Thursday, June 27, 2019

Patent family trees and prosecution timelines

We've added a new section to our website called PatentPlex to make it easy to get details about any U.S. patent or application.  Our PatentPlex pages include:
  • a patent family tree
  • a timeline of prosecution events including priority, filing, and expiration dates
  • easy access to documents from PAIR
  • direct links to the patent on USPTO (assignments, maintenance fees, etc.) and other sites

Here is an example of a patent family tree (see interactive version on PatentPlex):

Here is an example of a patent timeline (see interactive version on PatentPlex):

Please let us know what other information we should include on our PatentPlex or if you would like more information about our automated patent proofreading or examiner statistics.

Tuesday, June 25, 2019

Patent advice for startups

In my career, I've seen the patent practice from many angles. I've worked at Amazon, a medium-size law firm, startups, and in my current solo practice, all of my clients are start ups.

Patent attorneys have very different practices, and some of them are not well suited to startups. In this blog post, I give some tips to keep your patent budget in check and avoid unnecessary hassles. There are exceptions to each of my tips below, but they are good general rules for most startups.

File fewer international applications. It is unusual for smaller U.S. companies to have patent disputes in other countries so international applications give you a much lower return on investment. My rough rule of thumb is to file international applications for only the top 5-10% of your patent portfolio. When selecting countries, limit yourself to the most important (i.e., largest) markets.

Also, don't bother with patents in Hong Kong unless you have a good reason to do so. If you have a patent application in Europe or China, it is easy and inexpensive to proceed in Hong Kong, but it just isn't worth it in most cases.

Delay filing international applications until close to the one-year deadline (both PCT and specific countries). Your business priorities may change, and this can help conserve your patent budget and delay expenses.

Track I patent applications are a great way to get a patent more quickly for an extra $2000 filing fee. I've seen notices of allowance just 2-3 months after filing. This is especially helpful for startups who want a patent quickly to aid in getting funding.

For patent law firms, paying high fees does not get you higher quality work. You generally get the best value and quality from a small or medium size patent boutique. Avoid large general practice firms with a small patent team -- they often charge high amounts and do low quality work.

Notarizing inventor signatures is not necessary. Some law firms put notary blocks on all documents to be signed by inventors, but it can be a huge hassle, especially if you don't have an in-house notary public. If you need extra protection, have another person witness the signature.

Don't provide the full address of your inventors to the USPTO. The USPTO requires you to provide (i) the city and state of residence for each inventor and (ii) a mailing address.  You can use the mailing address of the company instead of the home address of the inventor. This prevents inventors from being sent patent-related junk mail. Also, since the company owns the patent, it makes sense for correspondence to go to the company.

I hope you find this helpful.  Let me know if you have any other tips I should add.

Monday, June 17, 2019

Multi cloud support for patent proofreading

Our first iteration of Patent Bots performed patent proofreading using Google Cloud Platform.  We have now extended our proofreading so that you can use Amazon Web Services as well.  When you go to our proofreading page, you will now see a choice of clouds:

If your firm is doing patent work for Google or Amazon then you may prefer to process applications on their cloud, or you may have other reasons for preferring one cloud service over another.

The proofreading results are the same on either cloud.  The only difference is that your patent documents are processed entirely within your selected cloud and then discarded.

We can also set the default cloud on a per-subscription basis.  Please contact us if you would like us to set a default cloud for your subscription.

We'll soon be adding Microsoft Azure as a third option, and we are also looking into on-premise options.  Let us know if we should consider other cloud options as well.