Category: IP Tips for Startups

Tip#1: 3 Things You Should Know About IP

Intellectual Property

What is it?

Why is it important?

When should we start registering our IP rights?

JMB’s extra Q&A:

Q: On occasion, I’ve been told by an entrepreneur that he doesn’t really believe in IP, but he’s ‘doing it’ because his investors want it. If I don’t believe in IP, then isn’t it a waste of money?

A: The objective need to obtain IP assets for your company is not a matter of belief. It’s very practical. It is important to investors, partners, potential customers and competitors. A technology company without IP rights may be technology rich, but will be fortunate indeed to become a commercial success.

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Tip #2: 3 Things You Should Know About Public Disclosure

Public Disclosure

What is it?

Why is it important?

When can we publicly disclose information relating to our invention?

JMB’s extra Q&A:

Q: Why do you keep mentioning a “fully drafted” patent application? I’ve heard that a Provisional application can be filed in the US Patent Office, and that it will give you a “priority right”, so why can’t I just go online and file a Provisional application that I have written?

A: You can write and file your own Provisional application, but that would be a bad idea. The reason that you need a fully drafted patent application is that your priority right is only as good as what you describe and show in the first application. If you make mistakes, miss out important features or try and describe them in a way which is unacceptable according to the relevant law and rules which govern what needs to be in a patent application, those mistakes cannot be corrected. So, if you file a first application which has not been drafted by a Patent Attorney (and will therefore almost certainly not be fully or properly drafted), and then publicly disclose your invention, you may also have given away your ability to patent your invention.

NB: Even if your application is fully drafted, you must not disclose an extension of your idea without first filing a new application for it as, by definition, it will not have been included in your original application.

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Tip#3: 3 Things You Should Know About Secrecy Agreement

Secrecy Agreement

What is it?

Why is it important?

When should I use a Secrecy Agreement?

JMB’s extra Q&A:

Q: Sometimes you feel like you have no choice. You can’t file a patent application, yet you can’t rely on an NDA. So what can you do?

A: ‘Not having a choice’ normally means one of a several situations: (i) there’s no money to pay for a patent application to be fully drafted, and you need to disclose the invention to a potential investor; (ii) you have the money, but don’t want to spend it until you have received feedback from others in the market that your idea is a good one; (iii) you don’t know how to build your invention, and you need the input of a professional so as to help you.

If the only thing you can do before you’re able or willing to file a patent application is to rely on an NDA, try to ensure that the person to whom you’re about to tell your secrets is someone that you would trust even if they just gave you their word (they should still sign though). If there’s no one like that that available, try to
get a recommendation from someone that you trust as to the reliability and trustworthiness of the potential inventor, engineer or design company that you plan to speak to.

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Tip#4: 3 Things You Should Know About Your Inventions

What is a Patentable Invention?

What is a good invention for your business?

When do I need to evaluate my inventions and potential patents?

JMB’s extra Q&A:

Q: I’m still not sure when I should file an application. I don’t even know if I have a patentable invention. All I’ve done is combine several known devices and components; is that enough for a patent?

A: There is no requirement to invent any new components so as to qualify for a patent. In fact, many patents have no new components whatsoever. What is required, however, is to have a new result, a significantly improved device or system, or a method or process that works better than the closest method or process, even if all you have done is to leave out some steps or change their order. If you are satisfied that you have reached such an improvement and you can explain this in writing based on facts or realistic, science-based conclusions, you may have enough for a patent. What you then need is to find a Patent Attorney and see if he or she agrees with you.

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Tip#5: 3 Things You Should Know About Patentability Searches

What are they (and what they are not)?

Why is it important?

When should I do it?

JMB’s extra Q&A:

Q: I was told that when a patent application is examined, a search will be done and the Patent Examiner will send me the results. If that’s the case, why should I spend the extra money on a separate search?

A: It’s true that you are not required to do a search, but you don’t want to wait for a Patent Examiner to inform you of the prior art. At that stage, which will probably be at least a couple of years after filing the application, you will have invested time and money, only to discover that your invention isn’t quite as patentable as you thought (and told your investors!). To make matters worse, once a patent application has been filed, it’s not possible to add information about variations and additions to what was initially described and shown. The bottom line is that the more you can find out about the prior art before drafting the patent application, the better prepared you’ll be, and the better will be the chances of receiving a valuable patent.

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Tip #6: 3 Things You Should Know About Patents

What is a patent?

Why do you need it?

When do you need it?

JMB’s extra Q&A:

Q: I want to start talking to people about my invention. When can I do that without jeopardizing my chances of a getting a patent?

A: That’s a good question. You don’t need to wait until you receive a granted patent or even until you file a patent application, but best practice dictates that you should rely on an NDA only if you can rely on the person signing it. Otherwise, it would be better to wait until after your first patent application has been filed. Your proof of filing will be that you have a patent application number and an official filing date. We’ll be discussing ‘patent pending’ and what it means in the next tip.

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Tip #7: Why Patent Pending is not ‘Patented’ but is Still Valuable

What’s the difference between patent pending and patented?

Why is it important to get my patent actually registered?

If having ‘patent pending’ doesn’t give me anything, why is it so important?

If having a patent application isn’t the same as having a registered patent, and I’ll only get the patent registration if my application meets the requirements of the Patent Office, wouldn’t it be better to wait until I get my patent registered before proceeding with my business?”

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Tip #8: Stopping the Clock – You and your Priority Right

What’s a Priority Right?

How does my application establish ‘Priority Rights?’

How does “The Paris Convention” work?

How does claiming priority actually help me?

(i) It gives you the ability to file a patent application in most countries up to one year after the date when you filed your first application, and to get a filing date which is earlier than everyone else who may have filed in those countries before the date that you actually filed (in those countries), as long as they filed after your priority date.

That’s the power of the priority right!

(ii) An additional advantage: once you have filed your first patent application, if you file applications in additional countries within one year while claiming priority from your first application, no publications of your invention or of similar inventions, whether by you or by others, can be taken into account by those other Patent Offices to reject your application based on prior art.

You’ve basically stopped the clock! And that, is a big deal!

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