Patents for Startups with Templates
By Manu Chatterjee Oct 2022
Intellectual Property (IP) can help protect unique capabilities of a product or service. This intro covers IP types, patents, with examples of provisional patent applications.
Title Page for a Granted US Patent (image by author)
When starting a business, especially one that is creating a new product or technology, an important concern is protecting that new product or invention from being copied. The field of Intellectual Property (IP) covers ways that ideas can be protected.
This article gives an overview of intellectual property types along with steps and templates for filing a provisional patent. I've been through several startups, worked at some very large companies, and been through the process of obtaining a patent several times. The templates included here have been used on dozens of patents.
A few quick notes:
Disclaimer. I am not a lawyer, if you have any questions about securing intellectual property rights, infringement, or related topics, please seek proper legal counsel.
Templates: If you’re just here for the templates and examples they are available at this link for free download (no registration required). Also on github: https://github.com/deftio/provisional-patent-template.
Let’s look at some of the most common intellectual property types and how they are used. Intellectual Property is a very complex area of corporate law but the gist is this - securing IP rights can protect your ideas, written works, multimedia works, and help retain ownership in the event of a dispute. Loosely speaking, this means that the inventor or owner gets to retain control over who can use an invention. In the case of written and musical works, IP rights determine who can make legal copies of that work and to some degree how those copies can be used. This can include the right to perform the work.
IP rights have value just as physical products do. The rights to IP can be bought and sold and are often a key part of driving value when a company is sold. However acquiring IP rights can be expensive and should not distract from building a product or service. While IP can be licensed, this is a complex process and one should thoroughly understand the challenges of the licensing process and the burdens it puts on both the licensor and licensee before going down that path.
Here are the most common forms of Intellectual Property
Copyrights allow the owner to control how many copies of their work can be made, and how much someone must pay to get or make a copy. Copyrights don’t protect the idea, they protect the copies of a specific work. For example, making copies of a book, article, or even music is covered by copyright law. In the United States, copyrights are automatically granted when a work is created. This means that if someone can prove they are the author, they sue someone in the courts for making copies of the work without permission or payment. However, its much better to file a registration document with the government copyright office soon after a work is created to show proof of ownership. This can greatly increase your ability to defend your copyrights. The Copyright Symbol © can be attached to any work that someone wishes to show their ownership to regardless of whether it has been registered. Copyrights remain in effect for a long period of time. This can be many decades after the author has died, but after this period, the work will fall into the public domain (free for anyone to use).
Copylefts are a legal device to make sure certain rights (such as being free) are granted for all subsequent users of a work. Copylefts are a relatively new idea and are very common in the open software movement. The Linux operating system, Firefox web browser, and Blender 3D modeling software, are all examples of open source software using copy-left licenses. Technically Copylefts are a type of copyright, but the goals of how the creative work is used and protected are different. The owner of copyrighted material is concerned about retaining control over copies of the work. The owner of a material that is marked with a Copyleft, is generally interested in preserving the access and terms of use of the protected work for the public.
Trademarks allow the owner to control an element of branding, such a logo or phrase. Trademarks allow the public to associate a brand with a mark. They can cover logos and words (called wordmarks). Trademarks that have been registered with the government will have the ® following them showing broader enforcement rights by the owner. Trademark rights can be retained indefinitely as long as appropriate fees are paid on time.
Trade secrets - Information about a business process which is kept secret by a business concern. Examples of trade secrets are: the formula to Coca-Cola, plans for a not-yet-announced product, and lists of business contacts and contracts. Trade Secrets can also include proprietary business knowledge such as key contacts, product plans, or financial information. There is no specific legal recourse for trade secrets as there are for Patents, Copyrights, and Trademarks. However if someone steals trade secret information (such as an employee or corporate espionage) then those persons and those who benefit from their acts can be litigated in court due to the act of theft.
