner and this journey has given me some interesting stories.
A few years ago I was particularly seeking to protect my intangible assets that including some confidential information that added to our competitiveness as a digital service provider.
I wanted to ensure that the innovation we had was safeguarded from outsiders and getting a patent meant only we could utilize the invention for 20 years which would provide us with plenty of time to reap the advantage of it.
We got a licensed legal company on board so that they could provide us with the knowledge to make marketing and development decisions. They also helped us research the innovations use previously and draft applications. Furthermore, they assisted us in communicating with intellectual property agencies and scrutinizing licensing agreements.
These activities helped us add value to our patents and decreased the risk of technology theft. In this field, I am acutely aware of how cybercriminals are getting more interested in stealing and selling intellectual property which is why we decided to embed cybersecurity in our company’s intellectual property activities so it could enhance the protection of our innovation.”
“We patented our invention, the Spire, as well as a novel whiskey finishing process that occurs in-bottle. The Spire is a five-inch spiral cut of wood that we use to finish whiskeys right before sending them to market.
It wasn’t a difficult process to patent the Spire as we did not have to fight any competing patents for the design. Outsource the paperwork and processing to an experienced patent attorney to maximize your business’s bandwidth and to have the smoothest overall experience.
While there is a risk for other companies to redesign our invention based on our patent, we bank on our superior customer service and passion for distillation to convince our customers that the original is always the best.”
#5. Not all Patents are Created Equal
Wafik Farag, Ph.D. – Inventor of the Dynamic Information Paradigm – DiBase™ shares –
“Initially, I thought all patents capture a novelty. I didn’t realize that the patent office struggles with fundamentally game-changing ideas.
If your idea is earth-shattering, the patent journey becomes a nightmare. My patent took 8 ½ years to issue after many brief responses and several trips to the patent office in DC for face-to-face interactions aided by a DiBase™ live demo.
Why DiBase™ did not belong to any known category or field. My patent is different from all information technology (IT) concepts like databases or architecture design, yet it was the closest category to which the patent office felt fitting. DiBase™ was too novel! A big mistake is to force the patent office to create a new field – not advisable to pursue.
My patent lawyer, who was instrumental in helping me to the finish line, explained that such novel ideas are better unbundled into, say, 30-40 patents, IBM-style patents—baby steps for the patent office to absorb the invention. Don’t throw the sink all at once; the patent sinks.
For an entrepreneur, the patent is not the target but a distraction. I was focused on delivering solutions to fascinate clients with DiBase™’s unique dynamic interactive capabilities that no IT system provides. Patent consumes two precious resources in a start-up: time and money.
The inventor, the CEO at a start-up who juggles running the company, managing teams, managing products, and managing clients, lacks those two resources.
At the same time, the patent needs to be secured early to defend the turf for growth. Another option was to keep the know-how a trade secret. However, not patenting is a gamble that nullifies the trade secret if someone patents it. I am happy I did patent it early on as it showed that the idea was decades ahead of all competitors.”
And, that’s it. If you found the article insightful, do give it a share. Also, let us know your thoughts in the comments. If you need any help with your patents, feel free to reach out to us and we’ll get back to you and guide you through the entire patenting journey!