A patent game plan for product launch

Deciding whether to file a patent application before or after product launch is not easy. While much can be said about the advantages of patenting before public disclosure, the difficulty in the decision often comes down to patent costs. Investing a lot of money in patenting a product before verifying commercial success can seem risky. Yet, the risks of waiting to patent until after your product becomes a hit may be even greater as competitors flood the market with cheaper knockoffs. So, let’s explore how startups can reach a proper balance between the need for patent protection and the high costs of patent protection.

Do you care more about your product’s functions or looks?

An effective IP strategy should be driven by the core protectable features of your product. If the outward appearance of your product is the main feature, think you should lean towards design patents. If you are more concerned about how your product works, and less about how it looks, then you should consider utility patents. In some cases, it may make sense to file both utility and design patent applications.

Launching product with primarily visual features

If your product is very simple, a worthwhile question to consider is why customers might buy your product. If the reason has to do with the way your product looks, then you should consider protecting the ornamental appearance of your product with a design patent.

If you decide to forget about utility patents, and instead pursue only design patents, keep in mind the following limitations and distinctions:

  • you may not be able to stop competitors from making similar products that have a different appearance, but serve the same purpose
  • you may need to file multiple design patent applications to cover a variety of different product designs
  • the cost of obtaining a design patent will be significantly lower than that of a utility patent: generally under $3,000 based on our firm’s flat fees for a small entity applicant with fewer than 500 employees (assuming no Office Action rejections)

Launching product with primarily functional features

If the unique features of your product are primarily functional, you need to be thinking about utility patents. Generally, the utility patent application process is longer, more expensive, and more difficult than the design application process. Utility patents require significant investments of time and money, so you’ll need to ask the tough questions of whether it makes business sense to pursue utility patents.

Patent before or after product launch?

If your budget allows, it’s always best to file patent applications before launch. Those who are first-to-file with the USPTO generally win the patent race. If a utility nonprovisional application is cost prohibitive at your current stage of your startup company, consider filing a provisional patent application to buy a year’s worth of patent-pending status. Don’t rely too much on provisionals since they carry significant risk in being deficient on details, especially if you are writing the provisional applications yourself.

Just remember that the primary objective of a provisional is deferral of legal costs while maintaining at least a minimal level of patent protection. Keep in mind that the Patent Office does not review provisionals, so you will want to file your nonprovisional sooner in order to get an earlier place in line for patent examination (if you care about getting a utility patent granted sooner).

If you are considering foreign patents, you must file first before any public disclosures. For example, you can first start with a US patent application filed before launching your product. After securing a US patent filing date (priority date), you must make sure to file any foreign applications or an international PCT application within one year of the US priority date. That way, your foreign applications will backdate to your earlier US priority date and thereby precede any intervening public disclosures you may have made after your US filing.

Consider flat rate patent applications

If you are leaning towards utility patents, but are concerned about high costs, consider working with an IP firm that charges flat rates for utility nonprovisional patent applications. The transparency of a fixed fee patent application will enable you to budget accordingly and see if a nonprovisional might be possible at an earlier stage in your startup.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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