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MenuCan a provisional patent act as a catch-all?
So we're working on a niche social network. A lot of the features are general features used in all social networks, but we have a few unique features.
We don't have the resources to file actual patents, so we're just going with a provisional. Should I file individual provisionals for each feature, or can I just file one overall provisional for the whole app and make sure to highlight the individual features I think are patentable in the future?
Answers
A provisional patent is good for two things. It is a date-stamped proof of invention and gives you time to determine whether to incur the cost of filing a full patent. Yes, so long as the individual component pieces you think are useful are sufficiently described in detail within the one general application, it sets you up to later claim utility patents for any and all of these, providing they really are unique.
But in general, I would really caution you from spending time and money to file patents for a software company. I've built many innovative software products over 20 years of work in our industry and only filed one patent in my life, and even that patent is only to protect people from abusing a truly transformative and world-changing technology.
That said, a provisional patent is inexpensive and if any expense is going to be incurred here, a catch-all is sufficient if you feel inclined to file anything at all. If your goal is an acquihire or acquisition, utility patents do actually make a difference in the acquirers valuation (at least for now) but if you're thinking about it from an actual defensive perspective, I'd really advise that it's not worth your time (and distraction) and money.
The best defence is a great offence. Scale up, get great engagement from users who love your product and you'll be in a much stronger to fight competitors.
Lastly, if you do decide to file a provisional patent, don't claim to anyone that you have I.P. You don't. :)
Happy to talk through this in a call with you. Best of luck!
I've got six utility patents in four separate industries - not all patent attorneys are created equal. You should find a patent attorney who has done work in your area of desired patent protection. Not only have they written patents in that space, but have they successfully prosecuted patents in that space?
As for patent-pending...it's true that you need to file within one year of making a public disclosure, but how you file the Provisional Patent Application (PPA) will depend on your determined course of execution. If you simply want "perceived ownership" for one year then as a micro entity a PPA costs $65 to file and no one will look at the PPA.
However, if at the end of one year you decide to file a utility patent you will only be able to claim the benefit of what was disclosed in the PPA. This is where many inventors shoot themselves in the foot! If you have every intention of getting the utility patent then you'll need to write your PPA with the same level of detail as you would write your utility. Usually, when inventors learn this they skip the PPA and go straight to filing the utility.
I don't know your business but if you're not going after a licensing play then you might ask how better you might spend $10k - $100K in your business other than on patents? My patent strategy is VERY different today than how I operated 10 years ago.
Clear as mud? Good luck. :-)
PS
If you'd like to call me and discuss further I will educate you on what strategies are available that would be the best fit for you and then help you craft and execute your strategy.
Yes. Put everything in one provisional, if you can. But the provisional is worthless unless you file a non-provisional within a year of filing the provisional. Make sure to put as much detail about 'structure' as you can (computers/servers, memory, hard drives, processors). Because you likely will be filing business method claims later on, the structure will be necessary to the claims.
I believe it more or less captures all. Let look at provisional patent in details.
Provisional Patent Specification:
When an invention has reached a stage where it can be disclosed on paper, but it is not complete, a provisional patent application may be filed to claim a priority date. A provisional specification reveals the invention for which the patent is sought sans the claims. This means that while the invention is disclosed, the formal claims need not be submitted just yet. A provisional patent application must be followed by a complete specification within 12 months from the date of filing the provisional specification.
Merits of a provisional patent application:
Priority Date: A provisional application reserves a date for the patent. Essentially, when the complete specification is filed within 12 months of filing the provisional specification, the date of application of the patent will be the date on which the provisional application was filed. This secures the priority date for the invention against any other invention being developed in the same field.
12 months: The applicant has 12 months to completely develop and define his invention. During this time, the applicant can meticulously draft the complete specification with the claims. This period of 12 months can also be used to determine the economic feasibility of the patent.
Cost: A provisional patent costs less as compared to a complete specification (in the initial stage). If the patent is commercially viable then the higher cost can be spent in obtaining the patent.
Patent Pending: After filing a provisional patent application the applicant can use the term Patent Pending insofar as the invention for which the patent is applied is concerned. This could act as a bulwark against potential infringers.
Demerits of a provisional patent application:
Abandoned: If the complete application is not filed within 12 months from the date on which the provisional application was filed, the application will be abandoned. This means that the applicant can no longer claim the priority date.
Substantially Similar: The invention disclosed in the provisional specification must be as equal to the complete specification. The invention disclosure has to be substantially similar in the provisional as well as the complete specification. The provisional specification must include an enabling description of the invention and its best mode. This essentially means that provisional specification must be framed to cover same as that of the complete specification.
Overall, a provisional patent application is an especially useful tool for securing a priority date for an invention that is nearing completion, but still requires time to be developed fully. As long as precaution is taken to draft the provisional specification effectively and to file the complete specification within 12 months, a provisional application helps the applicant gain time to refine his invention and draft the complete specification comprehensively.
Besides if you do have any questions give me a call: https://clarity.fm/joy-brotonath
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Should tech start ups with a sole owner/founder/inventor (patent pending) filing an LLC License or Assign patent rights into the newly formed LLC?
