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.