Patents are a type of legal construct that can be used to prevent others from using or copying a specific invention or requiring them to get an agreement from the patent holder first (a license). Unlike copyrights, patents protect the right to use a specific idea, regardless of how copies of that specific idea are produced. To be granted a patent the inventor must carefully document how their invention works, and then file the documentation and forms with the government patent offices. Patents are time limited - typically 20 years but the term can be less. The reason for this is to allow the inventor time to reap the benefit of their invention in exchange for revealing how it works to the public. After the patent’s term expires, the intellectual property it covers becomes public domain. This means anyone can then use the technology. Generally patents cannot be extended once their time is up, but there are numerous subtleties that can change this that I won’t discuss here.
While acquiring (filing official legal documents) for IP protection can help secure your rights, no government enforces those rights. In order to stop someone from using your IP, you must litigate in civil court against the infringer. This means that actually winning damages from someone who is violating copyright, trademark, or patent rights can be quite expensive. Since IP rights are not “automatically” enforced this makes decisions around filing for and acquiring IP much more complex from a business perspective.
Because of the expense of pursuing IP claims it may seem that securing IP rights, such as patents, are not that valuable. The answer is much more nuanced. By establishing legal ownership, one can deter others from copying work or show investors that the work is unique and defensible. Often investors are leery of investing in companies or inventors that have not secured IP rights because they fear that unprotected work will be copied by other entities and they won’t be able to recoup their investment. So when starting a new venture, such as a tech startup, part of the business planning should be a good IP strategy in consultation with a skilled attorney. Investors can then have confidence that if the product becomes successful, and some others copy it, there exists a possibility of legal recourse.
Patents can be one of the strongest ways for their owner to protect themselves from being copied. A patent grant's the owner the right to make or produce something exclusively for a period of time (typically 20 years from the date of filing). Securing patent rights can help an inventor or small business protect unique product features from being copied and make it easier to raise money. However one should be aware that securing patents can be expensive, time consuming, and may not even be appropriate for many businesses. In addition, the patent rights need to be filed in every country in which the owner wishes to file for protection. This can greatly increase the cost of obtaining patent coverage internationally.
When a patent is granted it does not mean it is enforced. If someone violates (called infringing) on your patent it is up to you, as the patent holder, to litigate the infringer. Patent lawsuits can be extremely costly. All the patent does is give the right to challenge persons or companies that may be copying your invention. For this reason alone certain businesses (for example restaurants) don’t really need patents at all. Even a secret formula is often better left as a trade secret than a patent. So while patents do secure a limited time right of monopoly for an idea, the enforcement path must also make financial sense to justify the expense of obtaining a patent.
For tech startups investors take a slightly nuanced view. A patent can function as a barrier to entry for a competitor which can buy the start up time. Also patents can be bought, sold, or even licensed. These can bring financial value in the right context. However, be aware that licensing and selling patents is a very complex business process.
Maintenance Fees and Schedules
Finally note that patents require maintenance fees to keep in service. This is called the “maintenance” schedule for a patent and payments typically are made at around 3 years, 7 years, and 11 years after issuance (in the United States). Maintenance fee schedules vary by country and can change overtime. If one misses the maintenance fee time period (including a set grace period) the patent will essentially default into the public domain.
Given how expensive it is to acquire a patent, it is good practice to decide whether a patent is necessary at all. Usually the best practice is to file patents on key aspects of your product that are unique, hard to design around, and easy to detect.
For example, some parts of a product may be easily substituted with other components. In this case those parts aren’t worth spending money on as someone could simply substitute those parts with something else. Some parts may be novel and valuable, however the effort to detect infringement may be extremely expensive. For example, the internal design of a machine which is embedded in a sealed compartment may be hard to detect infringement. Depending on the value of the invention, the cost of detection and litigating could be more than the amount of damages that could be recovered.
Sometimes, it's better to take less valuable inventions and make them public. This tactic is called a defensive publication. The purpose is to avoid the expense of acquiring a patent while simultaneously removing the ability for anyone else to gain a patent on the same material.
Finally some ideas don’t really make sense to patent. For example each metropolitan area has dozens of pizza restaurants and bike shops. These businesses can thrive with no IP protection at all, instead their value and success comes from simply providing a needed service in the community.
A key aspect is this, patents are specifically designed to preserve business value for novel idea. If the idea isn’t very valuable (commercially speaking) and unique then a patent may not be worth expense and effort.
