The BEST Startup Patent Strategy - Insider Tips Tricks
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- Опубліковано 2 жов 2024
- What is the best patent strategy? This video gives you the secrets of what the best patent strategy is for your specific product and business plan including what is NOT a good patent strategy and what the best patent strategy is for inventors, entrepreneurs and startups. I also discuss how big companies plan patent portfolios and how this patent strategy is not a good idea for inventors, entrepreneurs and startups. This video also discusses why provisional patent applications are typically the best patent strategy for inventors, entrepreneurs and startups. #patent #patents #patentstrategy #patentlaw #intellectualpropertylaw #inventortutorial #inventions #startup #startups #startupcompany #startupbusiness #startupadvice #startupguide #startuptips #startuptalks
Additional Patent Resources:
My best-selling book, Patents Demystified: amzn.to/2MX5le9
The top book on licensing your idea or invention: amzn.to/3tDLSib (One Simple Idea by Stephen Key)
When to file a patent application: www.dwt.com/bl...
Is software patentable: www.dwt.com/bl...
My appearance on CNBC’s “The Profit” with Marcus Lemonis: www.cnbc.com/v...
**** DISCLAIMER: Information in this video is not legal advice and should not be relied on as such. The law can change and the information in this video may be outdated, so you should always consult an attorney regarding your specific issues in view of the current state of the law. *****
![The RIGHT Time To File a Patent Application [Insider Information]](http://i.ytimg.com/vi/kguf3LllW58/mqdefault.jpg)
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Want more videos on patents, inventing and startups? Check out this playlist with all my videos on these topics: ua-cam.com/play/PLp15JXznBjPW-J3hNhX1zYoOm1mQzVeMo.html
The playlist and my channel include the following videos and MANY more:
How to Patent An Invention Idea: ua-cam.com/video/vEHI-gePr8A/v-deo.html
The International Patent Process: ua-cam.com/video/aMT7yQwn69c/v-deo.html
How to Know if Your Idea is Already Patented: ua-cam.com/video/Cm_3JqZgLFk/v-deo.html
How to Lookup Patents: ua-cam.com/video/00YUOAayTnM/v-deo.html
The Best Way to Protect Invention Ideas: ua-cam.com/video/Em_uVQ1qLXY/v-deo.html
What Are Patent CLAIMS? : ua-cam.com/video/0MneopTXX5Y/v-deo.html
Top 5 Startup Patent Mistakes: ua-cam.com/video/2jmc2xuwVbQ/v-deo.html
Prior Art Definition / What is prior art? : ua-cam.com/video/-9SCz3R6j4s/v-deo.html
What is a Patent and How Does it Work? : ua-cam.com/video/qZaQxNmcm8E/v-deo.html
What is the best patent strategy? ua-cam.com/video/zCbEz3AKVoE/v-deo.html
Why You DON'T Need A Patent Search [TOP 5]: ua-cam.com/video/YB_9u5uxcfA/v-deo.html
Top 5 Hidden Patent Benefits: ua-cam.com/video/rVbFWgoI9Ps/v-deo.html
Top 5 Patent Infringement Mistakes: ua-cam.com/video/8jLX6uUvUR4/v-deo.html
Guide to The Patent Examination Process: ua-cam.com/video/TI6IYxo7ppA/v-deo.html
Top 5 Patent and Startup SCAMS: ua-cam.com/video/gfBi35Byz2A/v-deo.html
Guide to Understanding Patent Numbers: ua-cam.com/video/GNXrO2q_0yM/v-deo.html
So if I get a provisional patent I can then make prototypes and sell to get feedback from my customers but if I sell them before hand then I can’t file for a patent in general? If my idea has almost all things used from other products would I still be able to do my a patent on them together to make a better product?
Yes, one of the main benefits of filing a provisional patent application is that you can then safely start to make public disclosures, public uses and offers for sale of the product, including getting feedback from customers. (Note there is not such thing as a provisional patent, just a provisional application - ua-cam.com/video/yfT8U-8PxGY/v-deo.html) Patent rights are forfeited in most foreign countries immediately if you make public disclosures, public uses or offers for sale before filing a patent application, but some countries, like the US give you a 1-year grace period to file before patent rights are forfeited.
An idea that has almost all things used from other products could still be patented assuming this combination is new and and non-obvious in view of the prior art. It really depends on the specifics of the what's being combined and how. A patent attorney should be able to give you a general idea of how how patentable the idea might be. Check out some of my other videos that discuss all these issues such as the novelty and obviousness standards of patentability.
I want a partner like you, I am lazy. I willing to talk with you. I know how to make a product that everyone in the world would want and needs, and someone else controls its, but things could change.
I have a great idea. This idea is so great, I've been thinking about it for a while but I'm at a point of paranoia. I need advice and at this point I'm afraid to even put the idea out there in fear of someone taking it for their own. What's the absolute first step in terms of security for my idea?
Hi Justin,
Here is my full video on how to keep your idea safe while also moving it forward: ua-cam.com/video/s-RwfESZIIM/v-deo.html (How to Keep Your Invention Idea Safe)
Great stuff
Thanks!
Great stuff
Thanks!
