If you’re just tuning in, this is a continuation of the Startup Intellectual Property Checklist series. Intellectual property is key to the success of a technology startup. But, what is intellectual property? How do you protect it? What about the intellectual property of others? This checklist provides a basic primer on key intellectual property issues each founder should understand, and a simple To-Do list of action items. Part 3 will feature items 7-9.
STARTUP INTELLECTUAL PROPERTY CHECKLIST
Part 1
1) Get All Founders to Assign Intellectual Property to Company
3) Budget & Funding for Intellectual Property
Part 2
6) Patentable vs. Infringing – Know the Difference
Part 3
7) Design Patents vs. Utility Patents – Choose the Right Filings
8) Patent Search – Find Out What’s Patentable
9) Provisional Patent Applications
Part 4
10) Nonprovisional Patent Applications
11) Slogging Through the Patent Application Process (aka “Patent Prosecution”)
12) International Patent Protection
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7) Design Patents vs. Utility Patents – Choose the Right Filings
Type of Protection
“How it looks” vs. “How it works” is the essential distinction between design and utility patents. If you’re concerned about competitors copying the appearance of your concept, consider design patents. If you’re concerned with the functional, useful features of your concept, apply for utility patents.
For example, design patent protection would be appropriate for two-dimensional surface artwork applied to a product. Three-dimensional product shapes can be tricky. Does the shape serve a functional purpose? In theory, design patents are meant to protect only non-functional, ornamental features. This is where consultation with a patent attorney would help.
Here’s a table with some very broad differences between design and utility patents:
8) Patent Searches
I recommend Google Patents and Free Patents Online for searching patents. Notice I did not say the USPTO site, which makes it rather difficult for users to see images of the patent drawings. The two recommended sites allow you to download PDF’s of the patents.
Startups need to know the difference between patentability vs. infringement (hyperlink to Article6/Checklist2), and understand that a novelty search addresses the question of “Is my invention patentable?” whereas a freedom-to-operate (FTO or “right-to-use”) search addresses the question of “Does my product infringe?” Whichever question/search you’re trying to ascertain will determine how to read the resulting patents.
For most startups, the more practical question to consider at an early stage is the novelty question. Tackling this issue early on with a novelty search helps you determine whether you should file a patent application or convert your previously filed provisional to a non-provisional application.
In reading patent results found in a novelty search, your should focus on the drawings and the section of the written specification commonly entitled “Detailed Description of the [Preferred] Embodiments.” These two parts of each utility patent delve into the gory details of the invention, which are frequently omitted in other sections such as the claims or the Brief Summary. As you review the Figures and Detailed Description, pay particular attention to any disclosures of the key features of your invention. It would be helpful to have a bullet point list of all the key features that you’re looking for, and compare the list to the patents.
9) Provisional Patent Applications
Patent protection may seem cost prohibitive for many startups, tempting founders to forsake the patent process altogether. A temporary solution for obtaining patent pending status is the provisional patent application. The “provisional” nature of such a filing should not be overlooked, as this mechanism is merely a starting point, a tool for buying time and deferring costs.
What a Provisional Patent Application Does
A provisional patent application gives you a filing date and a 1-year timeframe to convert the filing to a non-provisional patent application, which would then be reviewed by USPTO patent examiner. Provisional applications allow you to say “Patent Pending” during that timeframe, providing you with certain marketing and business advantages.
Provisional patent applications do not get published during their pendency, are not reviewed by patent examiners, and do not require any special formatting.
The most important thing to cover in a provisional patent filing is a full and complete disclosure your invention, including all the gory details about each part of your idea, especially those features you believe to be unique.
What a Provisional Patent Application Does Not Do
A provisional patent application does not give you the right to stop others from copying your invention. In fact, neither would a non-provisional patent application, though the latter would bring you one step closer to obtaining those rights.
A provisional filing is simply a first step in the utility patent process, and is ultimately worthless if you fail to follow up with a non-provisional application within the 12-month deadline.
One significant risk of a do-it-yourself (DIY) provisional application consists of any deficiencies in the filed disclosure. The disclosure in your provisional application must adequately support the subject matter claimed in the subsequent non-provisional application in order for the claimed matter to get the benefit of the earlier provisional filing date (aka “priority date”). If you add new subject matter that was not disclosed in the provisional filing, then the new matter gets the later non-provisional filing date. In a nutshell, don’t leave out any important details in your provisional patent application.
The PTO does a good job of providing some cautions concerning provisionals.
Timing
Now that US patent law operates under a first-to-file (or first-to-disclose) system, it’s best to file your (provisional or non-provisional) patent application prior to any public disclosures. This also preserves your right to pursue foreign patent protection.
If you filed a provisional application on your own, make sure to mark the 1-year anniversary of the provisional filing date. To be safe, you will want to confer with a patent attorney immediately if there is a possibility that you may have publicly disclosed certain features not covered in your provisional filing.
