Thursday, March 6, 2008

A Patent Lesson: Should I get a Patent?

When we were thinking about filing a patent, we found ourselves in a situation that was quite similar to our "are we ready to incorporate yet" question. Since this was our first time dealing with the patent issue, we were really learning on the go. I spoke to some great attorneys back in July from McDermott Will and Emery who initially explained the process to us. When we later got representation from Fenwick & West, getting patent help was included. We had other priorities, so it sat on the back burner for a little while... now it's boiling over.

There are two ways you can approach filing a patent, which I'll explain here, along with the merits of both. You can file a provisional patent application or a full patent application.

Provisional Patent Application: A provisional patent application is really a lean patent or a placeholder patent. It requires far less stringent guidelines when filing and it is MUCH less expensive. Essentially, the provisional patent application is filed and sits in the patent office without being examined. It provides precedent or a date at which you can claim rights to the patent. That's usually where you see "patent pending". There are two concerns for filing a provisional patent.
1) You must file the full patent application within a year.
2) A bigger concern is that the provisional patent idea must meet the "best mode" and "enablement" requirements of a regular patent app. But as I mentioned above, the provisional app isn't looked at, so there's no way to tell in advance of the full patent app whether you met those two requirements.

Full Patent Application: A full patent application is a much stricter process. It pretty much requires you to work with a legal team to put together the patent application and the claims - as well as a much more formal patent search and filing. It's also a much more expensive process. To the tune of $10,000-$15,000 - or more. The way this process works is that your application is filed and it sits in a queue at the patent office. Once the patent gets to the top (it could be years), the patent officer reviews it and either approves it or sends it back for changes. You make the changes and resubmit it to the office and continue the process until it is approved or otherwise rejected. In this process, you know whether the requirements are met because an officer is actually looking at it.

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