If there weren't a slide rule (from the old days in math), could I patent that? Thanks!
Yea, assuming it was new and non-obvious over other prior art, then a slide rule could totally be patentable along with the method of using it.
I liked the video I am at the r&d stage of my first patent and want to protect myself and my idea I already have my proto type built and am looking to move forward
Very exciting! Let us know how it goes.
I have an idea for an invention that will sell out fast. You know the O Cedar mop and bucket with the spinner you step on to wring out the mop? We need a manual washing machine that works like that. If there is a cyber attack or major black out, how will we wash our clothes? And think of all the tiny homes that want to live off grid? I know this idea is a winner. We really only need the strainer/spinner device to fit over a bath tub and the bath tub can be the basin for the washing machine. You run the water, add detergent, soak the clothes than agitate the clothes with the spinner. There should be a way to raise or lower the spinner whether you need an agitator or strain to shake off the water. The, you can either run the shower over the clothes to rinse them or a water hose but then they will need to be spun again to throw off the excess water untill all the detergent and dirt have been rinsed out. I bet this will get your clothes leaner than an electric machine
Great video. My attorney took me through all this and I recognize now what he did from your video and looking back. I did almost all of the work and he did a good job of the administration. Can you say more on filing the 2nd provisional patent? Is this linked or happened to the first? Or Is it a revision of the 1st? ie you update the specification you did for provisional # 1 with the new innovation you have added since # 1 and submit this as a revision as the second provisional? Or is it an entirely new submission? Is it the same filing costs as the first?
Thanks, Robert. Great question! Filing a first provisional, a second provisional in the year that the first one is pending, and then filing non-provisional that claims priority to both before the first one expires is a great strategy. The second one is sometimes referred to as an "update" to the first, but such a second provisional is a completely separate and new application that does not have any direct association to the first provisional. Since it's a new separate application, the filing fees cost the same. The only thing that really ties then together is the non-provisional that claims priority to both provisionals. Usually, we just add new material to the first provisional and file that as the second provisional since that tends to be more convenient, cost-effective, and helps give more context to the earlier content and also helps set you up for the non-provisional, but is not required in any way. With some strategies, it totally makes sense to file a non-provisional that claims priority to two or more provisionals that don't have any overlap or shared content. What's going on with your non-provisional? Still pending? In examination? Issued?
@@PatentsDemystified Thanks Stephen, that's great clarification. We completed PCT review and lodged in US, and now its status is pending. I'm assuming it's pending US review. I understand this can take some years. The more the better as far as I'm concerned as this will further delay review fees and lawyer fees. We selected only the first 20 claims to lodge in the US as further claims would incur additional costs, and I understand from my patent lawyer we can extend this to more of the claims in the future however I'm not sure how this would be administered. It was going to be between $15k and $25kAUD per country to file in those so I balked at this as our runway would be cut short with these expenses. Thanks again for the assistance. Best Regards,
Rob
Yea, it can be 1-3 years before examination begins in the US, and once examination begins, it can often be 1-3 Office Actions with the USPTO before you get to allowance (if ever). Your attitude about delay being a positive thing is the right way to think about it. It's typically better to delay fees and let your company develop instead of rushing to get a patent issued. Enforcing a patent is extremely expensive and it's typically beneficial to keep the application family open to be able to pivot claims toward what your product actually ends up being or what competitors do. Yea, it's best to stick to 20 claims in a given US application and you can always file continuations to go after claims to broaden protection, direct claims specifically to competitor products or go after subject matter that is not covered by the first set of claims.
@@PatentsDemystified I need a pattern lawyer
Can you comment on strategy of filing multiple provisional patents, past the first year limit of the first provisional patent, and how that will affect when we are finally ready for the non provisional patent? Also why build a portfolio, because it’s expensive!
One thing to note first off is that provisionals are only provisional patent _applications_ and not provisional _patents_ . Provisionals cannot mature into a patent - only a non-provisional _application_ will go through examination, and if allowed, will grant as an issued patent.
Regarding filing multiple provisionals after the year limit on a first one, you typically only do this to protect new inventions and not on the same invention because patent rights start to be lost upon a first public disclosure, public use or offer for sale if you don't have an early priority date and just re-filing a provisional after another one expires means that you might actually forfeit your patent rights because the early priority date is lost when the provisional expires (and if you don't file a non-provisional that claims priority to it). That's why it's best to wait to file a provisional until you are about to make public disclosures, public uses or offers for sale because you want to maximize the time you have to get an invention out there and know if filing the expensive non-provisional is worth it. If you are thinking about re-filing provisionals, work closely with your patent attorney on this strategy to make sure you aren't inadvertently losing your patent rights.
Regarding building a patent portfolio, it depends on the business. For startups and growth companies, growing a patent portfolio with multiple assets translates directly into higher valuation for a company and makes it more attractive to investors. In fact, the value created for companies like this is way more than the cost of getting the issues patent and can be an essential part of the business plan. However, for certain businesses, building a patent portfolio makes absolutely no sense, and for some, even a single patent makes no sense either. That's why it's always important to think about the ROI on patent assets and determine whether it's worth it given the cost. Most of the time it is, but not always.
