• Jeremy Rutman

11 Steps - The High Road to Patenting

You’ve had a brainstorm.

Maybe found some partners, put together a pitch, built a powerpoint deck, and even got an angel or some VC investment. Congratulations, you’re on your way!!

Having gotten to this point you’ll likely have wondered about patents - do I need a patent? What’s the cost? How much of my time is this going to take, and what does my startup actually get from it?

A patent protects your invention from being sold, manufactured, or imported in a particular country. It can cost anywhere between $400 for single US patent filed yourself, to $100,000 or for patents in multiple countries done a big-name firm.

Without exaggerating the role of the patent attorney, in some cases your choice of attorney or firm can make or break your startup. Best case, you get a great patent written for a reasonable price, covering all the markets you’d want and paving the way to your ideal investment; worst case, you can spend thousands and not have a single patent in hand at the end of an exhausting, time-intensive, expensive process.

Following are 10 tips that will help you navigate the sometimes opaque world of IP (intellectual property) protection.

1. Describe to yourself your patent in one sentence or a picture –

For example , try to describe the main elements of a pencil in a single sentence e.g. -

An outer cylindrical wooden shell surrounding an inner graphite rod with an exposed end, whereby marks can be made upon paper.

For a full blog on this process see here.

This exercise will sharpen your own understanding of what’s really necessary to your idea and what's incidental.

2. Prior art search - google patents, espacenet and patentscope are all excellent places to search by keywords – which you now have nailed down, thanks to step 1.

3. If you believe there’s even an outside chance that your invention is new (as compared to the prior art you found in the last step), you can continue. If you’ve found a lot of patents that seem to cover exactly the same idea and can’t think of any variations not already covered, you might either drop the idea of patenting or perhaps consult with a patent attorney – there are those that give free consultations.

4. If you’ve decided to continue, look up some patent attorneys. Something to look for in an attorney is a science background. A lot of patent offices are run by lawyers without any scientific training – needless to say, when the person writing/editing your patent has a technical background in the field of the patent this can be a crucial advantage, and conversely if this is lacking your patent will suffer. Someone who knows the field can generalize the idea, anticipate future directions, and write your patent knowledgeably.

5. Ask for clear prices – if your prospective attorney or office won’t commit to a price, beware of sticker shock and the "mechanics' marketing method" , where price is determined by a guess about what the client can pay.

6. Size - a lot of big firms farm out the actual work to interns. Are you getting work from a real attorney/scientist or from a low-paid first-year working on 10 cases at the same time?

7. The whole package - a good office will guide you on patenting strategy - there are lots of options which should be chosen according to your budget, target markets, and other factors. A good office can also give guidance on getting investments, how to pitch an idea to VCs, where to look for grants, and even connect you directly to funding sources.

8. Round the world - Your attorney should have international patenting experience. You may want to patent e.g. in china, EU, US and you’ll want an attorney who has filed abroad extensively, with a network of associates in major markets that can get you a good on price on filling outside of Israel.

9. If your attorneys have licenses in several countries in house, this allows you to avoid hefty ‘associate fees’ of e.g. 1000EU just to file your already-written patent in the EU. This cost, of course, passes directly to you, the client. An office with e.g. Israel and US licensed attorneys will avoid these costs at least for the US.

10. A firm that can connect you to further steps in your journey – making prototypes / POCs / apps can be crucial . Some patent offices have extensive experience with this and can connect you to competent experts, others have none.

11. An attorney who has built a startup or is an inventor him or herself can bring that experience to the table – after all, who can understand the startup journey like another founder?

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