The 5 Biggest Patent Pitfalls to Avoid

For companies that have proprietary software, protecting your intellectual property is essential to surviving in today’s market. While there are multiple avenues for protecting intellectual property – each with its own unique use case – patents afford companies significant protections that are often overlooked.

Patents protect new products, new features, and new ways of doing business. Earning patents requires an investment of capital and time. However, the return on this investment is significant. By giving patent owners protection for 20 years, a patent opens numerous doors for companies to protect market share and expand revenue streams through licensing and marketing.

There are many ways in which a company can mishandle its intellectual property. For example, drafting a patent application that can withstand challenges from competitors takes a skilled professional. Failing to work with an expert in patent filings can result in a vulnerable patent.  Companies also sometimes fail to file a patent at all, mistakenly believing their invention to be too obvious to be patentable.

In this post, we will help you avoid making five of the most common patent pitfalls.

  1. Saying too much too soon

Clients sometimes assume they can file a patent application any time. Yet waiting too long to file a patent application can result in forfeiture of their patent rights in the U.S. and abroad.

Tweeting, blogging, pitching investors, hackathons, meetups — there are hundreds of ways for inventors to say too much about their inventions. It‘s frustrating. How can you raise money if you can‘t talk about your invention? And how can you file for a patent without money? Yet the rules are clear. The U.S. gives a one-year grace period to file a patent application but will interpret almost anything as public discussion, even secret betas where the customer doesn‘t know what the invention is. Grace periods outside the U.S. are rare or non-existent — reveal your invention publicly before filing a patent application and you immediately forfeit your patent rights.

The solution? Talk to a good patent attorney to come up with “safe” ways to discuss the invention, and see if the attorney can work on affordable filing packages. Try to file at least a provisional U.S. patent application, preferably before any public discussion…which leads to the next common pitfall.

  1. Underinvesting in provisional patent applications

Some companies assume they can file anything as a provisional patent application — a scribbled cocktail napkin counts, right? Cheap, easy, do-it-yourself. Then a year later, when it’s time to file the non-provisional application, there isn‘t enough text to support what the inventors want to say they invented. Even if the attorney can work wonders to find something to file on, the patent will be a treasure trove for future litigators and competitors to dig through to find reasons why they don’t infringe, shouldn't do a licensing deal, or shouldn’t value the IP as highly. And surprise surprise, patent examiners are actually reading provisionals now and issuing rejections for lack of support.

Provisional applications are a real chance to create the foundation for a patent. Companies can use that foundation to craft claims against competitors, to protect innovations even after a pivot, and to provide themselves with a lot of flexibility — but only if they create that solid base in the provisional.

If you have three ideas and don’t know which one users will care about, use the provisional application to get your patent protections started early and gather some early sales and feedback. Whatever you do, make the provisional application complete.

  1. Assuming their intellectual property is obvious

Inventors and founders often miss an opportunity to benefit from patent protection when they assume they don’t really have anything new, that anyone could have come up with their product, or that patents are dead. But software is still patentable. Engineers (no offense) are particularly bad at evaluating the novelty of their own work, and marketing people (no offense) are too primed to think anything is new and amazing. The solution? Get an outside opinion. Patent attorneys are excellent sounding boards. They have the experience to recognize the patentability of a new, useful, and nonobvious product or process.

  1. Forgetting what is in employee agreements

What was in those employment agreements again? Never assume that employees are obligated to assign patent rights to employers by virtue of their employment. Don’t also assume that employees assign their patent rights to the employer just because they have assigned their copyrights to their employer. Make sure contracts expressly specify that they assign patent rights to the employer — especially if those employees are engaged in technology development.

  1. Overlooking trade secret protection

Sometimes the best way to go is keeping a process or innovation hush-hush. Trade secrets have some advantages. Patents expire, trade secrets don’t. Patents get published, trade secrets don’t.

Trade secrets can be any process, product, or know-how that has economic value to a company. For instance, a hot sauce recipe could be a trade secret. It’s literally secret sauce.

Employers can protect trade secrets by having employees sign nondisclosure and noncompete agreements that are enforceable in a court. Drawing up employee contracts can be much cheaper than filing for patents but will not give companies as broad an opportunity to make money from licensing, for instance, or pursue patent enforcement litigation if another company sells a copycat product.

There are so many options for companies to protect their intellectual property that the biggest mistake would be failing to explore them. Experienced attorneys at Blueshift IP can help companies assess the best way to protect their innovations.




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