In the previous section we discussed what a patent can do but what does a patent look like and how do you get one? The first step is to precisely describe what it is that you wish to claim ownership of. To do this the patent must contain a complete description of what it is that should be patented (the “patentable material” in patent-speak). One can think of this as a type of recipe. The patent specifically tells the reader what is necessary to replicate the idea or product.
How much detail? The invention must be documented well enough such that another person skilled in the area of the patent could replicate the idea. This may seem counterintuitive at first but there are two reasons why this must be so.
Finally, be aware that patents are public documents. Anyone can search for them online at the government patent offices. Nearly all governments have online searchable patent databases as does the World Trade Organization.
There are several types of patents:
A word about authorship
The people who participated in the invention must always be listed as inventors. However the rights to use the invention (the “assignment”) can be any legal party. It is quite common for inventors working for a company to be listed on the patent while the patent is owned (assigned) to the company itself. Each time a patent is sold the assignment is updated.
Anatomy of a Patent
A granted patent shows not just the specification but also has information about who the patent is assigned to, who the inventors are, and the dates the patent was filed and processed. The following coversheet is for a granted utility patent.
Front page of a granted patent
To obtain a patent one must fill out an application. For a design patent, a set of drawings and a single claim are made. I will not go into details on design patents here. For a utility patent the following parts are needed as part of the application process.
It is best to have an experienced attorney guide you through the above parts.
Provisional Patents are a special type of filing that begins the process of securing inventor’s patent rights. Unlike a full patent filing which can be quite time consuming (both in the inventor’s time and also legal expenses) a provisional patent is a simple document that provides a description of the invention and at least 1 claim. It is also not necessary that the drawings be perfect.
A provisional patent is a kind of legal placeholder. It is not examined by the patent office but it secures a filing date for the inventor(s). A provisional patent can be converted to a full patent if a full-patent application is filed within one year of the provisional filing. If it is not converted in that year then it is considered abandoned. This means that the provisional filing date can not be used for a new patent application, however since the provisional is not published it still may be possible to get a patent on the material provided that information has not become disclosed publicly.
Some key points:
This next section is an overview of the provisional patent filing process from a creator or inventor's point of view, along with a provisional patent template and explanation of the patent process. I'll touch on US based patents, provisional patents, and conversion, but I strongly advise that you seek professional legal advice if you are inexperienced with the Intellectual Property landscape.
I have used the template (links at the end) and process here in many filings and also for assisting numerous other startups in getting their first filings done. More importantly, by using a good template, it saves time for when you must convert a provisional patent into a full patent filing.
Here are key points before looking at the template itself.
It is possible to file a provisional patent with just a few handwritten diagrams and a claim. However it is better to provide a more detailed view of the invention, surrounding data, and area of patentability. Then, when it becomes time to convert the provisional patent into a full patent application, the transition is smooth. This is true whether you hand author the patent application yourself or you enlist an attorney to help perform the filing.
Filing full patent applications can cost anywhere from $5,000 to $30,000 or more depending on the complexity of the material, and number of countries you wish to get protection in, and attorney fees. There are several resources to help inventors file their own patents to save costs (including the patent office itself), however there are many subtleties that are often best left to an experienced practitioner, such as drafting claims and managing the office action process. So if you wish to take this on yourself consider your level of experience with patents as it is important that your patent not just “exist” but actually do a good job of protecting your invention. A list of resources is included at the end of the article.
The following is an example provisional patent which has been filled out using the template provided. The first page shows the common information. This version is a little more descriptive then is purely necessary, but if you are using a patent attorney to help you file this can greatly save them time. In addition some of the metadata, here can help your counsel or the patent office advise you when it comes time to convert the provisional to a full filing.
The front page of the template contains data about the inventors, assignees, and other info useful to guide attorneys and examiners.
A key point about the template is to include more info than just the bare minimum required for the provisional filing but also enough for the future full filing.
This section shows the abstract and background sections. These are critical for the full filing which follows up a provisional patent. By adding them here we can save money and time later by providing application background material.
