WXR Speaker Series: Startup Patent Primer
Recently leaders from TiVo joined founders of WXR Accelerator cohort three to discuss what start-ups should be asking about patents to understand the nuances and complexities of Intellectual Property and Patent filing.
Here are the questions and a few guidelines they shared with the teams.
What is a patent?
Why are they important for start-ups?
How are they used and what are they worth?
What are requirements for patentability?
Should I file a utility patent or a design patent or both?
What is the process for obtaining a patent? How long does it take and how much does it cost?
When can I say "patent pending"?
What's a provisional and should I file one? What's the difference between a provisional and a non-provisional?
Where should I file my patent?
What should I keep trade secret?
Basic Requirements for a Patent
1. The invention should be new — meaning it hasn't been done, used, sold, publicly disclosed or published.
2. The invention should be useful— It has to confer some kind of benefit like speed, accuracy or cost savings
3. The invention should be non-obvious —the idea needs to be more than just. a trivial variation of what already exists.
4. The invention should be enabled – you need to explain it in enough detail that the public can implement it
Design vs. Utility patents
A design patent covers the look and feel of a product. For example the look of a UI, the physical design of a VR headset or mobile phone. A utility patent covers the actual function of the invention – the mechanical components and how they interconnect, a software program or process and other technical functionality.
It’s good to file both types if you have a product with a specific function and has a distinguishable form factor or UI.
Provisional vs. Non-provisional
The difference between non provisional and provisional patent filings is that a provisional is just that – a placeholder that saves the date of your invention and describes everything you know about the invention at the time. Even if it doesn’t end up going into your final product it is best to write as much as possible in the provisional to save the date. Only information that was filed in the provisional is afforded benefit of the filing date. The date is important because the US is a first-to-file country. In fact all countries have adopted a first to file policy. Therefore if someone files the same invention the day after you file they lose out on potential patent protection. The provisional gives you a year in which to file your non-provisional application. A non-provisional application can go on to become an issued patent. A non-provisional will never become a patent so you must file your non-provisional application within one year of the provisional filing date.
Whether to file a provisional first or go straight to non-provisional is primarily related to readiness and completeness. If you still need a year to work the bugs out of your product or technology then filing a provisional is a good strategy. Note, you don’t have to wait a year to file the non-provisional. As soon as you are fairly confident you can describe your products/technology in a patent application then file the non-provisional.
At least file a provisional application before trying to sell your product or talk to inventors. If a non-provisional patent application is filed you can say patent pending.
RULE OF THUMB: THE SOONER YOU FILE SOMETHING THE BETTER.
A well designed patent filing system will be integrated into your product development cycle making provisional filings an exception versus the rule.
Trade Secrets
Trade secret protection is best for things that are not easily reverse engineerable and will likely not become obsolete in the next 20 years. As long as you keep it secret you can be afforded rights associated with trade secret protection. You must show that you have restricted who can access the trade secret and put security measures in place to ensure it cannot be accessed by those without authority to do so. The Coca-Cola formula is a good example. If Coca-Cola had patented the formula the patent would have expired in the early 1900’s and everyone would be free to make Coca-Cola. Instead they kept the formula trade secret and have had the competitive advantage ever since. Trade secrets are things that you might want to keep out of a patent.
Getting Help
Because IP is very important, it is good to find experts who can help you with the process and who are in a position to help pay for the drafting costs. The fees charged by the patent office for filing a patent application with the patent office is less than $500 (depending on the size of your company) but the cost for having an attorney draft the application can be as much as $15K or far more depending on the complexity of the technology in the invention and other factors. It can take 2-3 years after you file a non-provisional patent application to actually have your patent issue but you can say you have a patent pending from the day it’s filed. Your patent will publish after 18 months, meaning everyone will be able to read it. Again, good reason to keep trade secrets out of your patents.
Meet the panelists
Riyon Harding leads Tivo's portfolio development for new technologies and innovation, specifically patents for technology. She works with Tivo and the vendor community on patents as well as with the team that sources invention from outside the company. Her team is also the bridge between Tivo’s patents and licensing those patents to other companies. They work closely with the organic and inorganic portfolio teams to turn their patents into compelling deliverables with clear value. In her experience, technology and innovation comes from products and the people that are passionate about developing those products.
Lopa Sengupta is VP of patent strategy for TiVo. She manages a portfolio of over 5500 active patents and applications world-wide. An experienced attorney in licensing with a vast amount of knowledge in the media technology and entertainment sector, she brings significant value to TiVo’s successful licensing business.
Marc Ehrlich is Senior VP of Patent Strategy and has been with TiVo for over 2 years. Previously he had an extremely successful 30 year career at IBM leading the corporate strategy and business models for its massive 40,000+ worldwide patent portfolio. He is attributed with IBM’s success of maintaining over $1B in patent and technology licensing income each year. He says that patent strategy depends on the business goals and will define how you should protect the start-up’s inventions and ideas. He suggests using patent strategy as a way to add value to your company and help it get to the next level.
Dipak Patel has been part of both the start-up community and executive leadership in Silicon Valley since 1996 and has helped to build out an ecosystem to help founders take their inventions to market. He believes that for a startup, filing a patent and getting one granted is almost like getting a round of funding, getting money in the bank: that just means that that's when the work actually starts.