There is a straightforward path to relatively quickly earning high quality patents, at a price that’s surprisingly close to that of low-quality patents.
To get underway, your startup should make sure it:
- Intimately understands the fundamental needs of its target customers;
- Thoroughly knows those customers’ problems (“pain points”) with existing products;
- Innovates a solution that eliminates some or all of those pain points;
- Designs a new product that attractively implements the innovative solution;
- Estimates the retail price of the new product, that price reflecting expected costs and needed profit margins;
- Verifies that customers highly desire the new product at the projected price; and
- Forecasts what pain points will arise next and innovates outstanding solutions to those problems too.
Before or while performing these basic market and product research activities, your startup should consider performing a patent landscape analysis so they know what patent rights of others might influence or even block delivery of the product, determine what companies might be interested in licensing the concept, and/or identify inventors who possibly could be enticed to join your team.
Next, your startup should make sure they hire (or have already hired) a highly competent patent attorney who works solo or in a small firm that specializes in patent prosecution, keeps overhead much lower than large firms, and tends to be much more responsive because they are not distracted by the nearly overwhelming time demands of patent litigation and/or large clients.
Your patent attorney should promptly commence a solid Patentability Search that covers the innovative concepts embodied in your startup’s new product.
If the Patentability Search is favorable, perform a RARE (risk-adjusted return on investment) analysis to estimate the potential value of patenting those innovative concepts.
Assuming patenting is worth the investment, craft and file a non-provisional patent application.
Note that, to achieve a quality patent covering its innovative concepts, your startup should never attempt to write and submit a patent application on its own (even a provisional, which I generally discourage startups from filing anyway). Instead, your startup should employ a highly competent patent attorney who will align the patent application with the startup’s carefully considered and described business needs, while avoiding dozens of legal pitfalls.
Your patent attorney should solicit sufficient information from your startup to craft a legally strong description, that is both deep and broad in scope, provides proven examples (with data if appropriate), and avoids flaws that opponents can exploit to destroy the value of the resulting patent.
Your attorney also should draft smart patent claims that are:
- Likely to be infringed:
- Directly;
- Detectably; and
- By a deep-pocketed party, acting alone, who is not an existing or target customer;
- Aimed at your startup’s:
- Innovative concept;
- Current and future products that (will) implement that innovative concept;
- Competitors’ products & likely design-arounds to your implementation of the innovative concept;
- Distant fields/licensees who might benefit from the innovative concept; and
- Components and entire products/systems that implement the innovative concept; and
- Sufficiently narrow to clearly avoid invalidating prior art and to speed examination.
As the patent application is finalized, your startup should verify that your patent attorney has been provided with the identity of the inventors of the claimed subject matter along with evidence that shows the inventors have been correctly identified.
To address the speed issue, forego filing a provisional patent application, and instead file only a non-provisional application on an expedited basis (e.g., PPH, Special, or Track One). For most startups that seek to patent only in the U.S., a Track One application tends to make the most sense, as the USPTO is committed to completing examination of such applications in under 12 months. That means that your company should receive initial feedback on its expedited application in under 6 months.
Upon filing the application, your startup should work with your patent attorney to clearly establish and timely record its ownership of the application.
Recognizing that roughly 90% of patent applications receive pushback from the USPTO (in the form of “Office Actions” that “reject” at least some of the claims), carefully respond to that pushback to avoid unnecessarily limiting the scope of the claims yet avoid dragging out the proceedings/prosecution.
On average, an application will receive 2.75 Office Actions before it receives a Notice of Allowance. Of those, the first will be a “Non-Final” Office Action, while the second typically will be a “Final” Office Action. To continue moving an application toward allowance (and avoid abandonment), a “Reply” must be timely submitted to overcome each Office Action, that Reply presenting evidence and/or arguments debunking the faulty reasoning of the Office Action, and/or presenting amendments to the claims or other portions of the application that truly need to be adjusted to fulfill the patentability requirements.
Often, after filing a Reply to the first Non-Final Office Action, the examiner will issue a “Final Office Action” that again rejects the claims. Note however, that “Final” is a misnomer in this context. Instead, “final” means only that the applicant must pay an additional fee to continue prosecuting the application (accompanied by a “Request for Continued Examination” (“RCE”)) or must appeal the examiner’s claim rejections.
Sometimes additional Office Actions can be avoided by verbally discussing the application with the examiner via what’s called an “Interview”. So I recommend interviewing the examiner at the earliest opportunity (possibly even before any Office Action has been received) to:
- Establish a strong relationship with the examiner;
- Explain the context for the claimed innovation; and
- Learn about (and maybe resolve) any concerns the examiner might have.
Once the examiner is comfortable that allowing the claims won’t embarrass or otherwise bring scrutiny on them, their supervisor, or the USPTO, the examiner will send a Notice of Allowance. In or with that notice can be found a (usually terse) explanation of why the examiner agreed to allow the claims and what fees must be paid to the USPTO before they will issue the patent.