Beta launch · Patents

When to patent

Steve Procter Tech entrepreneur seeks cybersecurity startup team

March 14th, 2017

So i have a brilliant tech idea (arent they all brilliant!). I have found a trusted fellow techie to help build a beta solution and a basic service to sell to our first 100 customers to prove the concept In order that we can then turn to investors to say "here we are". Along the way until that point we will be tweaking the overall solution because parts of it can only be figured by prototyping. But essentially the overall solution is very new and possibly unique. although it crosses over a number of existing solutions, our unique way of packaging/merging existing solutions possibly creates a new invention which can possibly be patented. Although i am very accepting of the idea that in the end it possibly wont be seen as a new invention (and therefore not patentable).


so do i do nothing right this second apart from pay lawyers silly money to try to file a patent, spending 12 months deep in patent law, meanwhile competitors come along and beat me to it. Or do i get this beta built and then file. And if i do it once the beta is built, do i file mysef (and at my expense even though we are boot strapped). Or do i try to get a round of finance so we can start building our team, one of which can use some new funds to file; in parallel with us continuing to trade and scale up the business.


If we ask investors to help with the patent process after beta is launched, would investors 1) be put off by fact it is not yet patented at the point they are considering us, 2) get greedy and decide that because it is not yet patented that they can claim a bigger chunk 3) same as point 2 but even worse, run off and do it themselves without me?


By the way, for background, we are uk based and first customers will be uk, although this is a global solutions and (like them all) is a mega potential market. Many thanks in advance for any thoughts.

Paul Garcia President at TABLE

March 15th, 2017

If you have shown to or discussed this invention with anyone outside your company, such as your beta-test group, you have likely already blown your opportunity to file. Filing must occur before any other disclosure. The main criteria are otherwise fairly simple, novelty, and not something that could be anticipated by someone of average skill in the art. It sounds iffy as an improvement on process or combination of other things, that it is even eligible. You would need a surprise factor that could not have been expected by someone who would know these things could be combined.


Remember, it is not just the filing costs, even if you skip some expense by filing pro se. You are also required to monitor and vigorously defend your patent, which is a significant expense annually. If you fail to do so, you might as well never have applied.


Consider too whether your "invention" will only be used in the UK or if you need to file internationally. You cannot make this decision after the fact and add more countries later. It must be your original decision. The European commission has different rules about filing than the US, some more and some less strict.


All the info about filing requirements is available freely, and any attorney can help tell you where to look, though they cannot give advice without you hiring them.

Judith Szepesi Founding Partner and Patent Strategist at HIPLegal LLP

March 16th, 2017

The value of a patent depends very much on the technology area. Talk to a trusted patent attorney about it. You may be able to file a provisional/short application to ensure that someone else cannot easily steal your idea.

David Austin Relentless problem solver and innovator.

Last updated on March 18th, 2017

Paul is also wrong about taking to anyone about it "blows it out of the water". That's only true if they patent it before you. You can patent it any time you want after doing so ... Even years down the road. It's FTF first to file. Period. He might be thinking about public disclosure ... But it has to be a disclose to the general public, say in a public meeting, or newswire for that to be the case, and even then as long as you make it clear that it is a proprietary thing for which you claim the IP you still have 1 year to file. No joke. 1 year. In fact, if someone files that week, and you file 11 months later, the patent goes to you but you have to make your intent clear. Also if when you do file if you file a provi, the clock gets reset again and you'll have another 12 months to file the nonprovi. I swear, patent attorneys try to keep this stuff secret and make it sound as hard as hell. It's not that hard. It's just hard to learn the facts in plain English because it's so hard to find. $100 (or $70 if you're a micro entity) my friend to file a provi. Do it, then iron out your details, and file extra provis as you go. Get financing in place, then have a good patent search done, do your market research ... Then if all goes well, file the nonprovi. Just don't do it out of order. And ignore all the naysayers and knowitall knownothings (I'm not talking about anyone specifically here incidentally). They're a dime a dozen, and half of the others want to tell you only that which plays to their favor. Fact. Awesome advice in this network, but b careful what you believe.

