Question
Hi! We are a small team of MEMS engineers based in Austin, TX. We are planning to start a company focusing on smart systems tech. As mentioned in an earlier post, we have already developed a prototype and would like to go the first steps necessary in founding a company securing further funding.
However, it has been pointed out that simply showing our technology to investors and similar activities might hurt our chances to gain effective Intellectual Property protection down the road. What exactly do we need to do to protect our Intellectual Property and how much does that usually cost? We would be most interested in a solution that takes our position as a startup into consideration.
Thank you for your input on an earlier question, this feature is really great and it helps us looking for the right person to talk to. Best regards,
Brandon
Answers: 2 public & 0 private
The first thing that is absolutely mandatory is to get a patent application on file before you disclose or show your invention to any third parties - if you do not, you will adversely affect your rights overseas and possibly here in the US. You can either file a provisional patent application or a non-provisional application - the advantage of the provisional application is that the filing fee is less than that of a non-provisional, however, the drawback is that a provisional will, by itself, never result in a patent because the application will never be examined and it must be converted into a non-provisional application or a PCT application within one year of filing the provisional application.
Some people will say that the provisional application does not have to be as complete, accurate, and thorough as a non-provisional application but that is not actually true because if you file a bare-bones provisional application and follow that with a full-blow non-provisional, seeking priority back to your provisional application, you may not be granted your earlier filing date priority of the provisional application because it did not fully disclose what you later disclosed within your non-provisional application. So, all in all, the provisional application is not necessarily the best/least expensive route to go when considering your long-term objectives.
Steve is right on the money, you need to consider a patent application before disclosure. As someone who started two startups (one of them still around, www.clicknprint.com), an inventor and for the past decade a Patent Agent, I can tell you that time (i.e. $) spent with an IP professional laying out a strategy is crucial if no one in the team has IP experience.
I strongly recommend Provisionals to my clients. They are cheaper than a non-Prov because we save my time (again, $) drafting claims, but it is CRITICAL that the crucial inventive elements be disclosed, otherwise as Steve mentions, you will lose your date while in examination.
All the best and good luck in 2015...
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