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Hiring a Patent Attorney
For many startups, the value of the business is dependent on the value of their Intellectual Property, and more specifically, the value of their patentable technologies. In the growth stage, startups are often underdeveloped in a number of areas: they may have few employees (and a non-existent managerial culture), they may lack real property assets and equipment, and they may have a minimal brand presence. At such an early stage, ownership of a patentable technology or process can come to represent the true value of the business.
If your startup owns what you believe to be a patentable technology or process, it is highly recommended that you seek the services of a qualified patent attorney.
Why Hire a Specialized Patent Attorney?
It is not strictly necessary that you hire a patent attorney in order to submit a patent application with the United States Patent and Trademark Office (USPTO). In fact, both non-attorneys and attorneys not specialized in patent law (e.g. attorneys that have not passed the patent BAR) are entitled to draft and submit patent applications with the USPTO.
Fundamentally, it is a risky proposition to pursue a patent application without the aid of an attorney. Laypeople are much more likely to make mistakes – both minor and significant – when submitting patent applications. The regulation surrounding patent applications is surprisingly complex, and without the guidance of a patent attorney, you may have your application rejected for reasons that are incidental to the actual technology or process itself.
To avoid incidental rejection, it is critical that you hire a qualified attorney. Does a specialized patent attorney make sense, however?
Certainly, a generalist startup attorney with some experience handling patent applications may be “good enough” for your purposes, but if intellectual property is the foundation of your business, it is much more important that you minimize the risk of having your patent application rejected. When intellectual property forms the core of your value proposition, then you should take additional steps to protect such property – in this case, by hiring an attorney specialized in patent law.
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Submitting a winning patent application requires legal instincts informed by industry experience. You will have to include details about your invention (technology or process), charts, drawings, photographs, and more. The best patent attorneys in NYC will advise on how best to formulate the application to maximize the possibility of success.
As great patent applications are girded by genuine technical expertise, it is helpful to hire a patent attorney with industry knowledge and a technical background related to the intellectual property at-issue. For example, if you are attempting to patent an automotive technology, look for a patent attorney who has worked with the automotive industry in the past, or who has a related technical degree.
Protecting Against Infringement
Once your patent has been granted, your patent-related legal work has just begun. Patent infringement is a civil action, which – in the intellectual property litigation context – means that no one is looking out for your patent rights except for you and your team. If another startup infringes on your patent, the government will not pursue legal action on your behalf. The responsibility of identifying the infringing party and pursuing legal action against said party rests entirely on the shoulders of you and your team.
Litigation Experience is Important
To successfully protect your startup from current and potential infringement, you’ll want to work with a patent attorney who has experience on the litigation-side. As you browse UpCounsel listings for a patent lawyer in NYC, you’ll likely find a lot of patent lawyers with experience drafting and submitting patent applications with the USPTO. This type of “transactional” experience is useful, of course, but is not enough when it comes to protecting against infringement.
Infringement comes under the litigation umbrella. Your attorney should therefore be experienced in patent litigation and every phase of the litigation process. He or she should be proficient in: a) working with the potentially infringing party to come to an out-of-court compromise that is satisfactory to you and your team; b) filing a lawsuit in the event that negotiations break down; and c) pursuing the lawsuit to its natural end against the infringing party.
Contractual Protection of IP Rights
Patent protection can be eroded over the course of time if you do not include IP-protective provisions in your contracts – including but not limited to employee and independent contractor agreements, sale of goods contracts, service contracts, and other agreements.
It is important that you work closely with your attorney to draft contracts that are protective of your patent rights. For example, you’ll likely want to include a provision in your employment and contractor agreements that assigns ownership of the work-product created by employees and independent contractors to the company. Without this provision, there could be issues with “pieces” of your intellectual property being infringed later on, after the employees/contractors have left the company.
Most companies also include some form of a confidentiality or non-disclosure agreement to ensure that trade secrets, future research and development, and other related intellectual property concerns are not revealed to competitors (and the public at-large). There is no right or entitlement associated with this type of information. If such information were to be leaked without a confidentiality agreement in place, the information leak could hurt your startup and you would have no legal reprieve.
Keeping Costs Down
One of the most common problems encountered by startups is that they overspend on legal fees, especially with regard to submitting patent applications. It’s really no surprise that some startups patent applications can lead to excessive legal fees: intellectual property can be extremely valuable, so startups are usually willing to spend quite a bit to ensure that everything goes smoothly, and the patent application process is complex and often quite difficult for outsiders to understand. Further, USPTO denial of an application may seem arbitrary.
Startups need not waste so much money early on, however. Your patent law goals can be accomplished at a lower cost, so long as you take into account certain obvious cost-cutting measures.
Submit All Your Strongest Claims
When submitting your USPTO patent application, make sure to include all your strongest patent claims. You can make up to 20 patent claims with a single filing, so don’t waste the opportunity. If you fail to make all the necessary claims, you will have to spend additional funds on another filing (and your original filing may fail).
Avoid Patenting Everything
Though you may feel that your startup has multiple patentable technologies/processes, try to resist the urge to patent everything if your budget is limited. Work with your patent lawyer to submit patent applications for those technologies and processes that are most valuable to your startup’s value proposition. Attempting to patent minor technologies and processes can quickly escalate legal costs to excessive levels.
