One of the things I love about helping entrepreneurs and founders with their IP and patents is all the great conversations I get to have. If there is some way that I can help, I’m typically happy to hop on a Zoom call to discuss it in more depth. On these calls, if there is a way we can help after or beyond the call that makes great sense for us and you, I’m usually happy to talk about what that looks like and enroll folks into one of our programs – at any time.
In fact, I suspect I have talked with many of you over Zoom or at least via email recently, or over the past year or two!
But, I also enjoy deep conversations with our clients and ensuring our programs and services are top-notch.
So, to provide an even better service for our clients, by the end of this month, we will be switching over to a cohort-based process for onboarding new clients. Since our core program is typically between 9 and 12 weeks long, we will be onboarding new cohorts once per quarter rather than at any time as we have done up to now.
What does this mean for you? Well, if you are hoping to file a patent, launch your product, or even start marketing it at any point in the next 3-6 months, now is the time to take action on all the important patent assessment, preparation, and strategy work that needs to happen BEFORE engaging with a lawyer.
…and the best way to start that action is to register now for my upcoming free webinar – I’ll share all the details on the 21st at noon:
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!
I recently had a question from one of our clients about who should be listed as an inventor on his patent application. If you have multiple founders, or a team of developers, researchers, or engineers, it is important to get this right.
Unlike authorship (which can have a certain flexibility), inventorship is determined based on a set of legal criteria. You need to ensure that the inventors are accurate (are actual “inventors”) based on these criteria. If you get them wrong it may be difficult or expensive to change them later, or, even worse, a competitor could use the mistake to try to invalidate your patent.
Always confirm with your lawyer if you are unsure, but simply put, in order to be an inventor, each person needs to have conceived of at least one of the claims of your patent. Once the claims of your patent have been written, you can go through one by one and ask “who initially came up with this idea?” This isn’t necessarily the person who built the element, or the person who tested it to confirm it worked (especially important in research settings).
Many of our clients are looking to get an initial sense of this before they have written their claims, so we consider it in the first module of The IP Link’s core program, Articulate Product.
In this module, we utilize a template worksheet called The Articulate Product Spreadsheet which has a section specifically devoted to this. In many cases, there is only one inventor and we don’t need to worry about this step, but when multiple people are involved it’s important to understand how inventorship is determined and get an initial sense of who should be listed on your patent as inventors.
Once you are clear on who the inventors are, it is also important to make sure that your business has signed agreements with all inventors ensuring that all rights to the invention are owned by the company.
If you need more help with this or would like to gain access to the Articulate Product Spreadsheet, just let me know!
Over the next few weeks, I will be publishing a series of newsletter emails all about different reasons you may want to pursue a patent in your business.
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).
For example, one great reason to consider filing a patent application is to enable your business to more easily and effectively pursue a licensing arrangement. In its most basic form, licensing is where you give another business (or multiple businesses) the right to use your protected intellectual property in exchange for a portion of the revenue they generate with your IP. It is possible to enter into a license as soon as you file an initial patent application (when you are still in the “patent pending” phase) so licensing can be a great way to bring early revenue into your business.
Certain business models work better with licensing than others, but if you have your heart set on manufacturing and selling your product entirely yourself, it may still be possible to pursue one or more licensees. For example, you might give the exclusive rights to another jurisdiction (for example a country your business won’t be pursuing in the near term). Alternatively, if your patent is applicable to more than one industry, you could provide the licensing rights to another company exclusively in an industry or application area that isn’t core to your business.
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 considering licensing, but haven’t filed a patent yet, or if you want help digging into all the different ways a patent could bring value to your business, let’s talk!
Make sure you’re subscribed to learn more about the benefits of a patent from a business perspective over the next few weeks!
Many entrepreneurs I talk with shy away from filing a patent because they have heard that “in their industry” or “for their technology” or simply “because they are a small startup” it would be difficult to defend their patent in court.
Although this may be true, does it immediately imply you shouldn’t file a patent? Should getting into a bunch of lawsuits really be at the core of your IP strategy, or is that just what your lawyer would like to see happen? Could there be a better, more business-focused strategy for extracting value from your patent?
YES!
For many businesses in many industries (especially technology and software startups), yes, there are many other strategies for extracting value from a patent or even a patent application.
In fact, for smaller companies, attempting to prevent their competition from manufacturing or selling their product by defending their patent in court would not be a great approach. Even if you could win such a court case, the legal fees required to get you there may cause you significant financial woes (to put it mildly).
