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Nine Things Startups Need to Know About Patents

September 11, 2016

Cook, Elliot C.


Authored by Elliot C. Cook

(1) Do I Have to Build It Before I Patent it?
No. This is a common misconception. To file a patent application, in most countries, the inventors must describe the invention with enough specificity to enable someone in their field to build or practice the invention. Physically constructing the invention is not required.

(2) Who Gets the Patent - the First to Apply or the First to Invent?
Generally, the first to apply. Most countries operate on a “first to file” basis. The U.S. used to be a “first to invent” system, but changed to “first to file” (except for applications with a filing date before March 16, 2013).

(3) What Rights Do Patents Provide?
Patents provide exclusionary rights. They exclude, or block, others from doing what is defined by the patent’s claims. This also means that a patent is only as good as its claims: narrow claims block less, and broader claims block more.

(4) Why Not Always Draft the Broadest Imaginable Claims?
Validity. Patent laws require inventions to be new and not obvious. The broader a claim, the easier for a patent examiner or court to say "someone has already invented that." In that case, a patent application will be rejected (or an issued patent will be invalidated).

(5) What Is Better, Quality or Quantity?
Both, but quality matters more for most companies. Having a mountain of patents too numerous to defend against is expensive and unobtainable for most companies. For the great majority of companies, quality patents are necessary to deliver real value.

(6) What About Patents Generates Value?
Having the "sweet spot" of claim scope: broad enough to cover infringement, but narrow enough to avoid validity attacks. Also, having easily perceivable infringement, rather than hard-to-detect infringement. Perhaps most important, having patent claims that align with and support a business strategy.

(7) Aren’t Software Patents "Dead"?
In the U.S., certain types of software-based inventions received increased scrutiny in recent years. But the situation has recently improved for patentees. While “business method” inventions are often difficult to patent, software-based inventions in countless fields remain obtainable.

(8) Do I Want "Method" Claims or "Product" Claims?
Often, both. Consider who the likely infringer will be. Will they be practicing a method, or making or selling a product? Tailor the claims to capture the likely infringing acts. Frequently, this requires claims of both types.

(9) Patent Litigation Prohibitively Expensive, So Why Bother?
Remember, without a patent, competitors can freely take your technology. That can be more costly. One of the best ways to minimize cost is to obtain quality patents. The stronger the patent, the less likely competitors will risk infringing—and if they do, enforcement is cheaper and quicker. Strong patents can also persuade law firms to take a case on contingency.

Originally printed in StartIsrael on September 11, 2016. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.