Strategy for Starting Out With the Correct Patent Application!

Strategy for Starting Out With the Correct Patent Application! by Pat Werschulz

Previously, I outlined how to move a patent application through a patent office in approximately a year’s time and the strategy involved in doing so. Personally, I believe a holistic patent strategy is imperative for my clients — an examination of all aspects of the client’s business and how it relates to the patent process needs to be considered collectively.  

First, intellectual property strategy should be linked to a client’s budget, marketing plan, and overall business plan. A patent strategy, in isolation, is not going to work well for a small business, start-up, nor solo-inventor. Pursuing a patent is an expensive proposition requiring time and money; start-ups, as well as many other types of businesses, are often short on both. And so, I need to initially understand what the invention is, what the goals are, and how the client plans to achieve them.

Patent Deadlines Across the World

This initial information, as it pertains to strategy, is important in light of patent laws and deadlines. The United States’ patent process is unforgiving in certain respects — products enter the public domain if deadlines are not precisely observed. The business plan must correspond with the deadlines in order for the client to preserve their rights during the early days of start-up.

In the United States, a patent application must be filed within one year, to the day, of when the product entered the marketplace, or in terms of patent law, disclosed to the public, irrespective of whether or not the product has sold. This includes formal and informal presentations such as:

  • a trade show presentation;
  • an investor presentation; or
  • a class project presentation. 

If the application is not filed correctly and on time, the client’s rights to the product are lost forever.

Unfortunately, the rest of the world is less forgiving than the United States. Before one unit sells or the invention is disclosed, a patent application has to be filed somewhere in the world, or the product will lose its rights in all other parts of the world, exclusive of the United States. Of course, this can be challenging, especially when a business is first starting out, and cash flow is a concern.

Regarding deadlines, it is important to understand if the client has had any public exposure or if they plan to in the near future. This can also influence what type of patent application to file. A patent attorney has many tools in her toolbox such as a provisional patent application, a non-provisional patent application, and an international patent application. Each type has advantages and disadvantages, with a variation in cost, timing, and deadlines. Choosing which type of application, and knowing when each type of application can, and should be filed for each case, is part of a developing strategy.

A comprehensive, holistic strategy can help with these challenges. In our next article, we will discuss these applications in detail.  

Please contact me with any questions about this process, and together we will create a holistic strategy for you.

Patricia Werschulz

Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016