6 Things I Wish I Had Known Before Applying for a Patent
When applying for a patent, expect the unexpected. Here’s what they don’t tell you on the patent office’s website.
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In 2013, I pored over the U.S. patent office's website and read countless articles filled with tips. I wanted to know everything there was to know about the patent application process.
There are plenty of resources out there on how to file a patent. But if you've never done it before, many unexpected things will pop up along the way. I learned that the hard way.
We officially filed our application at the end of 2013, and after years of work, we finally received a formal allowance notice on October 6, 2017. Here's what I wish I had known..
1. Find excellent attorneys with subject area knowledge.
If this is your first time applying for a patent, hire an attorney.
When we went through the process, we knew we needed attorneys with subject area knowledge. So rather than using our regular law firm, we sought new people.
In the interview process, our attorneys proved their knowledge of our industry and agreed our technology was novel. And having previously facilitated a patent award for a company in our space, they had the past experience to back it up.
2. Expect things to go wrong, but don't give up.
Even if you have best attorneys in the country, it can still be a challenging and frustrating process.
When we first applied, our application was rejected. And each time we appealed, our examiner would reject it again on a different condition.
The process was so frustrating and took so long, we didn't know if we should cut our losses and give up. But because our attorneys new the space so well, they assured us it could be done. They were relentless and involved a different examiner who ultimately gave us the green light.
3. Over budget for the process.
We all know the saying "you get what you pay for." And when you need good attorneys, you'll need to pay them well. We both knew and expected this.
But what we didn't expect were delays in the process, rounds of application revisions, and appeal cycles. Every bump in the road increased our attorneys' hours, which increased our legal fees astronomically.
In the end, we ended up paying almost triple the amount of legal fees we expected. So if you're budgeting for a patent application, at a minimum, double your expected hours of attorney work.
4. Understand laws could change.
This was one I never expected.
During our patent review, patent laws in the United States changed. Shortly after we filed our application, the supreme court's verdict in Alice Corporation Pty. Ltd. v. CLS Bank International set new limits on the breadth of patent claims. Patents could no longer just encompass an abstract idea.
We had written our application based on previous laws (as one does). But when laws change, your application is reviewed based on the new laws -- not the laws of your filing date. We then had to amend our application, which added more delays.
Again, always remember to over budget your time and money.
5. Be prepared to learn a whole new way of thinking.
By going through process, you'll learn a whole new style of writing and thinking.
Our attorneys wrote the actual application, but we had to review it for accuracy and thoroughness. The legalese was made up of a claim stacked on a claim, stacked on another claim. All points built off each other, making it very dense to read.
Reviewing long legal documents is my least favorite part of my job, but it's one of the most important. The feedback cycle forced me to think differently. Expect this to be time-consuming, difficult, and draining -- especially in tech, where many ideas are intangible and difficult to capture.
6. Understand why you're applying.
Knowing what I know now, was it worth it to get a patent? That depends on why you apply for one in the first place. We had two main reasons.
First of all, we wanted protection from competitors. We created an online tool that's highly visible, and we've seen competitors copy it before. Having a patent would protect us from competitors using our ideas for their own benefit.
Second, we developed technology we knew was new and novel, and it could have further applications down the road. We'd love to build licensing partnerships in the future. A patent is a business asset that increases our value.
In the end, getting a patent is incredibly rewarding. The process was painful, but once we heard it had been approved, it was extremely gratifying. It's a true point of pride for my team.