Copyright Protection · Ip

How to make claims of "intellectual property" for hardware and software components within and the overall product?

Billy Strong mind and body until the end.

May 6th, 2019

Is the technical founder responsible for IP claims? How does a legal role play in this process? What is the required 'evidence' for reviewing these claims? Prototype demonstration? Design documentation? Requirements documentation? i.e. How do I reduce my startup costs for obtaining IP protection or licensing?

Sharmishtha Sharma Founder at PCOSLOQUS.com, Looking for a tech co-founder

May 10th, 2019

Hi Billy, from my experience of filing international patent applications for the firm I used to work with, the first step that I can suggest is to take a legal opinion on your product. I often come across me-too products which have already been patented by someone somewhere globally but the technical founder/inventor doesn't know about it. Knowing what is out there, will help you and your legal counsel devise good claims to protect features of your product. An opinion will also tell you how much benefit will you derive from patenting a product. This will help you do a cost benefit analysis for your patent application expenditure. For a start-up I think this is really important cos patents are expensive. Once your legal counsel gives a go ahead, you can file a provisional application in your country and you will have an years time to file the complete application with refined, revised claims.

Dane Madsen Organizational and Operational Strategy Consultant

May 7th, 2019

This assumes you are referring to patents when you frame them as "IP claims" (inferred for your reference to "IP protection").


If so, then the "legal role" is the only role and needs to be in the hands of a patent lawyer that grasps the process and how to get a reasonable claim/filing done. This is not only the technical founder, but all executives that touch the product and can add framing for a good attorney - none of you is as smart as all of you.


If your first concern is cost, you may want to rethink your IP strategy. Patents are not cheap to get issued, do not happen fast, and then require significant effort to monitor and enforce if you must. Having a patent you do not enforce is to flush the entire spend.

Greg Ioffe co-founder and CEO, Vixtera. Inc

May 7th, 2019

1. Not necessarily, but advisable to coordinate and lead, 2) Major role, 3) Good description and diagrams is enough, 4) At the minimum, download a few patents in the similar field and copy its format, write yourself as much as you can, interview 3-5 patent attorneys, set firm boundaries (change attorney if you don't like her/him), set firm schedule, don't procrastinate, file asap - time of filing could be your hallelujah - your startup cost will be minimal, I mean 1/5. Use "patent pending" in your marketing campaign, it's a huge leverage in the ocean of look-a-like offers. Build your value prop and core offering around your know-how and IPs. Good luck

Paul Garcia marketing exec & business advisor

May 8th, 2019

@Dane is right about understanding the strategy and involving a intellectual property attorney (I am not an attorney and can't give you legal advice). The three basic principles of patentability are easy to understand. But one guideline you should be aware of is that you cannot discuss your invention with anyone outside your company's operations (except your attorney) until you have filed your patent application.


The standards for novelty, un-obviousness, and utility are pretty easy to understand. As far as the requirements, you are obligated to research whether your invention has already been invented in whole or in part (patent search). You need to clearly describe the invention so a person of average skill in the art can understand exactly what it does (and be able to determine that it is not already something that exists), in other words your claims. Sometimes diagrams can be helpful, but you need to describe it in words. Writing the claims is very important and why you need a competent patent attorney, because you cannot alter or add to them once you file.


If you are thinking about patents, understand that the application process is far less than the cost to defend your patent (also a requirement). Holding a single patent can easily cost tens of thousands of dollars a year simply enforcing it and keeping watch on anyone who might be infringing. If anything gets to litigation, move that up to hundreds of thousands of dollars potentially.


Other forms of intellectual property such as copyright and trademark are far less costly to file and maintain. The USPTO offers discounted rates for micro-entities and some help for self-represented applicants. But again, it's not the application fee and legal assistance in filing that is expensive. Comparatively it is the required defense and maintenance that becomes a very large cost center, should your patent be allowed.


If you go down this road, don't cut corners. You get one shot at it.


Frankly most stuff isn't worth protecting. People get grand ideas about their products and how wonderful they are. Very few truly have something unique and valuable enough that someone else would want to copy it or license it. If you are the first to make something, no one else can patent it, because you invented it first.


Sometimes being first and best is enough. And even if you have copycats one day, you're still the original and developed the market.


If you're still interested, hire an attorney for an official opinion on whether your idea is even eligible for a patent. Don't use one of those services on TV. An official opinion isn't cheap, but it is far less costly than going down the road of pursuing something that will not bear fruit.

Natalya A Meyer Investment money saver. Business lawyer.

May 7th, 2019

Billy, those are questions that a patent attorney or and attorney could and should help you with. I assume you are talking about the whole package: trademark, know-how, design patents, technology protection and trade secret. To get an idea of the process which you are asking about, you can start here: https://www.uspto.gov/help/patent-help