I love showcasing the success of our clients because the work we do on their intellectual property can really make a big difference in their business strategy and understanding, even beyond IP and patents.
I just interviewed an awesome inventor, Chris, who has developed a very useful consumer product. To hear more about Chris and how he suspects he saved $12,600 on his legal costs by working with The IP Link, check out the video here:
Also, we are getting closer to launching the next cohort of our program and course, the Product Protection Playbook™, so if you’re interested in keeping your costs down and filing a better patent like Chris did, stay tuned here: https://theiplink.com/waitlist/
Wondering about how to best approach the patent process? I recently interviewed Anthony Chan – CEO & Co-Founder of Venturi from Edmonton, Alberta – all about his experience and approach to the patent process. Read below to find out what he learned throughout the process and how he would advise startup founders at the beginning of their IP protection journey.
Trevor: Where was your business, from an IP perspective, before we started working together?
Anthony:
At the very beginning of everything, we weren’t sure if we needed a patent at all. I knew that getting a patent was very expensive. And this is a software patent, and I’ve heard a lot of people say “software is really hard to patent”, [so we figured] maybe we should take a look at this first – before spending all this money and trying to find a lawyer which may not understand the technology as much as someone who is probably in the trade already.
That was one of the key points, as I think the lawyers are really good at the legalese and the legal aspects of the patent but they might not know too much about technology itself, if it is patentable, or what we can do to extract more value out of it. So, I thought that it was very important to engage someone like yourself to really understand and articulate that. And to formulate a strategy so that we can set ourselves up for success for when we are ready to file. So that was super super important.
Trevor: What led you to decide to work with The IP Link?
Anthony:
First and foremost, I liked the fact that you have a technical background. You’re not just a lawyer but you’ve worked in the startup space before, having previously worked at TEC Edmonton. Being connected with various companies you understand their ecosystem and the environment really well, and you have seen what was done before and that experience definitely lends itself to helping a startup like ourselves in software engineering technology. That was a huge factor in my decision. And you have some really good reviews from past clients, and I trusted my gut. I think it was very successful.
Trevor: How did your understanding of the patent process change over the course of working with the IP link?
Anthony:
Initially, when I approached patents, it was about protecting IP because I don’t want anyone else to steal from it or duplicate it. Trying to find a safe way for us to protect ourselves is critical because we’re fairly small, and we’re up against some of the big boys here and larger companies who have a lot of corporate might behind them.
Trying to understand and get protection was key. After going through the modules and when you helped us break down why exactly we were actually filing, there were certain aspects that we didn’t consider, like if you have a patent filing that could increase the chance of closing a deal by a certain percentage and how much the deal was worth. Trying to get down into that level and understanding as to where exactly the value of the patent lies. Also the cost of maintaining these patents is something to consider because it’s not just a one-time cost, you file and that’s it. There are also other aspects of it where you could be filing in other countries. How many countries? Which countries? And the list goes on. You have to look at it as a capital investment, a total lifetime cost of that patent and what it means to the business. Is it worth pursuing and spending this money upfront and even in the future to maintain it? Also, when are you going to extract the value out of it? Is it now or later? [You need to] make that decision and do those calculations. That made a lot of sense.
Trevor: Overall, how was the program and working with The IP Link?
Anthony:
I thought it was a really good experience, the modules that we went through were very relevant. I thought the level of engagement was pretty good too, it wasn’t too much or too little. I think we were just spot on. We kind of found a cadence to really set us up for success and I think that really worked well too.
I also like the fact that at the end while we were working on the patent draft, we had a chance to circle back to the beginning because it was a good reminder of what we did talk about [in the first module of the program]. That has been really beneficial to us.
Trevor: What would you say to a startup founder or someone like yourself who’s still right at the beginning trying to decide whether or not to even pursue patent protection?
Anthony:
Seek as much information as possible and don’t be afraid to ask around, especially from professionals like yourself [The IP Link]. Reach out and understand really for yourself. Sometimes, it’s hard to ask questions when we don’t know, but I felt like you were kind of like that bridge. There are a lot of things that we don’t know that are in the legal world, right? But we know about the technology.
We have the domain expertise in engineering but we have no clue when it comes to who is a great lawyer for this particular type of patent, what’s their experience [for example]. Trying to decrease the amount of time spent in doing that is value in itself because you [The IP Link] already know who your preferred vendors are, who are the great folks in the local economy and industry. I think for a founder, saving time and also getting knowledge at the same time is a win – a double whammy.
Trevor: How has your business progressed in parallel with the patent work?
Anthony:
The technology is developed and proceeding well, we’re working with [an initial customer] now, so it’s official. Also, they’re talking about testing this technology on [a broader set of applications]. We secured funding too, I was looking back at the funding this year, and it was about $450,000 of funding, the majority of it on this project.
With your help, we were able to get there. We were talking with our client and [they asked], “Oh are you guys trying to file a patent?” [We said], “Yes, we are filing a patent.” And with the government, [when they asked] “How are you guys protecting your IP?”, [we were able to say], “We’re working with Trevor and with [our patent lawyer], so we’re going to file that pretty soon”. And all that contributes to gaining funding and investor confidence as well. It was a lot of work, but I’m glad we did it.
Thanks again for the help, it’s been amazing.
