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Patent protection affords startups the opportunity to protect their inventions and capitalize on the exclusivity this protection affords. But, securing patent protection isn’t easy, and startups can easily lose their monetization potential if they aren’t careful. With this in mind, here are five essential tips for startups from Alabama patent attorney Hunter Adams:
Tip #1: Avoid Carelessly Identifying “Prior Art”
When filing for patent registration with the U.S. Patent and Trademark Office (USPTO), applicants are required to disclose all known “prior art.” Patent protection is only afforded to new inventions that are novel and non-obvious; and, if a claimed invention is “anticipated” by prior art, it isn’t patentable.
But, while startups need to appropriately disclose known prior art, they also need to be careful about carelessly identifying inventions as prior art when they aren’t actually prior art. Once a patent applicant identifies an invention as prior art, the USPTO will rely on this identification regardless of its accuracy.
Tip #2: File Before Going Public
Here, we’re not talking about making an initial public offering (IPO) but instead disclosing a yet-to-be-patented invention to the public. The United States is now a “first to file” jurisdiction. This means that if a startup discloses an invention and a competitor files for registration of a similar invention before the startup gets around to filing (thus establishing relevant prior art), the competitor may be entitled to the claimed patent. Obviously, this is a situation startups should avoid—and they can avoid it by filing for registration with the USPTO before taking their innovations to market.
Tip #3: Provisional Patent Applications Allow for Early Protection
While startups can register trademarks on an “intent to use” basis, similar protection is not available for proposed inventions. However, startups can secure early protection for inventions that are under development through the provisional patent application process.
A provisional patent application provides up to 12 months of protection; however, filing a provisional patent application is insufficient to secure lasting protection on its own. In order to obtain a registration, a provisional patent applicant must also file a non-provisional patent application during the 12-month pendency period.
Tip #4: Ensure that Your Startup’s Patent Claim is Sufficiently Broad
When filing for patent protection, startups need to ensure that their patent claims are sufficiently broad. If the scope of a patent registration is too narrow, it won’t provide adequate exclusivity, and this means that its monetization potential will be limited.
Tip #5: Don’t Rule Out Alternatives Too Soon
When considering patent registration, it is also important to consider any relevant alternatives. For example, in some cases, protecting proprietary information as a trade secret will be more appropriate. But, once proprietary information is disclosed (i.e. through the patent application process), protecting the information as a trade secret may no longer be an option.
Contact Alabama Patent Attorney Hunter Adams for Immediate Assistance
If you have questions about how to protect your startup’s proprietary assets, Alabama patent attorney Hunter Adams can help. To schedule a free initial 30-minute phone consultation, please call 251-289-9787 or contact us online today.