Simple answer. Assign the ownership of the patent prior to closing any investment that is sufficient to market validate your invention. Investors will require an absolute assignment of ownership of any intellectual property. Given that you don't actually have a patent yet, you will be doing a general assignment that will include all assets and rights around the idea. I would also caution you not to over-emphasize the value of a provisional patent or patent application in-process. There is *zero* value to a provisional patent or patent in-process so don't let this distract you from operating your business and building out your product/service.TW
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As an LLC, how can I handle being sued for patent infringement if I don't want to go to court?
Any suit run by a competent lawyer will ensure that the parties named in the suit include everyone who might be able to pay. So, while your LLC might own some products, it may not be the only entity sued. You might be sued, along with all kinds of other people and companies. I'm not saying there's nothing you can do, but you certainly cannot escape having to defend a suit. Anyone can sue anyone else, even if the suit will ultimately be unsuccessful. You ask how can you handle being sued without going to court? The answer is negotiate a settlement that results in the lawsuit being dropped. So, what have you got to trade? What damage could you do if they continue to sue you, and so on.DF
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Where do l go to sell my patented idea?
First of all, what you have is a provisional patent **application**. For now, the provisional patent application is not publicly available. This can be a big advantage to you. You can use this time to improve your invention and file additional provisional applications. If you don't plan on making/practicing the invention yourself, you should make sure to try to think of everything possible regarding how that invention can be improved. This would (hopefully) come naturally to a practicing inventor. When you file your non-provisional application, your disclosure will be made public ("published") 18 months from the filing of the non-provisional. While your applications are not publicly available, I suggest waiting until you file your non-provisional application(s) to talk to others. Quite often, provisional applications do not have the detail or the scope that the non-provisional will have -- due to the time spent on getting drawings accurate and making sure everything is included in your non-provisional applications. It is best to have a complete application before talking to practicing companies. Sophisticated companies will take advantage of information not disclosed in your provisional application to file their own patent applications. If your applications are not publicly available (or even they are published), you should sign confidentiality agreements (non-disclosure agreements) with anyone you talk to about licensing or buying your invention. Keeping track of who you talked to with confidentiality agreements can be the basis for "notice" of the invention by an infringer -- when they eventually steal your invention. You can sell your idea anytime, but a provisional application is worth a lot less than a non-provisional application which is worth less than an allowed application or issued patent. Provisional applications are generally not as complete as they could be -- and require additional time and finesse to complete the non-provisional application. In terms of appearances, if you are not willing to put in the money to file the non-provisional application, the invention is likely not worth that much money. Companies as well as non-practicing entities may look at provisional applications, but not for long, and will not give you the kind of money that you may get from selling a fully examined patent. Of course, it depends on how good your invention is.AP
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I have an idea of a hardware product, that has received good feedback until now.Should I fill for a provisional patent or start an indiegogo campaign?
The answer: do both. The first thing you need to know about patents is that the U.S. now has a first-inventor-to-file system after the American Invents Act (AIA) went into effect in 2013. I have to disagree with Dan above: for hardware inventions especially, a patent is an important part of the business plan. The first inventor who "races to the patent office" now is typically the winner. This means if you do not file for a patent on your invention, you can lose the rights to your invention much easier than before the AIA. The next step is to think about how a patent fits into your business plan. A patent application is but a tool in your bag when starting up. A crowdsourcing campaign on a site like Indiegogo can validate the idea. But it also puts the idea out to the public and starts the 1-year clock ticking on when you can get a patent. For hardware startups, however, if you're not thinking about a patent upfront -- you're likely leaving a massive amount of your product's value on the table.JP
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I have an idea for a simple household kitchen product (under $5). Where can I get good advice on the process of bringing it to market?
Hi! The quick answer is that simple invention ideas are great as they are the fastest and least expensive to develop, yet can still be highly profitable. I run a consumer product firm which has developed hundreds of inventions for home-based inventors or small product firms - Essentially we take it from Idea to Store Shelves. The best advice I can give is to ONLY do what is absolutely required to sell product... There are lots of great services out there that are beneficial; however, if you're on a limited budget, stick to only what is necessary to make a sale, which is: 1. Industrial Design / Engineering, 2. A manufactured sample and a manufacturer who can produce product, and 3. A provisional patent. Essentially what you need is a real, physical, and fully functioning unit of your product, the prices to manufacture that product and a manufacturer who is ready to produce units, and intellectual property protection so that your idea is not stolen. Once you have these 3 items, you can start to present your product to wholesalers, retails, distributors, etc. If someone likes it and the price is reasonable, they can place an order, and your business and dream product starts to grow. From there, there is a whole world of possibilities, but the most important thing for now is to develop your product from 'idea' into 'real'. Whatever you do, do not get caught up in the idea of 'licencing' your idea. An idea is almost impossible to licence unless it is CURRENTLY being manufactured AND being SOLD through stores. If someone or a company says that they will help licence your product idea for royalties, etc., then they should be willing to do that for FREE, no charge, no fees. Many people attempt to charge fees to licence a product idea; however, if you aren't currently selling in stores, it will almost be impossible to get any form of monetary payment, so they usually are just trying to get your fees for their 'marketing' services, which are almost useless for an undeveloped product, and they know this. If you would like more information on some of the details of product development, we have a free Invention Guide on our website, check it out here: http://www.makoinvent.com/free-invention-kit/ Cheers, Kevin Mako President, Mako Invent www.makoinvent.com www.facebook.com/makoinvent www.twitter.com/makoinventKM
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