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

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.

Since you do not have a duty to disclose prior art to the USPTO, you could approach your competitor and try to negotiate a license for their patent pending technology. However, there are two caveats to this approach. First, your competitor does have a duty to disclose prior art to the USPTO. If they learn about the prior art in the course of negotiations with them for a license, they would need to disclose that prior art to the USPTO if the patent has not yet issued. The patent could be declared invalid if they later sued an infringer and it came out during litigation that they did not disclose known prior art. Second, it is much easier to notify the USPTO of this prior art while the patent is pending than after the patent issues. You would only have to pay $180 and would have six months after the application was published to file the prior art with the USPTO (under the new rules of 37 CFR 1.290). The USPTO will only consider written documents, so there would need to be some kind of published document relating to the prior art you found, such as a company brochure showing or describing the feature. I would be happy to assist you with this matter whether you decide to negotiate with your competitor or submit the prior art to the USPTO.

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.

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.