Dane Madsen Organizational and Operational Strategy Consultant

March 14th, 2017

Patent strategy is important to the investment process. Not that you have patents as much as you have a a strategy and understand the implications of that strategy. Get a referral from a trusted source for a patent lawyer you can speak with for an hour or two to develop your strategy.

Joel Williams Entrepreneur at EZBadge

March 14th, 2017

I can answer for USA, but expect similar in UK. If you think you have an invention it is critical that you apply for a patent before disclosing it publicly.

You can do a lot of preliminary work yourself before engaging a lawyer (or patent agent - do they exist in UK?).

1. write down a clear statements of what the invention is (call claims).

2. search around to see if it has been done before - google google scolar, google patents, any place you think applies to your invention.

3. you will find things that are similar, change your statement of the invention and repeat.

Once you are convinced you have a strong patent, significantly different than anything else or a combination of obvious things, then it is time to invest some $$.


In the USA, you can file a provisional patent. This is essentially a partially completed patent application that just holds your invention date for a while. This is cheaper than a full patent application. But you will eventually need to file the full application or loose it.


While you can file a patent yourself (in USA), I have done it, but I strongly recommend against it for a patent novice. You will make mistakes that make the patent unobtainable or worthless.

Protecting your intellectual property is part of the cost of doing business, just like having a security system for a factory.

Steve Procter Tech entrepreneur seeks cybersecurity startup team

March 15th, 2017

appreciate the thoughts so far everyone. But do you know what. I think they have cemented my view on Patents that I have never really put into words.


That view is ... the very concept of Patents and the Patent industry is destructive to entrepreneurialism and technology progress. I might even go so far as saying it is designed to be a self-serving system for the "patent industry". I mean no individual offence by that. But something just feels wrong about spending tens of thousands in order to delay launching my business and possibly miss my slot in history. And after all that effort it may turn out my idea isn't quite patentable anyway.


Ok the patent route is possibly a strategy in itself. But as a businessman not a lawyer, it seems an odd one. I do not want to sit behind desk talking to lawyers. I want to go out and change the world. Do things and make things happen. You can argue that at the end of $50k and 12 months of documents I can then do that. But in the tech world I live in things just move too quickly.


The tech revolution is happening all around us, embrace it and live it now. Build the idea and launch it today. Ok next week a big player may come and buy me out or compete. But I would much rather that - it is a good clean fight out in the open. Rather than sit in a darkened room sneakily plotting but never actually playing in the open.


Sorry but I know there are some good people who take the patent strategy. But for me, when I have an idea it is always going to be JFDI.

Judith Szepesi Founding Partner and Patent Strategist at HIPLegal LLP

Last updated on March 18th, 2017

Paul is incorrect about having to defend your patent. There is no such requirement in UK or US law. Trademarks must be defended to be maintained, patents do not. The vast majority of patents are obtained and used only for fundraising, marketing, differentiating your product, and cross-licensing. Only a tiny percent of patents are ever enforced in court.


As for timing, a competent patent attorney who understands this technology area could file a patent quite rapidly especially if you provide the flowcharts/drawings to them. The fastest I have filed a patent for a client that was knowledgable was three days from the time we first met until the patent application was filed. Most attorneys expect to complete a new project in 3 months, but that's mostly a matter of their calendars.


As a side note, I wish this system had threading so I could respond directly.

Rob G

March 21st, 2017

Steve;


there are several threads already from Founder Dating discussions (assuming those threads made it through the merger with CFL) so take a look through those. Patents and IP protection are BIG subjects so don't expect short, black and white, simple answers.

Are patents good or bad: in the US our patent system (the basis behind it anyway) is baked into our constitution so this is more than just an excuse to pay lawyers. The little guy with a great idea toiling away in his garage for years wants our patent system so the big corp down the road doesn't take his idea and squish him the day he opens for business, though patents don't always prevent that either.