If you’re in a similar situation as Anthony was at the beginning of his journey, let’s hop on a call and see if we can pull together the beginnings of a proper IP strategy!
If you missed last week’s “Reasons to Patent” post, it was all about licensing. Check it out here.
As I mentioned last week, one of the most common misconceptions I come across is that the only way a patent can bring value to your business is through legal enforcement (suing a competitor for patent infringement). In reality, there are many, many other reasons to file a patent that are far more relevant to newer, smaller businesses (such as technology startups).
This week I will be discussing credibility. In the early phases of the life of a startup, the credibility of you and your business is very important. You will need to work with other businesses and people in order for your business to grow and succeed, but they likely won’t work with you if they don’t trust or believe in your venture.
There are many ways to show your industry that you are committed, and I wouldn’t suggest just relying on one, but since this blog is all about patents, I’m going to focus on that. Investing the time and money into filing a high-quality patent application is a great way to show others that you are willing to do what it takes to make your business succeed.
Once you file your initial application, you can properly claim that you have “Patent Pending” status. This label sounds impressive. Those who don’t know what is involved in getting to that stage are impressed because they assume it must be difficult (many people don’t understand the difference between an issued patent and patent pending). Those who have been through the process before are also impressed because they know how much effort and investment it takes!
There are many types of people and business relationships where this credibility will come in handy. For example, you may be seeking investment. Initially from friends and family, later from angel investors and VCs. Anyone investing in your business would love to see that you have thought through the protection of your core IP, and that you have invested in your business. If you take your business seriously, they are more likely to also take it seriously. This also applies to banks if you’re looking for a loan, potential new hires you may want to join your cause, other companies you might partner with, granting agencies, and more.
At The IP Link, we help our clients understand the value a patent application might bring to their business BEFORE they start spending tens of thousands or even hundreds of thousands of dollars on their legal fees with a lawyer. If you’re looking for investment, partnerships, or to hire high-caliber type-A people and you haven’t considered how a patent could help, let’s book a 45-minute strategy session to discuss it!
We’ve recently had another client, Robert from Soteria120, successfully complete the “Search” phase of the Product Protection Playbook and gain significant value from it.
Robert particularly appreciated gaining a deeper understanding of exactly how to dig into the swath of existing patent literature and figure out how it might impact his business. On a recent coaching call, we dug deep into one patent application in particular to see who filed it, the current status, how likely that patent was to issue (or if it had already been rejected), and even the specific correspondence that that company had with the patent office.
It turned out that many of the claims of the third party patent had already been rejected, and we were able to see exactly what the patent office’s reasoning was. We intend to use that as a model for improving Robert’s own patent application, so that it will be well positioned to avoid such issues.
Robert has this to say about it:
“This is super useful! To see your strategy with finding something on Google Patents then what we do to dig into it more deeply and troll through those references, that was awesome. Thank you for helping us with that!”
If you’re concerned with how existing patents might impact your business and your ability to get a patent (or potentially even more dangerous, if your not), let’s hop on a call and nail down your next steps for gaining this peace of mind!
What do Capture the Flag, Venn Diagrams, and Aerospace Engineering have to do with our logo?
Our logo represents one of The IP Link’s core values – that expertise in the business, technical, and legal worlds is absolutely necessary to prepare and file the right patent. Learn more about The IP Link’s logo, what led me to this design, and a bit about my personal background in this video:
Enjoy! Let me know what inspired your company logo!
Should you be filing an industrial design (design patent) or a utility patent? The ultimate question: Design Patent VS Utility Patent. Okay, this is not the ultimate question, but a common question nonetheless.
Terminology
The first thing I want to clarify is terminology. In most of the world, you can file a patent or an “industrial design” application. In the United States, industrial designs are called “design patents.” This can be a bit confusing because they are quite different from “utility patents,” or what the rest of the world just calls “patents.” For the rest of this article, I will call them industrial designs, to attempt to reduce confusion.
Design VS Utility
The best way to think about whether you should file an industrial design or a utility patent is by asking yourself what is new, unique, and innovative about your product: how it works or how it looks?
If your product has a unique appearance, you may want to consider filing an industrial design. If you think it has a unique function, then you may want to consider patent protection, and we would love to help!
Strength of Protection
If you are able to get industrial design protection, this only enables you to prevent others from copying your exact design. Assuming you don’t also have a patent, others would be free to copy the function of your product as long as theirs had a different shape or appearance. Industrial designs can be easier to get, but they also have more limited protection. It is easier to tweak a design, or the appearance of a product to get around industrial design protection than it is for a well-written patent.
Multiple Forms of Protection
The initial question I asked at the beginning of this article related to “industrial design OR utility patent,” but the best IP strategy usually incorporates multiple forms of IP protection. For example, you may protect your software, written works, and images with copyright. You will likely protect your brand (the name of your company, logos, product names, etc.) with a trademark. You may keep certain elements of your back-end as a trade secret (data that goes into an AI or machine learning process, for example). If your product incorporates a unique process or function, you will certainly want to consider filing a patent application on your core technology regardless of whether or not it also has a unique design. Learn the best approach to filing a patent here!
And of course, even if you are pursuing a patent you should also consider filing an industrial design if the appearance of your product is unique and important to the success of your business.
