My friend and I started a new business to patent and license a new piece of equipment. What kinds of pitfalls should we avoid?

You should ask a patent attorney.

The answer is yes, but it always depends. Let me begin by saying that the more knowhow, etc. involved, the easier it is to sell something without any patent protection. Otherwise, you are trying to sell something without protection and you get no protection until the patent issues, which may take years. The acquirer may just run with it (I would) without licensing knowing there is no cost until your patent issues. Then, when you file, they will see your claims and try to modify their product around your claims. It is slightly vicious in nature. That said, I may not act much different if you file first, unless I can buy your patent or the license costs are very inexpensive. Secondly, many countries have absolute novelty and you will not be able to protect your invention there ever, even if a licensee arises and wants to enter those markets. This too, is a serious limitation for licensing. My conclusion would be that you are underfunded to address your IP and that I can get away with murder. Filing the application is your way of telling people that you are serious. That said, it is not necessary and I have a lot of clients that file later or never file.

Great question, many entrepreneurs are stuck before launch because of this hurdle. I have helped many individuals turn full time entrepreneurs through succinct consecutive coaching in various industries. Here are my suggestions, but keep in mind they are generic because you didn't provide any details. 1. If you have a prototype or design, re-design it with the intentional focus of removing certain features. Making trade offs are critical and simplify your introduction, pitch, and value proposition as well increase the chances of people being 100% impressed with the limited featured offering rather than semi impressed and focus on what is done wrong. 2. aim for simplicity in your pitch, avoid jargon and create a simple story on how to present the problem solution your 1 or 2 features is offering. - go to older family members for this, not friends or coworkers. 3. go to Fiverr.com and maybe if needed look there for a cheap and quick prototype mockup. 4. create simple landing page to present as if you are a fully working startup. go to www.instapage.com for quick landing pages and if you want a domain go to www.unthinkhosting.com for cheap domains - use code unthink for discount, it should give you some savings there. 5. go to startup weekend events instead of all 3/4 above and just create a simple pitch (under 1 minute) to present your problem and solution idea. if selected you get a team for a full weekend to validate something together. 6. Or create a facebook product page, upload some images (not sales pitches) of problems w/ problem story descriptions... post a lot of those... randomly posting images of your product (already simplified in features) and launch a small budget campaign, say $15.00 for paid advertising featuring your simplified product image, little or not text in the image but with a very short story and solution as header. trust me, is critical that you remove features. If you are not willing to make trade offs, from my experience you are not ready to try entrepreneurship at all. I hope this helps and look forward to seeing you succeed! Humberto Valle

This is a little hard to answer because it is so vague. It depends on the area, the market and the strength of innovation. I know that The App Guy has a terrific podcast at http://www.theappguy.co/ and is also trying to organize a community for App developers to sell their ideas. Let me know if I can be of further assistance to discuss patentability in terms of its value to getting a sale or license. What ever you do, don't spend money filing a full patent, just a provisional. Good luck.

I am a patent attorney generally on the patent owner's side. Signing such a clause should make you nervous. You don't want to be responsible for the major company's infringement. The major company is likely getting more benefit out of using your software than your company is making by selling licenses. The previous gentleman's answer is incorrect. Anyone can be sued for patent infringement if they make, sell, or *use* the claimed invention. It depends on the claims in the asserted patent. Based on experience, it's much more likely that the larger entity would be sued for infringement. A patent infringement case could cost anywhere between $350k-$5M+ USD. http://www.cnet.com/news/how-much-is-that-patent-lawsuit-going-to-cost-you/ In order to properly answer your question, I would need to know why you feel it's "very unlikely" that someone would sue the major company for using your software. If the major company won't back down on this provision, the best thing you can do is determine if you need IP (defense) insurance. If a patent attorney determines that it is necessary, raise the price of your license and get IP insurance.