Should i get a patent: Patents are a tool in your business tool box, nothing more or less, but you have to know how to use them. You can go out and spend all the money you want on the best "pro" tools, but that doesn't mean you are a pro. Patents can be used for good and for bad, offense or defense. If you don't have them you are guaranteed you can't use them. If you have them there is no guarantee they will be valuable or useful. The hardest part is that you will never know if you really need one until you really need one. It's rather like insurance except with insurance if you have an accident you can be relatively sure you will get value for what you have spent in premiums over the years. not so with patents. you can spend $10k or $100k+ on patents and the market can change and they are worthless or your competitor can invalidate them or you don't have the $$ to prosecute infringers or.... Again the only certainty is if you don't have them you can't use them.


When to file: good question. In 1990 or so i had a great idea. It just popped into my head. The technical infrastructure wasn't available at that time so my idea, though technically feasible, was not financially viable. By 1998 it looked like this 'internet' thing was here to stay and made my idea much more technically feasible and financially viable. I filed for patents in 1999. Back then the rule was first to invent, not first to file as it is today. I later came across what looked like a very competitive patent application filed within 30 days of mine. I'd been kicking the idea around for 9 years, hadn't told a sole except a few patent attorneys and someone else filed a very similar (on the surface - claims were different) application within 30 days of mine. As you can see in the market, ideas tend to come in waves. There wasn't even a name for the market category for my patents until around 2003 or so when the term "social networking" stated floating around. I spent in excess of $100,000 prosecuting this first application. In 2015 I received my 6th patent from that fist application. So, when to file? Well, before you disclose the idea to the general public certainly. If you can build it and launch in 30 days then presumably you have the pertinent parts of the application/invention well defined. If so then there's no reason an experienced patent attorney can't file an application in a week or 2 and that's usually just dependent on their calendar. If you draft all of the disclosure and drawings yourself and have the attorney do the claims (if any if you file a provisional) then it won't take much time or $$. Ask the patent attorney to recommend some well written patent applications you can use for templates. Go to USPTO.gov and research these and some others by reputable companies (IBM, Microsoft, Google, Apple, etc.) so you can get a feel for the jargon and format. If you have drawings then make sure they meet the formatting requirements. spend time with your patent attorney to make sure s/he really understands what you are building/patenting. Bingo.

The real time and expense comes over the next 3-10 years as you argue with the patent examiner which you will do if you want a chance at a solid patent. good luck.

Steve Karmeinsky CoFounder City Meets Tech / Lean Capital Ltd / Placeholder Ltd

March 14th, 2017

So there are several things you need to think about. As soon as you do a patent, you're putting the thing into the public domain. A patent has to have enough information so that someone in the field can do it.


Patents cost money, say you can describe the process in 10 pages, then by the time that converted into legalese probably double or triple it and assume maybe £2,000 per page from IP lawyers ...


Then you have to pay for submission and any queries/etc if someone claims prior art or it infringes someone else or anything like that.


The most significant though is being able to defend it when someone does infringe which can cost hundreds of thousands of pounds.


Sometimes it's just better to keep the secret stuff secret.


Obviously if you get a large investor who can pay for it and help defend it, that's potentially a way to go.

Alan Sack Founding member of SACK IP Law p.c., Intellectual Property Law and related Matters.

March 14th, 2017

You need to retain trusted patent counsel early in the process. Because, if someone beats you to the punch or you expose your invention without patent protection, your chance to corner the market on your innovation may be lost forever. That doesn't mean that you have to file on every idea in every country in the world and spend a fortune. But what it means is that you protect your core IP with a bundle of intellectual property rights, including Patents, Trademarks, Copyrights and perhaps some trade secrets in your market countrie(s) and perhaps where your products are manufactured. However, you need a plan that you will execute,and you need to know whether your ideas are patentable, or if they need to be protected by some other means.