Plus, as the founder of your business, should you really be spending your time in court arguing over patent infringement or should you be continuing to innovate, looking for investment, finding customers, and selling your solution? Your time is limited and it’s important to choose every action you take carefully, because taking one means you won’t have time to take countless other actions.
Consider your reasons for wanting a patent very carefully. If the primary (or only) reason you’ve considered for filing a patent is to defend your patent in court, then it may not make sense to file until you have a much larger legal budget. Although, even on this point, if you file an application now and all goes well, your patent may not be accepted or defendable for 2-4 years, by which time you may have an increased ability to defend it.
If you are filing a patent for other reasons such as improved credibility, increased investor confidence, licensing or partnerships, improved net worth, or others, then patents may start to make much more sense earlier in the life-cycle of a startup or innovative business.
We do a deep-dive into the business strategy and benefits of filing a patent in Modules 4-6 of The Product Protection Playbook. I’m happy to give you a preview of what this looks like and determine which strategies make the most sense for your business specifically.
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.
I got my second vaccine dose this week and ended up getting pretty sick for a day or so. As I was laying in bed recovering (wondering how I would get around to writing my weekly patent post), it crossed my mind that the vaccine is actually a great analogy for patent protection.
It takes time to book an appointment, go to the pharmacy, and get your shot. And there is the cost associated with the fact that you may react with various symptoms that could last a day or two.
It also takes time and effort to prepare for a good patent application, and it is going to cost a fair bit initially to complete the preparation, draft, and file the application.
The vaccine protects you against COVID-19 and the patent protects you against your competition!
On the other hand, if you don’t get the vaccine, you could be facing a far more serious situation. There is a significant risk of getting COVID-19, and potentially even dying from it.
Similarly for innovative businesses that depend on their technology for their competitive advantage, if you don’t get a patent application it could cause serious issues. Your competition may create a similar product and run you out of the market, or even put you out of business.
If your business is innovative, get your vaccine against your competition by pursuing a patent!
PS: If you’re wondering about the image, it’s a polynucleotide primary mRNA construct from one of Moderna’s patents related to the COVID-19 vaccine.
Has anyone told you that you absolutely need a patent to move forward in your business? Has anyone told you not to get a patent because it’s a waste of time and money? These are not rhetorical questions, I really want to know. Please leave a comment below with any patent-or-not advice you’ve heard!
If you’re an innovative business or a tech startup, there are two things you should be considered closely in order to determine whether or not you should file a patent application.
The first is determining whether or not a patent would even make sense for your business.
You’re right to be skeptical about patents given the high cost. This is all the more reason to figure it out properly. You might have not previously thought about all the benefits and costs, much less calculated them out carefully and weighed them. The IP Link has a program called “Strategize” that gives you the expertise you need to be intentional about your goals for filing a patent, objective about the downside, and confident in your decision to pursue patent protection or not.
The second thing you should consider is whether or not the patent office will accept your application or reject it once they finally get around to reviewing it. If your application does not meet the criteria for patentability, it will likely be rejected.
For example, anyone anywhere in the world has publicly disclosed a technology or product similar to yours, then your patent could be rejected. Unfortunately, you won’t find out officially whether you meet their criteria until 2-4 years into the process and $50,000 – $150,000 invested. It would be very unfortunate to be rejected after spending that kind of time and money.
If you want to learn more about our business focussed alternative approach to the patent process, join our newsletter and gain access to our free patent training webinar at:
If you’re investing your time, energy, and money into building a new physical or software product, what steps are you taking now to prevent the big players like Amazon, Google, Facebook, and Apple from creating their own versions of your product once you put in all the hard work to prove the market?
If there’s no market for the product you’re developing, the big players will probably never notice your efforts, but my guess is that you’re hoping for and planning for the opposite. You likely have good reason to believe there is a need for your product and that customers will pay for it. Once you prove this (with hundreds, thousands, or tens of thousands of paying customers), why wouldn’t the industry leader build their own version of your product? You’ve probably seen Amazon Basics products popping up, or Apple integrating the latest, greatest app into their core OS. Would they, or the big player in your industry, do the same?
This a problem for you NOW, even if you’re still in the early stages of development. The problem is, you need to file a patent BEFORE you first sell or publicly release your product. So if you wait until your bigger competitors start noticing you, it will be far too late to consider patent protection.
I would love to help you develop a patent strategy and sort through whether a patent would help or hinder your business. This is exactly what our core programs are designed to do, so that your business has a far better hope of holding your own against your bigger competitors when the time comes. Let’s chat! https://theiplink.com/book
