How To Avoid The Key Patent Pitfalls

Even sophisticated high-tech companies often get tripped up by common pitfalls in the patent process, and lose critical legal protection for their innovative technology as a result.  The patent process is complex and frequently changes—especially in the world of software patents. In my own law firm, we often find ourselves navigating through a minefield of potential traps for our clients in order to maximize legal protection for them and to avoid forfeiting their rights.

Here are three of the most common mistakes that high-tech companies—and their law firms—make when seeking patent protection and how to avoid making them.  It’s important for you to know about these pitfalls even if you’ve never applied for a patent because you could unintentionally forfeit your patent rights if you don’t take preventive measures in advance.

1. Patents Are Not Copyrights or Trademarks

Many entrepreneurs and high-tech executives are generally familiar with copyrights and trademarks, and incorrectly assume that the patent process is similar to the copyright and trademark process.  This assumption is false, and it can be deadly to your patent rights. As just one example of a critical difference between copyrights, trademarks, and patents, you can apply for copyright or trademark protection long after the fact, whereas you can forfeit your patent rights in an invention forever if you don’t file a patent application on that invention before selling the invention or before giving even a demo of a prototype of the invention at a trade show.  In some cases even marketing the invention on the web can forfeit your patent rights.

Don’t assume that your experience with copyrights or trademarks will apply to patents. Hire an expert and save yourself big headaches down the road, and remember that when it comes to patents, it is critical to start the process of securing legal protection as early as possible, preferably right after the inventors have conceived of the idea for the invention, even if that is long before a product which incorporates the invention is made or sold.  

2. Overlooking International Protection

A U.S. patent only provides you with the ability to block competitors in the U.S.  This means that even if you successfully obtain a patent on an invention in the U.S., competitors can compete with you freely in any other country in the world.  Many companies falsely assume that a U.S. patent will protect them everywhere.

Protection outside the U.S. has become increasingly important, especially for software, as high-tech development and sales spread throughout the world.  Although many U.S. companies assume that the cost of obtaining patents outside the U.S. is prohibitive, at Blueshift IP we frequently obtain patents in growing markets such as China and India (and, of course, the more established markets in Europe, Japan, South Korea, and elsewhere) at a cost that is low relative to the huge size of the market that is protected.

Startups and small companies sometimes forego international patent protection because they are only selling into the U.S. market.  This short sighted thinking overlooks the value of foreign patents to a potential acquirer of the company, such as a multinational corporation which would find significant value in acquiring a startup with an international patent portfolio.

It’s important that whatever law firm you hire be able to navigate the international patent process to maximise your return on investment, by strategically selecting countries in which to file patents and by staging protection efforts over time to spread out costs.  One additional thing that we do at Blueshift IP to maximize our clients’ protection for their software inventions is to work with a handpicked network of premier international patent firms who have expertise in software patents. This can make the difference between obtaining a software patent relatively quickly in a foreign country and not obtaining the patent at all.

3. Misusing Provisional Patent Applications

There are so many misconceptions about provisional patent applications that we’ve written an entire separate article about that topic—stay tuned!

In short, there is a widespread, but false, belief that provisional patent applications are a magic solution that will give your company all of the legal protection that it needs quickly, easily, and inexpensively.  Many companies who have this misunderstanding end up wasting their money by filing worthless provisional patent applications that do not provide any legal protection.

For example, despite the common misconception that patent protection can be obtained by filing a “quick and dirty” provisional patent application written on the back of the proverbial napkin, in fact provisional patent applications must contain a detailed description of the invention in order to provide legal protection.  Although the Patent Office will let you file a provisional patent application that does not contain a legally sufficient description of the invention, such a provisional patent application can be tossed out by the Patent Examiner or later in court.

One of the things that we do at Blueshift IP is to position the provisional patent applications strategically as part of a comprehensive patent strategy that is based on your goals, technology, schedule, competition, and budget.  Although provisional applications can be valuable as a piece of the puzzle if used wisely, merely filing provisional patent applications reflexively in a misguided attempt to minimize costs is a disservice to you and your business.

The patent world is full of pitfalls for the unwary, and the software patent world is even more rife with danger for those who are not experienced with it.  Even seemingly small mistakes could cost your business time and money, and even lead to you forfeiting your patent rights. On the other hand, a strategic patent strategy can add significant value to your company by enabling you to block competitors and by increasing the value of your company in the eyes of investors and acquirers.

There are many more patent pitfalls that I haven’t covered here, but it’s important that when it comes to software patent law that you hire a firm with the right expertise to obtain strong, broad, and defensible patents for your company.