Thoughts on Patents Part I
In 2005, I spent my entire summer slaving over a patent application for my company, Perogo Inc. Before I began, I listened to the class that patent lawyers take before the Patent Bar. It was probably the most boring 50 hours of my life. Although it sucked, the material I learned became invaluable. Had I not done this, I would not have been able to complete the provisional and application as quickly as I did (I also want to mention that I had excellent guidance from Gene). I’d recommend getting an audio copy of this class to anyone who is even considering writing a patent.
Later that year, I was hired to write a patent application by a company called Fresh Squeezed Audio. I was more than happy to do it, especially since I believed in the concept. From start to finish, it took about a month.
If I had to do it again— things would be very different. If I had to advise a young company, I’d say skip it, for now.
Here’s why:
They’re expensive and time consuming. When I wrote my first application, the company was just a month old (as a legal entity, we technically started in late 2004). The first scalable prototype was completed after the application was filed. Looking back, it was more of a distraction that should have been completed when the company was at a later stage (where it is now). At an early stage, focusing on the product and gaining traction in your industry is much more important.
I’m also not sure how many people realize how misleading patents can be. They don’t do anything, at least initially. You won’t hear from the patent office for about 3 years after the filing date. Once that happens, you’ll spend a lot of time and money to have your lawyer argue claims with the patent examiner. They’ll probably throw out your top 20 claims. If you’re lucky enough to be approved, congratulations, you just bought 100 pieces of paper for $50,000.
Being granted a patent doesn’t mean anything either! It still has to hold up in a court of law. Consider the consequences. If you’re a cash strapped startup, you are going to spend a lot of money (and quickly) defending your patent which can still be found invalid. A better capitalized competitor might even purposely infringe or sue to drain your money and distract you from your core business.
Having a patent doesn’t mean you’ll have a successful business. It doesn’t mean you can take your time getting to market because you think you have the best approach to a problem. Traction, at least initially, is much more important.
Don’t get me wrong, I’m not completely against patents. If it holds up in court, it can add a lot of value. In reality, you might want to file as many as you can. It depends on a number of factors.
Fresh Squeezed Audio, IMO, had a much better approach. They had the product built, were in beta, and hired someone close to the company to devote the necessary time. I’ll get into the issues that this raises in a later post.
Another misconception is that many entrepreneurs think it is essential for fundraising. VC’s are all over the map on this subject. Some won’t fund without a patent, some are in the middle, and some want to abolish software patents altogether. This is great news for those of you who have not yet filed (or don’t want to). There are other forms of defensibilty!
Don’t let my thoughts steer you in one direction. If you are considering filing a patent, please consider the following:
DISCLAIMER: I’m not a lawyer, and this isnt legal advice. Use the following at your own risk. Don’t rely on it
- DO NOT complete a thorough patent search. If you find any type of prior art, you have to reference it, and it can significantly impact your application/claims. What you don’t know can’t hurt you.
- DO NOT write an email, text message, or verbally state, in any form, that your patent might be rejected. If an inventor doubts his own invention, the patent is instantly invalidated.
- If you find prior art (something that invalidates a claim), DO NOT send a link, document, or any relevant information in an email to a co-inventor that references your own patent. All discoverable documents can be examined to validate a patent. Again, what you don’t know can’t hurt you.
- DO NOT make any direct assertions in your application. It is not a good idea to say the “the invention will.” Instead, say “the invention can.” The more ambiguous you are, the better. EDIT: phrases similar to “including, but not limited to” also work well.
- ALWAYS use comprise instead of consist— there is a BIG difference.
- ALWAYS file your application as both a method, and apparatus.
- DO NOT say that someone is infringing on your patent. If you do— you can be sued.
