When Do You Need to Patent?


In our last blog in the Building the Business Case series, we talked about the importance of patents.  I came across the following article in mddionline about patenting for early–stage medtech companies and thought it explained the concept of patents well.

John Baskin states that “Although the costs of obtaining patents can be prohibitive for start-ups, obtaining patent protection is generally necessary as a business tool.”

“Intellectual property (IP) in the form of patents and patent applications often comprises a core asset for start-up companies, particularly those in the medical device and biotechnology industries. These assets may provide the basis for valuations underlying early-equity investments, leverage in negotiations with strategic partners, or ultimately lead to a successful exit for a company. Obtaining solid patent protection is often expensive and can be an arcane exercise for those not familiar with the process. The value of a patent portfolio can be reduced or destroyed by mistakes such as inadvertent public disclosure of confidential information, a lack of appreciation for the difference between patentability and freedom to operate, the inclusion of unclear claim language, or poorly drafted provisional patents. The tension between the need for strong patent protection and a general lack of available financial resources makes IP management for start-up companies a significant challenge for entrepreneurs. It’s important to outline some of the issues pertaining to patenting by biomedical start-up companies, describe ways to mitigate costs, and offer practical tips to ensure the quality of patent applications.”

He goes on to explain patentability. “To obtain a patent, an invention must be novel, nonobvious, and useful.”

Once you decide to file for a patent, you must choose whether to file for a full patent or provisional patent.  A provisional patent expires after 12 months. Within that year-long window, the applicant must convert the provisional patent to a full application in order to preserve the priority date.

The cost of filing a patent in the United States is generally considered to be $10,000–$30,000. However, the filing cost with the USPTO for a provisional patent is generally less than $200 and it is often prepared with only the cursory involvement of a patent agent or lawyer, minimizing the total cost.

Even I, someone who is admittedly unversed in the art of patenting, could understand when and why you would want to obtain a patent after reading this article.

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Who Are Your Competitors and How do You Protect Your Ideas From Them?- The Final Steps to Building The Business Case

This is the final installment of our Building The Business Case series.  We have been looking at the questions entrepreneurs need to ask themselves in order to Build a Business Case.

What are the competitive products / technologies / services currently available?:

It’s not enough to just design a great product; you also need to be aware of what other products are out there.  Take the time to do the research to see what other people are already offering.  Sure, the new shampoo you developed smells great and makes your hair soft, but were you aware that there are also 500+ other brands of shampoo out there that do the same thing?

Why is your product / technology / service better than competitive products?:

Once you discover what the other products are, figure out what differentiates your product from them. What do you have that they don’t?  If you can’t come up with an answer to this question, perhaps you shouldn’t be marketing your product.  Does your shampoo perhaps rinse itself, or automatically highlight one’s hair as it scrubs?

Can your product / technology / service be protected via patents and/or trade-secrets?:

This is important so that you get the credit for your idea and someone else doesn’t.   Remember, it’s not your idea to steal if it’s not patented.  Just because you thought of it first doesn’t mean it belongs to you.  Talk to a patent attorney if you aren’t sure if your product should be protected.  You might also want to conisder non-disclosure or confidentiality agreements if they apply to your situation.   It is important to note that once there is public disclosure of your idea, your ability to patent the idea may be compromised. In fact, once there is a public disclosure, your patent rights are gone in most of the world (you have one year from date of public disclosure to file a patent in the U.S.).

Previous blog posts on Building a Business Case:

Building a Business- The First Step

How Well Do You Really Know Your Market?

Location, Requirements, and Market Size

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August 25, 2010 – FDA Bootcamp

FDA Boot Camp

Sponsor: ACI
Web Site: http://www.americanconference.com

August 25, 2010 – Sheraton Fisherman’s Wharf, San Francisco, CA

ACI’s FDA Boot Camp – the industry standard in providing non-regulatory professionals with a regulatory background – has been designed to give products or patent litigators, a strong working knowledge of core FDA regulatory competencies.


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March 9, 2010 – IBEN: Intellectual Property

IBEN: Intellectual Property

Where: Riley Outpatient Center (Directions)
When: 2/9/2010 at 5pm

Postponed due to the Winter Storm Warning: STAY SAFE!!! Come join us for an opportunity to ask your questions about Intellectual Property and startup companies. Gain advice from a panel of experts whether you are currently in the patent process or considering making public disclosures including publishing your research.

Cost is free, but registration is required.

Dustin DuBois, Partner, Ice Miller’s Business Practice Group
Mark Reichel, Associate, Ice Miller’s IP Practice Group

Tom Walsh, Partner & Chair of Ice Miller’s IP Group

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December 9, 2009 – Bose McKinney & Evans LLP: Intellectual Property Seminar

Software Patent: Oxymoron Or Sound Business Practice?

A Guide For Assessing Whether Patent Protection Is Worthwhile

Wednesday, December 9, 2009
Registration: 2:00 PM
Program: 2:30 – 4:30 PM

Rose-Hulman Ventures
100 South Campus Drive
Terre Haute, IN 47803

Program Description

The debate continues: some argue that software should not be patentable or that patenting software is a waste of money and time.  Others contend that software patents are a valid business practice.  So what’s the best course of action?

As with most things in life, the answer is “it depends.”  During an upcoming seminar, attorneys from the Intellectual Property Group of Bose McKinney & Evans LLP will walk you through a process to help you decide which of your inventions might be eligible for and worthy of patents.

The attorneys will present the criteria that will help you to determine what software is patent eligible and to determine whether patent protection is worthwhile.  For those inventions that meet the criteria, the attorneys will provide practical tips for drafting computer software patent applications to satisfy the requirements for patent eligibility.  The presenters also will discuss copyright protection as an alternative to patents, including the advantages and disadvantages of each.  Finally, the speakers will provide a brief history of software patent eligibility over the years to help illustrate how we arrived at the current confusing state of what should and should not be patented, and will address the impact of the Bilski decision of 2008.


There is no cost to attend the program, but reservations are required due to limited seating.

Contact: Deidre Jordan

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December 4, 2009 – GIIRT Meeting

GIIRT Roundtable Discussion

The next roundtable will feature Elliott Parker, Principle of Innovo Partners who will share his topic Reinvent:Finding New Uses for Old Inventions. Elliott will explain how to find creative new uses for intellectual property–new applications that solve real, unmet needs. He’ll show how patent data can be used to spark innovation, and how to determine whether customers will adopt or ignore an invention.

Mark your calendars for Friday, December 4 from 11a to 1p and don’t forget to send us an RSVP so we can mark you on our calendars too.  Please send us an email or call Scott at 814-8243 by Wednesday the 25th.

Have you seen the website lately? GIIRT.com has photos, video and highlights from our last meeting posted in the new “past events” section.  The great video from Lieutenant Governor Becky Skillman is also online so check it out.

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