As a patent attorney and former patent examiner, John Sotomayor has just about seen it all when it comes to patents and IP. A long-time RIoTer, John joined the RIoT crew again to share his insights on how to be thoughtful when it comes to IP strategy. Based off of our learnings, we compiled four basic rules of thumb to consider when it comes to IP strategy.
Rule #1: Patents and other IP should provide clear value
Consider why you are getting a patent to begin with. A patent should offer value, not just in terms of protecting your business in the marketplace, but can also be a revenue driver. Intellectual property can be monetized. Patents can be bought, sold, licensed, etc. And down the road, a patent can significantly increase the value of your business, should you ever intend to sell.
Rule #2: Intellectual Property should be combined to multiply value
A good patent attorney will consider ways that different types of IP can be combined to increase overall value. For instance, a patent lawyer may suggest combining a patent with a copyright in the case of a software. This IP combination will not only protect the function of a software but also the implementation of how it was coded.
Rule #3: Timing is key
The timeline you are looking at from filing a patent to when its granted can be anywhere from 12 months for a simple device to 3-4 years for something more complex. Before engaging in the patent process, it is important to consider the life cycle of your product. For instance, most apps reach their full market potential within just a year or two. By the time you go through the patent process, it’s likely your patent will be obsolete. However, if your patent will be just as valuable to you in three years as it would be today, it is worth engaging in the process.
The best stage to begin thinking about applying for a provisional patent is once you have a complete idea and can provide a description of what you would do in order to successfully create it. According to John, if you can demonstrate your entire design, every major step and the result, that’s when you should consider at least filing for provision.
Rule #4: Think ahead
When I speak with litigators they always tell me, “When you talk with clients, make sure they think 12-18 months out from current technology.” John has never met an inventor who didn’t have an understanding of what their product was going to look like a year or two from now. Wrap that information into the patent to protect against future harm.
Similarly, consider markets in which you intend to expand internationally. There are very specific rules and timelines about attaining international patents and it is best to consult with a patent attorney early to determine how to proceed.
You can find John’s entire recorded presentation here.
SotoIP consulting practice specializes in assisting startups and early growth companies with developing their patent strategy, conducting the patentable discovery process with inventors, and performing patent preparation and prosecution.
RIoT is a non-profit economic development organization capturing and creating IoT opportunities locally, regionally, and globally. Follow RIoT at www.riot.org for news and updates about partners like Soto IP and more upcoming Lunch & Learn events.