What is wrong with filing cheap patents?
It’s one thing to tell folks that cheap patents can lead to irreversible damage, but it’s quite another when that reality hits your own business. Let’s see how cheap patents can actually be one of the most expensive mistakes you can make.
Need help with filing a strong patent? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore working with us.
Every Startup’s Dilemma: How much do you spend on filing a patent?
Every startup has to watch their budget. It’s understandable that a startup simply does not have the financial resources to spend tens of thousands of dollars on a utility patent application, especially during the early stages. So small companies and startups naturally gravitate towards filing provisional patent applications, which is fine as long as you avoid certain pitfalls.
So, what would be some helpful guidelines in terms of how much a startup should spend in patenting their innovation?
Proof of Concept Established: Invest in Patents as Much as You Can Afford
One wise approach would be to invest in patents as soon as proof of concept or market research has been established. Once you have some assurance that demand exists for your product, then invest in patents as much as your financial resources allow.
The dilemma for many small companies is that you cannot go back in time to add more details to a prior patent filing. You might be able to add new details in a subsequent patent application, but those new details will get a later filing date. While a later filing date is not ideal, it is certainly better than failing to add new subject matter altogether.
Let’s look at what happened to the patent of a company funded by Shark Tank.
True Story of a Shark Tank Startup: the Power of Patents
Who doesn’t love a good Shark Tank story? I really enjoy that show. As a patent attorney, I can’t help but notice how intellectual property is crucial to the success of a startup. Float’N’Grill is a company that appeared on Shark Tank and secured an investment in their company. They obtained US Patent No. 9,771,132 directed to a FLOATING APPARATUS FOR SUPPORTING A GRILL. Sounds like the beginning of a success story, right? So where did things go wrong?
Their utility patent contains only a single independent claim that requires several features, or claim limitations. Readers of my blog may be familiar with how utility patent claims work. The more features recited in an independent claim, the easier it is for competitors to avoid patent infringement.
Since the company no longer had the option to file a continuing application, their only recourse was to file a reissue application. The result was unfavorable due to technical rules that prevent patent owners from removing certain claim limitations considered essential to the originally disclosed invention.
What can patent owners do differently to get broader claims?
Even without significant financial resources, small companies can take cost-effective approaches to obtaining broader patents. Ideally, you want to use these strategies early on and, if possible, employ them in your earliest patent application. If that ship has already sailed, you might still have some opportunities to expand your protection with a later patent filing. Let’s explore options.
Your First Patent Application: Be As Detailed As Possible
If your financial resources enable you to spend more, then make your initial utility patent application as detailed as possible. This preserves an earlier priority date for all the subsequent claims that you may want to pursue. If you choose to file a provisional patent application first, make sure your provisional patent application contains sufficient detail to support your subsequent nonprovisional application.
What if your first patent application is a bit short or scant?
You might have options even if your first patent application is light on details.
If your first filing was a provisional patent application, follow through with a timely nonprovisional application within 12 months. Make sure to add any new details to the nonprovisional, and file it as soon as you can. In other words, if you need to add new details, do not wait until the end of the 12 months to file the nonprovisional.
If your pending nonprovisional application is lacking details, file a child application called a CIP to add new subject matter.
What if you cannot afford to file a broader patent?
Remember this important rule: keep pendency alive. If you have a pending nonprovisional utility patent application, do not let that application go abandoned or issued without filing a child application. Once your financial resources improve, file a more detailed patent application that claims priority to your pending application.
What if your utility patent application has been allowed?
Suppose your utility patent application has been allowed, and you cannot think of any new subject matter to add. Are you done with patenting then? No. File a continuation application before your parent patent is granted. Why? Because competitors may find a way to design around the claims in your parent patent.
By filing a child application before your parent application is granted, you keep pendency alive. This gives you opportunities to pursue additional patent claims that may be broader than those in your parent patent.
Want to avoid irreversible cheap patents?
Call patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help you obtain broader utility patents.