@@PatentsDemystified this makes a lot of sense in terms of building the portfolio for valuation purposes. In terms of the provisional patent application timing, its very tricky, since market testing and public use may have to come before being able to file that non-provisional. In fact, it seems a waste of money to file a non-provisional patent prematurely... When I look at the portfolio of companies with larger institutional rounds, it seems they have just spent so much money on patents, which I assume would shorten their runway...
Absolutely! It's a huge waste of money to file a non-provisional prematurely and also to file a provisional prematurely since it starts the one-year clock for when you need to file a non-provisional before the provisional expires. Check out this video that has more detail on the timing of filing a provisional application: ua-cam.com/video/kguf3LllW58/v-deo.html (When Should you File A Patent Application).
For larger companies, they typically start with a non-provisional because they already have the budget for it and are building a patent portfolio completely different than startups do. Check out these videos for more on how large vs. small companies build patent portfolios:
ua-cam.com/video/Sgm31xc8crU/v-deo.html ( Large vs. Small Company Patent Portfolios)
ua-cam.com/video/tbjUBk4HFio/v-deo.html (Patent and Inventing Playbook - How Different Types of Companies Build Patent Portfolios)
Hey Stephen, do you recommend working with a attorney even if you're just filing a provisional patent?
Hi Ram, I do recommend working with a patent attorney to draft and file a provisional patent application. The USPTO will literally accept anything that you file as a provisional application and the biggest issue I see is folks filing provisionals that don't have enough detail to provide any actual protection or that has wording that severely limits protection and can be used against you during enforcement.
This article has more detail on why doing cheap provisionals is not typically a great idea: www.linkedin.com/pulse/top-reasons-why-you-should-never-use-legalzoom-patents-dylan-o-adams/
@@PatentsDemystified Thank you for the advice!
You bet. Glad to help!
I am interested in your topic and I would like to work with you.
Thank you ! I did not know I can extend my provisional patent with another provisional! new subscriber! I am working on making my idea a real product in the market. thanks
Thanks, Marlon. Keep us updated on your journey bringing your product to market. Just be careful with the strategy of filing multiple provisionals and work with your patent attorney on it. Sometimes filing a second provisional is not necessary because new variations were already covered in the first provisional. Also the second provisional can expand what you have covered within the year that the first one is pending, but does not extend the term of the first provisional, which will still expire after a year.
Im blind. Can you please publish your book on audible so I can listen to it. Thank you
I’ve been wanting to get an audio version recorded. I’ll talk with my publisher about it.
This video is very informative and educational for me. Thank you
Thanks! Glad it was helpful.
I work for the USPS I recently created an idea that I presented to the board of governors. Which they sent to the patent attorney and they have expressed they would like to patent the idea. However they would like for me to assign the idea over to to USPS without any compensation. I created this idea on my own time without company resources it is not directly related to my job duties. I also have never signed anything saying I'm obligated to sign over intellectual rights to my employer.
The agency policy is as follows:
The initial determination of entire right, title, and interest in and to an invention is made by the Postal Service’s Patent Counsel. The determination of rights is based on the following criteria:
Entire Right, Title, and Interest to Postal Service. The entire right, title, and interest is obtained by the Postal Service in these cases:
The invention bears a direct relation to, or is made in consequence of, the official duties of the employee.
The invention is made with a substantial contribution by the Postal Service of facilities, equipment, materials, funds, information, or the time or services of other Postal Service employees on official duty.
Entire Right, Title, and Interest to Employee. The entire right, title, and interest is left with the employee in these cases:
The invention does not bear a direct relation to, or is not made in consequence of, the official duties of the employee.
The invention is made outside of working hours.
The invention is not made with a contribution by the Postal Service of facilities, equipment, materials, funds, information, or of time or services of other Postal Service employees on official duty.
Divided Rights of Employee and Postal Service. When an invention by an employee does not meet the criteria of 695.1a(1) or (2), but the invention is made during working hours, the Postal Service may reserve a nonexclusive, irrevocable, royalty-free license in the invention with the power to grant licenses for all government purposes. Such reservation must appear, where practicable, in any patent, domestic or foreign, that may issue on such invention.
Do you think I have the entire right to this invention based on the legal criteria? It would be nice if you could make a video about employee related inventions. Great work👍👍👍
I’m not able to give legal advice via UA-cam comments, but you should talk to a patent/IP attorney about this. I’m not taking on new clients at this time, unfortunately. Best of luck with this.
@@PatentsDemystified thanks you should still make video on employee inventions
That’s a great idea! I’ll put it on my list of videos to make. I think a lot of folks would benefit from such a video.
MARCEDRIC KIRBY FOUNDER CEO.
MARCEDRIC.KIRBY INC.
THE VALLEY OF THE VAMPIRES
We are working on buying parents from China with a 33% profit budget yes no maybe
Please email me
Hi Arthur, thanks for considering me for helping you with your project. Unfortunately, I'm not able to able to accept new clients at this time. You can find a list of patent attorneys and agents that may be able to help you here: oedci.uspto.gov/OEDCI/practitionerSearchEntry