Patent Law News + Insights

We’re a Startup. Do We Really Need a Patent Attorney?

December 28, 2017

The cost of obtaining patent protection can run high. Because many tech startups are operating under a limited budget, they might be tempted to cut corners by self-filing their patent applications.

It’s certainly possible to prepare and submit a patent application on your own. But is it a good idea?

For high-tech startups, IP can be among their most important assets. Set your business up for long-term success by investing in the right strategy to protect your IP — and that includes hiring a competent and experienced patent attorney to conduct your patent filings.

Does our startup need patent protection?

Not every invention needs to be patented in order to become a viable product, and not every business needs patents in order to stay competitive.

Patents are fundamentally business tools. They’re often worth pursuing if you have an invention with strong commercial value, or if they could help you gain a competitive edge in your industry.

Generally speaking, the value of a patent application largely depends on what type of company you run and what your most valuable assets are.

Patents are a worthwhile investment for most “IP-centric” companies, who consider their technological innovations and other intellectual property to be some of their most important business assets. IP-centric companies are characterized by large, upfront investment in research and development.

For companies like this, patents might be your best (or only) tool to prevent competitors from dominating the market before you can reap the rewards from a  long R&D process.

On the other hand, if you’ve made a smaller R&D investment, chances are your company is non-IP-centric — meaning that your customer relationships, infrastructure or other assets are the key to your long-term success . If innovation isn’t central to your business strategy, you might consider using less costly options to protect your intellectual property, such as trade secrets.

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5 reasons your startup needs a patent attorney

When you’re navigating the complex patent process, a skilled patent agent or attorney can prove to be an invaluable partner.

1. Make efficient use of your limited time

As a startup founder, your time is stretched thin already. Your plate is full enough as it is — you have better things to do with your time than draft patent applications!

Tech entrepreneurs quickly become quite good at learning to do things themselves, and develop an instinct for getting things done in-house as much as possible, which is often a good way to grow your internal team’s expertise and save cash.

But drafting a quality patent application takes lots of time even for a professional, as patent office filings have to comply with an array of rules and formalities that can be time-consuming to learn. The savviest tech entrepreneurs know that engaging outside patent counsel to navigate the process for them saves a ton of time.

2. Invest in your business’s key asset

If your IP forms the cornerstone of your business’s commercial success, you need to invest in protecting it. Cutting corners may offer short-term savings — but could also lead to costly consequences down the line. Mistakes made early in the patent process are often irreversible, so it’s important to get things right from the beginning.

The USPTO highly recommends that applicants hire a registered patent agent or attorney: a high percentage of pro se (self-filed) patent applications will fail to meet the USPTO’s formal requirements, and consequently end up abandoned.

In other words, pro se patent applications are often thrown out before they get an opportunity to be evaluated on the merits of the actual invention.

And even if your pro se application does mature into an issued patent, its claims might not hold up under close scrutiny:

  • If it doesn’t thoroughly account for close prior art, your patent could be vulnerable to IPR challenges.
  • If it contains shallow claims, you could find it very difficult to enforce your patent in a litigation or licensing scenario.

3. Investors know the difference

One of the key concerns of any early-stage startup is fundraising.

Serious investors understand the role IP plays in helping companies assert a competitive edge in their industry, and may want proof that you’re executing a solid patent strategy before they offer significant funding.

Accordingly, they’ll want to know that your patents are viable and competently drafted, and likely to stand up to challenges — whether in court or in an IPR proceeding.

Having a patent attorney on board can offer potential investors added peace of mind that you’re serious about taking your business to the next level.

4. Make sure you meet important deadlines

The patent process is governed by a myriad of deadlines. For instance, to avoid creating prior art against yourself, you may need to file your application ahead of certain interactions with collaborators, discussions with potential customers, and other activities.

You also need to set aside enough time to meet each deadline effectively. For example, it’s very common for early stage companies to start by filing a provisional patent application. But this won’t mature into an issued patent unless it’s converted into a non-provisional application within a year — and non-provisional applications are significantly more difficult to draft.

And if your patent strategy includes an international focus, you’ll face strict timelines and formality requirements for pursuing international patent protection. And after you file an international patent application, you’ll have up to 30 months to “nationalize” your application. This can be a complex process, and missing a deadline could lock you out of a crucial segment of your market.

By contrast, a competent patent agent or attorney will be better prepared to map out and meet these critical deadlines.

5. Handle contracts and agreements

A patent attorney can also help prepare and negotiate contracts, such as:

  • Non-disclosure agreements to protect you from confidentiality breaches by your employees and other third parties
  • Employment agreements to ensure ownership of IP is properly assigned to your company
  • Indemnification, licensing, and sales agreements with customers

How much will it cost to engage a patent attorney?

Hiring a patent attorney is a critical investment in your business’s core assets.

To help you budget, we’ve put together a FREE infographic that estimates the cost of filing a patent application with a patent attorney’s help. Get the infographic now: What's the Cost of the Patent Process?

free patent cost infographic download

POSTED IN: All Posts, Patent Prosecution, Hiring an IP Firm, Startups

Michael Henry

Michael Henry is a principal and the founding member of Henry Patent Law Firm PLLC. Michael specializes in creating comprehensive, growth-oriented IP strategies for early-stage companies who are developing emerging technologies.

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