The above describes the new invention claimed in the provisional. Be sure the language and diagrams are clear and the invention is fully explained.
The next section describes the examples, advantages and claims. Strictly speaking, the examples and advantages are optional in a provisional filing. However by including them one can make the invention more clear to the examiner when the provisional is converted to a full filing in the future.
Also by going through the process of addressing embodiments and advantages it strengthens the application because it can force the applicant to be more clear about how this new invention is different and improves on prior art. This is critical for getting a patent allowed.
Examples, Advantages and Claims are key parts of a good provisional filing, however only the Claims section is mandatory.
Claims are the most important part of a patent in that only what is claimed is what can be utilized to prevent others from using the invention. So while the description is important for clarity and explaining to someone skilled in the art how to make an invention, it is the claims that bring the “rights” of the patent. Provisionals require having 1 claim, but I suggest adding a few here that really capture the essence of the invention. In provisionals having a good description of the invention is very important, because this is what the patent office will use when scrutinizing the full application. No new material about the invention can be added when a provisional patent is converted to a full application. However, it is permitted to re-render sketches into professional drawings and otherwise “clean up” hastily written material from the provisional.
When converting the provisional into a full fledged patent filing be sure to have someone skilled in drafting claims so that they truly cover the most important aspects of the invention.
A provisional patent can hold for 1 year, after which one must convert the provisional filing to a full patent filing. After filing a full patent application the process can take anywhere from just over a year to perhaps 3 or 4 years to complete. Fees can be paid to expedite the process to around 1 year.
There are many fees associated with filing a patent (outside of attorney fees to help draft the application). For small entities (individuals, small business, or academics) this can be a few hundred dollars. However there are many non-filing fees to be aware of such as search fees, issue fees, and maintenance fees. In the references section are some links to these costs.
While provisional patents may seem like “just a placeholder” they do offer some important benefits:
Finally note that patents now work on a first to file basis. This means that the first person to file an invention with the patent office for a specific invention is the one who gets the rights to that invention, even if someone else thought of the idea first. Historically this has not always been the case. In times past, if someone could prove they thought of an idea first, they could asset patent rights. However, finding acceptable proof of who did something first became difficult in practice and so nearly all countries have gone to the first-to-file system. This means you should keep your idea secret until you are ready to file. Conversely if you believe your idea is very valuable and that many people are working in the space, you may wish to quickly file your IP protection to protect your patent rights.
When time comes to convert your patent from a provisional to a full patent you will need to file the full patent. This requires much more detail along with precision drawings and full review by the patent office. Also you will want to consider other matters such as the cost of filing, and international rights. These topics are deep in their own right and beyond the space we have here.
Just a reminder, once you have your provisional patent filed (whether directly with the patent office or with the assistance of legal counsel), you must file the full patent application in within one year or you will lose your filing date. However, you can use this year to test the commercial opportunities for the invention and know that your filing date is safe.
Intellectual property, and patents in particular, are an important part of protecting new technology and inventions. With proper attention to detail they can help add value to a business, keep competitors at bay, and make it easier to raise funds. The provisional patent templates provided here can help save time and provide some guidance on making sure that the right level of detail is captured. Good luck in growing and protecting your new ideas!
All of the examples cited in this article are in this github repo: https://github.com/deftio/provisional-patent-template. These are free for you to use for your own work. If you are not used to using github, you can visit this website which also has the same content and templates available for free download (no registration required).
Other useful resources for provisional patents and process overviews are covered in these links:
Please keep in mind that these links are written with a US patent point of view. If you need filing in another country please look to your country’s specific rules and also check out the World International Property Organization (WIPO) which coordinates IP issues across many
Searching for Patents
Nearly all governments have patent offices and most have online searchable databases as does the WIPO. The quality of searches for the government databases is often limited - if you know the inventor or title or patent number your search will be successful. If you need to search for patents by coverage then a more advanced search is needed. Many specialty providers can provide search and coverage guidance for a fee. Searching the patent databases can provide some idea of whether a new idea is patentable or whether it may already be in a crowded space.
Here are some quick search areas to get started (I am not affiliated with any of these links):
Intellectual Property Intro with Templates
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