Be Careful About Filing Patents in Foreign Countries
Submitting patent applications in foreign countries can further escalate costs if you’re not careful. The process may require specialized knowledge of a foreign patent regulation scheme, and may therefore require that you hire additional attorneys with experience handling patent applications in those particular countries.
Even if you are granted a patent in a foreign country, the fees may be prohibitive and enforcement may be rather lax. Filing for patents in foreign countries is a strategy that’s generally discouraged until your startup has become truly global.
Alternatively, filing for a patent in a particular country may be sensible early on if you are specifically targeting that foreign market.
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Legal Services Offered by Our On-Demand New York Patent Attorneys
Our experienced New York patent attorneys & lawyers represent individuals and businesses throughout the world with domestic and foreign patent preparation and prosecution matters. They have extensive experience handling applications from nearly every sector of technology, including biotechnology, computer hardware and software, communication networks, internet systems and methods, automotive, medical equipment, construction technology, consumer electronics, and clean technology research and development.
Our patent attorneys are of the most highly trained in the industry, requiring a scientific background, and passing a second level of testing known as the Patent Bar Examination. Thousands of patents are submitted to the patent office every day and a patent committee reviews each patent for its validity. The process requires that correctly drafted documentation present a clear case for the novelty of the invention, which is best made by a patent attorney with a higher education background in your industry.
Our New York patent attorneys & lawyers can help you file a provisional patent, which lasts for 1-year and allows you to immediately begin using/manufacturing your invention with the confidence that your idea is protected. These types of patents are great if you think your idea will change a lot over the next year before you file a (non-provisional) patent. These patents are easier to obtain and are less expensive but you should have a patent lawyer review your provisional patent application to insure that you are meeting your objectives when you file your patent.
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- 8 min read
How long does a patent pending last? This phase of the patent process can last from one to three years, or longer depending on the complexity of your invention. Software or electronics applications are often patent pending for five years or more. This period starts when you submit either a provisional or non-provisional patent application to the U.S. Patent and Trademark Office (USPTO). It ends when they grant or deny you a patent. The application backlog at the USPTO and the complexity of your application also affect how long your patent is pending.
How to Get a Patent Pending
The cheapest way to get a patent pending is to file a provisional patent application (PPA). Congress set up this option to help inventors. The cost of a PPA ranges from $65 for micro-entities, to $139 for small entities, and up to $260 for large entities. The PPA does not put your application in front of an examiner. It's a placeholder that gives you one year to file a regular patent
- 10 min read
What Is Patent Drafting?
Patent drafting is a part of how to patent an idea and is the process of writing the patent description and claims. It is at the core of every patent application. When the patent is issued or allowed, the draft serves as the specification part of the document.
What Patent Drafting is NOT
Often an inventor wants to complete the patent drafting process by providing an essay or a business plan that outlines the invention. Unfortunately, documents like these are of limited use.
Journal articles usually state that the invention is consistent with accepted science. This goes
- 11 min read
Updated July 2, 2020:
Patenting a mobile phone application is an important part of protecting your intellectual property and allows you to seek damage for infringement. 8 min read
Why Should You Patent a Mobile App?
When asking "can you patent an app," remember that patenting a mobile phone application is an important part of protecting your intellectual property and allows you to seek damage for infringement.
Nearly everyone has a smartphone with mobile applications. Mobile apps are one of the fasting growing segments of the software sector. They have become a major part of the strategy of most businesses to stay connected with customers and maintain a good user experience. This makes many people wonder if they can patent a mobile app. In most circumstances, the short answer is yes, but some limitations do exist around legal protections for mobile apps.
An app can be patented because it is part
- 5 min read
A Guide to Understanding Patents
A patent is an intellectual property right that the United States government grants to an inventor. Its purpose is to promote innovation, and it does this by ensuring that the inventor publicly discloses the invention once he is given a patent “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”
This means that for the first few years of the invention's life only the inventor can profit from the invention, but the public can benefit from it. Others can in fact make, sell or just use the invention, but they have to get and pay for the inventor's permission first. Only the actual inventor can apply for and receive the patent.
Types of Patents
There are four
- 7 min read
What is Kimble v. Marvel?
Kimble v. Marvel was a landmark case that went before the Supreme Court in 2015 and addressed whether a licensor can continue to receive royalties after the patent for his product has expired. On June 22, the Supreme Court declined to overturn the per se rule from Brulotte v. Thys Co. and ruled in favor of the defendant, Marvel.
The case covered almost two decades of negotiations, two different lawsuits, and an appeal. It also brought up important questions in terms of what patent law protects, what rights can be transferred, and how royalties work.
The Origins of Kimble v. Marvel
In 1990, a man named Stephen Kimble got a patent (U.S. Patent No. 5,072,856) based on a Spider-Man toy he'd created: a "web blaster" glove that enabled the wearer to shoot foam streams from their hand. This patent was set to expire in 2010. Kimble's claim is that the president of Marvel Enterprises, Inc. had discussed the idea